CTM DIPLOMAT was partially converted into, among others, Slovenian trademark application. Although the CTM was filed with EUIPO on October 21 2003, the Slovenian trademark had a later application date, namely May 1 2004, because CTMs could not be effective in Slovenia before the country joined the CTM system.
The converted trademark DIPLOMAT was opposed by the owner of Slovenian trademark DIPLOMATICO, which was converted from a CTM filed with EUIPO on May 23 2003. The converted Slovenian trademark application DIPLOMATICO also had a later application date, namely May 1 2004.
The opponent argued that the Slovenian trademark DIPLOMATICO should be considered to predate the opposed trademark DIPLOMAT, despite the identical converted filing dates (May 1 2004), because the filing date of the original CTM DIPLOMATICO (May 23 2003) predated the filing date of the applicant’s original CTM DIPLOMAT (October 21 2003).
The applicant of the opposed trademark argued that the opponent’s trademark could not enjoy the status of an earlier trademark in relation to the opposed trademark under Article 44(2)(a) of the Industrial Property Act, which defines an earlier trademark as, among other things, a “trademark which was applied for or registered in Slovenia on the basis of a national application prior to the filing date of the later trademark or its priority date, if applicable”.
The SIPO held that the opposition was deemed not to have been filed. Namely, as both converted trademarks had the same application date of May 1, 2004 (the day on which Slovenia joined the European Union and the CTM system), neither of them was deemed to predate the other despite the filing dates of the original CTMs.