Right of priority - art. 34 EU trade mark Regulation
Comments by: Paweł Wrześniewski
REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017 on the European Union trade mark
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Art. 34
RIGHT OF PRIORITY
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1. A person who has duly filed an application for a trade mark in or in respect of any State party to the Paris Convention or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing an EU trade mark application for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed, a right of priority during a period of six months from the date of filing of the first application.
2. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority.
3. By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application.
4. A subsequent application for a trade mark which was the subject of a previous first application in respect of the same goods or services and which is filed in or in respect of the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
5. If the first filing has been made in a State which is not a party to the Paris Convention or to the Agreement establishing the World Trade Organisation, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of the first filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect. The Executive Director shall, where necessary, request the Commission to consider enquiring as to whether a State within the meaning of the first sentence accords that reciprocal treatment. If the Commission determines that reciprocal treatment in accordance with the first sentence is accorded, it shall publish a communication to that effect in the Official Journal of the European Union.
6. Paragraph 5 shall apply from the date of publication in the Official Journal of the European Union of the communication determining that reciprocal treatment is accorded, unless the communication states an earlier date from which it is applicable. It shall cease to apply from the date of publication in the Official Journal of the European Union of a communication of the Commission to the effect that reciprocal treatment is no longer accorded, unless the communication states an earlier date from which it is applicable.
7. Communications as referred to in paragraphs 5 and 6 shall also be published in the Official Journal of the Office.
'The Paris Convention' is the Paris Convention for the Protection of Industrial Property, signed in Paris, France, on 20 March 1883. It has been one of the first intellectual property treaties. Still in force today is ratified by almost all countries of the world. The convention is administered by World Intellectual Property Organization.
'The Agreement establishing the World Trade Organisation' is the Marrakesh Agreement, signed in Marrakesh, Morocco, on 15 April 1994. It has created World Trade Organization, an intergovernmental organization concerned with the regulation of trade between nations.
It was the same Paris Convention where the right of priority was defined. According to art. 4 thereof any person who has duly filed an application for a (...) trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed and any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority. What does it exactly mean? It means on request of an applicant date of first application should be date of an application in any other member country of the Union. Example: On 14th of November 2019 a company filed for a trademark registration in Poland. If it files for registration of exactly the same trademark for exactly the same products in United States of America on 22nd of March 2020 US patent authority - on request of the abovementioned company - will proceed as if the trademark application was filed there on 14th of November 2019.
By 'every filing that is equivalent to a regular national filing' is especially understood filing guaranteed by Madrid system for the international registration of marks. The system is built on two international treaties: Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement of 1989. The idea of the system is to by filing only one application to get trademark protection in all jurisdiction an applicant is interested in. Both treaties are administered by WIPO as well.
[last update: 8th of April 2020]