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First to File vs First to Use
The question of when to file a trade mark application is an important one. Some countries have a “first to file” rule and others have a “first to use” rule. What qualifies as “use” of a trade mark varies in different jurisdictions. The “first to file” system grants rights to the person who first filed a trade mark application, even if another party can show prior use of the trade mark. The “first to use” system recognises an unregistered brand being used as a trade mark and confers some rights on the owner.
Different jurisdictions have different provisions for unregistered trade marks. First-to-file countries outnumber the first to use jurisdictions. However, this list is also subject to change depending on legislation changes in the countries. When considering a global trade mark filing strategy, it is important to consider whether the country is a ‘first to file’ or a ‘first to use’ jurisdiction. It is advisable to contact one of our trade mark attorneys who will help you make the right decisions. The map and table below show some examples of countries which have a ‘first to file’ or ‘first to use’ system.
Aruba | Australia | Brunei Darussalam | Canada | Costa Rica | Cyprus | Denmark | Fiji | Hong Kong | Iceland | India | Ireland | Israel | Jersey | Kenya | Lebanon | Malawi | Malaysia | Malta | New Zealand | Papua New Guinea | Puerto Rico | Samoa | Singapore | South Africa | Swaziland | Trinidad & Tobago | United States | Uruguay | Zimbabwe
Algeria | Anguilla | Argentina | Austria | Belarus | Belize | Benelux | Bolivia | Botswana | Brazil | Chile | China | Colombia | Croatia | Curacao | Czech Republic | Dominican Republic | Ecuador | El Salvador | Estonia | European Union | Finland | France | Germany | Greece | Guatemala | Hungary | Iran | Japan | Jordan | Kazakhstan | Kuwait | Kyrgyzstan | Lithuania | Mexico | Moldova | Montenegro | Nicaragua | Nigeria | Norway | Peru | Philippines | Poland | Qatar | Romania | Russian Federation | Slovenia | South Korea | Spain | Syria | Taiwan | Uganda | Ukraine | United Kingdom | Venezuela | Vietnam | Zambia