Knowledge

Trade Marks

What is a priority claim?

Max Steinhausen

Article 4 of the Paris Convention for the Protection of Industrial Property allows applicants to file trade mark applications overseas with the same priority date as the country they filed their first trade mark in. This is called a priority claim. For example, if you filed your trade mark in Australia on 1 July, you will be able to file the same trade mark in China in December the same year with a priority date of 1 July.

What is the specified time period for a priority claim?

For a valid priority claim, the applicant must file a trade mark overseas within six (6) months of the date of the initial trade mark application. If you exceed this time period, you forfeit the right to claim priority. Consequently, if you file your overseas applications after the six months, the priority date of these applications will be the date they are filed. Hence, it is generally recommended to file all international trade mark applications within six months of your first trade mark application.

What are the benefits of claiming priority?

  • If you file your trade mark in your country and within 6 months in a different country, you can rely on the priority date of your first application.
  • If a third party files a trade mark that is similar to yours in another country, you can still register your trade mark in that country, provided you can claim an earlier priority date from your first application.
  • Claiming priority hinders brand squatters to get ahead of you and steal your brand in another country.
  • Claiming priority means that you can file your trade mark overseas over the course of six months rather than in all countries at once, preserving valuable cash-flow.

What are the requirements for a valid priority claim?

  • Some trade mark offices accept a priority claim on face value, however some others require a certified copy of your first trade mark application. You may also need to translate or notarise the priority documents.
  • You must include the priority claim when filing your trade mark applications overseas. A priority claim cannot be added later on.
  • The overseas trade mark application must be identical to the initial one. Specifically, the appearance, goods and services and owner must all be the same.
  • The overseas trade mark application must be filed within six (6) months of the first application.

If you have any questions or wish to discuss your options to register your trade mark overseas, please do not hesitate to contact us.

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