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]
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