Businesses which have (or are) trying to register their trademarks in several countries would be familiar with the concept of priority rights. If a person has applied for registration/registered a mark in his home IP office at Country A, then on the basis of the original application, he can apply for the registration of his mark in Country B, claiming a “priority date” (from the original application in Country A) whereby his mark will be considered to be registered as on the date of application in his home country.

In India, there are two methods of obtaining priority rights for trademarks: 1. filing an application through Form TM-A which has been explained previously on our blog here and 2. filing an international application through the Madrid System as explained here.

The Madrid System has gained immense popularity as businesses can obtain registration for their marks globally through means of a single international application. However, off late, businesses which are designating India have started facing challenges with respect to priority.. One thing which must be kept in mind is that under the Madrid System, the IP offices of designated countries make decisions on international applications on the basis of their domestic legislations. Thus, what passes scrutiny in some countries may not do so in others. While in many other countries, the law permits applicants to claim multiple priority dates in a single application, Indian law does not.

Law Relating to Claiming Priority in India

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:”. The implication of this is that 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.

The lack of awareness of this law has resulted in many international applications being stalled or delayed, which defeats the purpose of using the Madrid System.

Additionally, it must also be noted that in India, the application claiming priority in India must be identical with the application from which priority is being claimed. For example, if there are multiple applications for various classes of goods and services in respect of a single mark in the home country, they cannot be clubbed together for a single multi-class application for the purposes of registration in India claiming multiple priority dates.

Consequences of Claiming Multiple Priority Dates

While in the rarest of rare cases, the Trade Marks Registry does not raise any objections to an application claiming multiple priority dates, in most cases, the Registry will raise objections on this ground. Resolving objections could become extremely cumbersome for an applicant.

Resolving Objections by the Trademark Office

When the TMR raises objections to an application which claims multiple priority dates, there are two ways to resolve them:

  1. Filing a request with the Indian Trademark Office to waive any priority claims; or,
  2. Amending the specifications with the World Intellectual Property Organisation.

Make Sure You Do It Right!

Resolving objections raised by the Trademark Office against multiple priority claims can prove to be quite a hassle for applicants. The delay and effort invloved can make the Madrid System seem redundant. To ensure that their marks are registered smoothly in India, it is advisable that applicants claim only one priority date in their applications and that the basic application is identical with the application claiming priority. If these points are kept in mind, the process of registration in India can be a trouble-free experience! Perhaps it is necessary for India to delve into this aspect and make claiming Priority less rigid. Wishful thinking!