Overview of first to use and first to file in the IP law

In regards to industrial property rights, there are two principles that are normally applied to consider when there are many filed applications for the same industrial property object or for objects being similar to each other up to causing confusion for consumers. Those are “first to use” and “first to file”. This article will outline the content of these two principles in a compared view.

Criterion First to use First to file
Content The first to use (or priority for the first user) principle means that industrial property right is given for the first who has used it, not the first who has filed application. On the other words, when registrar considers two or more applications for the same trademark or when there are any disputes in the registration of a trademark, the registrar will examine the date which the trademark was used of each party relating. The party demonstrating that his/her trademark use is earlier than the other’s will be granted a certificate of trademark protection.  The first to file means that if there are plural of the registered applications which have the industrial property object being identical or similar to cause confusion with each other, protection file is just granted for an application having the earliest prior date or the earliest filed date in the number of applications being eligible to grant the protection file. 

If there are many applications for registration that have all criterion of trademark protection and have the same priority date or the earliest filing date, the protection title shall only be granted to one of those applications under the agreement of parties, the applicants. If the applicants cannot reach an agreement, all applications will be able to be denied protection.

Thus, according to the First-to-file principle, the law only protects the entity who filed the earliest registration for the same object under Industrial Property rights such as inventions, trademarks, industrial designs, … not the first to use it.

Disadvantages  This is a principle that was born very early when the first trademark law was enacted in the world, it played a certain role in the history of IP law. However, the application of this principle has also shown many limitations, especially when the economy has developed sharply and diversely. Because the application of the first-to-use principle in practice is extremely difficult for the registrar to determine who is the first user, when to start using it, and who uses the trademark being identical or similar or not, and whether using the mark with a commercial aim or not, …

Due to the above limitations, the first-to-use principle only plays a certain role in the history of trademark registration. In fact, no other country applies separately the “first – to – use” principle, they often combined with the “first – to –file” principle in the examination of industrial property registration applications, typically including the United States. So today, most countries use the principle of first registration (first – to – file).

In practice, the first to file principle is also exposing a certain number of limitations. Although it creates easier for the registrar when considers registration trademark applications; however, in some cases, for self-seeking purposes, some people have “registered for” the owner and really cause a big problem for the owner to reclaim his trademark. 

To overcome this situation, most countries have provisions on the obligation to use a trademark for a certain period of time. If a trademark is not used, it may be required to void the validity of a protection title in order to enable the owner to regain his / her mark and (at the same time) promote its commercial purposes.

However, the principle “first – to – file” is still considered the most important principle and the most complete legal basis for the acceptance of trademark registration of almost all legal systems in the world such as the laws of the EU, Japan, the United States, Vietnam, …

Countries used USA, Canada, India, Uruguay, Israel… UK, China, Japan, Euro, France, Germany, ….

Thus, because of many advantages, the first to file principle is the most widely used principle in the world today. However, some countries still use the first to use as an addition to tackle the limitations of the first to file.

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