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Trademark Portfolio Management Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague WIPO, Seminar on IP and Creative SMEs Geneva,

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Presentation on theme: "Trademark Portfolio Management Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague WIPO, Seminar on IP and Creative SMEs Geneva,"— Presentation transcript:

1 Trademark Portfolio Management Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague WIPO, Seminar on IP and Creative SMEs Geneva, May 18, 2009

2 2 solution 1: harmonisation of national procedures solution 2: bundle of registrations via central procedure The problem national route 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 3: transnational trademark law system

3 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 4 Strategic considerations portfolio management central or decentral structure? establishment of a trademark holding? tax efficiency

5 5 Switzerland uncontrolled accumulation of registrations Case Study I

6 6 Switzerland uncontrolled accumulation of registrations Streamlining via the EC system?

7 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(art. 115 CTMR: EN, FR, DE, IT, ES) seniority claims (art. 34 CTMR) conversion in case the registration is refused, withdrawn or ceased to have effect (art. 112 CTMR)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 8 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. Claiming seniority

9 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 10 Switzerland uncontrolled accumulation of registrations Streamlining via international route?

11 11 Madrid Union (84 Members)

12 12 Madrid Agreement (A) Madrid Agreement of April 14, 1891 Madrid Protocol (P) Madrid Protocol of June 27, 1989 common regulations administrative instructions national law (Madrid interface) Overview of the System

13 13 extension of protection from one Member of the Madrid Union to other Members Basic principle

14 14 Certifies particulars in international application = particulars in basic application or basic registration Checks formalities Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties substantial examination within 12/18/18+ months refusal no refusal = effect of a national registration OFFICE OF ORIGIN INTERNATIONAL BUREAU OFFICE OF DESIGNATED CONTRACTING PARTY International Application national basis: registration (A/P), application (P) Resulting procedure

15 15 first step: designation of Union Members in the initial application further steps: subsequent designations (further markets) Stages of extension

16 Designation of the EC

17 17 Claiming seniority (MM17)

18 18 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 Procedure

19 19 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 Conversion: two options (art. 159 CTMR)

20 20 expiry subsequent designation international registration 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

21 Designation of the US

22 22 basic description international description specific description for the US Description of goods and services

23 23 Declaration on Intention of use (MM18)

24 24 Which basis for an international application? Case Study II

25 25 P P P AP United States of America P AlbaniaEuropean Community Egypt A Protocol Member as a basis

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

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

28 28 Agreement: 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)) Fee structure (art. 8)

29 29 5 years after the international registration before expiry of the period of 5 years risk of a central attack, dependency (+) (art. 6(3)) no longer any influence, dependency (-) (art. 6(2)) EC designation: conversion (arts CTMR) Protocol: transformation (art. 9 quinquies MP) Risk of a central attack

30 30 AP Switzerland P APAP O P AP Europese Gemeenschap China APAP Egypte A Party to both treaties as a basis

31 31 Repeal of the safeguard clause historically: Agreement takes precedence amended art. 9 sexies 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 32 Agreement Protocol 12 of 18 months 18+ months in case of opposition 12 months Influence on refusal periods

33 33 Agreement: 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)) Influence on fees

34 34 5 years after the international registration before expiry of the period of 5 years risk of a central attack, dependency (+) (art. 6(3)) no longer any influence, dependency (-) (art. 6(2)) EC designation: conversion (art. 159 CTMR) Protocol: transformation (art. 9 quinquies MP) Same possibilities of transformation

35 35 countries which cannot be reached via transnational systems Case Study III Switzerland

36 Trademark Law Treaty 2006 Singapore Treaty on the Law of Trademarks National route: harmonisation treaties

37 37 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) Advantages

38 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 The End. Thank you! contact:


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