First To File Versus First To Use

The debate between which countries are ‘first to file’ and ‘first to use’ is partially a misnomer from the outset in the sense that the rights to all trademarks are dependent on use – ‘use it or lose it’ is a pertinent expression in this context.

The ‘first to use’ system recognizes an unregistered brand being used as a trademark (that is, an identifier of the source of the goods or services) and confers rights on the owner although these are typically weaker than the equivalent registered rights.

‘First to file’ systems vary in their application. China stands out as a country that takes a hard line stance. The first person to register a brand obtains the rights regardless of creation or use by a different business owner. In most other regions that practice ‘first to file’, there are varying degrees of recognition of the goodwill built up by a prior creator and user of the brand. ‘First to file’ does not always mean that the first registrant will acquire inarguable sole rights.

First to File or Use Isn’t as Straightforward as it Sounds

Most first to file countries will allow applications on the basis of goodwill acquired by the prior user of a brand but there are other terms and conditions that are worth considering. The US is a ‘first to use’ country but the ‘use’ must fulfill certain criteria to qualify. Local use of a brand does not generally qualify as a first use in commerce, it requires instead that the use must take place in an inter-state commercial setting.

First to Use Countries

First to use countries include 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, and Zimbabwe. Many of these registries will have specific limitations and conditions regarding ‘first to use’ rights and it is virtually always the case that registration of a brand as a trademark will confer stronger and less disputable rights than relying on use in any event.

First to File Countries

A larger proportion of countries are first to file and include 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, and Zambia.

Just as with ‘first to use’ countries, there are variations in what challenges are permissible in terms of earlier goodwill obtained through use in commerce — ranging from no challenge at all to more liberal. The definition of adequate ‘use in commerce’ will incorporate factors such as use in advertising versus sales of the products, geographic area requirements, and differing evidentiary burdens for the accompanying factors.

Change is inevitable in every facet of life and trademark registration is no exception. Across regions, legislation, case law, and Intellectual Property Office processes are in a constant state of flux. It is always best to not rely on general information which may be out of date and instead go to the relevant primary source for up-to-date information before forming any concrete international trademark strategies.

Along with filing requirements, the length of time you can expect an application to register a trademark in any particular region can vary dramatically between countries and should be a consideration when developing your filing strategy.

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