The Madrid Designation and the Priority Puzzle
A German company files an international registration under the Madrid Protocol, designating Australia, based on a German basic application filed on 3 March. The international registration is dated 12 September and claims priority from the German application. The goods in class 9 are 'computer software; downloadable software applications; software for use in database management'. The Australian examiner raises an objection that the claimed priority is not supported because the German basic application covered only 'computer software for use in database management', while the international registration covers the broader list. The holder's Australian agent also discovers that a third party filed an Australian application for a similar mark in class 9 on 20 August. The holder wants to know whether priority can be saved and what effect the third party's filing has.
1. Explain the principle governing partial priority and assess whether the holder can retain priority for any of the goods.
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Priority is claimed for the goods specified in the earlier application, and it can be claimed for some goods and not others. The holder cannot obtain priority for goods that were not disclosed in the German basic application. So 'software for use in database management' is supported and can retain the 3 March priority date, while 'computer software' and 'downloadable software applications' at large are broader than the earlier disclosure and cannot claim priority for the additional scope.
The practical consequence is that the Australian designation has a split date: 3 March for database management software, and 12 September (the international registration date) for the broader goods. The examiner's objection should be answered by amending the goods to align with the basic application where priority is needed, or by accepting the split date and arguing that the broader claims are still registrable on their own merits.
Partial priority is a recognised technique and should be explained to the holder clearly: it is not a case of losing everything, but of identifying precisely which goods were disclosed earlier. The response should set out the amended list and the basis for each date, and should not simply assert that the priority claim is valid in full.
2. The third party's Australian application was filed on 20 August. Explain how the priority outcome affects the citation position.
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The third party's 20 August filing sits between the German priority date (3 March) and the international registration date (12 September). Whether it is cited against the holder, or the holder against it, depends on the date attached to each good.
For the database management software, the holder's priority date of 3 March precedes 20 August, so the holder is earlier for those goods and the third party's application may be cited against the holder only if the marks are substantially identical or deceptively similar and the goods overlap; the holder's earlier date is an answer to the citation for those goods. For the broader goods, the holder's relevant date is 12 September, which is after 20 August, so the third party is earlier for those goods and may be cited against the holder there.
The holder should be advised that the outcome is goods-specific. The practical strategy is to secure the priority-supported goods and to consider whether the broader goods are worth fighting for, given the citation risk. The holder should also be told that the third party's application may itself be opposed or cited, and that the timing should be diarised. The lesson is that a priority claim is not a single yes-or-no answer; it must be mapped good by good against the intervening filing.