What is a “Convention” or “Priority” claim?

 

When a trade mark is filed for the first time in a Paris Convention member country and the applicant applies for protection in any of the other member countries within six months of the first filing, the subsequent applications will be treated as if they had been filed on the same day as the first application. In other words, the subsequent applications which claim the effective filing date of the first application will have priority over the same mark first used or filed by others during the six-months following the applicant’s first filing.

 

In addition, the protection ultimately afforded by a trade mark registration which claims priority under the Paris Convention will apply retrospectively from the first filing date, rather than the later foreign filing date.

 

Applicants may file trade mark applications in other member countries (or elsewhere) later than six months after the first filing date, but any such applications will not be subject to a valid priority claim.

 

The following diagrams – in which Party A and Party X each file similar trade marks in Paris Convention member countries – show the different situations that may occur in respect of priority applications.

 

Claiming priority under the Paris Convention means that trade mark applicants can defer the cost of filing overseas for up to six months, without losing rights obtained at the first filing date.

 

If you are interested in seeking overseas trade mark protection within the six months following your Australian application – or beyond – please contact Kellie or Geraldine directly, or email [email protected] and we would be pleased to assist.

 

Geraldine Rimmer

Contact Geraldine Rimmer, Senior Associate

Kellie Jukkola

Contact Kellie Jukkola, Associate

 

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