Priority right (trademarks and designs)

The priority right allows the applicant for a trade mark or a design to backdate its later filings abroad to the date of its first filing, for a period of six months. It stems from Article 4 of the Paris Convention for the Protection of Industrial Property and is reflected in national laws and in the EU regulations. For patents, the priority period is twelve months. The priority right is the central instrument of any international extension strategy.

Conditions

The first filing must be regular, that is, sufficient to establish a filing date in a country of the Paris Union or a member of the World Trade Organization. The later filing must concern the same sign or the same design and, for trade marks, goods or services covered by the first filing. Priority must be claimed at the time of the later filing, with a copy of the initial filing produced within the time limits set by each office.

Effects

During the six-month period, filings made by third parties and disclosures that occur cannot be raised against the applicant. For a trade mark, this means that a competing filing made abroad in the meantime is later in law. For a design, novelty and individual character are assessed at the priority date, which neutralises disclosures occurring in between. An exhibition priority may also be claimed for designs shown at certain international exhibitions.

Key points

In practice, the applicant has six months after its first filing to decide in which countries it wishes to be protected, through national filings, an EU trade mark or an international trade mark. That period is short and should be anticipated from the design of the sign or product. The firm advises on these strategies and acts in disputes where the validity of a priority claim is challenged, as part of its intellectual property practice.