Lexicon > Priority period
IP Lexicon@ET-DC@eyJkeW5hbWljIjp0cnVlLCJjb250ZW50IjoicG9zdF90aXRsZSIsInNldHRpbmdzIjp7ImJlZm9yZSI6IiIsImFmdGVyIjoiIn19@
The right of priority is based on Article 4 of the Paris Union Convention of March 20, 1883, which brings together several member states and to which France is a party.
This is a legal mechanism that allows the owner of a regular filing of an industrial property right (trademark, design, patent, utility patent) to extend its protection to other territories at a later date while benefiting retroactively from the date of the original filing .
Thus, any third party rights arising from filings made in the meantime will not be enforceable against the owner of the filing made under priority.
The right of priority is subject to the following conditions:
- The time limit, known as the ” priority time limit”: in the case of trademarks and designs, in order to benefit from the right of priority, the subsequent filing(s) must be made within 6 months of the original filing.
After this period, applications for extension abroad are still possible, but they will only be effective from the date of filing or registration, depending on the law applicable in the designated state.
- The identity of the subject matter of the filing: in order to benefit from the right of priority, the subsequent filing must relate to the same subject matter (trademark and good(s) and/or service(s), or designs) as the initial filing.
In practice, it is possible to make subsequent filings that are broader than the initial filing, in that they cover more good(s) and/or service(s) (in the case of trademarks).
In this case, the right of priority can only be claimed in part, on the part of the subsequent filing that actually corresponds to the initial filing.
- Filing formalities: in order to benefit from the right of priority, the initial filing must be duly made with a competent Office and the holder must expressly claim priority over it in the context of subsequent filing(s).
This system is a great asset for rights holders who plan to expand their business abroad in the short or medium term.
In fact, in particular in the area of trademarks, by virtue of the principle of territoriality, the protection granted to a trademark is strictly limited to the country in which it is registered, even if its use would cover other territories.
For entities with an international activity, or even a local activity with prospects of expansion abroad, this implies having to proceed with several trademark applications to cover all the countries concerned, with each territory benefiting from its own registration procedure of varying length (examination of the application, publication of the application, opening of the opposition from third parties etc…).
However, the priority period allows the holder of the trademark to build a strategy of filing in several stages, starting with a first filing in its territory of priority interest (for example, if it is France or the European Union, make a first filing with the INPI or the EUIPO), and then to take advantage of the 6-month period to, in a second step, extend its trademark abroad with the claim of priority of the original filing.
This multi-step strategy has many advantages, including
- In most cases, it ensures that the initial filing is not subject to a refusal of registration issued by the competent Office, or to an action by third parties holding prior rights (opposition, invalidity action , for example).
In fact, subject to the processing times of the various Trademark Offices, it is possible, depending on the case, to obtain the registration of a trademark within 6 months.
This is the case for France (INPI) or the European Union (EUIPO) in the absence of opposition from third parties or notification of irregularity from the Offices.
- Determine precisely the relevant territories for trademark extension abroad.
In the reality of a company’s business life, it is often difficult to anticipate from the beginning of the activity what the precise territories of a future use will be.
Also, the 6-month priority period allows the company to have additional time for this purpose.
- To define and plan the budget necessary for the extension of the company’s activity, and therefore the trademark, abroad.
Point of law
Article L.712-12 of the french Intellectual Property Code specifies that the right of priority is subject to a principle of reciprocity:
“The right of priority provided for in Article 4 of the Paris Convention for the Protection of Industrial Property shall be extended to any mark previously registered in a foreign country.
Subject to the provisions of international conventions to which France is a party, the right of priority shall be subject to the recognition by the said country of the same right at the time of the filing of French trademarks.”
Thus, in France, the right of priority is only recognized for prior filings made in territories that are members of the Paris Union or that recognize the same right for French filings.
The Bouchara firm assists you in particular in :
- Prior art search prior to any trademark application;
- The filing of your intellectual property titles (trademarks, designs,etc.);
- The strategy for extending your rights internationally;
- Management of your rights portfolios.
