As an intellectual property attorney, one of the most rewarding parts of my job is helping businesses expand their brand protection beyond their home country. If you’re a business owner or entrepreneur who’s already filed a trade mark in your home country and are now looking to protect your mark in Australia, you’re likely to come across the term “Convention application.” But what exactly is it? And why does it matter?
What Is a Trade Mark Convention Application?
Imagine you’ve just filed a trade mark application in your home country (say, the U.S., UK or anywhere that’s a party to the Paris Convention or a member of the World Trade Organization). If you act within six months of that filing date, you can file a corresponding application in Australia and still claim the same earlier filing date, i.e. that’s your priority claim. This legal provision can be a lifesaver. It means your Australian application will be treated as if it was filed on the same date as your original application. That’s a big deal in the IP world where timing can make or break your rights.
Why is “Priority” important?
Let’s say your competitor files a similar trade mark in Australia a month after your home country application. Without a convention priority claim, their Australian application could end up getting registered before yours. But if you file a Convention application and claim priority correctly, your earlier overseas filing date takes precedence, even if you filed in Australia later. This can help prevent disputes, opposition proceedings, and most importantly, protect your brand in a new market without losing the benefit of being “first in line.”
Who Can File a Convention Application in Australia?
If you’re the original applicant of the overseas trade mark or a successor in title (i.e., someone the rights have been legally transferred to), you’re eligible. But remember, ownership continuity is key. If you’ve transferred the trade mark to another entity before applying in Australia, you’ll need to show proper documentation tracing that chain of title.
When Should You File such Trade Mark application?
There are two strict deadlines you absolutely cannot miss-
- Within six months from the date you filed your trade mark in the Convention country.
- The priority claim itself must be made within two working days of filing your Australian application.
These timeframes are, however, not flexible. Miss them, and you miss the priority benefit. We always tell clients to have their overseas application details ready before filing in Australia, just to stay ahead.
What Details Do You Need to Provide for Trade Mark Convention applications?
When opting for Convention application in Australia, you’ll need to include:
- The Convention country where you first filed.
- The filing date of that overseas application.
- The application number (if available, though it will eventually be required).
If you’re claiming priority from more than one country or more than one application, you’ll need to provide the above details for each, and specify which goods or services fall under each earlier application. Keep in mind- the priority date only applies to the goods/services that are common between the overseas and Australian filings.
What About the Trade Mark Itself?
The mark you apply for in Australia must be the same as the one filed in the Convention country. No tweaks, no changes. That includes logos, wording, or stylization. If you want protection for a variation or a refreshed version of the brand, file it separately. Priority claims only work when the marks are identical.
Do You Need to Submit Documents?
Document submissions are not always necessary. In most cases, no documentation is required up front. However, there are a couple of scenarios where you might be asked to provide proof-
- If your application becomes a citation (i.e., an obstacle) to someone else’s trade mark application, the examiner might need to verify the priority claim, i.e. especially if the overseas database isn’t publicly accessible.
- If there’s an opposition proceeding, your opponent can request copies of the original foreign application. In that case, the Registrar might ask you to submit a certified copy of the earlier application, possibly with a verified translation.
So, even if it’s not required immediately, I always advise clients to keep those documents handy, just in case.
The Examination Process
Convention applications are usually examined faster, i.e. expeditiously. IP Australia prioritizes them, reducing the risk of your mark being blocked by someone else’s later-filed but earlier-examined application. If there’s a conflict with another trade mark that slipped through, the Registrar can even revoke that earlier acceptance, that’s how seriously these priority rights are taken.
Common issues and how to avoid them?
As someone who’s worked with international filings for years, I can tell you the most common errors people make-
- Missing the 6-month deadline.
- Failing to make the priority claim within two working days.
- Applying with a slightly modified version of the original trade mark.
- Not matching the goods/services precisely with the earlier application.
These may seem small, but they can ruin your entire claim. So, when in doubt, consult a professional, preferably someone who’s navigated this more times than one can count.
Final Thoughts
The Convention application process is a golden opportunity to expand your brand globally without losing priority. If you’re already securing trade mark rights in your home country, don’t let that head start go to waste when entering the Australian market.
Take the time to prepare properly, stay within deadlines, and leverage the Paris Convention to your benefit. It’s one of the smartest moves you can make in international brand strategy. And if you’re still unsure how to navigate it all, drop us a message. We’re here to help.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
