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Trademark Portfolio Management

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. national route file in many Offices in many languages fees in many currencies numerous national agents

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Trademark Portfolio Management

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  1. 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

  2. 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 The problem solution 1: harmonisation of national procedures solution 2: bundle of registrations via central procedure solution 3: transnational trademark law system

  3. 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

  4. Strategic considerations • portfolio management • central or decentral structure? • establishment of a trademark holding? • tax efficiency

  5. Case Study I Switzerland ‘uncontrolled’ accumulation of registrations

  6. Streamlining via the EC system? Switzerland ‘uncontrolled’ accumulation of registrations

  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(art. 115 CTMR: EN, FR, DE, IT, ES) • seniority claims (art. 34 CTMR) • conversion in case the registration is refused, withdrawn or ceased to have effect (art. 112 CTMR)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. Claiming seniority 1.1.2007 1.1.2008 1.1.2009 A registers the mark Y. B registers the conflicting mark YY. A registers Y as a CTM claiming the seniority of the earlier identical mark in respect of Germany.

  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. Streamlining via international route? Switzerland ‘uncontrolled’ accumulation of registrations

  11. (including EC) Agreement only 6Protocol only 28both treaties 50 Madrid Union (84 Members)

  12. 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)

  13. Basic principle extension of protection from one Member of the Madrid Union to other Members

  14. Resulting procedure national basis: registration (A/P), application (P) Certifies particulars in international application = particulars in basic application or basic registration OFFICE OF ORIGIN InternationalApplication Checks formalities Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties INTERNATIONALBUREAU substantial examination OFFICE OFDESIGNATEDCONTRACTINGPARTY within 12/18/18+ months no refusal = effect of a national registration refusal

  15. Stages of extension further steps: subsequent designations (further markets) first step: designation of Union Members in the initial application

  16. Designation of the EC

  17. Claiming seniority (MM17)

  18. 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

  19. Conversion: two options (art. 159 CTMR) 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

  20. 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

  21. Designation of the US

  22. Description of goods and services basic description international description specific description for the US

  23. Declaration on ‘Intention of use’ (MM18)

  24. Case Study II Which basis for an international application?

  25. Protocol Member as a basis P P United States of America P P AP European Community Albania A Egypt

  26. Egypt Algeria Kazakhstan Liberia Sudan Tajikistan Agreement-only Members of the Madrid Union

  27. Refusal period (art. 5(2)) Agreement 12 months 12 or 18 months Protocol 18+ months in case of opposition

  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 Fee structure (art. 8) …optional individual fee (art. 8(7))

  29. Risk of a ‘central attack’ 5 years after the international registration no longer any influence, dependency (-) (art. 6(2)) before expiry of the period of 5 years risk of a ‘central attack’, dependency (+) (art. 6(3)) EC designation: conversion (arts. 112-114 CTMR) Protocol: transformation (art. 9quinquiesMP)

  30. Party to both treaties as a basis A O Egypte P AP AP P Europese Gemeenschap Switzerland AP AP China

  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. Influence on refusal periods Agreement 12 months 12 of 18 months Protocol 18+ months in case of opposition

  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 Influence on fees …optional individual fee (art. 8(7))

  34. Same possibilities of transformation 5 years after the international registration no longer any influence, dependency (-) (art. 6(2)) before expiry of the period of 5 years risk of a ‘central attack’, dependency (+) (art. 6(3)) EC designation: conversion (art. 159 CTMR) Protocol: transformation (art. 9quinquiesMP)

  35. Case Study III Switzerland countries which cannot be reached via transnational systems

  36. National route: harmonisation treaties 2006 Singapore Treaty on the Law of Trademarks 1994 Trademark Law Treaty

  37. 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)

  38. Australia Bulgaria Denmark Kyrgyzstan Latvia Poland Republic of Moldova Romania Singapore Switzerland United States of America Singapore Treaty: in force since March 16, 2009

  39. The End. Thank you! contact: m.senftleben@rechten.vu.nl

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