Are you an entrepreneur and quite proud of your trademark? Do you want to protect this brand? Or do you have a strong idea for a new trademark? Then you must have thought about protecting the latter. If you would like to have your trademark protected in the Benelux or in the entire European Union, for example, you will have to apply for this protection. But there are also countries, such as the United States, for which you do not actually have to apply for this formally. Or do you? We will look into this in more detail in this blog.
First to file vs first to use
A trademark is registered in a country or region. Trademark protection systems can be divided into the categories ‘first to file’ systems and ‘first to use’ systems. These categories distinguish between the actual use of a trademark in commerce on the one hand, and the formal registration of that trademark on the other hand.
First to use?
A ‘first to use‘ system refers to a system where the mere actual use of a trademark in commerce confers rights on that user. The condition is that he is the first to do so. This means that the trademark does not have to be officially registered first and that it does not matter that someone else had already applied for the protection of the trademark before In other words: what matters is who is the first to actually use the trademark in commerce. The trademark must be used “as a trademark” however, i.e. as a sign which identifies goods and/or services as originating from a particular company.
The United States and Canada are typical examples of countries with a first to usesystem.
First to file?
A ‘first to file‘ system, on the other hand, refers to a system where in principle it is necessary that you are the first to file an application for the protection of that trademark. Only after that application is filed can you obtain any rights to that trademark. Whether you are the first to actually use the trademark in commerce is, in principle, irrelevant.
The system of both the Benelux and the European Union, as well as the system of Japan, China and countless other countries, is a first to file system.
Nuances and remarks
What is described above are the starting points of both types of systems and the basis for the categorisation. But as is often the case with general subdivisions and categories, the majority of trademark protection systems are more nuanced. Practice is therefore not as black and white as this often-used categorisation would suggest.
Conditions of first to use
In first to use systems, the rights that you obtain as a result of being the first to use will almost always be weaker than equivalent rights that you would obtain if you were to get the trademark registered.
You also have to take into account that in most first to use systems there are conditions with regard to obtaining first to use rights. In the United States, for example, it is generally required that the ‘first’ use of the trademark is a use that spans several states. You will also have to prove the use. So don’t just say (first) use!
Goodwill with first to file
In most first-to-file systems, there is a certain degree of recognition of the first creator/user of the trademark as rightful owner of the trademark. The goodwill created by him is taken into account. Obtaining an undisputed exclusive right to a trademark is therefore not always the consequence of being the first with your application. You see that in this respect the boundary withfirst-to-use systems is blurred.
Finally, if you obtain a registration for a trademark in a country or region with a first to file system, it is important to use the trademark in commerce in order to maintain this protection. Actual use of the trademark is therefore also in first to file systems an important aspect.
Trademark squatting
If you want to let it all run its course, then a warning is in order. If you want to protect your trademark in a country or region with a first to file system, but you forget to effectively register your trademark and you cannot demonstrate goodwill, then you could become the victim of “trademark squatting”. A third party (e.g. your competitor) can , without your authorisation, apply for protection for your trademark.
The intentions are clear: this third party can of course demand (large) sums of money from you for the transfer of the rights concerned. It is also possible that the third party does not want to extort money from you, but wants to profit from the reputation you have built up with your trademark. Apple and Ferrari are just a few of the companies that have already fallen victim to such practices.
Conclusion: register as soon as possible!
Do you want your trademark to be protected? Then registration is the message. As soon as possible. And this regardless of whether you want your trademark protected in a country or region with a first to use system or in a country or region with a first to file system.
Immers, in een land of regio waar het merkbeschermingssysteem een first to use systeem is, zijn de sterkste rechten niet verbonden aan het gebruik ‘als eerste’, maar wel aan een registratie. Of course, you must ensure that you also fulfil the necessary conditions concerning use. After all, it remains a first to use system. In anticipation of actually using the trademark, you can always file an application with an “intent to use“.
If you would like to have your trademark protected in a country or region where the system is a first to filesystem, but you do not register your trademark, you run the risk of becoming the victim of trademark squatting. Naturally, you want to avoid this. You have put a lot of effort into your trademark. Do not let this be a wasted effort.
Are you an entrepreneur (to be) and do you want to protect your trademark? Contact us at hallo@dejuristen.be.
Written by Sofie Moore, Legal Adviser theJurists and Kris Seyen, Partner theJurists
