26/28/04/2014 – Trademarks in Europe
HG-3
Trademarks as a Business Asset
and the Power of Branding
Heinz Goddar / Ludwig Kouker
April 26/28, 2014
222222226/28HG-3
22
3 Systems for obtaining TM
protection in Europe (EU)
Madrid Agreement
Madrid Protocol
Independent
CTM
traditional system of
International
Registrations designating
all and each national
member countries of EU
(except Malta)
coordinated through
WIPO (including Norway,
Switzerland and Iceland)
unitary trademark right
being valid in all
member countries of
EU administered by
OHIM
(i.e. not including
Norway, Switzerland
and Iceland)
2
CTM as part
of IR
optional system of
International Registrations
under the Madrid Protocol
designating the European
Community as one unitary
intergovernmental
organisation covering all
member countries
of EU coordinated through
WIPO
[email protected]
Overview of strategical
issues
1. Accessibility
2. Object of Property
3. Cost Issues
4. Time Issues
5. Marketing Plan
6. Fallback Positions
7. Enforceability, Infringement
3
[email protected]
1. Accessibility - Where is the Applicant/Trademark
Proprietor based?
Madrid Agreement
Madrid Protocol
Independent
CTM
CTM as part
of IR
accessible only if the
proprietor is based in
one of the member
countries;
no restriction;
accessible only for
proprietors being
based in a member
country of the
Madrid Protocol;
designations
available only for
those countries which
are member of the
same treaty.
4
no designation
choice:
all or nothing
no designation
choice:
all or nothing
[email protected]
2. Object of Property - Is there a Need for Trademark
Owner to keep Flexibility for Disposal
of the Trademark?
Madrid Agreement
Madrid Protocol
Independent
CTM
CTM as part
of IR

assignment/
partly assignment for few
goods/services
member
countries only
no
restriction
member countries
of the Madrid
Protocol only

Partly assignment for few
countries
member
countries only
not
available
not
licensing
available according
to national law of
the member
countries
available upon
registration of
the license
available upon
registration of
the license

5
available
[email protected]
3. Cost Issues
Madrid Agreement
Madrid Protocol
Independent
CTM
• official fees
until registration
for China
€ 2.953,for Japan
€ 3.287,plus basic fee € 535,-
€
• official renewal
fees
for China
€ 3.036,for Japan
€ 3.292,plus basic fee € 535,-
€ 1.350,-
• procedural
costs in case
of individual
refusals
significant costs for
various national
representatives; many
different procedures
6
900,-
charges for only
one representative;
one single procedure
CTM as part
of IR
€
€
912,535,- (basic fee)
€ 1.258,€ 535,- (basic fee)
charges for only
one representative;
one single procedure
[email protected]
4. Time issues How much Time is needed until achieving an
enforceable trademark?
• examination
procedure runs
without any
problems
Madrid Agreement
Madrid Protocol
Independent
CTM
CTM as part
of IR
very quick for countries
being only member of the
Agreement;
takes about 6
months
between 9
and 18 months
protection is
suspended for
more years
protection is
suspended for
more years
for all other countries
depends on national law
• in case of
objections/
oppositions
retroactive refusal of
protection;
necessary
time depends on national
procedures
7
[email protected]
5. Marketing Plan of Trademark
Proprietor
 All systems provide for a 5-years grace period for commencing use;
 Marketing plan should be developed and realized on the basis of a 5years plan;
 If marketing is delayed:
Madrid Agreement
Madrid Protocol
vulnerability of each national part
of IR, where no use has been
established
8
Independent CTM
and as part of IR
entire trademark remains
unaffected in all member countries
of the EU, if at least use in one (or
better two) member country(ies)
has been established
[email protected]
6. Fallback Positions
Madrid Agreement
Madrid Protocol
Independent
CTM
failure of home
application/registration:
failure of CTMapplication/registration:
failure of home
application/registration:
members of Madrid Agreement
only: irrevocable loss of IR
(central attack)
loss of the entire unitary
CTM;
option for transformation of
the CTM as part of IR into an
independent CTM
all others:
option for transformation for all
Protocol countries into national
applications
failure of national parts:
no fallback position in the
country involved;
all other countries remain
unaffected
9
option for conversion into
national applications
except in that country
where the grounds for
failure are located
CTM as part
of IR
failure of CTM as part of
IR:
alternative option for
conversion into national
applications or into national
designations of the member
states as national parts of IR
under the Madrid Agreement
or Protocol
[email protected]
6. Fallback Positions – Example 1
Chinese home application
International Registration
designating EM
finally refused after
16 months
automatic cancellation before
final grant of protection in EM
transformation into
independent CTM
€
€
912,- (designation)
535,- (basic fee)
€
€
200,- (conversion)
900,- (filing fee)
full examination procedure
including potential opposition
(6 months)
final grant of protection after
15 - 24 months
€ 2.547,Alternative: Independent CTM takes 6 months for costs of € 900,10
[email protected]
6. Fallback Positions – Example 2
Chinese home application
registered
attacked by nullity action
within 5 years
cancelled
International Registration
designating EM
€
€
912,- (designation)
535,- (basic fee)
opposed from Malta
refused
opting back into national
designations for all EU-member
states except Malta
€ 200,- (conversion)
€ 2.953,- (designation)
€ 246,- (basic fee)
automatic cancellation of IR
with an option for transformation
in all countries into national
applications
€ 4.100,- (filing fees)
€ 9.461,11
[email protected]
6. Fallback Positions – Example 3
Algerian home
application
registered
International Registration
€ 1.395,- (designation)
€ 535,- (basic fee)
designating all EU member
states being also member of
Madrid Agreement
attacked by nullity action
within 5 years
cancelled
automatic cancellation of
IR without any option for
transformation
€ 1.930,-
12
[email protected]
7. Enforceability, Infringement
Madrid Agreement
Madrid Protocol
Independent CTM
and as part of IR
separate litigation in each
designated country
only one litigation with legally
valid effect in all EU-member
countries
→ high costs
→ less expensive
→ more efficient
→ consistent
→ inconsistent procedures
→ inconsistent decisions
13
[email protected]
Overview / Scores
x = scores
Madrid Agreement/
Madrid Protocol
Independent
CTM
1. Accessibility
x
2. Object of Property
x
3. Cost Issues
x
x*
4. Time Issues
5. Marketing Plan
6. Fallback Positions
x**
7. Enforceability,
Infringement
*
**
14
CTM as part
of IR
x
x
x
x
x
x
x
for Members of Madrid Agreement only
except for Members of Madrid Agreement only
[email protected]