WIPO, Seminar on IP and Creative SME’s
Geneva, May 18, 2009
Trademark Portfolio Management
Prof. Dr. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
The problem
national route
solution 1:
harmonisation of
national procedures
file in many Offices
in many languages
fees in many currencies
solution 2:
numerous national agents
bundle of registrations
via central procedure
results in many national
registrations
requires many renewals
solution 3:
changes to be recorded via
each national Office
transnational trademark
law system
2
Strategic considerations
type of trademark
link with a specific cultural context?
universal basis for marketing activities in foreign countries?
description of goods and services
different approaches, for instance, in EC and US
requirement of use
portfolio management
registration and administration costs
languages, dates, trademark watch
3
Strategic considerations
portfolio management
central or decentral structure?
establishment of a trademark holding?
tax efficiency
4
Case Study I
Switzerland
‘uncontrolled’
accumulation of
registrations
5
Streamlining via the EC system?
Switzerland
‘uncontrolled’
accumulation of
registrations
6
EC route: Community trademark (CTM)
filing in an official EC language
indication of a second language for opposition,
revocation or invalidity procedures
(art. 115 CTMR: EN, FR, DE, IT, ES)
seniority claims (art. 34 CTMR)
conversion in case the registration is refused,
withdrawn or ceased to have effect
(art. 112 CTMR)
7
Claiming seniority
1.1.2007
A registers
the mark Y.
1.1.2008
B registers the
conflicting mark
YY.
8
1.1.2009
A registers Y as a
CTM claiming the
seniority of the earlier
identical mark in
respect of Germany.
Conversion
filing date of CTM application maintained
(including potential priority date)
seniority guaranteed
designated EC Member States can ask:
payment of national fees
translation into an official language of the State concerned
address in the State concerned
reproduction of the trademark
9
Streamlining via international route?
Switzerland
‘uncontrolled’
accumulation of
registrations
10
Madrid Union (84 Members)
Agreement only 6
Protocol only 28 (including EC)
both treaties 50
11
Overview of the System
Madrid Agreement (A)
Madrid Agreement of April 14, 1891
Madrid Protocol (P)
Madrid Protocol of June 27, 1989
common regulations
administrative instructions
national law (Madrid interface)
12
Basic principle
extension of protection
from one Member of the
Madrid Union to other
Members
13
Resulting procedure
national basis: registration (A/P), application (P)
OFFICE OF
ORIGIN
INTERNATIONAL
BUREAU
OFFICE OF
DESIGNATED
CONTRACTING
PARTY
Certifies particulars in international
application = particulars in basic
application or basic registration
Checks formalities
Records in the International Register
Publishes in the International Gazette
Notifies designated Contracting Parties
substantial examination
within
12/18/18+
months
no refusal = effect of
refusal
a national registration
14
Stages of extension
first step:
further steps:
designation of Union
Members in the initial
application
subsequent
designations
(further markets)
15
Designation of the EC
Claiming seniority (MM17)
17
Procedure
WIPO notifies EC Office (OHIM)
publication in the WIPO Gazette together with the
international registration
on request by OHIM: evidence of earlier national
registration (directly submitted to OHIM)
certified copy
photocopy
extract of an official database
18
Conversion: two options (art. 159 CTMR)
European:
according to the
rules of the CTMR
international:
transformation into a
‘subsequent designation’
(arts. 112-114 CTMR):
(rule 24(7) CR):
translation required
no translation required
19
Subsequent designation
date of designation of the EC and potential seniority
claims maintained
portfolio remains within the Madrid System
central administration (change of name, address, holder)
central renewal date
subsequent designation
international registration
expiry
20
Designation of the US
Description of goods and services
basic description
international description
specific
description
for the US
22
Declaration on ‘Intention of use’ (MM18)
23
Case Study II
Which basis for
an international
application?
24
Protocol Member as a basis
P
P
United States of America
P
P
AP
European Community
Albania
A
Egypt
25
Agreement-only Members
of the Madrid Union
Egypt
Liberia
Algeria
Sudan
Kazakhstan
Tajikistan
26
Refusal period (art. 5(2))
Agreement
12 months
12 or 18 months
Protocol
18+ months in case
of opposition
27
Fee structure (art. 8)
Agreement:
basic fee
…for each class beyond 3:
Protocol:
basic fee
…for each class beyond 3:
supplementary fee
supplementary fee
…for each designated State:
…for each designated Party:
complementary fee
complementary fee
…optional individual fee
(art. 8(7))
28
Risk of a ‘central attack’
5 years after the
international
registration
before expiry
of the period
of 5 years
no longer any influence,
dependency (-) (art. 6(2))
risk of a ‘central attack’,
dependency (+) (art. 6(3))
EC designation:
conversion
Protocol:
transformation
(arts. 112-114 CTMR)
(art. 9quinquies MP)
29
Party to both treaties as a basis
A
O
Egypte
AP
AP
P
P
Europese Gemeenschap
Switzerland
AP
AP
China
30
Repeal of the ‘safeguard clause’
historically: Agreement takes precedence
amended art. 9sexies of the Protocol:
‘This Protocol alone shall be applicable as regards the mutual
relations of States party to both this Protocol and the Madrid
(Stockholm) Agreement.’
‘…a declaration made under Article 5(2)(b), Article 5(2)(c) or
Article 8(7) of this Protocol, by a State party to both this Protocol
and the Madrid (Stockholm) Agreement, shall have no effect in
the relations with another State party to both this Protocol and
the Madrid (Stockholm) Agreement.’
31
Influence on refusal periods
Agreement
12 months
12 of 18 months
Protocol
18+ months in case
of opposition
32
Influence on fees
Agreement:
basic fee
…for each class beyond 3:
Protocol:
basic fee
…for each class beyond 3:
supplementary fee
supplementary fee
…for each designated State:
…for each designated Party:
complementary fee
complementary fee
…optional individual fee
(art. 8(7))
33
Same possibilities of transformation
5 years after the
international
registration
before expiry
of the period
of 5 years
no longer any influence,
dependency (-) (art. 6(2))
risk of a ‘central attack’,
dependency (+) (art. 6(3))
EC designation:
conversion
Protocol:
transformation
(art. 159 CTMR)
(art. 9quinquies MP)
34
Case Study III
Switzerland
countries which
cannot be
reached via
transnational
systems
35
National route: harmonisation treaties
1994 Trademark
Law Treaty
2006 Singapore
Treaty on the Law
of Trademarks
36
Advantages
definition of maximum requirements for
applications (filing date requirements)
requests for
changes (name/address/ownership)
corrections of mistakes
renewal
no legalization or certification of signatures
enhanced legal certainty and security
familiar framework in all Contracting Parties
relief measures (extension, continued processing,
reinstatement of rights)
37
Singapore Treaty:
in force since March 16, 2009
Australia
Republic of Moldova
Bulgaria
Romania
Denmark
Singapore
Kyrgyzstan
Switzerland
Latvia
United States of America
Poland
38
The End. Thank you!
contact: [email protected]
Descargar

Slide 1