1. 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 Europe HG-3

2. kouker@boehmert.de2 3 Systems for obtaining TM protection in Europe (EU) Madrid Agreement Madrid Protocol Independent CTM 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) 22

3. kouker@boehmert.de3 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

4. kouker@boehmert.de4 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; 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

5. kouker@boehmert.de5 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 assign- ment for few goods/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 of the license not available available upon registration of the license

6. kouker@boehmert.de6 3.Cost Issues Madrid Agreement Madrid Protocol Independent CTM 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

7. kouker@boehmert.de7 4.Time issues - How much Time is needed until achieving an enforceable trademark? Madrid Agreement Madrid Protocol Independent CTM 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 9 and 18 months in case of objections/ oppositions retroactive refusal of protection; necessary time depends on national procedures protection is suspended for more years

8. kouker@boehmert.de8 5.Marketing Plan of Trademark Proprietor vulnerability of each national part of IR, where no use has been established Madrid Agreement Madrid 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

9. kouker@boehmert.de9 6.Fallback Positions Madrid Agreement Madrid Protocol Independent CTM 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 the country 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

10. kouker@boehmert.de10 6.Fallback Positions – Example 1 Alternative: Independent CTM takes 6 months for costs of € 900,- Chinese home application finally refused after 16 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,-

11. kouker@boehmert.de11 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

12. kouker@boehmert.de12 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

13. kouker@boehmert.de13 7.Enforceability, Infringement → high costs → inconsistent procedures → inconsistent decisions Independent CTM and as part of IR → less expensive → more efficient → consistent Madrid Agreement Madrid Protocol separate litigation in each designated country only one litigation with legally valid effect in all EU-member countries

14. kouker@boehmert.de14 Overview / Scores x = scores Madrid Agreement/ Madrid Protocol Independent CTM 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 xx x**xx xx