As we have mentioned multiple times before, trademark law is territorial. As a consequence, the protection of a trademark must be seek in each country or region of interest.
Additionally, most countries adopt the “first to file”principle for the registration of trademarks. This means that the person that first files an application for trademark protection, gets the priority over it.
All the above mentioned would normally mean that trademark owners that want to register their trademark in multiple countries, should proceed with all filings as soon as possible. However, the Paris Convention has established an option called the “right to priority”.
The Paris Convention for the protection of trademarks
The Paris Convention is an industrial property treaty that was signed by 177 countries in the world. In its section 4, the Convention establishes that anyone who has filed a trademark application in one of the countries members shall enjoy a right of priority during a period of six months.
This means that if a trademark application was filed a trademark application in a country member of the Convention, the applicant has six months to file the same application in another country member. The advantage is that when claiming priority, the second office consideres it filed the date of the first application.
The right to claim the priority right for trademark registration
Iff an applicant files an application for trademark registration in one country member of the Paris convention then they have six months to file the same application in other countries member of the convention. The second filing will be considered made the same date of the first filing. The office that issues the certificate is the one where the first application was filed.
For example, if a trademark application is filed in Mexico on July 22, 2025, the applicant has a six-month period to file the same trademark application in other countries that are members of the Paris Convention, claiming the priority of the first filing.
Therefore, if a second application is filed in Argentina within that six-month period and the priority of the Mexican application is properly claimed, the Argentine Trademark Office (INPI) will consider the Argentine application as having the same filing date as the Mexican application, that is, July 22, 2025, for examination purposes.
Which formalities must be complied with?
The formalities required to file a trademark application claiming priority may vary depending on the requirements of each trademark office. In some jurisdictions, the priority certificate may need to be accompanied by a certified translation, legalization, and/or apostille.
Applicants are therefore advised to verify the specific requirements of the country where protection is sought before filing the application.
Conclusion
The right to claim priority gives a very good alternative when the filing of a trademark in multiple countries at the same time is complicated or too expensive. Therefore, within a period of six months, trademark owners can make a decision on which other countries to protect their trademark and proceed accordingly.
For professional advice on whether to file multiple trademark applications or claim priority, please contact us.
