1. International Filing Basics American Intellectual Property Law Association’s 8 th Annual Trademark Boot Camp Alexandria, Virginia June 9, 2016 Jonathan M. Gelchinsky

2. Why foreign file? Support global operations Uniform worldwide branding TM rights stem solely from registration in most countries Beneficial even in “common law” countries (e.g., UK, Australia, Canada) 2

3. Why foreign file? For defensive purposes, even if business is not yet global Be first to file Deterrent to others conducting searches Registration generally a defense to infringement Minimal requirements for registration Use not required to obtain a registration in most countries Paris Convention - U.S. filing date as effective foreign filing date 3

4. Where to foreign file? Location of active business interests (marketing/selling, licensees, distributors) Anticipated new markets (negotiating with licensees, distributors, etc.) Location of manufacturing activities involving the branded product Where brand owner has strong online presence Countries known for trademark “piracy” 4

5. Before you foreign file Early planning is key –Ideally when selecting and clearing the mark Think about the form of the mark to be registered – registrability standards differ in some countries (e.g., slogans, 1-2 letter marks, may not be registrable in some places) –When formulating the goods/services in U.S. or other first-filed application Most countries allow broader descriptions than the U.S. Consider filing broadly in the U.S. to allow broad priority claim Later narrowing amendments in the U.S. irrelevant to priority claim (but are relevant in Madrid Protocol filing) Consider adding goods/services to foreign applications (partial priority) 5

6. Before you foreign file Cost Estimates Clients may not appreciate the costs Factors affecting costs: –Number of countries –Number of classes of goods/services – single-class v. multiclass countries –Some countries charge more based on the number of goods listed, even within a single class –Applicant’s future plans – consider incremental costs of adding extra classes in multi-class countries 6

7. Foreign searching and clearance Should searches be conducted? Prudent to do some level of clearance Prioritize – costs can be prohibitive Let foreign offices do the search for you? Types of international searches National register search via foreign counsel Database searches, e.g., Saegis, Corsearch Some foreign offices have online search tools (TMview) 7

8. Foreign searching and clearance Local language considerations Various approaches: –Translation –Transliteration –Transcreation Cultural issues and potential negative meanings –English term when literally translated or transliterated into local language may have unintended meanings –Chevy “NOVA” in Spanish means “not going” 8

9. Selecting foreign counsel How do you find counsel? Bar associations, directories (AIPLA, INTA, etc.) Published surveys/rankings (WTR, Chambers) Recommendations from colleagues at other firms/companies Articles, blogs, speeches Who is the best choice? Experience Capabilities – prosecution and/or litigation Conflicts – good to have more than one firm in each country Reciprocity? 9

10. Formal filing requirements Use information (Canada, Mexico, India, Malaysia) POA, proof of corporate formation Copy of priority application (certified?) Formalities: notarization, legalization, Apostille In most countries, documents can be submitted within a specified time after the application is filed Keep close track of deadlines! 10

11. International treaties Paris Convention Allows applicant to file in one member country and up to 6 months later file in other member countries and claim benefit of the earlier filing date May only claim priority from the first-filed application for the same mark for the same goods/services Priority may be claimed from any member country; does not have to be “home” country Missing priority deadline could be deemed malpractice – keep clients advised of dates, keep records of reminders and instructions sent to foreign counsel 11

12. International treaties Madrid Protocol Centralized registration and maintenance system administered by the World Intellectual Property Organization (“WIPO”) International registration (“IR”) may be extended to as many as 97 member countries Requires “basic” application or registration in applicant’s “country of origin” (domicile and/or having a real and effective commercial establishment) Filed with USPTO, which transmits application to WIPO WIPO transmits to national trademark offices of designated countries for examination 12

13. Madrid Protocol - advantages Substantial cost savings at time of filing Simple and quick filing (no POA, priority docs, translations) Can claim Paris Convention priority Local counsel retained only if national office issues refusal Centralized recordation of ownership and address changes Centralized renewal 18-month rule 13

14. Madrid Protocol - disadvantages Subject to “central attack” for 5 years Scope of goods/services cannot be broader than the basic application or registration Filing w/o foreign counsel’s input on inherent registrability No amendments to the mark are permitted Canada, most of Latin America are not members 14

15. Practical Madrid strategies Use for second-tier marks or classes of goods/services Use for less important countries Avoid basing on an ITU or an application with potential registrability issues Use Madrid to determine initial availability of the mark When clients have limited budgets 15

16. European Union Trademark (EUTM) Administered by the EUIPO in Alicante, Spain One registration covers 28 European countries: Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the United Kingdom Note: Norway and Switzerland are not members of the EU 16

17. EUTM - advantages Significant cost savings over individual national filings Uniform standards than in some European countries Examined only on absolute grounds ( i.e., distinctiveness); office will not refuse registration ex parte based on earlier rights Ease of use requirements to maintain Single infringement action enforceable throughout Europe 17

18. EUTM – disadvantages Mark must be available in all member states Registration can be blocked via opposition by a prior national right from any member country Can convert to national applications, but costly More likely to face opposition given geographic breadth of rights Registration can only be assigned as a whole Makes splitting markets in Europe difficult Not as cost-effective if mark is only used in a few EU countries – consider filing national applications in that case 18

19. Closing remarks Think about foreign filing early in the process to allow time for searching, developing filing strategy, instructing foreign counsel, and necessary follow-up Don’t treat foreign filing as a routine administrative matter – every filing program has unique considerations and may be critical to brand owner’s trademark portfolio 19

20. Questions?

21. Merrill’s Wharf 254 Commercial Street Portland, ME 04101 Jonathan M. Gelchinsky jgelchinsky@pierceatwood.com PH / 207.791.1203 100 Summer Street Suite 2250 Boston, MA 02110 PH / 617.488.8167