Apply early and lock in your trademark priority date

20 September 2010

IMG: Priority DateWhen you file an application to register a trade mark, the date on which you do so which can have a significant impact on your rights in relation to other trademark users. As a general rule, the earlier that you file your trade mark application the better. This is especially true in fast growing industries where trade mark applications are being filed frequently.

1. Avoid problems with registering your trademark

The filing of your trademark application establishes a “priority date”. Once your trademark application is filed, it is reviewed by a trademark examiner. If the examiner rejects your application, he or she will issue an “Adverse Report” explaining the reasons for the rejection.

One common reason for refusing trademark applications is that the trade mark “is substantially identical with, or deceptively similar to” another pending or registered trademark which claims protection in relation to similar goods or services. The other trademark (which is often referred to as a “conflicting mark”) can only be cited against your application if it has an earlier priority date than yours.

“As a general rule, the earlier that you file your trade mark application the better.”

If a conflicting mark with an earlier priority date is cited against your application, you have a number of options. For example, you might make submissions that the trademark is not “substantially identical” or “deceptively similar”, or that it is registered in relation to different goods or services. You might try to have the conflicting mark removed from the register on the basis of “non-use”. There are other options, but none are usually easy, and they can be quite expensive. If you cannot convince the Examiner to remove his or her rejection, you will not be able to have your trademark registered.

Therefore, making sure that you file your trademark application as early as possible minimises the risk that other traders will jump ahead of your in the queue, possibly preventing you from having your trademark registered.

2. Make it difficult for others to register similar trademarks

On the flip side of the coin, if you are ahead of other traders in the “queue”, then your trademark is likely to be cited against their applications for registration. These other traders can be prevented from registering similar trademarks either by having their applications refused by IP Australia (i.e. without you having to do anything), or after you formally “oppose” the registration of these trademarks.

Filing your trademark application earlier means that your competitors need to justify why their trademarks should be registered in spite of yours, and not vice versa.

3. Enforce your registered rights against other traders

If your trademark is actually registered (months, and possibly years after you first file your application), the registration takes effect from the priority date and not the date upon which it is accepted for registration.

If you encounter competitors who are using similar trademarks, you might need to take legal action against for infringing your registered trademark. The earlier that your trademark is registered the fewer defences these other traders are likely to have in relation to your legal proceedings. This makes it more likely that you will obtain a successful outcome.