Anyone who files a trademark in a Country which is party to the Paris Convention has the right to claim the priority right.
Under this rule, the owner of a trademark application (or patent for invention, utility model, industrial design, plant varieties) has the right – within the periods specified in paragraph 2 of the article (see below) – to file the same application in a Country which is party to the Paris Convention for the protection of Industrial Property, claiming the filing date of the first application also for these subsequent States.
Article 4, 1) of the Italian Industrial Property Code provides that:
“Anyone who has duly filed, in or for any State being party to an international convention ratified by Italy which recognizes the right of priority, an application for and industrial property title or his successor in title, shall enjoy a right of priority from the first application for the purpose of filing an application for a patent for invention, utility model, new plant varieties, design and trademark registration, in accordance with the provision of article 4 of the Paris Convention for the Protection of Industrial Property.”
Time in the priority right of a trademark
Paragraphs 2 of this article states in six months the priority deadline for marks and designs and in twelve months the priority deadline for patents, utility models and plant varieties. The period starts from the filing date of the first application.
The reason of the priority is the will to leave the applicants of a trademark (or patent, design, utilily model or plant variety) a reasonable period of time for valuing the possibility to extend the right abroad without being anticipated by this parties.
The priority date (filing date of the first application) is considered as the filing date of the subsequent applications, on condition that they claim priority and are filed during six or twelve months according to the present article.
What Paris Convention is
The Paris Convention (for the protection of Industrial Property) was one of the first treaties concerning intellectual and industrial property; it was signed in Paris on March 20, 1883 and is still in force.
The Convention consists of 2 rights:
- Priority right, according to which anyone who has filed an application for patent, utility model, design, trademark in one of the countries of the Union will have a right of priority for the filing in other Countries. It is sufficient to file the application in a Member State of the Union in order to be entitled to priority. Time to extend the protection of your idea or invention to other States of your interest are twelve months for patents, utility models and plant varieties and six months for marks and designs.
- Right of reciprocity, according to which the signatory Countries undertake to recognize to the citizens of the other States of the Union the same intellectual property righs, recognized to their own citizens. This guarantees the equality of treatment in all the Countries.
Before the Paris Convention it was necessary to choose, at the time of filing, all the markets of interest and to bear all the costs of the filing fees and translation in the language of each State.