Have you ever queued up for hours in the sun at a theme park, only to ride your favorite roller coaster for a mere three minutes? Well, our smart and affluent readers may be interested in spending a little extra cash to secure a quick pass and skip the “build-up” of fun!
Good News! Quick Pass is in fact also available in the Theme Park of Trademarks, and we call it claiming trademark priority. So what is trademark priority? What are the benefits of a trademark priority claim? Let’s explore more on these interesting topics relating to trademark priority.
To understand the system of trademark priority, Paris Convention in 1883, an international agreement governing intellectual property rights, is the first thing to know. One of the key provisions of the Paris Convention is indeed the introduction of concept of trademark priority, if you own a trademark and you apply for it in your home country, you can use that trademark priority date to apply for it in other countries too. Let us adopt the following scenario (“John Scenario”) to summarize the game rules.
Imagine this: on 1 February 2022 (the “priority date of the trademark”), John files a trademark application for “ABC” in classes 3 and 35 in the United States (the “Parent Application”). Within the next 6 months (i.e. before 31 July 2022), if John files the same “ABC” trademark application with the same set of specifications in India on, say, 15 July 2022 (the “New Application”), John can then claim the application date of the New Application as 1 February 2022 (not 15 July 2022), identical to the Parent Application. This means John gets to skip the line in India, which sounds pretty amazing!
Technical Pre-Requisites for Claiming Trademark Priority
Claiming trademark priority through Paris Convention can be an advantageous strategy for obtaining better global trademark filings at a relatively low cost, typically ranging from US$100 to US$300 per mark per class. However, it is essential to address certain technicalities before claiming trademark priority::-
- Both the Parent Application and the New Application must be filed in a Paris Convention country or a World Trade Organization member country. In John’s Scenario, the United States and India both qualify for this requirement, as are many other major countries.
- The trademark must be identical in both the Parent Application and New Application. If John asks his designer to improve or modify the design of his “ABC” mark after filing the Parent Application and insists on filing the slightly adjusted “ABC” trademark in India on 15 July 2022, then he cannot rely on the Parent Application to claim trademark priority.
- Similarly, the specifications of the New Application must be either identical or more restricted than those of the Parent Application. If John expands his business subsequent to the Parent Application, and would like to file a new class 5 trademark application, or add some new items in class 3 trademark application, then he cannot rely on the Parent Application to claim priority via Paris Convention.
Trademark Priority System Imposes a Significant Limitation on Pre-Application Search
As previously discussed, achieving 100% accuracy with the pre-application trademark searches is not possible nor feasible, and the trademark priority system is the main culprit. (Shall I conduct a Pre-Application Trademark Search?)
Let us go back to the John Scenario. Tracy would like to apply for “ABC” trademark application in class 3 in India and commissions the services of Jenny, the top trademark lawyer in India, to conduct a pre-application search on June 30, 2022. The search result does not reveal any earlier mark, and Tracy happily instructs Jenny to file the “ABC” trademark on 4 July 2022 accordingly. However, when John files his New Application on 15 July 2022 claiming trademark priority on the Parent Application, the application date of the New Application jumps back to 1 February 2022, leapfrogging Tracy’s trademark application. Had John not claimed priority and enjoyed a priority date of his trademark in India, Tracy’s application would have received an earlier application date than John’s New Application.
To be fair, it is nothing to do with Jenny’s expertise. On 30 June 2022, the New Application is not yet filed, making it impossible for Jenny to predict that a third-party file a trademark (claiming trademark priority by Paris convention) after her search on that date.
Paris Convention Trademark Priority as a Strategy for Contentious Matters
Best trademark attorneys are always in the habit of leveraging your global trademark portfolio and commercial interests to gain bargaining chips for the negotiation with adverse parties. To your surprise, claiming convention priority could well become a game-changer in such situations.
In fact, you don’t need to be a rocket scientist to employ these strategies. Let’s revisit the John and Tracy Scenario again. Supposing that John and Tracy have been involved in contentious matters outside of India for a significant period of time before filing their Indian trademark applications. By putting yourself in John’s position and consider how John take advantages of a trademark priority date, you may be able to learn a few tricks from John that may prove useful.
Now, you will understand more about what is trademark priority and the benefits of a trademark priority claim. The Paris Convention Priority System can be a useful strategy in contentious trademark matters. By taking advantage of the concept of trademark priority and other legal tools, trademark attorneys may secure favorable and better outcomes for their clients. During your journey in the theme park of trademarks, you should always play chess with three to five moves deep. Don’t forget the beauty of the quick pass and engaging Trasomark or other trademark specialists will certainly pay off.
