Priority

The importance of Paris Convention priority if you do business with China

If you do business with China, even if you do nothing more than have your products manufactured in China, make sure you file an appropriately prepared priority application in South Africa before you meet with your Chinese counterparts and be aware of the Paris Convention priority-claiming deadline.

Trade mark applicants do not often rely on the priority filing provisions of the Paris Convention, an intellectual property Convention that includes almost all the countries of the world as signatories, which gives the Convention wide-ranging effect. The Convention, in effect, allows the “back-dating” of a priority-claiming trade mark application to the date of filing of an earlier-filed priority application, as long as this is done within 6 months of the date of filing of the priority application.

In most countries of the world, trade mark rights flow from use and not registration, so that proof of use is often sufficient to prove ownership. However, some countries, including China in particular, have a first-to-file regime in which ownership is determined by filing of the application to register a trade mark, which means there is nothing to prevent your Chinese counterparts from securing ownership of your trade mark by filing an application for registration of your trade mark on the product you intend manufacturing in China …and then, sometime in the future, to use their “ownership” of your trade mark for leverage. We have experience of a client switching manufacturers and the first manufacturer using its ownership/registration of the client’s trade mark to prevent the client’s products from leaving China.

For these situations, priority filing under the Paris Convention, is particularly important, the most important benefit being that a priority filing establishes an earlier filing date. In the example above, our advice (not heeded at the time) was to file a priority application in South Africa before commencing negotiations with the Chinese counterparts and, if the business with China proceeded, to file a priority-claiming trade mark application in China within the six-month priority period. The outcome would have seen the priority-claiming trade mark application pre-dating the trade mark application filed by the client’s Chinese counterparts.

An important point to consider is that a priority filing (a priority-claiming trade mark application) is limited to the same goods or services as the original application. If Chinese trade mark applications are in contemplation, therefore, it makes sense to be more specific in preparing a specification of goods or services for the priority application. This is because Chinese trade mark specifications of goods and services tend to be more specific than the broadly specified goods and services often filed in South Africa. With such a more specific specification of goods/services, therefore, the priority application will provide a good basis for a forthcoming Chinese priority claiming trade mark application.

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