International Trademarks

8/6/2019 International Trademarks

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International TrademarkInternational Trademark

Treaties and StrategiesTreaties and StrategiesPamela C. Gavin, Esq.Pamela C. Gavin, Esq.

Gavin Law Offices, PLCGavin Law Offices, PLC

GRIPLA October 28, 2010GRIPLA October 28, 2010


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Paris ConventionParis Convention

National FilingsNational Filings

Madrid ProtocolMadrid Protocol

Community TrademarksCommunity Trademarks


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Paris ConventionParis Convention

National TreatmentNational Treatment

Convention PriorityConvention Priority

Protects wellProtects well--known marks,known marks,trade names, and claims derivingtrade names, and claims derivingfrom unfair competitionfrom unfair competition

Registrations are independentRegistrations are independentfrom each otherfrom each other

Currently 173 signatoriesCurrently 173 signatories


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Practice PointersPractice Pointers

Within six months of filing U.S.Within six months of filing U.S.marks, recommend to clients to filemarks, recommend to clients to file

foreign applications in Parisforeign applications in ParisConvention (and certain other)Convention (and certain other)countries (e.g., China)countries (e.g., China)

Can include goods/services inCan include goods/services in

original application, as well as other,original application, as well as other,nonnon--priority goods/servicespriority goods/services


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National FilingsNational Filings Know YourKnow Your

CountryCountry!! Rules differ from nation to nationRules differ from nation to nation

First to file vs. first to register?First to file vs. first to register?

Scope of searches and claimsScope of searches and claims Identical/similar? Class headings or detailed?Identical/similar? Class headings or detailed?

Assistance of local counsel helpfulAssistance of local counsel helpful Most expensive optionMost expensive option May be more vigorously examined than MadridMay be more vigorously examined than Madrid

applications which face strict exam timeapplications which face strict exam timedeadlinesdeadlines

May also be more enforceable before localMay also be more enforceable before localcourts (e.g., BOIP)courts (e.g., BOIP)


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German National Filing IllustrationGerman National Filing Illustration

Filing for Class Headings allowedFiling for Class Headings allowed

Examination covers only inherent registrabilityExamination covers only inherent registrability

(not third party rights)(not third party rights) Marks are opposedMarks are opposed afterafter registration issuesregistration issues

Bases for opposition: Registered marks; nonBases for opposition: Registered marks; non--registered marks; business signs; companyregistered marks; business signs; company

names (e.g., Daimler even though not used onnames (e.g., Daimler even though not used oncars in Germany but is used in trade); titles ofcars in Germany but is used in trade); titles ofworks (books, software), wellworks (books, software), well--knownknowntrademarkstrademarks


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ImplicationsImplications Practice PointersPractice Pointers

Preclearance implicationsPreclearance implications

Properly advising clientProperly advising client

If claim class headings, how to showIf claim class headings, how to showgenuine use to keep registrationgenuine use to keep registrationalive?alive?

Rely on advice of local counselRely on advice of local counsel


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Madrid ProtocolMadrid ProtocolS

trategic InsightsS

trategic Insights Allows for trademark owner to obtainAllows for trademark owner to obtain

protection in any or all memberprotection in any or all member

states selectively with simplifiedstates selectively with simplifiedprocessprocess

National examinations are required;National examinations are required;if pass, country is included in IRif pass, country is included in IR


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Madrid ProtocolMadrid Protocol

Challenges andP

racticeP

ointersChallenges andP

racticeP

ointers Requires showing of use in each countryRequires showing of use in each country

Applicant for an IR (bundle of national rights)Applicant for an IR (bundle of national rights)must be a national of, or domiciled in a membermust be a national of, or domiciled in a membercountry.country.

In an application filed under the Madrid Protocol,In an application filed under the Madrid Protocol,the description of goods and services must be nothe description of goods and services must be nobroader than those in the home applicationbroader than those in the home applicationregardless of whether priority is claimed.regardless of whether priority is claimed.

Action for infringement is taken through theAction for infringement is taken through thecourts of the country concerned and generallycourts of the country concerned and generallyany injunction extends to that country only.any injunction extends to that country only.


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Madrid Protocol: Challenges andMadrid Protocol: Challenges and

Practice PointersPractice Pointers To minimize risk of central attack baseTo minimize risk of central attack base

filings on U.S. registrations over five yearsfilings on U.S. registrations over five yearsoldold

Cost savings from filing may be negatedCost savings from filing may be negatedby use of local agents if problems ariseby use of local agents if problems arise

Filings based on U.S. registrations mayFilings based on U.S. registrations may

have more narrow claim forhave more narrow claim forgoods/services than extensions based ongoods/services than extensions based onother national registrations or CTMs.other national registrations or CTMs.


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Community TrademarksCommunity Trademarks


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CTM Key FactsCTM Key Facts

Centrally administered by Office forCentrally administered by Office forHarmonization in the InternationalHarmonization in the InternationalMarket (OHIM)Market (OHIM)

Single filing covers 27 EU nations &Single filing covers 27 EU nations &500 million consumers500 million consumers

OHIM reduced app/reg fees 40% inOHIM reduced app/reg fees 40% in2009 (2075 Euros2009 (2075 Euros 900 Euros)900 Euros)

Unitary right enforceable across EUUnitary right enforceable across EU


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CTM AdvantagesCTM Advantages

Class headings allowedClass headings allowed

Use required in only one memberUse required in only one member

Increasing # member states; feesIncreasing # member states; feesbeing reducedbeing reduced

Overall filing costs & admin fees lowOverall filing costs & admin fees low

considering geographic scopeconsidering geographic scope


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CTM DisadvantagesCTM Disadvantages

CTM may not be used to oppose a nationalCTM may not be used to oppose a nationalregistration if CTM is used only in a singleregistration if CTM is used only in a singlecountry (BOIPcountry (BOIP--on appeal)on appeal)

Objection in one state can defeat entireObjection in one state can defeat entireapplication; conversion into nationalapplication; conversion into nationalapplications does not refund CTM filingapplications does not refund CTM filingfees & Nat'l fees applyfees & Nat'l fees apply

Increasing members => increased risk ofIncreasing members => increased risk ofobjections?objections?


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Key Facts (Contd)Key Facts (Contd)

If CTM in infringed, PanIf CTM in infringed, Pan--EUEUinjunction possibleinjunction possible

Oppositions can be based on priorOppositions can be based on priorCTMs, national marks orCTMs, national marks orInternational (Madrid) trademarksInternational (Madrid) trademarkswith effect in one of the memberwith effect in one of the member

statesstates


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HypotheticalsHypotheticals

Company A is well known in U.S. andCompany A is well known in U.S. andowns many registrations. Uponowns many registrations. Uponresearching EU expansion, search resultsresearching EU expansion, search resultsreveal identical mark registered in severalreveal identical mark registered in several

nations in Company As field. How cannations in Company As field. How canCompany A expand into EU?Company A expand into EU?

Company B faces an unknown potentiallyCompany B faces an unknown potentiallyblocking competitor in many countries.blocking competitor in many countries.

Company B predates competitor in a largeCompany B predates competitor in a largenation and via watching services noticesnation and via watching services noticesthe competition seeks registrations there.the competition seeks registrations there.What to do?What to do?


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Hypotheticals (Contd)Hypotheticals (Contd)

Company C would like to expandCompany C would like to expandinternationally selectively. Whichinternationally selectively. Whichtreaty best supports?treaty best supports?


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THE ENDTHE END

QUESTIONS?QUESTIONS?

THANK YOU!THANK YOU!

Documents

International Trademarks