As we have mentioned multiple times before, trademark law is territorial. As a consequence, the protection of a trademark must be seek in each country or region of interest.
Additionally, most countries adopt the “first to file”principle for the registration of trademarks. This means that the person that first files an application for trademark protection, gets the priority over it.
All the above mentioned would normally mean that if you want to register your trademark in multiple countries, you should proceed with all filings as soon as possible. However, the Paris Convention has established an option called the “right to priority”.
The Paris Convention for the protection of trademarks
The Paris Convention is an industrial property treaty that was signed by 177 countries in the world. In its section 4, the Convention establishes that anyone who has filed a trademark application in one of the countries members shall enjoy a right of priority during a period of six months.
This means that if you have filed a trademark application in a country member of the Convention, you have six months to file the same application in another country member. The advantage is that when you claim priority the second office consideres it filed the date of the first application.
The right to claim the priority right for trademark registration
The right to claim priority allows for a legal fiction to take place. Thus, if you file an application for trademark registration in one country member of the Paris convention you then have six months to file the same application in other countries member of the convention. The second filing will be considered made the same date of the first filing. The office that issues the certificate is the one where you first filed the application. For example, if you file an application in Mexico the 22nd of July you then have six months to file the same application in other members of the convention. Therefore, if you file a second application in Brazil claiming the priority right on the application of Mexico, the INPI in Brazil consideres it filed the 22nd of July, for examination purposes.
Which formalities shall I comply with?
The formalities in order to file an application claiming priority will vary depending on each office’s requirements. For instance, some office will require a translation, legalization and/or apostille of the certificate. You can contact us to find out which formalities you need to comply with.
Is it worthy to claim the priority right for trademark registration?
This will vary, depending on the countries of application and whether anyone files a trademark between the date of the first application and the date of the real application that may collied with yours. Therefore, if within the six months period anyone files a trademark that may impede the registration of yours, then a possibility is to claim the priority. Take into account that claiming the priority may carry time and cost expenses, so not in all cases is worth to do. We suggest to make the decision considering each case individually, with professional advice.
The right to claim priority gives a very good alternative when the filing of a trademark in multiple countries at the same time is complicated or too expensive. Therefore, within a period of six months, you can make a decision on which other countries to protect the trademark and proceed accordingly. If you wish to get professional advice on whether to file multiple applications or claim priority, contact us.