Priority of a trademark: types and features

The priority of a trademark is the date that fixes the primacy of the trademark. It plays an important role in the paperwork of the application as part of the examination and in the subsequent use of the trademark.

Thus, in accordance with Article 1494 of the Civil Code of the Russian Federation, “The priority of a trademark is established by the date of filing the application for a trademark with the federal executive body for intellectual property” - i.e. typically, priority is established by the filing date of the application (automatically). It is confirmed by the notification of acceptance and registration of the application. However, it is possible to claim priority earlier than the filing date of the application. The types, features and key points of trademark priorities will be discussed in this article.

Priority for a separated application (clause 2 of Article 1494 of the Civil Code of the Russian Federation)

First of all, it should be noted that an earlier priority can only be established with appropriate documentary evidence, i.e. the priority date must be documented in accordance with established requirements. The priority date is established by the date of the original application from which it is separated. An important criterion is that, on the date of filing of the divisional application, the original application has not been withdrawn or called for withdrawal, and the divisional application has been filed before a decision has been made on the original one. A divisional application is submitted for the same designation as in the original application; the divisional application must not contain similar goods to those remaining in the list of the original application.

As for the allocation procedure, it should be noted that the allocation of an application allows you to “restart” the examination. Thus, for clarity of application of this tool, let us consider the following possible situation as an example: an application was filed for several classes of the ICGS – 14 and 35, and during the examination for class 14 a trademark was opposed due to its confusing similarity (based on clause 6 of Art. .1483 of the Civil Code of the Russian Federation), no obstacles were identified for class 35. The applicant enters into negotiations with the owner of the opposed mark to obtain a letter of consent, but the negotiations are delayed, and the applicant does not have time to complete them before the deadline for responding to the notification (the period for responding to the notification is 6 months from the date of the notification, its extension is not provided). In this case, you can use the selection option - submit a separate application for the “problematic” class 14, and for class 35 continue office work within the framework of the initial application and continue registering the mark. For grade 14, the examination begins again within the framework of the allocated application, i.e. it "restarts". These actions will allow you to maintain priority, because it will be established by the date of the initial application, complete negotiations with the required amount of time, and having received a letter of consent to continue the paperwork and register the trademark in class 14, while in another class, the paperwork will continue within the framework of the initial application and as a result the applicant will receive two trademarks sign for classes 14 and 35 with the same priority.

It should be noted that it is very important to maintain priority, since applications are submitted to Rospatent every day and there is a risk that an application for a confusingly similar trademark may be filed.

Conventional priority of a trademark (clause 1 of Article 1495 of the Civil Code of the Russian Federation)

As follows from the provisions of this article, “The priority of a trademark can be established by the date of filing the first application for a trademark in a state party to the Paris Convention for the Protection of Industrial Property (convention priority), if the application for a trademark is filed with the federal executive body for intellectual property property within six months from the specified date."

In this case, it is necessary to document the priority date - attach the corresponding document (a copy of the first application filed in a state party to the Paris Convention for the Protection of Industrial Property). Documents can be attached to the application both upon filing and within three months from the date of filing the application.

After the applicant declares his desire to take advantage of the convention priority, the Office will begin checking compliance with legally established deadlines and documents, as well as compliance with the declared designation (must be identical to the first application) and the list of goods/services (the list must be either exactly the same as in the first application or narrower, the list cannot be expanded).

If these conditions are not met, then the establishment of conventional priority will be refused, priority will be established by the date of filing the application. In this regard, it is very important to approach this procedure competently and prepare the necessary documents and submit them within the established time frame so that priority is successfully established.

The above types of priorities are most often encountered in practice.

The exhibition priority of a trademark (clause 2 of Article 1495 of the Civil Code of the Russian Federation)

As follows from the provisions of clause 2 of Article 1495 of the Civil Code of the Russian Federation, “The priority of a trademark placed on exhibits of official or officially recognized international exhibitions organized on the territory of one of the member states of the Paris Convention for the Protection of Industrial Property may be established by the start date of public display exhibit at an exhibition (exhibition priority), if the trademark application is filed with the federal executive body for intellectual property within six months from the specified date.»

Here it is also necessary to focus on the deadlines - they are similar to the deadlines for conventional priority.

Regarding the conditions for establishing exhibition priority, they are as follows: the exhibition must be international or officially recognized as international, it takes place in one of the countries that is a party to the Paris Convention.

To establish exhibition priority, the Office checks documents that confirm the establishment of priority, checks the deadline for filing an application, and analyzes the designation and the sign that was placed on exhibits of internationally recognized exhibitions.

The international priority of a trademark (clause 4 of Article 1495 of the Civil Code of the Russian Federation)

Thus, in accordance with the provisions of this article, “The priority of a trademark may be established by the date of international registration of a trademark in accordance with international treaties of the Russian Federation.”

Such priority is established by the date of international registration (entry of the mark into the International Register) in accordance with the Madrid Agreement Concerning the International Registration of Marks. Based on paragraph 4 of Article 3 of this agreement, the registration date is the date of filing the application for international registration in the country of origin, provided that the International Bureau of WIPO received the application within two months from the date of this filing.

Summarizing the above, it is necessary to note the importance of priority, since it is on it that the emphasis is placed and the countdown of its validity period begins (if the mark is registered). The earlier the priority of a trademark, the greater the power and advantage it will have in relation to a confusingly similar mark in the event of controversial situations. It is important to emphasize that the exclusive right to a trademark arises after its registration.

It is also necessary to note that only one type of priority can be claimed; the establishment of multiple priorities is not provided. In this case, if possible, it is better to choose the priority that will allow you to set the earliest priority date.

Sources:

1. Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)
2. Rules for the preparation, submission and consideration of documents that are the basis for performing legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on March 1, 2023)
3. Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (revised in Brussels on December 14, 1900, in Washington on June 2, 1911, in The Hague on November 6, 1925, in London on June 2, 1934, in Nice June 15, 1957 and in Stockholm July 14, 1967)
4. Paris Convention for the Protection of Industrial Property (as amended on September 28, 1979)