“First to file” rule, along with priority principle, are the rules governing the the registration of intellectual property rights. This principle is applied to various types of industrial property objects including inventions, industrial designs and trademarks.
Intellectual property rights for these objects are established on the basis of decisions to grant protection titles according to the registration procedures. So the “first to file” principle is built and applied in the cases where there are many entities applying for identical or similar inventions, industrial designs, or trademarks. Therefore, the earliest submitted application will be accepted for protection.
1. Introduction of the intellectual property rights registration
Different IP rights’ objects have different basis of arising and establishment. Copyright is automatically made at the moment the work is generated. Similarly, related rights arise when their objects are established or conducted.
Industrial property right to a trade name is established on the basis of its lawful use. The right to a business secret is dependent on the legal business secret and implementing its confidentiality. The right to noncompetition is established on the basis of business competition activities.
The intellectual property rights for the remaining objects are established on the basis of granting protection titles according to the registration procedures. These are patents, industrial designs, semiconductor circuit designs, trademarks and plant varieties.
In short, there are two main procedures in intellectual property registration. Firstly, individuals and organizations submit registration applications to the competent authority to ask for exclusive intellectual property rights. Secondly, the authority examines the application and decides whether to grant the protection title or not. The “first to file” principle is applied in the appraisal process.
2. Introduction of first to file rule
There are two options to deal with the cases where there are many entities applying for the same or not significantly different or similar objects. Firstly, the protection title shall be granted for the first invention, the first invented industrial design, the plant variety chosen to be first created or discovered and developed, the first used trademark. Secondly, granting protection titles shall be made for inventions, industrial designs, plant varieties and trademarks in the first filed registration application.
“First to invent” and “first to use” rules are developed for the first option. “First to file” principle is developed for the second one.
“First to file” principle is stipulated at Article 9- and Article 166 of Vietnamese Law on Intellectual Property
3. The content of the first to file rule in Vietnam
Pursuant to Article 90.2 Law on Intellectual Property, there are 04 standards for being considered when applying this principle to the trademark.
Firstly, the trademarks being considered are identical or confusingly similar. Evaluating whether two trademarks are identical or confusingly similar is not made on the basis of factors of structure, pronunciation and meaning.
Secondly, trademarks being taken into account are registered for identical or similar products and services. Here, the duplication and similarity is evaluated according to factors of nature, purposes of use and distributing channels.
Thirdly, whether trademarks being considered meet the conditions for protection or not. The “first-to-file” rule is applied only when all of the trademarks under consideration cover full of standards for protection.
Additionally, the mark in the valid application has the earliest filing or priority date. Only valid applications will be considered. When an application has a priority date, it means that the application is seen to have been filed on the first earlier filing date for the same mark in a country that is a party to an international treaty stipulating the priority right which Vietnam is also a member of or has an agreement to apply such provisions in Vietnam.
Under Clause 3, Article 90 of the Intellectual Property Law, if there are many applications with the same filing date or priority date, only one application shall be accepted for protection by agreement of all applicants; If no agreement is reached, all application will be rejected.
a)Mr. A filed a trademark application in Vietnam for the mark “ABB” for legal services on 01/08/2020. Mr. B filed an application for trademark ABB for legal services on 02/08/2020. This trademark meets all conditions for protection.
Thus, Mr. A’s application is filed earlier so the protection title will be issued to Mr. A’s mark.
Ms. C filed an application for trademark ABB Law for legal services on 01/08/2020. Ms. D filed a registration for the same trademark for legal services on 02/08/2020 but also filed a registration for this mark for legal services on 02/06/2020 in China. At the same time, Ms. D asks for a priority right. This trademark meets all conditions for protection.
Thus, the priority date of Mr. B’s application is earlier than the filing date of Mr. A, so the protection title will be granted to Mr. B’s mark.
c) Company E filed an application for trademark A&S for legal services on 01/08/2020. Company F filed an application for trademark A&S for legal services on 01/08/2020. The two companies cannot agree on whose trademarks will be protected.
Thus, both applications will be rejected.
3.2. As for inventions and industrial design
Clause 1, Article 90 of the Intellectual Property Law stipulates:
“In case there are many applications for identical or equivalent inventions, identical or not significantly different industrial designs, the protection title shall be only granted for the invention or industrial design in the valid application having the earliest priority date or filing date among those meeting the requirements for the protection title.”
There are 03 conditions for consideration when applying this rule to inventions and industrial designs.
Firstly, patents are being considered to be identical or similar or industrial designs are being taken into account to be identical or not significantly different.
Secondly, the inventions and industrial designs under consideration have met the protecting conditions. The “first to file” principle is applied only when all inventions or industrial designs under consideration satisfy the conditions for protection.
Thirdly, which application has the earliest filing date or earliest priority date. The applicant may enjoy the same priority right as the trademark’s priority mechanism with other specific regulations, of course
Clause 3 of this Article as mentioned before is also applied to patents and industrial designs
3.3. As for plant varieties
“In case two or more independent applicants submit an application for registration on different dates for the same plant variety, the plant variety protection title can only be issued to the earliest valid registrant.”
Similar to the above intellectual property objects, when the “first to file” rule is applied for a plant variety, the earliest applicant will be granted a Protection Title.
Clause 2 of this Article regulates:
“In case there are many applications for the same plant variety filed on the same day, the Plant Variety Protection Certificate may only be granted to the person who submits an exclusive application by agreement of all registrants. If the registrants fail to reach an agreement, the competent authority of the rights to the plant variety will consider to issue a plant variety protection certificate on the basis of identifying the first person who chose to create or discover and grow that plant.”
Contrary to the provisions of Clause 3 Article 90, in case applicants on the same day cannot reach an agreement, the management agency for the rights to the plant variety will have a right to choose a person to grant the protection title. It is the Department of Crop Production under the Ministry of Agriculture and Rural Development that will be in charge of issuing the certificate.
4. Advantages and disadvantages of first to file fundamental
There are three advantages of the first-to-file rule as follows.
Firstly, simple and economical. To determine which applicant is granted a protection title, the registration office only needs to base on the filing date or the priority date noted in the application process.
As for the first-to-invent principle, as used in the US for the invention, a new procedure arises. When more than one person are applying for the same invention, the parties may have to attend a hearing at the Board of Appeals and Interferences of the US Patent Office (USPTO).
This is an expensive procedure in terms of time and money. The first invention principle rewards the first person inventing the invention, not the first person to win the race to the registration office. However, to enjoy the rewards, the first inventor may have to sacrifice a lot of time and money. That means the good intentions of this principle may not be achieved due to a lack of resources.
As for the first-to-use principle applied to the trademark, the complexity lies in the stage of proving the actual use. In the United States, for example, whether the application has the basis of being in use or intention to use, the applicant will eventually have to submit necessary documents to prove the actual use of the trademark. In order to maintain the validity of the protection title, the title owner also needs to submit documents proving the actual use. This means, in addition to the cost of registration, the applicant /owner will incur additional costs for the collection and submission of supporting documents.
Secondly, promoting the disclosure of inventions, plant varieties. A protection title can be seen as a contract between the public and the inventor. In return for revealing their works, the inventors will be exclusively exploited for a certain period of time. The inventors, to a certain extent, do not have to worry that their applications will be rejected by another undisclosed invention at the time of application. So the investment in research and scientific development will be encouraged.
Thirdly, promoting a sense of self-protection. This principle creates a race for stakeholders. The parties need to actively conduct registration procedures if they do not want to lose their investment. Whoever wins, the public will benefit.
Unfortunately, there are exceptions for this.
The above exception is the downside of the first to file rule. Taking advantages of this drawback, many people misappropriate intellectual property of others. This behavior is most common for brands.
The object of the registration behaviour with the intention to misappropriate trademarks of others (trademark squatting) are often famous trademarks that have already had value in the market. Especially the brands that are well-known in foreign countries but have not been registered in their home countries. When a trademark is registered for misappropriation, the person using it will often face unfair competition or have to pay an amount of money to ransom the trademark. And consumers will be in the edge of being deceived.
In order to mitigate this weakness, the provisions on cancellation of certificates on the basis of non-use, denial of a bad-faith application and other regulations have been put in place. But it is hard to get rid of the downside.
5. List of nations apply the “first to file” principle
All countries in the world apply the first filing principle or a variation of it to inventions, industrial designs and plant varieties