trademarks as a business asset and the power of branding heinz goddar / ludwig kouker april 26/28,...
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Trademarks as a Business Asset and the Power of Branding
Heinz Goddar / Ludwig Kouker
April 26/28, 2014
222222226/28HG-3
26/28/04/2014 – Trademarks in EuropeHG-3
3 Systems for obtaining TM protection in Europe (EU)
Madrid AgreementMadrid Protocol
IndependentCTM
CTM as part of IR
traditional system of International Registrations designating all and each national member countries of EU (except Malta)coordinated through WIPO (including Norway, Switzerland and Iceland)
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
unitary trademark right being valid in all member countries of EU administered by OHIM (i.e. not including Norway, Switzerland and Iceland)
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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
1. Accessibility - Where is the Applicant/Trademark Proprietor based?
Madrid AgreementMadrid Protocol
IndependentCTM
CTM as part of IR
accessible only if the proprietor is based in one of the member countries;
designations available only for those countries which are member of the same treaty.
no restriction;
no designation choice:all or nothing
accessible only for proprietors being based in a member country of the Madrid Protocol;
no designation choice: all or nothing
2. Object of Property - Is there a Need for Trademark Owner to keep Flexibility for Disposal
of the Trademark?
Madrid AgreementMadrid Protocol
IndependentCTM
CTM as part of IR
assignment/ partly assign-ment for fewgoods/services
member countries only
no restriction
member countries of the Madrid Protocol only
Partly assign-ment for few countries
licensing
member countries only
available according to national law of the member countries
not available
available upon
registration ofthe license
not available
available upon registration of the license
3. Cost Issues
Madrid AgreementMadrid Protocol
IndependentCTM
CTM as part of IR
• official fees until registration
for China € 2.953,-for Japan € 3.287,-plus basic fee € 535,-
€ 900,- € 912,-€ 535,- (basic fee)
• official renewal fees
• procedural costs in case of individual refusals
for China € 3.036,-for Japan € 3.292,-plus basic fee € 535,-
significant costs for various national representatives; many different procedures
€ 1.350,-
charges for only one representative; one single procedure
€ 1.258,-€ 535,- (basic fee)
charges for only one representative; one single procedure
4. Time issues -How much Time is needed until achieving an
enforceable trademark?
Madrid AgreementMadrid Protocol
IndependentCTM
CTM as part of IR
• examination procedure runs without any problems
very quick for countries being only member of the Agreement;
for all other countries depends on national law
takes about 6 months
between 9and 18 months
• in case of objections/ oppositions
retroactive refusal of protection;
necessary time depends on national procedures
protection is suspended for more years
protection is suspended formore years
5. Marketing Plan of Trademark Proprietor
vulnerability of each national part of IR, where no use has been established
Madrid AgreementMadrid Protocol
All systems provide for a 5-years grace period for commencing use;
Marketing plan should be developed and realized on the basis of a 5-years plan;
If marketing is delayed:
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
Independent CTM and as part of IR
6. Fallback Positions
Madrid AgreementMadrid Protocol
IndependentCTM
CTM as part of IR
failure of home application/registration:
members of Madrid Agreement only: irrevocable loss of IR(central attack)
failure of CTM-application/registration: loss of the entire unitary CTM;
option for conversion into national applications except in that country where the grounds for failure are located
failure of home application/registration:
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 thecountry involved;
all other countries remain unaffected
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
6. Fallback Positions – Example 1
Alternative: Independent CTM takes 6 months for costs of € 900,-
Chinese home application
finally refused after16 months
International Registration € 912,- (designation)designating EM € 535,- (basic fee)
automatic cancellation before final grant of protection in EM
transformation into € 200,- (conversion)independent CTM € 900,- (filing fee)
full examination procedure including potential opposition (6 months)
final grant of protection after 15 - 24 months
€ 2.547,-
Chinese home application
registered
attacked by nullity action within 5 years
cancelled
International Registration € 912,- (designation)designating EM € 535,- (basic fee)
opposed from Malta
refused
opting back into national € 200,- (conversion)designations for all EU-member € 2.953,- (designation) states except Malta € 246,- (basic fee)
automatic cancellation of IR € 4.100,- (filing fees)with an option for transformation in all countries into national applications
€ 9.461,-
6. Fallback Positions – Example 2
Algerian home application
registered
attacked by nullity action within 5 years
cancelled
International Registration designating all EU member states being also member of Madrid Agreement
automatic cancellation of IR without any option for transformation
€ 1.395,- (designation)€ 535,- (basic fee)
€ 1.930,-
6. Fallback Positions – Example 3
7. Enforceability, Infringement
→ high costs→ inconsistent procedures→ inconsistent decisions
Independent CTMand as part of IR
→ less expensive→ more efficient→ consistent
Madrid AgreementMadrid Protocol
separate litigation in each designated country
only one litigation with legally valid effect in all EU-member countries
Overview / Scoresx = scores
Madrid Agreement/Madrid Protocol
IndependentCTM
CTM as part of IR
* for Members of Madrid Agreement only
** except for Members of Madrid Agreement only
1. Accessibility
2. Object of Property
3. Cost Issues
4. Time Issues
5. Marketing Plan
6. Fallback Positions
7. Enforceability, Infringement
x
x
x
x* x
x x
x** x x
x x