Priority Claim in Trademark Registration

In the realm of international trademark protection, the right of priority is a crucial legal mechanism that helps companies secure their intellectual property across borders. This right is explicitly established under Article 4 of the Paris Convention, which provides:

“Any person who has duly filed an application for a trademark in one of the countries of the Union, or their successor in title, shall enjoy, for the purpose of filing in other countries, a right of priority during the periods hereinafter fixed.”

These right grants applicants a six-month period to file the same trademark in other member states while retaining the original filing date as the effective priority date. Consequently, even if a competitor files an identical or similar mark in another country during this period, the applicant’s filing is still legally considered the earlier one.

Importance of the Right of Priority

The right of priority provides several strategic benefits for businesses:

• Strong international protection: It preserves the priority filing date, ensuring legal precedence over later filings.
• Market expansion security: Companies can expand into multiple countries without the fear of competitors registering first.
• Time for strategic planning: It allows applicants to organize international filings carefully without immediate pressure.

Basic Requirements

To successfully claim priority, applicants must meet the following conditions:

• The first application must be filed in a country that is a member of the Paris Convention.
• Subsequent applications must be filed within six months, with no possibility of extension.
• The trademark application must match the first application.
• A priority document must be submitted according to the requirements of each country.

Recommendations to Avoid Issues

To maximize the benefits of priority rights, companies should:

• Develop an international filing strategy before submitting the first application.
• Track the six-month priority period carefully using a calendar or a docketing system.
• Use the exact same trademark without modifications in subsequent applications.
• Prepare the priority document early to avoid delays or incomplete paperwork.
• Collaborate with an experienced intellectual property firm for international filings.

The right of priority is a key pillar of international trademark protection. It enables companies to secure their filing date and prevent competitors from exploiting any delays in global expansion.

However, improper use of this right can lead to serious legal issues and the potential loss of priority. Therefore, careful planning, a clear understanding of requirements, and awareness of differences among jurisdictions are essential for a successful international trademark strategy.

Written by our Legal Assistant Ms. Tala Alkharouf