Why Are Priority Dates Important For International Trade Marks?
George Raptis
When registering your trade mark internationally, your trade mark priority date is a critical factor. A trade mark priority date is when you filed your trade mark application with IP Australia. Consequently, IP Australia will prioritise your application over others they receive after your priority date. Since the priority date of your Australian trade mark application can determine the priority date of your International trade mark application, you must understand how priority dates can affect the outcome of your application. This article explains how priority dates work in Australia and what this means for your international trade mark application.
What Are Priority Dates?
As explained above, a priority date is when you file your trade mark application. If IP Australia receives subsequent trade mark applications identical or deceptively similar to yours, IP Australia is likely to knock them back. This is because IP Australia will prioritise your application over others where applicants filed their applications after your priority date.
Say you file your trade mark application in January 2022. However, a competitor attempts to file a similar trade mark later in March 2022. In this instance, your application will take priority since it was filed months prior. Consequently, IP Australia is more likely to reject your competitor’s later application.
Importantly, you should note that your trade mark priority date is not the same as the date IP Australia registers your trade mark. If IP Australia decides to register your trade mark, the registration date is backdated to the priority filing date. Consequently, you can enforce your exclusive rights under the Trade Marks Act from the priority date.
Can I Claim Priority Rights for an International Trade Mark?
The Paris Convention is an international treaty where each of the 178 member countries agrees that each country will grant the same protection to trade mark registration as any other member country. For instance, if an Australian business files for a trade mark in France, then the business should receive the same trade mark protection as a French business.
Under the Paris Convention, the priority date of your Australian trade mark can also determine the priority date of your International trade mark application. If you apply for an International trade mark within six months of your Australian trade mark priority date, you can claim the same priority date for your International trade mark.
For example, say the priority date for your Australian trade mark application is 1 January 2021. If you applied for a trade mark in a member country before 1 July 2021, you can claim 1 January 2021 as the priority date for your international trade mark application.
The benefit of an earlier convention priority date is that your international trade mark application will compare to fewer pending or registered trademarks. In this sense, it might be in your business’s best interests to apply for an international trade mark soon after you apply in Australia.
What if I Register An International Trade Mark Six Months After My Priority Date?
If you do not apply with the Paris Convention within six months of your Australian priority date, you can still apply for your international trade mark. However, you will not be able to claim your earlier priority date. Instead, each international application will be treated as filed on its actual filing date rather than the priority date of an earlier application.
For example, say the priority date for your Australian trade mark application is 1 January 2021. After one year, you file your international trade mark on 1 January 2022. In this instance, your priority date for the international trade mark will be 1 January 2022.
If you have just filed your Australian trade mark application, it is a good time to start thinking about registering your trade mark internationally. Ultimately, timing can be critical when the prospects of filing a successful application are small.
Some Important Considerations
You should note that claiming an earlier priority date does not guarantee the success of your international trade mark application. Ultimately, the relevant IP office in the relevant member country must assess each application.
To this end, trade mark availability and registration in Australia do not guarantee availability or registration in another country, even with the benefit of the priority period. For this reason, it is also worth completing trade mark searches in the member country you are applying in to check whether your trade mark is available.
Additionally, you should note that IP Australia will take at least three to four months to assess your application. Hence, some businesses wait until IP Australia has approved the trade mark before filing their international application within the six-month window.
Key Takeaways
A priority date is the date you filed your trade mark application. This means that if IP Australia receives a subsequent trade mark application that is identical or deceptively similar to yours, it will likely knock this later application back. Under the Paris Convention, you can claim the same priority date for your international trade mark if you apply within six months of your Australian priority date. Having an earlier convention priority date means your international trade mark application will compare to fewer pending or registered trademarks.
If you need help with filing a trade mark application, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
A priority date is the date you filed your trade mark application. A trade mark priority date is different from the date IP Australia registers your trade mark.
The Paris Convention is a treaty between 178 member countries. Each country agrees to grant the same protection to trade mark registration as any other member country.