Why Are Trade Mark Priority Dates Important?
George Raptis
When you begin drafting your trade mark application, you will probably see unfamiliar terms like ‘priority date’. It is essential to understand what a priority date is, whether you register your trade mark nationally or internationally. A trade mark priority date is the date that you filed your trade mark application with IP Australia. This article outlines why priority dates are essential when a trade mark dispute arises.
Trade Mark Priority Date
Put simply, a trade mark priority date is the date that you filed your trade mark application with IP Australia. This means that IP Australia will prioritise your application over others that are filed after this date. For instance, if you file for a trade mark in September and someone files a similar mark in December, you will take priority. Consequently, IP Australia is more likely to reject your competitor’s later application. Similarly, IP Australia can reject your trade mark application that has a later priority date if it is similar or identical to a trade mark application with an earlier priority date.
Note: your trade mark priority date is separate from the date IP Australia accepts your application for registration. For example, if IP Australia approved your application in September that you filed earlier in March, the priority date for your application would be March. From your priority date to your registration date, you cannot enforce your exclusive rights to your mark. You can only enforce your rights from your priority date after your mark has been registered.
Facing Rejection From IP Australia
Under the Trade Marks Act, IP Australia can reject your trade mark application if it is substantially identical or deceptively similar to a trade mark application with an earlier priority date.
To determine whether the marks are substantially identical, IP Australia will make a side-by-side comparison of both marks. Even if the marks are not identical, they may still be deceptively similar. Here, IP Australia determines whether someone of ordinary intelligence and memory would be deceived by the impressions from either mark. Priority dates can largely determine whether IP Australia approves or accepts your application.
If your application has a later priority date, you can still provide a declaration to prevent rejection. To do this, you must show evidence that you:
- have continuously used your mark before you filed your trade mark application in respect to similar goods and services identified in your application;
- used the mark alongside the similar or identical trade mark but did so honestly; or
- are under other circumstances that may persuade IP Australia not to reject your application.
In these instances, you should consult an experienced trade mark attorney. A trade mark attorney can provide you with realistic advice regarding the strength of your case. They can also assist you in the drafting and submission of your declaration.
Claiming Priority Rights for an International Trade Mark
The priority date of your Australian trade mark can also determine the priority date of your international trade mark application. Under the Paris Convention, you can claim the same priority date for your international trade mark if you file your application within six months.
For example: say your priority date for your Australian trade mark application is 1 January 2021. If you apply for an international trade mark before 1 July 2021, you can claim the earlier priority date.
You should file your application for an international trade mark as early as possible. This is so IP Australia prioritises your international trade mark over applications with a later priority date.
If you do not apply for an international trade mark within six months, you can still file for a trade mark. However, you cannot claim your earlier filing date. Instead, the filing date of your international trade mark application will be when you filed your international application. For example, suppose you applied for your international trade mark on 1 July 2021, more than six months after your Australian trade mark. In that case, the priority date for your international mark will also be 1 July 2021.
Key Takeaways
A trade mark priority date is the date that you filed your trade mark application with IP Australia. Your trade mark priority date can be very significant in the outcome of a trade mark dispute. If you have an earlier priority date, IP Australia will generally prioritise your application over any later trade mark application which may be identical or similar to your mark. On the other hand, if you file your application after a trade mark that is similar to yours, IP Australia can reject your application. If you have any questions about the importance of your priority date for your trade mark application, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
The Paris Convention for the Protection of Industrial Property is an international treaty signed by various nations. All 190 countries who are a signatory to the Convention have promised to give the same protection to both their national trade mark owners and international trade mark owners.
Intellectual property rights are held by persons over their creations. For example, a trade mark owner enjoys the right to use, licence and sell their mark to the exclusion of all others.