Where a person has made an application for registration in a Convention country and that person, or his or her successor in title, makes application in Australia for registration of the same trade mark within six months of the date of application in the Convention country, the trade mark will, if registered, be deemed to be registered as of the date of application in the Convention country rather than the date of filing of the application in Australia (section 29). An applicant's “claim for priority” is therefore his or her claim to the earlier registration date. The actual claim to priority must be made within two working days of filing in Australia (reg 4.5).

1.1 Obligation to provide for Convention claims

Under the terms of the Paris Convention, to which Australia is a party, a member state must make provision in its trade mark legislation to grant priority status to applications made in accordance with the terms of the Convention. Paragraph A(1) of Article 4 of the Paris Convention states that:

Any person who has duly filed an application for a ... trademark, in one of the countries of the Union, or his successor in title, shall enjoy for the purpose of filing in other countries, a right of priority during the periods hereinafter fixed.

Paragraph C goes on to state that the period during which an application can be filed and obtain the priority date of the application in the Convention country is six months from the first filing of the application in a convention country.

1.2 Convention countries

A Convention country is a foreign country or region of a kind prescribed by the regulations (section 6).

The regulations define a convention country as:

a foreign country that is a signatory to the Paris Convention for the Protection of Industrial Property of 20 March 1883, as in force from time to time;
a foreign country that is a full member of the World Trade Organization (Reg 21.29(1)).

For a list of signatories to the Paris Convention see – www.wipo.int

For a list of full members of the World Trade Organization see – www.wto.org

Regulation 21.29 also refers to the following international treaty organisations: the European Community, Benelux and the African Intellectual Property Office (OAPI).

1.3 Who may apply?

A person who has applied for a trade mark registration in a Convention country, or the person's successor in title, may apply for an equivalent trade mark registration in Australia and claim a right of priority for that registration based upon the earlier application (subsection 29(1)). Generally, the question of whether the person claiming priority is entitled to do so will not be an issue because, in most cases, the claim will be assumed to be valid and therefore the documents will not be required. However, in cases where the priority documents are required (see section 4 below) and examined and there is some question as to the ownership of the trade mark the applicant should be requested to provide documentary evidence that is sufficient to establish the passing of the title to the trade mark from the applicant specified in the earlier application to the applicant specified in the convention application (subreg 4.11(2)).

1.4 Timing of the application and claim for priority

A convention application should be filed within six months after the day on which the application was made in the Convention country (subsection 29(1)). If applications for the trade mark have been filed in respect of particular goods and/or services in more than one Convention country, the application in Australia must be filed within six months after the day on which the earliest of the earlier applications was made (paragraph 29(2)(b)). When calculating the six months, the day the earlier application was made in the Convention country is not included in the calculation. That is, if the application was filed in a Convention country on 1 February 2007, the application in Australia must be filed by close of business on 1 August 2007. If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications the period is extended until the next working day (Paragraph C(3) of Article 4 of the Paris Convention).

The claim for the right of priority must be made within two working days of the application being filed in Australia (subsection 29(1) and reg 4.5). This period and the 6 month period allowed from filing an application in a Convention country for filing in Australia, are both non-extendible periods of time (reg. 21.28 (1)(aa) and (b)).

1.5 Representation of the trade mark

The convention application must be for the same trade mark as the trade mark of the earlier application.

1.6 Specification of goods and services

To gain the same priority date the specification of the convention application must claim at least one good or service covered by the earlier application or applications. The earlier priority date will only apply to goods and/or services in common with both applications. Applicants are not required to provide details of the specification of the earlier application unless there is more than one priority date being claimed. See 2.4 and 5 in regard to multiple priority dates.