Trademarks: A Guide to First-to-Use Vs First-to-File Regimes

When it comes to trademark registration, the question of when to file an application becomes pertinent for brand owners. Some countries follow a first-to-use rule and others a first-to-file rule. Your trademark strategy differs depending on which rule your targeted jurisdiction follows. For example, you need to understand the implications of the first-to-file rule while conducting trademark registration in the UAE. On the other hand, you must understand the first-to-use rule if you have a brand in countries such as the US or Canada.

Trademark agents in the UAE can advise on the trademark protection rules followed by each country. Read ahead to know more about the differences between the first-to-file and first-to-use countries:

What’s the First-to-Use Trademark System?

Some countries follow the first-to-use system where the first users of the mark get trademark rights over the others. The first-to-use right can be claimed irrespective of whether the mark is unregistered at the time of actual use in commerce. Mainly countries that follow the common law system grant trademark rights through the first-to-use system. The US and Canada are the prominent countries that follow the first-to-use system. Trademark agents in the UAE can advise you further on the first-to-use trademark protection rule.

What’s the First-to-File Trademark System?

In the first-to-file trademark regime, applicants who apply first for trademark registration will be granted trademark rights and priority. This is regardless of whether the applicant has used the mark in commerce or whether any other party has used the mark in commerce before the applicant. Most jurisdictions in the world including the UAE, China and the European Union follow this first-to-file trademark system.

Most countries follow the first-to-file system because it is easier to administer. Furthermore, it is easier for the IP offices to determine the first entity to apply for trademark registration than to determine which brand owner may have first used the unregistered mark in commerce and in which geographical territories to ascertain priority. However, the date of filing the application is important in these countries.

Who Gets the Trademark Right when a Conflict Emerges?

Let’s imagine that the brand XYZ started using a trademark at the beginning of the year, but does not file an application for trademark registration. Later, another brand named ABC choose the same mark for the same or similar goods in the same market. ABC also files an application for registration with the Trademark Office. After some time, say three months later, XYZ also decides to file an application for the same trademark. The following will illustrate who will get the trademark in different regimes:

A). The First-to-Use System

In a first-to-use country, XYZ would be granted the rights for the trademark, even though the rand owners filed an application to register the mark three months after ABC. This is because XYZ was the first to use the trademark in commerce.

B). The First-to-File System

On the contrary, in a first-to-file country, ABC would normally be granted the trademark right because ABC filed the application first.

Trademark Strategies for First-to-Use and First-to-File Systems

Regardless of whether brand owners are planning to use their marks on goods or services in commerce under a first-to-use or a first-to-file trademark regimen, it is advisable to file for trademark registration as early as possible prior to actual commercial use. This is because, even if you have the right to oppose the other party, you should be required to submit the relevant proof of use. This will require you to spend your resources, time and money to defend your trademark. Trademark agents in the UAE can advise you to ensure trademark rights in both regimes.

Consult with the Best Trademark Agents in Dubai, UAE for Brand Protection

Obtaining trademark registration for your brand‘s name, logo or slogan requires you to examine the trademark system in the relevant jurisdiction. This requires you to develop a strategy for both first-to-use and first-to-file regimes. Trademark agents in the UAE such as Jitendra Intellectual Property (JIP) can help you decide on strategies for different regimes.

JIP is one of the leading providers of trademark services in the UAE with years of experience and thousands of satisfied clients. JIP can take care of your trademark protection strategy by offering services such as trademark registration, renewal, trademark search, and trademark watch services in the UAE. We also offer international trademark protection services through the Madrid Protocol. Avail of our brand registration services in the UAE to ensure your valued trademark remains protected wherever you have the business.