On your Marks. Get set. Go! | Trademarks first to file

Photo by Jonathan Chng on Unsplash

Timing is everything.  However, when assessing ownership of a trademark, it can depend on what you have done and where you did it.

Trademarks are territorial rights and governed by the laws of the particular territory (country).  Countries have differing systems to determine ownership of a trademark and either rely on a first-to-file system or a first-to-use system.

With a first-to-file system the first trader to file an application to register a mark is considered to be the owner of the trademark rights, even if another trader has used the unregistered trademark in that country before the application date.  However, if a trademark is well-known or famous, a later filed application may prevail.

Putting aside the elite category of well-known trademarks, a first-to-file system literally involves a race to the TradeMarks Office.

The first-to-file system may seem unfair, but it may mean that the TradeMarks Register provides greater certainty for traders.

With a first-to-use system, the first user of a trademark can prevail over an earlier filed trademark application.  A trader may be oblivious to another trader’s prior use so there are exceptions. For example, there is a discretion to register a trademark on the basis of honest concurrent use.

Because information is now so accessible online, it is conceivable, indeed possibly even likely, that a trader may holus-bolus lift another’s brand.  The consequences may be drastic if they register this in a commercially important first-to-file country.

Fortunately a carefully thought out filing strategy for international protection and impeccable timing using the International (Paris) Convention, can ensure that you stay ahead in the race.

Some first-to-file countries

Asia

Cambodia, China, Japan, Indonesia, Philippines, South Korea (and North Korea), Sri Lanka, Taiwan, Thailand and Vietnam

Europe

United Kingdom (although prior use can assist)

European Union (including: Austria, Belarus, Benelux, Croatia, Czech Republic, Estonia, Finland, France, Germany, Greece, Hungary, Italy, Lithuania, Moldova, Montenegro, Poland, Portugal, Romania, Slovenia, Spain, Sweden)

Norway

Eastern Europe / Central Asia

Russian Federation, Ukraine, Kazakhstan, Kyrgyzstan

Middle East

Iran, Syria, Jordan, Kuwait and Qatar

Africa

Algeria, Botswana, Uganda, Zambia and Nigeria

Central/South America

Anguilla, Argentina, Belize, Bolivia, Brazil, Chile, Colombia, Curacao, Dominican Republic, Ecuador, El Salvador, Guatemala, Mexico, Nicaragua, Peru, Venezuela

Some first-to-use countries

Aruba, Australia, Brunei Darussalam, Canada, Costa Rica, Cyprus, Denmark, Fiji, Hong Kong, Iceland, India, Ireland, Israel, Jersey, Kenya, Lebanon, Malawi, Malaysia, Malta, New Zealand, Papua New Guinea, Puerto Rico, Samoa, Singapore, South Africa, Swaziland, Trinidad & Tobago, United States, Uruguay and Zimbabwe.

Further reading
Broadly Speaking - Breadth of Goods and Services Specifications in AU and NZ Trade Marks
Read more
Microorganism Deposits - Extension of Time to File Deposit Refused
Read more