Priority Trademark Application In India – All You Need To Know

Priority Trademark Application In India – All You Need To Know

The Paris Convention for the Protection of Industrial Property that was signed in Paris pertains to industrial property in a broad sense including trademarks, patents, trade names and geographical indications amongst others. The Convention predominantly deals with three categories namely national treatment, right of priority and common rules and India became party to the convention in 1998.

One of the predominant features of the Convention was the right of priority which was made available to patents, trademarks as well as industrial designs. With specific reference to trademarks, if an application is filed in any one of the contracting states of the Convention, then the Applicant may within a period of 6 months apply for protection in any of the remaining contracting states. Such subsequent applications filed with the contracting states shall be considered as if they have been filed on the same day as the foremost application. Such right granted to the contracting states is defined as “right of priority”.

It is pertinent to note that the subsequent applications filed with the other contracting states, although are based on the prior application, will be dealt with as separate applications for the sake of trademark prosecution in the corresponding filing countries.

Furthermore, one of the key advantages of the priority trademark applications is that Applicants who require protection of a mark in several countries need not file multiple applications with respect to each of the countries at the same time.  During the pendency of the six months of filing the foremost application, an Applicant has the time to determine the countries in which he seeks protection and thereafter file priority applications in the corresponding countries.

Another feature of priority applications is that the registration of a mark obtained in any of the contracting states is independent of the registration in any other state including the country of origin. The trademark prosecution is determined by the domestic law of each contracting state, and not by the Paris Convention. Accordingly, no contracting state shall be refused registration or renewal on the ground that the same has not been effected in either the country of origin or any other contracting state.

In the event use of a registered mark is made compulsory in any of the contracting states, then such registration cannot be cancelled for non-use until completion of a reasonable period of time and further if the owner fails to justify such inaction.

Convention or priority applications therefore have numerous benefits as enlisted above. Section 154 of the Trade Marks Act, 1999 encapsulates specific provisions with respect to applications for registration from citizens of convention countries. The provision lays down that if an application is filed for the registration of trademark in any of the convention countries and subsequently in India within six months from the date of the first application, then the said mark if registered, shall be deemed to have been filed as of the date on which the application was made in the convention country.

With the coming in of the Trademark Rules, 2017, the forms with respect to priority trademark filings have also been considerably modified. Accordingly, now in order to file a priority trademark application, the Applicant needs to file an application on Form TM – A. An applicant can either file single class or multi class convention applications based on the priority trademark application. Furthermore, convention application can also be file with respect to series, collective or certification marks as seen below.

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With reference to the documents required for filing a priority application in India, the Applicant at the time of filing would have to submit a certified copy of the priority trademark application. Such certified copy should include the particulars of the trademark, the country or countries and the date or dates of filing of application and such other relevant particulars. There is however, a provision for the late submission of documents wherein the Applicant can within two months from the date of filing the application, submit the corresponding priority document and/or the POA with the Trade Marks Registry.  Additionally, the application shall include a statement indicating the date of the filing in the convention application, the name of the convention country where it was filed, the serial number, if any along with a statement indicating that such priority is claimed.

While the Paris convention enables us to claim priority from a convention country, its other fundamental aim is national treatment to all the contracting members. Such national treatment renders equal treatment to applications from member countries and does not differentiate between nationals of member countries solely aiming at the grant and protection of industrial property. In conclusion, registration of  trademark through the Paris Convention envisages numerous perks as mentioned.

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