The concept of the convention and exhibition priority of trademarks

Keywords: intellectual property, means of individualization, exclusive rights, trademark, legal protection of a trademark, filing an application for a trademark, registration of a trademark, priority of a trademark, convention priority, exhibition priority, international registration of a trademark

Trademarks are developed and registered by entrepreneurs in order to individualize their goods and services, to "consolidate" and enhance the recognition of their brand among consumers, and to protect against unfair competition. An applicant acquires exclusive rights to a designation as from the moment of registration of the trademark only. However, not only the date of registration is important, but also the priority date of the trademark.

In accordance with Art. 1494 of the RF Civil Code, "The priority of a trademark is established based on the date of filing an application for a trademark with the federal executive authority for intellectual property." Why is the priority so important? In accordance with Art. 1483 of the RF Civil Code, "Designations may not be registered as trademarks if they are identical or confusingly similar to the trademarks of other persons which were submitted for registration (Article 1492) in relation to homogeneous goods and those having an earlier priority if the application for the state registration of the trademark has not been withdrawn, has not been recognized withdrawn or no decision has been taken on its refusal in the state registration."

In such a manner, the date of filing an application for a trademark is of critical importance, it fixes the priority: if any third party after such a date applies for an identical/similar mark in respect of homogeneous goods or services, its registration will be refused.

Accordingly, the "priority" can be understood as the preferential right to register a trademark regarding other applicants of the identical or confusingly similar designation for homogeneous goods and (or) services.

Trademarks have a territorial principle of protection: the protection of a trademark (which presupposes, first of all, the ability to suppress its illegal use by third parties without the rightholder’s permit) applies in the territories of those states only, where such a mark is registered. When an applicant submits an application in one country and for some reason cannot simultaneously apply in another country where he needs protection, there is a risk that an unfair third party will "track" this moment and file an application in this second country securing for itself the priority right in such a manner.

In this respect, the provisions of Art. 1495 of the RF Civil Code ("Convention and Exhibition Priority of a Trademark") are important; this Article establishes that "... The priority of a trademark may be established by the date of filing the first application for a trademark in a Member State of the Paris Convention for the Protection of Industrial Property (convention priority), if the application for a trademark is filed with the federal executive authority for intellectual property during six months as from the date indicated." - this is the so-called "convention priority." It means the "priority based on the norms of the Paris Convention for the Protection of Industrial Property". There is also the "exhibition priority": "The priority of a trademark placed on the exhibits of official or officially recognized international exhibitions organized in the territory of one of the member states of the Paris Convention for the Protection of Industrial Property may be established by the date of the beginning of open display of the exhibit at the exhibition (exhibition priority ), if the application for the trademark is filed with the federal executive authority for intellectual property during six months as from the said date."

In addition, the priority of a trademark may be established by the date of the international registration of a trademark in accordance with international treaties of the Russian Federation.

In accordance with the requirements of the law, an applicant wishing to use the right to convention or exhibition priority must indicate this when submitting an application for a trademark or during two months as from the date of its submitting with the federal executive agency for intellectual property and attach the necessary documents confirming the legality of such a requirement, or submit these documents to the specified federal body during three months as from the date of submitting the application.

In accordance with the Rules of Rospatent (Russian Federal Agency for Intellectual Property, Patents and Trademarks) ("Rules for drawing up, filing and examining the documents that are the basis for implementing legally significant actions for the state registration of trademarks, service marks ...", approved by Order #482 of the Ministry of Economic Development of the Russian Federation of July 20, 2015), the decision on granting the priority is fixed in the decision of the formal expert examination: the decision to accept the application for consideration "... contains the information (if any): ... on the possibility of establishing the convention or exhibition priority during the examination period of the mark provided that the documents confirming the validity of the requirement to establishing the convention or exhibition priority are submitted during three months as from the filing date. "

Moreover, in order to request the convention priority, it is necessary to provide a copy of the first application for a trademark filed by the applicant in the Member State of the Paris Convention ("the first application"). Accordingly, it is checked whether the applicant complies with the statutory deadline, within which an application with a request for the convention priority must be submitted, as well as the conformity of the claimed designation and the list of goods for which registration of the trademark is claimed, with the claimed designation and the list of goods contained in the first application. In this case, it may turn out that the list of the goods do not contain some of the goods specified in the first application. If the applicant does not comply with at least one of these requirements, the priority of the trademark is established "by default" - in accordance with Article 1494 of the Code.

When requesting the exhibition priority, "... presence of the documentary evidence of the legitimacy of requesting the exhibition priority in the application documents" is checked. Similarly, compliance with deadlines is checked. It is also important that Rospatent verifies compliance of the claimed designation with "... a designation placed on the exhibits of official or officially recognized international exhibitions organized in the territory of one of the member states of the Paris Convention." As a rule, in order to receive the necessary document, you can contact the exhibition organizer with a request to provide an official letter indicating the required details, which not only confirms participation in the exhibition, but also contains accurate information about the applicant and the exhibited goods: the name of the person exhibiting the goods, the list of those goods, which were marked with this designation, and the date of the open display of the goods at the exhibition. Such a document must confirm the status of the exhibition as an official or officially recognized international one, and the fact that the exhibition is organized in the territory of the member state of the Paris Convention.

In such a manner, the exhibition and convention priority are two special cases of establishing the priority of a trademark. In both of these cases, the priority is set by an earlier date than "by default" - by the date of filing the application. At the same time, it should be noted that the convention priority must necessarily be provided by a registration authority, if the applicant has met all the requirements. However, the provision of the exhibition priority is not mandatory under the Paris Convention.

Besides, it should be remembered that simultaneous demand for the convention and exhibition priority is impossible: the applicant has the right to choose – it can ask to establish either the convention or exhibition priority.