International Trade Mark Rights: First-to-file vs. first-to-use


Different countries have different rules when it comes to recognition of trade mark rights.

In today’s global marketplace, you may plan to sell your products in various countries or even manufacture them overseas. This is why it is important to protect your brand in the countries where your goods or services will be available and to know what your rights are in different countries.

A first-to-file trade mark system grants rights to the person who first filed a trade mark application, regardless of their intent to use the mark and even if another party can show prior use of the trade mark. Some countries which follow a first-to-file system include China, Italy, Austria, Portugal, Mexico, Brazil and Sweden.

Australia does not follow the first to file rule. Even if you have not yet registered a trade mark, you might have some common law claim over it if you can show your business has been using it in the past, keeping in mind that the ‘use’ must fulfil certain criteria to qualify.

International trade mark strategy

When considering your options for international trade mark protection, there are some defensive measures you might like to take.

Counterfeit goods are increasingly sold and distributed online, so you may want to consider registering your trade mark in countries that are well known for their counterfeit markets.

In first-to-file countries, businesses can become vulnerable to trade mark squatting. Trade mark squatting is characterised as the intentional filing of  a trade mark application by one party for a second party’s registered trade mark, in a country where the second party does not currently hold a trade mark registration.

Brand owners who plan to export goods to, or manufacture goods in, any first-to-file countries should file their trade mark application as early as possible to minimise the risk of another party obtaining the rights for that trade mark.

Contact us for a free consultation to discuss how we can help you protect your brand locally and abroad.