A trademark priority – on what date it can be established by the Office
The entrepreneurs and the manufacturers of products are aware and recognize the need of the use and the protection of trademarks. This is evidenced by the high number of the registered subject matters of intellectual property in this field. According to the Annual Report of Rospatent for 2019, the experts of the Patent Office received 87,509 applications for trademarks, 35,511 requests for the registration of inventions, 17,878 applications for the registration of programs for electronic computing machines, 10,136 requests for the grant of the legal protection to utility models and 6,920 applications for the registration of industrial designs. For clarity, the information is shown in the diagram.
Programs for Electronic Computing Machines
Other Subject Matters
Thus, it is obvious that the number of the claimed trademarks is impressive and it accounts for more than a half of the total number of the requests received by the Patent Office.
What the trademark priority is established for
Taking into account the fact that the main task of the means of individualization is the individualization of a product, creating a new and unique designation becomes more and more difficult every year. The probability of filing the similar marks for the homogeneous products by different applicants is high, as well as the illegal use of the registered subject matter by unfair competitors. In these situations, the established date of the trademark priority will play a significant role.
The registration of the trademark has two important legal consequences for the applicant:
- It is exactly the right holder, whom rights to the registered subject matter are conferred to.
- The owner of a protection certificate may dispose of the exclusive rights to the means of individualization and regulate the further circulation of the mark belonging to him. And also, if necessary, he may apply for the defense of his legitimate interests.
The trademark priority is an officially confirmed date from which the right to the claimed and “disclosed” trademark is recognized as belonging to the subject. The designated period acts as a sort of a starting point for the beginning of the legal protection of the means of individualization (if the trademark is subsequently registered).
Rospatent assumes the authority to protect the means of individualization from the registration of the identical and confusingly similar designations for the identical products and uses the priority date in the case of filing for the registration two identical or confusingly similar marks in respect of the similar classes of the ICGS. Also, it should be taken into account that the priority date is used by judicial authorities in the case of disputing the Rospatent’s decisions to grant or to refuse the registration of the trademark.
How the experts of the Patent Office determine the priority
The fundamental provisions in this issue are the ones of Article 1494 and Article 1495 of the Civil Code of the Russian Federation. There are several ways to establish the date of the trademark priority:
- According to a general rule. In Article 1494 of the Civil Code of the Russian Federation, the legislator points out that the priority shall be determined on the date of filing the application to the Federal Executive Authority.
- On the date of the receipt of the original application, in the case of filing the divisional application. If in the course of the examination the applicant decides to file the divisional application, the priority date of the latter will be the same as the priority date of the original application.
- Taking into account the Convention priority. Russia is a member country to the Paris Convention for the Protection of Industrial Property. In this regard, the obligation to grant the Convention priority is executed within the framework of the international Agreement. In the case, if Rospatent receives the application for the trademark that has been previously received for the registration in one of the member countries of the Paris Convention, the priority shall be determined on the date of filing the original application. Paragraph 1 of Article 1495 of the Civil Code of the Russian Federation outlines the period for filing the application for the Convention priority – not later than 6 months from the date of filing the application in the member state to the Agreement.
- With the use of the exhibition priority. Thus, the legislator protects the rights of the holders of the trademark that have been disclosed during various international exhibitions on the territory of the countries that ratified the Paris Convention. In this case, according to Paragraph 2 of Article 1495 of the Civil Code of the Russian Federation, the priority shall be calculated from the date of the open display at the exhibition of the exhibit with the trademark, if the applicant files the application during subsequent 6 months.
If the owner of the designation claims to the use of the Convention or exhibition priority, it is necessary to fulfill a number of the requirements: to inform about his wish to use the chosen kind of the priority in the application or during 2 months from the date of the receipt of the documents by Rospatent, and also to confirm the lawfulness of the claims, and to submit evidence to the Patent Office not later than 3 months from the date of filing the application.
5. On the date of the international registration of the trademark. The norms of the Civil Code of the Russian Federation allow establishing the trademark priority on the date of the international registration of the designation in accordance with international agreements. Currently, Russia participates in the Madrid System of the registration of trademarks and it supports the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Thus, when filing the international registration to Rospatent, for which the Madrid System has been used, the priority date can be established on the date of filing the international application in the country of origin or on the date of the receipt of the documents by the International Bureau. In addition, if the international registration is filed on the basis of the national application during six months from the date of its filing, the Convention priority may be established in respect of it on the date of filing the basic application to the Office of Origin.
6. In conclusion, it should be noted that the applicant may use the right and choose one of the above priorities, if he has the relevant documents and he can confirm the right to the priority sought, for example, the Convention one. In this case, it is preferable to choose the one by which the earliest date of the trademark priority is established.