1. 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

2. The problem national route solution 1:
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
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. ‘uncontrolled’ accumulation of registrations
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conversion in case the registration is refused, withdrawn or ceased to have effect (art. 112 CTMR)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. B registers the conflicting mark YY.
Claiming seniority
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. Madrid Union (84 Members)
Agreement only Protocol only 28 both treaties 50
(including EC)
Following the accessions by these seven countries and by the EC, the Madrid Union will have, on October 1, 77 members: 66 Contracting Parties to the Protocol and 56 to the Agreement. In this map are indicated, in light blue the 11 countries still bound only by the Agreement; in dark blue, the 45 countries which are bound by both treaties, and in green-blue the 20 countries which are bound only by the Protocol, to which should be added the European Community.
As we can see, the Madrid system continues to expand in different regions in the world. Europe is still the region the most largely represented (with 42 Members). But the System has now also 19 members in Asia, 12 in Africa and 3 in the Americas.
Altogether, the Madrid Union countries account today for more than half of the world population (3.1 billion people) (out of 6.1 billion). Their combined Gross Domestic Product represents about 2/3 of the world gross product.
This means that the Madrid System is certainly offering a very attractive market for making business to all those who are entitled to use it.

12. Overview of the System Madrid Agreement (A) Madrid Protocol (P)
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. International Application
Resulting procedure
national basis: registration (A/P), application (P)
Certifies particulars in international application = particulars in basic application or basic registration
OFFICE OF ORIGIN
International Application
Checks formalities
Records in the International Register
Publishes in the International Gazette
Notifies designated Contracting Parties
INTERNATIONAL BUREAU
substantial examination
OFFICE OF DESIGNATED CONTRACTING PARTY
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 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. Which basis for an international application?
Case Study II
Which basis for an international application?

25. United States of America
Protocol Member as a basis P P
United States of America P P AP
European Community
Albania
As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, [READ SLIDE]. A
Egypt

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

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

28. Fee structure (art. 8) …optional individual fee Agreement: Protocol:
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
…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 CTMR)
Protocol: transformation (art. 9quinquies MP)

30. O AP P AP A P AP AP Party to both treaties as a basis
Egypte P AP AP P
Europese Gemeenschap
Switzerland AP AP
As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, [READ SLIDE]. SAFEGUARD CLAUSE
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. Influence on fees …optional individual fee Agreement: Protocol:
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
…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. 9quinquies MP)

35. countries which cannot be reached via transnational systems
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. Singapore Treaty: in force since March 16, 2009
Australia
Bulgaria
Denmark
Kyrgyzstan
Latvia
Poland
Republic of Moldova
Romania
Singapore
Switzerland
United States of America

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