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International Trademark Treaties and Strategies

This presentation covers the Paris Convention, Madrid Protocol, and Community Trademarks, providing insights, challenges, and practice pointers for trademark filings and protection strategies internationally.

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International Trademark Treaties and Strategies

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  1. International Trademark Treaties and StrategiesPamela C. Gavin, Esq.Gavin Law Offices, PLCGRIPLA October 28, 2010

  2. Paris ConventionNational Filings Madrid Protocol Community Trademarks

  3. Paris Convention • National Treatment • Convention Priority • Protects well-known marks, trade names, and claims deriving from unfair competition • Registrations are independent from each other • Currently 173 signatories

  4. Practice Pointers • Within six months of filing U.S. marks, recommend to clients to file foreign applications in Paris Convention (and certain other) countries (e.g., China) • Can include goods/services in original application, as well as other, non-priority goods/services

  5. National Filings – Know Your Country! • Rules differ from nation to nation • First to file vs. first to register? • Scope of searches and claims • Identical/similar? Class headings or detailed? • Assistance of local counsel helpful • Most expensive option • May be more vigorously examined than Madrid applications which face strict exam time deadlines • May also be more “enforceable” before local courts (e.g., BOIP)

  6. German National Filing Illustration • Filing for Class Headings allowed • Examination covers only inherent registrability (not third party rights) • Marks are opposed after registration issues • Bases for opposition: Registered marks; non-registered marks; business signs; company names (e.g., Daimler even though not used on cars in Germany but is used in trade); titles of works (books, software), well-known trademarks

  7. Implications– Practice Pointers • Preclearance implications • Properly advising client • If claim class headings, how to show “genuine use” to keep registration alive? • Rely on advice of local counsel

  8. Madrid Protocol Strategic Insights • Allows for trademark owner to obtain protection in any or all member states selectively with simplified process • National examinations are required; if pass, country is included in IR

  9. Madrid ProtocolChallenges and Practice Pointers • Requires showing of “use” in each country • Applicant for an IR (bundle of national rights) must be a national of, or domiciled in a member country. • In an application filed under the Madrid Protocol, the description of goods and services must be no broader than those in the home application regardless of whether priority is claimed. • Action for infringement is taken through the courts of the country concerned and generally any injunction extends to that country only.

  10. Madrid Protocol: Challenges and Practice Pointers • To minimize risk of “central attack” base filings on U.S. registrations over five years old • Cost savings from filing may be negated by use of local agents if problems arise • Filings based on U.S. registrations may have more narrow claim for goods/services than extensions based on other national registrations or CTMs.

  11. Community Trademarks

  12. CTM Key Facts • Centrally administered by Office for Harmonization in the International Market (OHIM) • Single filing covers 27 EU nations & 500 million consumers • OHIM reduced app/reg fees 40% in 2009 (2075 Euros  900 Euros) • Unitary right enforceable across EU

  13. CTM Advantages • Class headings allowed • Use required in only one member • Increasing # member states; fees being reduced • Overall filing costs & admin fees low considering geographic scope

  14. CTM Disadvantages • CTM may not be used to oppose a national registration if CTM is used only in a single country (BOIP-on appeal) • Objection in one state can defeat entire application; conversion into national applications does not refund CTM filing fees & Nat'l fees apply • Increasing members => increased risk of objections?

  15. Key Facts (Cont’d) • If CTM in infringed, Pan-EU injunction possible • Oppositions can be based on prior CTMs, national marks or International (Madrid) trademarks with effect in one of the member states

  16. Hypotheticals • Company A is well known in U.S. and owns many registrations. Upon researching EU expansion, search results reveal identical mark registered in several nations in Company A’s field. How can Company A expand into EU? • Company B faces an unknown potentially “blocking” competitor in many countries. Company B predates competitor in a large nation and via watching services notices the competition seeks registrations there. What to do?

  17. Hypotheticals (Cont’d) • Company C would like to expand internationally selectively. Which treaty best supports?

  18. THE END QUESTIONS? THANK YOU!

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