Intellectual Property
Trademark Registration

Trademarks: First-to-file vs First-to-Use

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When it comes to registering trademarks, understanding the legal framework in your country and abroad is crucial for your domestic and international brand protection.

Each country uses one of two systems: "first-to-file" and "first-to-use". These systems determine who receives the rights to a trademark - the person who first registers it to the national IP office or the person who starts to use the trademark in commerce.

In a first-to-file system, the rights to the trademark go to the first person or business that registers the trademark with the IP office.

Conversely in a first-to-use system, a person or business using the trademark first in commerce will receive ownership over the IP.

Understanding these systems is essential for properly managing and growing a business’s IP portfolio, preserving its integrity, and defending it against infringers and other IP challenges.

First-to-file Trademark System

Under this system, the rights to a trademark are granted to the first person that files a trademark application with the appropriate government authority. 

In other words, registration with the trademark office is the primary determinant of ownership. The priority is given to the date of filing rather than the actual use of the mark in commerce. 

This means that even if another business has been using the trademark for a more extended period, the entity that successfully files the application first is likely to receive the legal rights to the mark.

First-to-file Trademark Countries

The first-to-file trademark system is the approach adopted by the majority of countries worldwide, including China, most EU nations, and the UK. 

Here's a list of some major countries that adhere to the first-to-file system:

  • Argentina
  • Brazil
  • Colombia
  • China
  • European Union
  • France
  • Germany
  • Indonesia
  • Italy
  • Japan
  • Mexico
  • Nigeria
  • Russia
  • Spain
  • South Korea
  • Turkey
  • United Kingdom

First-to-use Trademark System

First-to-use trademark systems, practiced in countries like the United States and Canada, prioritize the actual use of a trademark in commerce in providing rights.

In these systems, the entity that can demonstrate the earliest continuous use of a trademark in the course of business typically holds the rights to that mark. Registration with the trademark office is still important for legal protection, but the date of first use carries significant weight. 

This means that even if someone else files a trademark application before you, your prior use may allow you to challenge their application and protect your brand.

First-to-use Trademark Countries

The first-to-use trademark system is the bedrock of trademark protection in fewer countries than the first-to-file system, but includes major economies like the US, Canada, South Africa, and others. 

Here's a list of major countries that adopted the first-to-use system:

  • Canada
  • Australia
  • Denmark
  • India
  • Iceland
  • Ireland
  • Israel
  • Malaysia
  • New Zealand
  • United States
  • South Africa

Be Careful of Exceptions

When devising a trademark strategy for international growth, it's crucial to acknowledge that countries might have exceptions to the standard first-to-file or first-to-use systems. 

For instance, in the UK, "Passing off" is a common law tort that grants unregistered trademark holders certain rights over the registered ones. So, despite being a first-to-file country, the UK does have minor exceptions that lean more towards a first-to-use system, allowing founders more flexibility to start doing business before establishing their IP legally.

Similarly in Spain, trademark rights usually stem from formal registration under a first-to-file system. However, if a business holds an unregistered but well-known mark in Spain, they could have the ability to oppose similar trademark applications. This means a business operating in Spain can protect their brand's interests even without formal registration. 

This is why brands planning out their trademark registrations need to research the specific trademark regulations and exceptions in target countries. Proper research in target countries is paramount to crafting an effective and comprehensive trademark protection strategy.

Takeaways for Brands

The distinction between first-to-file and first-to-use trademark systems is simple at its core, but has enormous impacts on brands' IP management across the world.

Knowing which system is used in specific countries is essential knowledge whether a business is focusing on building and expanding their IP portfolio and also for growing internationally.

The biggest mistake a brand can make is to assume a country uses a first-to-use trademark system, and setting up shop in the country without laying the groundwork for their trademark application. This can lead brands into a nightmare scenario where they invest huge sums of money into expanding their brand, opening up shops in the new region, and spending massively on marketing campaigns - all to have someone else swoop in and register the IP from under their feet.

The best practice to avoid this is to:

  1. Perform all the research possible into the regulations of regions that could be important to the business in the future.
  2. Ensure your IP is registered in first-to-file regions before you start doing business.
  3. Closely monitor IP registrations in those key regions for possible clashes.

In short, staying informed and following the legal requirements essential countries will help brands stay clear of future IP infringements and help lay the groundwork for international business growth.

Free Trademark Scan 

Protecting your brand and intellectual property is crucial, especially in a global marketplace where potential threats can arise, particularly in regions like China. That’s why MarqVision offers free trademark scans to businesses looking to expand their IP portfolio at home or abroad. 

With our free trademark scan service, we make the process of safeguarding your trademarks more accessible and efficient. Here's how it works:

  1. Submit Your Trademark: Provide us with your trademark details, and we'll use this as the foundation of our analysis. Your unique brand identity deserves comprehensive protection.
  2. Select Your Target Markets: Specify the countries where you are interested in protecting your intellectual property. Our service is designed to help you navigate the complex world of global IP rights.
  3. Share Your Online Presence: To provide you with the most accurate insights, we encourage you to share your website or social media details. This information allows us to explore potential trademark conflicts on digital platforms.

After you've submitted your information, our team of experts will perform a thorough analysis, identifying any potential trademark risks. We'll then deliver actionable insights to help you make informed decisions about your IP protection strategy.

Ready to get started? Sign up for your free trademark scan now.

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