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Trademark Portfolio Management
Prof. Dr. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
WIPO, Seminar on IP and Creative SME’s
Geneva, May 18, 2009
2
solution 1:
harmonisation of national procedures
solution 2:
bundle of registrations via central procedure
The problem
national route
file in many Offices
in many languages
fees in many currencies
numerous national agents
results in many national
registrations
requires many renewals
changes to be recorded via
each national Office
solution 3:
transnational trademark law system
3
Strategic considerations
type of trademarklink with a specific cultural context?
universal basis for marketing activities in foreign countries?
description of goods and servicesdifferent approaches, for instance, in EC and US
requirement of use
portfolio managementregistration and administration costs
languages, dates, trademark watch
4
Strategic considerations
portfolio management central or decentral structure?
establishment of a trademark holding?
tax efficiency
5
Switzerland
‘uncontrolled’ accumulation of
registrations
Case Study I
6
Switzerland
‘uncontrolled’ accumulation of
registrations
Streamlining via the EC system?
7
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conversion in case the registration is refused, withdrawn or ceased to have effect (art. 112 CTMR)
8
A registers
the mark Y.
1.1.20091.1.2007 1.1.2008
B registers the
conflicting mark
YY.
A registers Y as a
CTM claiming the
seniority of the earlier
identical mark in
respect of Germany.
Claiming seniority
9
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
10
Switzerland
‘uncontrolled’ accumulation of
registrations
Streamlining via international route?
11
Agreement only 6Protocol only 28both treaties 50
(including EC)
Madrid Union (84 Members)
12
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)
Overview of the System
13
extension of protection
from one Member of the
Madrid Union to other
Members
Basic principle
14
Certifies particulars in international application = particulars in basic application or basic registration
Checks formalitiesRecords in the International RegisterPublishes in the International GazetteNotifies designated Contracting Parties
substantial examinationwithin
12/18/18+ months
refusal no refusal = effect of a national registration
OFFICE OF ORIGIN
INTERNATIONALBUREAU
OFFICE OFDESIGNATED
CONTRACTINGPARTY
International
Application
national basis: registration (A/P), application (P)
Resulting procedure
15
first step: designation of Union Members in the initial
application
further steps: subsequent designations
(further markets)
Stages of extension
Designation of the EC
17
Claiming seniority (MM17)
18
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
Procedure
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European: according to the
rules of the CTMR (arts. 112-114
CTMR):
translation required
international: transformation into a
‘subsequent designation’ (rule 24(7) CR):
no translation required
Conversion: two options (art. 159 CTMR)
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expiry
subsequent designation
international registration
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
Designation of the US
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basic description
international description
specific description for the US
Description of goods and services
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Declaration on ‘Intention of use’ (MM18)
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Which basis for
an international
application?
Case Study II
25
P
P
P
AP
United States of America
PAlbaniaEuropean Community
Egypt
A
Protocol Member as a basis
26
Egypt
Algeria
Kazakhstan
Liberia
Sudan
Tajikistan
Agreement-only Members of the Madrid Union
27
Agreement
Protocol
12 or 18 months
18+ months in case of opposition
12 months
Refusal period (art. 5(2))
28
Agreement:
basic fee
…for each class beyond 3:
supplementary fee
…for each designated State:
complementary fee
Protocol:
basic fee
…for each class beyond 3:
supplementary fee
…for each designated Party:
complementary fee
…optional individual fee(art. 8(7))
Fee structure (art. 8)
29
5 years after the international registration
before expiry of the period
of 5 years
risk of a ‘central attack’, dependency (+) (art. 6(3))
no longer any influence, dependency (-) (art. 6(2))
EC designation:
conversion
(arts.
112-114 CTMR)
Protocol:
transformation (art. 9quinquies MP)
Risk of a ‘central attack’
30
AP
Switzerland
P
AP
O
P
AP
Europese Gemeenschap
China
AP
Egypte
A
Party to both treaties as a basis
31
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.’
32
Agreement
Protocol
12 of 18 months
18+ months in case of opposition
12 months
Influence on refusal periods
33
Agreement:
basic fee
…for each class beyond 3:
supplementary fee
…for each designated State:
complementary fee
Protocol:
basic fee
…for each class beyond 3:
supplementary fee
…for each designated Party:
complementary fee
…optional individual fee(art. 8(7))
Influence on fees
34
5 years after the international registration
before expiry of the period
of 5 years
risk of a ‘central attack’, dependency (+) (art. 6(3))
no longer any influence, dependency (-) (art. 6(2))
EC designation:
conversion
(art. 159
CTMR)
Protocol:
transformation (art. 9quinquies MP)
Same possibilities of transformation
35
countries which cannot be
reached via transnational
systems
Case Study III
Switzerland
36
1994 Trademark Law Treaty
2006 Singapore Treaty on the Law
of Trademarks
National route: harmonisation treaties
37
definition of maximum requirements forapplications (filing date requirements)
requests for
changes (name/address/ownership)
corrections of mistakes
renewal
no legalization or certification of signatures
enhanced legal certainty and securityfamiliar framework in all Contracting Parties
relief measures (extension, continued processing, reinstatement of rights)
Advantages
38
Singapore Treaty: in force since March 16, 2009
Australia
Bulgaria
Denmark
Kyrgyzstan
Latvia
Poland
Republic of Moldova
Romania
Singapore
Switzerland
United States of America
