Priority rights in the mark registration: How to get it right?

What are the priority rights in the mark registration?

The definition of priority right is not prescribed in the Law on Intellectual property. However, in accordance with Articles 90, and 91, Law on Intellectual property, the priority right is the application for mark registration and applicable to the principles of priority right in accordance with the Law on Intellectual property to receive the protection titles.

The principles of priority rights include:

(1) - The first-to-file principle

In accordance with Article 90, Law on Intellectual property 2005, amended and supplemented in 2009, the first-to-file principles are prescribed as follows:

- Cases of applications:

• Many applications are filed for registration of the same invention or similar inventions, or for registration of industrial designs identical with or insignificantly different from one another.
• In case there are many applications filed by different persons for registration of identical or confusingly similar marks for identical or similar products or services, or in case there are many applications filed by the same person for registration of identical marks for identical products or services.

The protection title may only be granted for the mark in the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title.

Note:

An industrial property registration application enjoying priority right shall bear the priority date being the filing date of the first application (Clause 3, Article 91, Law on Intellectual property 2005).

- In case there are many registration applications and satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date. The protection title may only be granted for the object of a single application out of these applications under an agreement of all applicants.  Without such agreement, all relevant objects of these applications will be refused for the grant of a protection title. (Clause 3, Article 90, Law on Intellectual property).

(2) - Principle of priority

An applicant for registration of an invention, an industrial design, or a mark from a contracting party under the international treaties on intellectual property.

In Vietnam, the principle of priority is applicable to the Paris Convention for the Protection of Industrial Property and some other international treaties.

Pursuant to Clause 1, Article 91 of the Law on Intellectual property 2005 and Clause 1, Article 10 of the Decree No. 106/2006/ND-CP, an applicant for registration of an invention, an industrial design, or a mark may claim priority on the basis of the first application for registration of protection of the same subject matter if the following conditions are fully satisfied:

Note: An industrial property registration application enjoying priority right shall bear the priority date being the filing date of the first application (Clause 3, Article 91 of the Law on Intellectual property 2005).

What are the benefits of enjoying priority rights?

Priority rights take important roles in the issuance procedure of protection title and protect economic values for marks. Some benefits for the owners when applying the principles of priority are as follows:

- The highest base for the issuance of trademarks is when others have duplicated marks which can cause mistakes for duplicated products and services.

- Create favorable conditions for protected goods and services to be protected in many other countries, and the owners of marks can open their business markets.

- The principle of priority is the base for handling the relevant disputes and violations to trademark registration and protection.

Therefore, the priority rights in mark registration are for all the trademarks in the registration of protection. It is necessary for trademark users which are not famous to submit the application for priority rights.