Priority and OHIM - Tougher Scrutiny Under New Guidelines

In recent years OHIM relaxed their examination of priority claims but this may be about to change. Under newly constituted 2015 OHIM Guidelines, they have started examining entitlement to claim priority and seniority.

The right of priority has the effect that the date of priority counts as the date of filing of the Community trade mark application or Community design application. The claim may be made during the six months following the first filing, provided the country of first filing was party to the Paris convention, the World Trade Organisation or a country with reciprocity agreements.

A claim for priority requires a triple identity rule as follows:

The marks must be identical. In recent guidelines OHIM has also recently amended their practice regarding colour marks. This means that a trade mark filed in black and white is, for the purposes of assessing priority, not identical to the same mark filed in colour.
The goods and services must be identical or identical goods and services must at least be contained in the earlier trade mark;
The proprietor must be identical. It is acceptable to file a priority claim if you are the successor in title of the original mark. However, evidence of the transfer must now also be filed.

It is necessary to file a priority document in support of a priority claim. If the details of the priority claim are easily accessible on the national office website, OHIM will check the relevant information on-line. However, with many overseas application, the information is not easily accessible.

The previous application must be a first filing. OHIM will therefore check on the certificate that there was no priority claim made on the prior application. OHIM will also check that the CTM application is filed no later than six months from the date of filing of the earlier application.

Where applicants from countries where the language of filing is non-European, OHIM will now also require a translation of the priority document in order to examine the claim.

The increase in OHIM's checks will raise the likelihood of an objection being raised in an Examination Report.  Therefore, applications will take longer to process and the cost of priority applications will also increase.