A time to file, a time to sue ...

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In his editorial capacity, this member of the IPKat team spends much of his life deleting unnecessary and irrelevant dates from articles and case notes which it falls to him to edit.  However, there are instances when not only dates but specific points of time become not merely relevant but acutely interesting.  This is true of  Case C 190/10 Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (Génesis) v Boys Toys Sa, Administración Del Estado, a ruling of the Court of Justice of the European Union (First Chamber) on 21 March, a reference for a preliminary ruling which will fascinate trade mark applicants, their professional advisers and to all true clock-watchers.

On the morning of 12 December 2003, at precisely 11:52 hours and 12:13 hours respectively, Génesis filed by electronic means two Community trade mark (CTM) applications. The first was for the word mark RIZO (Classes 16, 28, 35 and 36) of the Nice Agreement. The second was for the word mark RIZO, EL ERIZO for almost the same classes.  On the very same date, but at 17:45 hours, Pool Angel Tomás SL applied to the Oficina Española de Patentes y Marcas (the Spanish Patent and Trade Mark Office, OEPM) for registration of the word mark RIZO’S for goods in Class 28 [Merpel says, I think I know what's coming ...]. Génesis opposed the Spanish application, taking the view that its Community word marks RIZO and RIZO, EL ERIZO had priority over that trade mark since they were filed earlier.

After the OEPM rejected the opposition, Génesis appealed and sought a declaration that its Community trade marks had priority.  In June 2005 the OEPM dismissed that appeal and reaffirmed that, under Article 27 of the Community Trade Mark Regulation, it was bound to hold that the filing of the application for the CTMs at issue in the main proceedings had been carried out on 7 January 2004, the date on which the documentation was actually submitted, and not the date of the electronic application; that date was later than the date of filing of the application for the Spanish trade mark RIZO’S.

Génesis appealed to the Second Section of the Chamber for Contentious Administrative Proceedings of the Tribunal Superior de Justicia de Madrid which confirmed, in February 2008, that the decision to allow registration of the Spanish RIZO’S trade mark was well-founded. That court also considered that the date of filing of the application for the CTMs was the date on which the documentation was actually submitted, and not the electronic filing date of 12 December 2003.

Génesis appealed further to the Tribunal Supremo, maintaining that the correct interpretation of Articles 26 and 27 of the Community Trade Mark Regulation was that the date of filing of its applications was the date on which those applications were transmitted to and received by OHIM. Accordingly, 12 December 2003 should be accepted as the date of filing.  Sensing that, where Alicante and Madrid were in conflict, a neutral forum might come in handy, the Tribunal Supremo decided to stay proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘May Article 27 of [Regulation No 40/94 as amended, repealed and even re-enacted, but never forgotten] be interpreted in such a way as to enable account to be taken not only of the day but also of the hour and minute of filing of an application for registration of a Community trade mark with OHIM (provided that such information has been recorded) for the purposes of establishing temporal priority over a national trade mark application filed on the same day, where the national legislation governing the registration of national trade marks considers the time of filing to be relevant?’

The Court of Justice of the European Union (First Chamber) held last week that

"Article 27 ...  must be interpreted as precluding account being taken not only of the day but also of the hour and minute of filing of an application for a Community trade mark with ... OHIM ... for the purposes of establishing that trade mark’s priority over a national trade mark filed on the same day, where, according to the national legislation governing the registration of national trade marks, the hour and minute of filing are relevant in that regard".

The Court actually had plenty to say. First, it confirmed that the reference was admissible since it was not apparent, or at least "not quite obvious", that the interpretation of European Union law requested here was unrelated to the actual facts of the main action or to its purpose. Nor did it appear to concern a purely hypothetical problem. The reference was therefore admissible.

As for the substance of the reference:

• Since there were no provisions relating to the procedure for filing or to establishing the date of filing of applications for national trade marks, Member States were free to pick their own provisions on the subject which might therefore differ from one Member State to another.
  
  
• The CTM regime has its own rules relating to the procedure for filing an application which makes no reference to the provisions of national law in that regard.
  
  
• An obligation to state the date or the day does not imply, according to the ordinary meaning, that it is necessary to state the hour and, a fortiori, the minute. Therefore, in the absence of any express reference to the hour and minute of filing of a CTM application, it is apparent that this information was not considered necessary for the purposes of establishing the time of filing of a Community trade mark application.
  
  
• Since an application for a CTM may be filed (i) with OHIM, (ii) with the central industrial property office of a Member State or (iii) with the Benelux Trade Mark Office, if it were necessary to take the hour and minute of filing of an application for a CTM into account, that obligation would have to stem explicitly from provisions of general application.
  
  
• Where a CTM is invoked for the purposes of opposing the registration of a national trade mark, if the date of filing of the application for that CTM were to be established by taking account of provisions of national law, that would in effect undermine the uniform nature of the protection of a  CTM because the Member States remain free to determine the procedure for filing applications for national trade marks, with the result that the extent of the protection given to that  CTM  might differ from one Member State to another [The IPKat thought this was a most appealing point].
  
  
• EU law actually precludes the hour and minute of the filing of an application for a CTM from being taken into account under national law for the purposes of establishing that CTM's priority over a national trade mark filed on the same day, where the national legislation governing the registration of national trade marks considers the hour and minute of filing to be relevant in that regard.

The IPKat thinks this must be right.  He's just a little sad that, when the parties are arguing about hours, minutes and seconds, this dispute relates to a filing which took place in December 2003 and, despite the paucity of relevant existing law on the subject, it has only now got as far as a ruling on a preliminary issue.

Merpel's speculating about some exciting "might-have-been" references regarding priority where, given the EU's span of time zones as between East and West, a national application filed in one country might bear an later time stamp than an application filed after it in another time zone but being accorded an earlier time stamp.

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