Trademark Priority: Key implications for businesses and their trademark rights

Trademark priority is an essential concept in trademark law as it establishes who has the right to use a particular trademark in connection with specific goods or services. By understanding the trademark priority system in each jurisdiction where they operate, businesses can take appropriate steps to protect their trademarks and avoid potential disputes.


Igor Demcak

What is trademark priority?

Trademark priority refers to the legal concept that determines who has the right to use a particular trademark in connection with specific goods or services. Understanding trademark priority is essential for businesses because it helps to establish ownership rights and protect their intellectual property. Trademark priority has significant impact on the outcome of disputes over ownership or infringement.

Trademark priority is determined differently in different jurisdictions around the world, depending on the specific laws and regulations of each country. There are two main systems for determining trademark priority: the First-to-Use system and the First-to-File system.

The First-to-Use Trademark System

The First-to-Use trademark system, also known as a common law trademark system, is a trademark registration system based on actual use of the trademark in commerce. In this system, the first person or business to use a particular mark in commerce has the exclusive right to use that mark in connection with the goods or services with which it is associated, within the geographic area in which it is being used. The First-to-Use trademark system is used in several countries, including the United States, Canada, Australia, and New Zealand.

Under the First-to-Use system, businesses can establish trademark rights by using a mark in commerce, such as by placing it on products or using it in advertising or marketing materials. In order to establish common law trademark rights, the use of the mark must be continuous and in good faith, meaning that it must not be intended to deceive or mislead consumers.

Once a business has established common law trademark rights in a particular mark, they can use that mark to prevent others from using confusingly similar marks in connection with similar goods or services. However, these rights may be limited to the geographic area where the mark has been used and may be more difficult to enforce without a federal registration. Businesses that want to strengthen their trademark rights and protect their marks nationwide can apply for federal trademark registration.

The First-to-File Trademark System

The First-to-File trademark system is a system for registering trademarks in which the first person or entity to file an application for a particular mark with the relevant government agency is generally awarded the registration. In this system, ownership of a trademark is based on the registration of the mark, rather than actual use of the mark in commerce. The First-to-File trademark system is used in many countries around the world, including most of the countries in the European Union, China, Japan, and many other countries in Asia, Africa, and Latin America.

For businesses operating in jurisdictions that use the First-to-File system, it is important to file trademark applications promptly in order to secure priority rights. This can involve conducting comprehensive trademark searches to identify potential conflicts with existing marks and working with legal professionals to draft and file effective trademark applications. Failure to file a trademark application promptly can result in another party securing registration of the mark, potentially leading to disputes over ownership and infringement.

It is important to note that even within the same jurisdiction, different rules may apply to different types of trademarks or industries. Additionally, some jurisdictions may have hybrid systems that combine elements of both the first-to-use and first-to-file approaches. It is always best to consult with a qualified trademark attorney to determine the appropriate approach in a particular jurisdiction.

Igor Demcak
Igor Demcak

Trademark Attorney

Founder & CEO of Trama

7 year experience in IP protection

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