Submarine trade marks

When it sinks down to it a trade mark is an indicator of a good or service. Once registered a trade mark becomes a valuable right as it provides the owner with a monopoly to use the trade mark and prevent others from using the same mark. A registered trade mark puts the world on notice of the rights of the owner by virtue of the publication in a register of trade marks.

However, to obtain a registered trade mark first an application needs to be filed. Great news because in the UK, where we are a ‘first to file’ jurisdiction, as soon as your trade mark application is filed you will claim a priority right over other trade mark applicants seeking to register the same or similar trade marks. Think of it as a first in time, first in right kind of thing.

A trade mark application will cover three basic elements: 1) the trade mark (for example a word or logo, ‘Lawdit’), 2) a specification of goods and/ or services (for example ‘legal services’) and 3) the owners details (for example ‘legal services’). These three elements tell a lot about an entity’s proposed activities, it is easy to predict what the brand has planned, and these will be on a publicly available register.

That’s great but what if you have a secret project or brand but want to ensure you are ‘first in right’ without putting other third parties or even competitors on notice of your new brand. What is best: legal protection or disclosure of your new brand? Well that’s where a submarine trade mark application sinks in.

A high majority of jurisdictions have publicly available online trade mark registers, usually these registers will display a trade mark application to the world soon after the application is filed. In the UK Intellectual Property Office this usually takes a day or two but in the EU Intellectual Property Office it can be the same day.

A submarine trade mark application is first filed in a jurisdiction which does not have an online trade mark database. Jamaica and Mauritius both do not have online trade mark databases, this means that unless you want to pay an agent to do a search of the trade mark register in those jurisdictions you will not be able to see the new application. In turn this generally will mean that you will not be able to easily be able to find out about my new trade mark application and my new top secret brand.

But that’s great, I would prefer a trade mark in the UK or the EU still be ‘secret’ and also ‘first in time and right’. This is where the Paris Convention for the Protection of Intellectual Property (the convention) comes in, a high majority if not all jurisdictions are signatories to the convention. Amongst other provisions the Article 4 of the convention provides for a priority filing.

A priority filing makes use of a provision which essentially says any identically filed subsequent trade mark can claim a priority filing date of the first trade mark application, for six months. This means that if I file my secret trade mark in Mauritius today (20 June 2019) I have six months in which I can file the same trade mark application in another convention jurisdiction and clam 20 June 2019 as the filing date. Sinking down to the fact that when I choose to file my new brand on an online database and make it publicly available, I will already have up to six months of priority or ‘first in time first in right’ over my competitors.

If you have a new idea for a brand and want to start building up your trade mark rights without putting the world on notice, why not contact Lawdit where we would be more than happy to assist you. We have an extensive network of international trade mark and intellectual property agents so if you would rather file first in Jamaica – were chillin’ with that man!

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