On 22nd March 2012 an important decision was made by The Court of Justice (first chamber) in case C190/10 in which determination for registration’s priority was analysed in instances when applications for the trademark registration were filed on the same day.
In the morning of 12th December 2003, Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (Génesis) electronically filed two Community trademark applications to the Office for Harmonization in the Internal Market (OHIM). These were the verbal trademarks ‘Rizo and Rizo’ and ‘El Erizo’ filed at 11.52am and 12.13pm respectively. On the same day at 5.45pm Pool Angel Tomás SL requested Spanish Patent and Trademark Office (OEPM) to register a verbal trademark ‘Rizo’s’. Génesis entered a protest regarding the application to register the national trademark, as they thought that the verbal Community trademarks ‘Rizo and Rizo’ and ‘El Erizo’ are earlier than the previously mentioned national trademark ‘Rizo’s’.
This conflict reached the Supreme Court of Spain (Tribunal Supremo) which decided to stop the proceedings of the case and refer the following question to the Court of Justice for a preliminary ruling: ‘May Article 27 of (Regulation No 40/94 ), which was partly amended, 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 trademark application filed on the same day, where the national legislation governing the registration of national trademarks considers the time of filing to be relevant?’.
The Court of Justice stated that under the EU law it is prohibited to take into account the hour and minute of the filing of the Community trademark application when determining the priority of the Community trademark over the national trademark, whose application was filed on the same day, whereas under the national legislation regulating the national trademark, the hour and the minute of filing of the application are considered to be essential elements. The court formulated the following answer to the posed question in its decision: ‘Article 27, which was partly amended, 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 trademark’s priority over a national trademark filed on the same day even if according to the national legislation governing the registration of national trade marks, the hour and minute of filing are relevant in that regard’.
According to this Court’s ruling, the applications for the trademark registration filed on the same day possess the same priority date, where the hours and the minutes of the filing of the appliction are not considered.