One of the key provisions of the Paris Convention for the Protection of Industrial Property pertains to priority applications, which allows trademark applicants to claim priority in a member country based on an earlier application filed in the home country. This principle, known as priority right, enables applicants to secure their rights more effectively across borders, ensuring that their subsequent filings in other member countries benefit from the original filing date of the home country application.

While many member countries are quite flexible in allowing priority claims, including those involving multiple and partial priority claims, India takes a much more rigid stance which can often result in office actions pertaining to the priority claim being issued, leading to undue delays in the prosecution of the application. This article aims to delve into the challenges surrounding priority claims in India.

Double/Multiple Priority:

Double or multiple priority refers to a situation in trademark law where an applicant claims priority from more than one earlier trademark application or registration in a single claim when filing a new application in another jurisdiction.

For instance, ABC, Inc., a corporation based in the United States of America, files three separate trademark applications for the mark XYZ on different dates:

Application 1: Filed on January 1, 2023, in the USA for Class 9

Application 2: Filed on February 1, 2023, in the USA for Class 41

Application 3: Filed on March 1, 2023, in the USA for Class 42

Subsequently, wanting to expand the protection of their mark XYZ to other jurisdictions, ABC, Inc. decides to file a single International Registration (IR) application under the Madrid System designating India and several other countries. This IR application covers all three classes (Class 9, Class 41, and Class 42) and includes a claim for priority based on the dates of the three earlier USA applications.

While this is acceptable in many jurisdictions, some jurisdictions, such as India, do not allow multiple priority claims for different classes within a single application.

According to Rule 24 of the Trade Mark Rules, 2017 –

“Where the applicant files more priority claims than one under Section 154 in respect of the same trademark, the Registrar shall take the date of the earlier application in a convention country, as the priority date.

Provided further that such priority date shall not be allowed for the goods and services not covered in the convention application:

Provided also that only a single priority shall be claimed in respect of all the goods or services mentioned in the application for registration of a trademark filed under rule 23(1).”

While an application will not be rejected merely because the applicant has claimed multiple priority dates, the Registrar will take into account only the earliest date claimed. Moreover, India mandates that only a single priority date can be claimed for all goods and services covered in the application. Thus, if the applicant wants to retain the priority claim and if the basic application does not cover all the classes and goods or services now applied for in India, they would be forced to delete those classes and goods or services and re-file separate national applications.

The implication of this rule on the abovementioned illustration is that ABC, Inc. can claim priority for class 9 from the US application dated January 1, 2023, but in order to do so, they would have to delete classes 41 & 42 from the Indian designation of their IR application since the priority claim will not be allowed for any goods and services which are not covered in the basic application.

If ABC, Inc. wants to retain all the classes and goods in their IR application, they would have to waive the priority claim for all three classes altogether.

Therefore, it is strongly recommended that while filing an IR application designating India, one must ensure to not claim double or multiple priority, since the Trademarks Office would most likely issue a provisional refusal objecting to the multiple priority claims.

Partial Priority:

Partial priority, on the other hand, permits an applicant to claim priority only for specific goods or services which were covered under the basic application, rather than the entire application. This means that while the application may cover additional goods or services, priority is claimed only for those goods or services which are covered under the basic application. This flexibility is beneficial for applicants who may want to modify or expand the scope of their trademark rights in other countries after the initial filing.

However, for those hoping to expand the scope of their goods and services in their trademark applications in India by adding new specifications, the rules are equally rigid. Unlike the jurisdictions that allow partial priority claims, the Indian Trademarks Office insists that priority must be claimed for all goods within a specific class as defined in the original application.

For instance, ABC, Inc., a corporation based in the United States of America, files a trademark application for the mark XYZ in class 9 on January 1, 2023, for the following goods:

“Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments.”

Subsequently, wanting to expand the protection of their mark XYZ to other jurisdictions, ABC, Inc. decides to file a single International Registration (IR) application under the Madrid System designating India and several other countries. This IR application covers certain additional goods as highlighted below.

“Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; computers and computer peripheral devices.”

 In some jurisdictions, ABC, Inc. can claim partial priority, meaning the priority claim applies only to the goods covered by the basic application. While additional specifications can be included in the application it would not benefit from the priority claim. However, this is not permissible in India. According to Indian law, all goods specified in the Indian application must be identical with those covered in the basic application, and it is not permissible to add additional goods.

Therefore, if ABC, Inc. wishes to claim priority from January 1, 2023, for their class 9 application designating India, they would be required to delete the additional specifications “computers and computer peripheral devices” which are not listed in the basic application.

Nevertheless, Indian law still allows the applicant to delete certain goods or services from the Indian application, even if they were part of the basic application.

In conclusion, it is evident that India’s approach to priority claims is far more stringent compared to many other jurisdictions. Many applicants face challenges when filing IR applications that designate India, especially when claiming multiple or partial priorities. These challenges often result in provisional refusals, which may compel applicants to waive their priority claims altogether. Hence, it is crucial for applicants to be mindful of the practices of the Indian Trademarks Office when claiming priority in IR applications designating India.

Written By Adlin Mini M