Procedures for filing trademark application with priority claim – Application to the Japan Patent Office and foreign patent offices

I am thinking of filing a trademark application in a foreign country with the same one I filed in Japan. If the right is given to the applicant who files the application earlier in that country, then I should file the application now, right?

If you file an application in a foreign country by claiming priority to a Japanese application, it will be “treated as if it had been filed on the date of filing in Japan”.
However, in order to claim priority, you must fulfill a set of requirements.
I will explain in detail.

Claiming priority under the Paris Convention

When filing a trademark application from Japan to a foreign country, or from a foreign country to Japan, it may be necessary to consider “claiming priority under the Paris Convention.

The Paris Convention is an international treaty established to protect industrial property rights such as patents and trademarks.

Officially, the Paris Convention is the “Paris Convention for the Protection of Industrial Property, as amended at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967. Paris Convention of March 20, 1883 on the Protection of Industrial Property”.

The “priority system” described in this Paris Convention is briefly explained as follows (Article 4 of the Paris Convention):

A person or his successor in title, who has duly filed an application for registration of a trademark in any of the countries of the Union, shall have the right of priority with respect to the trademark for a period of six months.
If during this priority period an application is filed in another country of the Union with the same subject matter and a priority claim is filed, it will be treated in that other country as if it has been filed in the first country.

The priority period is 6 months for trademarks and designs, but 12 months for patents and utility models.

The Convention applies only to nationals of the countries of the Paris Convention Union.
However, nationals of countries not belonging to the Union are considered to be nationals of the Union if they have a domicile or place of business within the territory of one of the Alliance countries. (Paris Convention, Article 3)

Filing trademark application with the JPO claiming priority of foreign trademark application

The examination criteria of the JPO state the following regarding applications for trademark registration with a claim of priority under the Paris Convention.

(1) Regarding priority claims
If the following requirements (a) through (c) are found to be met, the priority claim is deemed to be proper.
(a) The applicant of the application for trademark registration with priority claim is the same person or his/her successor as the applicant indicated in the priority certificate (Article 4A(1) of the Paris Convention).
(b) the trademark indicated in the application for trademark registration with priority claim and the trademark indicated in the priority certificate are identical
(c) all or part of the designated goods or designated services pertaining to the application for trademark registration with priority claim are included in the designated goods or designated services indicated in the certificate of priority.

If the JPO does not find the claim of priority to be proper, the application will be examined as a regular application not claiming priority.

(2) Effect of an application for trademark registration with a priority claim
Where a priority right is properly claimed, in applying the following provisions, the application for trademark registration shall be treated as if it had been filed at the time of filing of the application in the first country.

(a) Article 4(1)(xi) (registered trademark of others pertaining to earlier application)
(b) Article 8 (First application)

* If a priority claim is granted, the application will be examined while a third party’s identical or similar applications filed between the foreign application and the Japanese application are excluded.

In the application, the name of the country, filing date and application number of the first application should be stated as the details of the priority claim.

【パリ条約による優先権等の主張】→Claim of priority, etc. under the Paris Convention
【国・地域名】→Country/region name
【出願日】→Application date
【出願番号】→Application number

If the applicant is not a national of the Alliance, it is necessary to state in the application the address of an address or business office in the territory of the Alliance.

Please note that the deadline for filing a priority certificate is within three months from the filing of the Japanese application.

The priority certificate must be obtained from the country of first filing, and the original document must be submitted to the JPO.
If the first country is a designated patent office, such as the European Union Intellectual Property Office, it is possible to submit to the JPO a copy of the application in PDF format provided by the Office as a priority certificate.

“Electronic exchange” of priority documents (e.g., using the World Intellectual Property Organization’s Digital Access Service (DAS)) is possible for patent applications, applications for utility model registration, and applications for design registration, but not for trademark applications.

There is no fee to pay to the JPO for claiming priority.

Filing trademark application with foreign patent office claiming priority of Japanese application

When filing a trademark application in a foreign country, there are two methods: filing an application directly in the desired country (direct filing) or filing an international trademark application under the Madrid System.

If a priority claim is granted, the application will be examined while a third party’s identical or similar applications filed between the Japanese application and the foreign application are excluded.

A trademark application to a foreign country must be written in the language of that country, such as English, and must be identical to the Japanese application.

To file an application in a foreign country, obtain a priority certificate from the Japan Patent Office (JPO fee (online): 1,100 yen) and submit it to the patent office of the country in which the application is filed.

Since most countries in the world are signatories to the Paris Convention, it is possible to file an application with a priority claim of a Japanese application in many countries.

In some countries, there is a fee for claiming priority in addition to the filing fee paid to the patent office.
In addition, there may be an additional fee for a local agent to accompany the priority claim.

Taiwan is not a signatory to the Paris Convention.
However, under the reciprocity principle, it is possible to file a priority claim based on the Paris Convention for applications between Japan and Taiwan.

So there are advantages to file a trademark application in a foreign country with a priority claim. I guess I should consider it.

Summary

When filing a trademark application with the JPO with a priority claim, the priority claim must always be indicated in the application. Please note that it is not possible to claim a priority right after filing the application.
In addition, since the contents of the application must be basically identical to the basic application, it may be advisable to consider the contents of the application at the time of filing the first application so that the priority can be accepted in each country.

We are a patent firm that handles many trademark applications filed in foreign countries with Paris priority claims.
If you wish to file a trademark application with a priority claim, or if you have any questions regarding the priority claim of a trademark application, please contact us by using

Request Form.

Our patent attorneys specializing in trademarks will be happy to assist you.