Mon 9th Jan 2017

Benefits of a trade mark priority claim

If you sell products, or services internationally, then you will need to consider where and when to register trade marks to protect the intellectual property in your branding. Planning your approach is an important part of your IP strategy.

When applying to register a trade mark for the first time, you can choose which country to file your application in first and then any subsequent applications elsewhere for the same trade mark within six months may benefit from the ‘priority’ of your first application and be treated as though they had been filed at the same time as the first application.

 

This has a number of advantages, including:

  • spreading the costs of trade mark registration by filing one application first and then considering the success of the application and the branded product, before filing further applications in other countries;
  • leapfrogging any intervening applications by third parties, including competitors, in the countries where any further applications are made, within that six-month period; and
  • if your brand is taking off and you decide to make further new trade mark applications, and you do so within six months of your first regular application for the same trade mark, you will be able to backdate the filing date of the new application to that of the first application.
 

Example of how a priority claim works

Go-Grow Ltd choose to file their first application for trade mark protection in the UK, but also want to file applications in the US, Canada and Hong Kong. If Go-Grow file their application in the UK on 1 January and their applications in the US, Canada and Hong Kong on 1 February, 1 March and 1 April respectively, the making of a priority claim will result in the applications in the US, Canada and Hong Kong all being treated as though they were filed on 1 January.

 

Which countries can be used for making a priority claim?

To benefit from a priority claim, the country in which the application was first made must be a party to the Paris Convention, or to the agreement establishing the World Trade Organisation to which the agreement on trade-related aspects of intellectual property rights is annexed, or must have a reciprocity agreement with the country in which priority is sought. Almost all countries in the world fall into one of these three categories, although there are some exceptions, such as St Helena and Montserrat.

In deciding whether to claim priority, you need to be mindful of the fact that trade mark applications take months to process. If you delay the filing of an application in a country, it could potentially delay your ability to assert your rights as a registered trade mark owner.

 

If you are thinking about using the Madrid System to protect your trade mark then you may be able to file an application for registration in your “home” country and, if that application is accepted and the trade mark subsequently registered within a six-month period, using the initial application in a priority claim for your application under the Madrid System. The Madrid System allows applicants to file one application to protect their trade marks in around 100 countries and to thereafter manage them through a centralised system.

 

What is the procedure?

With EU applications that claim priority from the first application, details of the priority claim, namely the country and date must be provided with the EU application, or within 2 months of filing, and within 3 months thereafter, the filing number of the earlier application must be provided to the EU IPO. The EUIPO will check the claim. If priority documents are not filed with the application, they will look online and, if they are not available online, they set a deadline for the applicant to provide the necessary proof. This need not be in the form of a certified copy, but should be in one of the official EU languages. The UK IPO does not need applicants to file any proof of the priority application, unless this is called for. With UK applications, you must make the priority claim at the date of filing.

 

Are there restrictions on making a priority claim?

To be a valid priority claim, the trade marks in both cases must be identical. For example, if a logo mark is filed in black and white, or greyscale, and the priority claiming application was filed in colour, then the priority claim is likely to be rejected, unless the differences in colour, or in shades of grey are so insignificant that they would go unnoticed by the average consumer.

 

Word marks should be the same, but a difference in the form of a word mark, for example with one being in uppercase letters and the other in lowercase letters, or a slight difference in punctuation, should not be fatal to a priority claim. The EU Intellectual Property Office gives as examples of allowable claims, POPeye, PopEye, POP-EYE and POP EYE, where the earlier mark was POPEYE.

 

The priority claim will only apply in respect of goods or services that are the same as in the earlier application.

 

For advice on trade marks

For more advice on any aspects of trade mark, or brand protection in the UK, Europe and internationally, please contact James Cornish, European and Chartered Trade Mark Attorney, on 44 (0) 207 831 7929 or email james.cornish@pagewhite.com.


This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis and answer any questions you receive from others about Brexit. Please note that the law may have changed since the date this was first published in December 2016.

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