If you’ve just started your Australian trade mark process and filed the application, it’s a good time to start thinking about registering your trade mark internationally. Where a trade mark’s availability could be a concern, timing is critical 

You can file your international trade mark at any time, including even before you have a registered an Australian trade mark. There are, however, benefits to filing your international trade mark application sooner rather than later.

The Paris Convention and Convention Priority

175 countries have adopted the international treaty called the Paris Convention for the Protection of Industrial Property. Convention priority means that if you file a trade mark application within six months of filing an application in one of the convention countries, your subsequent applications are considered filed on the first application date (known as the priority date), instead of the physical filing date of each subsequent application.

What is a Priority Date?

The priority date is the date on which you filed your trade mark application. It means that your trade mark will have preference over applications that are filed after this priority date. If any subsequent trade marks are considered identical or deceptively similar to yours, IP Australia is likely to knock them back. 

This also means that IP Australia will examine your application against pending or registered trade marks that have an earlier priority date than your application. If your trade mark is considered identical or deceptively similar to these earlier priority trade marks, an objection to your application may be raised.

When your trade mark is finally registered, the registration date is backdated to the priority filing date, and you can enforce the trade mark from that date.

For example, it you lodge your Australian trade mark application on 1 January 2016, your priority date is 1 January 2016. You have until 1 July 2016 (six months) to file an international trade mark application and claim the earlier priority date of 1 January 2016.

If you then file an application for the same trade mark in the United Kingdom on 20 March 2016, your UK filing date will be treated as 1 January 2016 (the same date as your Australian application). If another business has applied for a similar trade mark in the UK on a date after 1 January but before 20 March, your UK application now has a preference.

The benefit of this priority period and the convention priority is that your international trade mark application will compare to fewer pending or registered trade marks, and it narrows the possibility that someone may have applied for a similar trade mark before you.

What if I Want to Register my Trade Mark Internationally After Six Months?

You are still able to apply for your international trade mark after six months. However, you will not be able to claim your earlier priority date. Each international application will be treated as filed on the physical filing date, rather than the priority date of the earliest application.

Using the same previous example and the earlier priority date of 1 January 2016, if you file an international trade mark on 2 July 2016, or any later date, you will not be able to claim priority. Any application filed by another business after 1 January and before 2 July will take preference over yours. Your priority date for your international date will be 2 July.

The Risks Involved

It is important to note that being able to claim an earlier priority date does not guarantee your Australian trade mark application nor does it guarantee success for your international trade mark. The relevant IP office still assesses each application, and you receive notification of the outcome. Trade mark availability and registration in one country does not guarantee availability or registration in another, even with the benefit of the priority period.

Your trade mark may be accepted in Australia, but may not be available in the UK because someone had already registered or applied for the trade mark before your Australian priority date. It is worth you completing searches to check whether your mark is available in other countries.

A six-month window provides you with a good amount of time to budget and plan. If you’ve just lodged your Australian trade mark application, you will know that it will take at least 7.5 months before IP Australia registers your trade mark. This six month priority period means that you will be applying for your international trade mark even before your trade mark is registered. Weigh up the risks involved against your trade mark’s likelihood for success and other commercial factors. Some businesses may wait until IP Australia has approved the trade mark (usually around the 4-5 month mark) before filing the international application.

Just Filed Your Australian Application? Start Planning!

Now is certainly a good time to start considering whether you would like to register your trade mark internationally. Aside from timing, there are a number of other factors involved in deciding your strategy for international trade marks.

Think about where your business is trading and where you would like to trade in the future, your budget, and your business expansion timeframe.

Remember that not all countries have adopted the Paris Convention. If the country you want to register your trade mark in is not part of the Convention, you can still apply for the trade mark, but you won’t have the benefit of the priority period. Questions about trade mark registration? Get in touch with our IP team on 1300 544 755. 

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Dhanu Eliezer

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