The Paris Un-Conventional: Time is not Always Your Enemy

The Paris Convention has nothing to do with wine, cheese or even prisoners of war.  It’s about protecting intellectual property in foreign countries.

For Australians, the Paris Convention means that it is possible to apply for registration of your trade mark overseas after the first application (usually Australian) was filed and claim the first application’s earlier filing date as foreign application’s “priority date”, provided that the:

  • Foreign application is filed no more than six months after the filing of the first application; and
  • It was the first time the applicant had applied for registration of the trade mark in respect of the goods and/or services in question.

Why would you jump through these hoops when applying for protection of your trade mark overseas?

Well, there’s not one but two reasons and neither is immediately apparent.

Reason One – Financial

Money is near and dear to everyone’s heart and we’d all agree that sometimes we just don’t want to spend it and sometimes we just don’t have enough of it.

People file trade mark applications overseas because they intend to expand their businesses overseas or commence manufacturing offshore and, consequently, overseas protection and, ideally, early overseas protection, is vital.

However, the costs associated with filing trade mark applications in a number of countries in one go can make a prospective applicant think twice.

Utilising the Paris Convention means you can avoid an immediate “big hit” expense of filing overseas in a number of countries at the same time by putting the filing of overseas applications on the back burner and, therefore deferring costs, for up to six months without suffering repercussions in the relevant foreign markets.

And, for those that need the protection overseas but simply do not have the funds, the Paris Convention gives them a six month “breathing space” in which to raise funds so they can file trade mark applications overseas.

In short, the Paris Convention gives you time to ensure that you are in a financial position to protect your trade marks overseas and to make a considered decision as to when it best suits you to file those overseas applications.

And, as we’re told time and time again, any financial decision should be a considered decision.

Reason Two – Furtiveness

When employed properly, the Paris Convention is a regular (working) cone of silence.

You can apply for registration of your trade mark and, in the right circumstances, once you’ve filed the application, you can go about your business and no one will be the wiser.

This is of great advantage if your company is about to looking to rebadge, release a new gadget or conduct a series of events.

Announcing these developments can be great – but only if you’re calling the shots.  If you’re forced to make an early announcement because talk of your rebadging, new gadget or event has escaped, prestige will be lost.  Loss of prestige is the best option.  The worst option is loss of intellectual property rights and, with it, loss of profit.

Unfortunately, as everyone knows, the more people who know a secret and the longer they know the secret, the more likely it is that people will spill the beans.

The Gold Coast 2018 Commonwealth Games Corporation identified this conundrum and, aware that profit is closely tied to intellectual property, resolved the issue using the Paris Convention.

Sporting events like the Commonwealth Games are big money and one of the biggest money spinners is the merchandise.  So, having unauthorised parties knowing details of the Games’ mascots’ appearances and names before these details had been officially announced could result in a significant loss of profit and, possibly worse, a loss of control of the Corporation’s intellectual property.

However, the Corporation was in a bind because, doing obviously sensible thing – filing trade mark applications well in advance of the announcement – is as good as advertising them in Australia, due to the Australian Trade Marks Office having a very efficient electronically searchable trade mark database.

Unfortunately, waiting until after the mascot announcement and running the risk that a third party might beat the Corporation to the punch wasn’t a good idea either.

The solution?

File the applications and file them early, just not in Australia.  File them in Tonga.  Yes, Tonga.

Like most countries in the world, Tonga is party to the Paris Convention.  This, coupled with the fact that the Tongan trade marks database cannot be easily searched, made Tonga the ideal first filing place for the Corporation’s mascot applications.

The Corporation filed the Tongan applications in December 2015, some time before details of the mascots were announced to the world.  In April 2015, the Corporation introduced the mascots to the world and filed the Australian mascot applications (after the mascots’ introduction), claiming convention priority from the December 2015 Tongan applications.

By utilising the Paris Convention, the Corporation ensured the impact of their announcement, maintained the integrity of their intellectual property and defended its bottom line.

Judicious use of the Paris Convention can open up a world of strong intellectual property rights and even stronger profit margins.

Speak to us to see how we can make the Paris Convention work for you.