Let’s say your brand is getting hot and you are ready to embark on your expansion journey globally. Your next plan is to register your trademark in overseas.
Alas! You found out that someone filed your trademark before you in overseas when you conducted the trademark searches.
Does this mean you’ve lost your trademark for good? Don’t worry, it’s not the end yet. There are still several ways to re-gain and secure your trademark in overseas. In this article, we will look into the option of priority right for trademark.
What is Right of Priority for Trademark?
Article 4 of the Paris Convention for the Protection of Industrial Property (aka “Paris Convention”) provides that any person who has filed an application for the registration of a trademark, in one of the countries of the Union shall enjoy a right of priority within 6 months from the date of filing of the first application, for the purpose of filing in the other countries.
The good news is, Malaysia is one of the 179 contracting parties for Paris Convention! This means Malaysians enjoy priority right on their trademark within 6 months from the first filing date! The 6 months period is also known as Priority Period.
How Does a Priority Right Work? Claim it Within 6 months!
Assuming that you filed your trademark application in Malaysia on 1 January 2022, you will enjoy priority right if you file your trademark in any of the Paris Convention’s contracting parties before 1 July 2022.
In this case, your Malaysian filing date is known as Priority Date; and your Malaysian trademark application will become your Priority Application, provided that it is your first application.
Let’s say a bad guy applied to register your trademark in Singapore on 1 March 2022 and you only submitted your trademark application Singapore on 1 April 2022, your application will take priority over the bad guy’s application even though you filed one month later than his. We should thank this to your earlier Malaysian Priority Date of 1 January 2022.
How to Claim Priority Right?
It is important to note that Priority Right does not follow automatically when you file your trademark application in Singapore or other countries. This is because the other Government Trademark Office would not know that you have an earlier trademark application in Malaysia.
Therefore, it is mandatory for you, as the applicant to declare the Priority Application in Malaysia at the point of filing the trademark application in Singapore.
The process of claiming priority right for trademark is usually not complicated. The applicant is only required to provide basic information of the Priority Application, such as,
Trademark Application Number
Filing Date
Country
Some of the countries may require more information or documents, such as requesting the Trademark Office of the Priority Application to issue a certified priority document, translation of the priority document & etc.
Hence, it is not advisable to only file the trademark application in overseas at the eleventh hour of the Priority Period because your Trademark Agent may need time to prepare for the priority claim.
Ending
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Written by,
Registered Trademark, Patent and Design Agent
LL.B (HONS), CLP
Advocate & Solicitor (Non-Practising)
Disclaimer: The above information is merely for general sharing and does not constitute any legal advice. Readers are advised to seek individual advice from professionals.
© 2022 by IP Gennesis Sdn Bhd.