What is a  priority claim trademark application?

Priority Claim Trademark Application: Priority is the right given and recognized by the vast majority of countries around the world to the applicant for a trademark filed for the very first time. When filing, for the first time, a specific trademark, i.e. not having applied for the same trademark in any other country or territory, the owner is granted six months from the date of first filing to be able to file in any other country as if the trademark had been filed on the date of the first application (if priority is claimed).

The Paris Convention for the Protection of Industrial Property, which was signed in Paris, concerns industrial property in a broad sense, including trademarks, patents, trade names, and geographical indications, among others. The Convention deals mainly with three categories, namely national treatment, the right of priority, and common rules, and India became a party to the Convention in 1998.

One of the main features of the Convention was the right of priority granted to patents, trademarks, and industrial designs. With particular reference to trademarks, if an application is filed in any of the Contracting States of the Convention, the applicant may apply for protection in any of the remaining Contracting States within six months. Such subsequent applications filed with the Contracting States shall be considered as having been filed on the same day as the earlier application. Such a right granted to the Contracting States shall be defined as a right of priority.

It is appropriate to note that the subsequent applications filed with the other Contracting States, although based on the prior application, will be treated as separate applications for the prosecution of trademarks in the corresponding filing countries.

Also, one of the key advantages of a  priority claim trademark application is that applicants requiring protection of a trademark in several countries do not need to file multiple applications concerning each country at the same time. During the six months of the filing of the first application, the applicant has the time to determine the countries in which it seeks protection and then to file priority applications in the relevant countries.

Another feature of the priority claim trademark application is that the registration of a trademark obtained in any of the Contracting States is independent of registration in any other State, including the country of origin. The prosecution of trademarks shall be determined by the domestic law of each Contracting State and not by the Paris Convention. Consequently, no Contracting State may refuse registration or renewal on the ground that the same has not been effected in either the country of origin or any other Contracting State.

If the use of a registered trademark is made compulsory in any of the Contracting States, such registration may not be canceled for non-use until the end of a reasonable period and if the owner fails to justify such inaction.

Accordingly, the Convention or a  priority claim trademark application has numerous advantages as set out above. Section 154 of the Trade Marks Act, 1999 contains specific provisions relating to applications for registration from citizens of the countries of the Convention. The provision provides that if an application for registration of a trademark is filed in any of the Convention countries and subsequently in India within six months from the date of the first application, the said trademark if registered, shall be deemed to have been filed as from the date on which the application was made in the Convention country.

With the entry into force of the Trademark Rules in 2017, the forms relating to a  priority claim trademark application filings have also been significantly modified. Consequently, to file a priority trademark application, the applicant must now apply Form TM – A. An applicant may either file applications for a single class convention or a multi-class convention based on a priority trademark application.

About the documents required for filing a priority claim trademark application in India, the applicant would have to submit a certified copy of the priority claim trademark application at the time of filing. Such certified copy should include the particulars of the trademark, the country or countries concerned, and the date or dates of the filing of the application and such other relevant information. There is, however, a provision for late submission of documents where the applicant may submit the corresponding priority document and/or the POA to the Trade Marks Registry within two months from the date of submission of the priority claim trademark application. Also, the application shall include a statement indicating the date of filing of the priority claim trademark application for a convention, the name of the convention country in which it was filed, the serial number, if any, together with a statement stating that such priority is claimed.

While the Paris Convention allows us to claim priority from a convention country, its other fundamental objective is the national treatment of all contracting parties. Such national treatment gives equal treatment to a  priority claim trademark application from the Member States and does not distinguish between nationals of Member States solely to grant and protect industrial property. In conclusion, the registration of a trademark using the Paris Convention envisages several advantages, as indicated above.

For instance:

If you were to file a trademark for the first time in the United Kingdom on 1 January of the year X and then apply for a trademark 4 1⁄2 months later in Germany, you would have two options:

Option 1-NOT claiming priority: an application for a German trademark would then be considered to have been filed on the actual date of filing (15 May of the X year).

Option 2-(YES) Claiming Priority: the application of the German trademark would be considered to have been made on the same date as that of the trademark filed in the United Kingdom. Therefore, although the trademark was filed on 15 May of the year X, it would be considered as if it had been filed 4 1⁄2 months earlier on the same date as the trademark in the United Kingdom, i.e. on 1 January of the year X.