International Registration and other systems of registration (An analysis of European Community trade marks, International Registrations, and other systems, their practical use, similarities and differences) 10 November 2015 Presented by Marcus Collins, White & Case LLP

Anything could happen in the next 180 minutes…

…but hopefully, you will have learnt something of the following…  What a Community trade mark (CTM) is, what its key features are and how to get one;  What the Madrid Agreement and its Protocol are, what their key features are and how to obtain an International Registration (IR);  What the differences between CTMs and IRs are;  What the similarities between CTMs and IRs are;  How they may interact; and  How they fit into the ‘larger picture’ in practice.

The CTM system…

What is a CTM?  It is a registered trade mark right…  …obtained under Council Regulation (EC) 207/2009 (formerly (EC) 40/94)…  …following a successful application to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (‘OHIM’) in Alicante (Spain, where it’s hot and there are lots of boats)…

Key features of the CTM…  It covers the whole EU through just a single application;  It has ‘unitary character’ – i.e. it must be available for registration and use in all the EU member states in order to be valid;  Just about any natural or legal person may own one;  Relatively speaking, a CTM is ‘as cheap as chips’.

How do you get a CTM?  Fill out the standard application form and file it by post, fax or electronically direct to OHIM, or…  …deliver it by post or in person to the national trade marks registry of a member state (e.g. the Intellectual Property Office) who will then pass the application to OHIM, or…  …there is another way as we shall see later…

Then what happens?  The application is examined on absolute grounds and, if successful…  …is advertised in the CTM Bulletin to invite opposition by third parties claiming to own conflicting, earlier rights…  …an opponent must file an opposition within 3 months of advertisement…

…and then?  If no opposition is encountered (or if any opposition is overcome) the mark is registered and a lovely (virtual) certificate is issued.  A CTM is registered for 10 years from the date of application and can be renewed for further periods of 10 years on payment of a fee.

Interesting stuff about CTMs…  There is no ex officio examination of relative grounds;  One application covers 28 countries (26 trade mark jurisdictions);  You get three International Classes for the price of one;

Interesting stuff about CTMs…  It is generally thought that use in just one part of the EU in relation to the registered specification would support a contention that the mark has been used generally in the EU and renders the registration invulnerable to revocation on grounds of non-use (see PAGO and OMEL/ONEL);

Interesting stuff about CTMs…  If the CTM is lost for whatever reason, it is possible to convert it into national applications under national law in any member state where there is no objection – and the resulting applications keep the priority date of the original CTM;

Interesting stuff about CTMs…  Earlier, registered, national rights in an EU member state having triple identity with the CTM can be subsumed into the CTM through a claim to seniority;

Interesting stuff about CTMs…  You can apply for nearly all goods and services in all or any International Class (if you wish and have a large enough wallet) – there is no requirement to show a bona fide intention to use a mark on application (and the non-use grace period lasts for 5 years from the date of completion of the registration formalities) – be careful of merely describing a characteristic of goods rather than the goods themselves: e.g. goods made of paper; electrical goods; etc.

Interesting stuff about CTMs…  Is a specification of “All goods in Class” possible? – IP TRANSLATOR doctrine.

Interesting stuff about CTMs…  OHIM can only object to registration of its own motion on absolute grounds;  Conversely, third parties can only object in their own name to registration on relative grounds (though Article 40 does permit the filing of observations by third parties on absolute grounds; however, OHIM is the instigator of an action arising therefrom).

Interesting stuff about CTMs…  As a CTM has unitary character, there is a potentially wider scope for absolute grounds objections (linguistic variations);  As a CTM has unitary character, the potential pool of relative grounds is large (26 trade mark jurisdictions).

Interesting stuff about CTMs…  CTMs, when registered, have equivalent effect to a nationally registered mark in a member state;  Infringement is legislated by the CTMR (Article 9) rather than local laws (though follows the Harmonisation Directive as to basic principles);  Where CTMR and CTMIR are silent, national law applies (note: UK’s Community Trade Mark Regulations 1996)

Interesting stuff about CTMs…  CTMs and applications for CTMs are items of personal property. They can be:  Bought and sold;  Licensed (for whole or part of the EU – though be careful of competition law!);  Stand as security (rights in rem).

Interesting stuff about CTMs…  OHIM reckons that it takes about 6 to 8 months to obtain registration of a CTM from filing (assuming neither major ex officio objections nor third party oppositions), but these days it is often much quicker;  Only need to deal with a single registry (OHIM);  Can choose any EU language for filing and prosecution – though OHIM and third parties can opt to use the chosen, second language designated in the application (English/French/German/Spanish/Italian);  Risk/advantage of forum shopping for infringement litigation.

The Madrid Agreement on the International Registration of Trade Marks of 1891…and the Protocol of 1989 thereto…

What is an International Registration?  The Madrid System comprises two international treaties: The Madrid Agreement and the Madrid Protocol;  They are essentially fairly similar with many identical procedural rules (the Common Regulations); however, there are some significant differences.

Key features of IRs  Different countries are either party to just the Madrid Agreement, just the Madrid Protocol, or party to both;  Where two parties are members of both, the (revised) safeguard clause (Article 9sexies of the Protocol) requires that the Madrid Protocol regulates the relationship.

Key features  An IR is essentially a bundle of national rights applied for and administered centrally, but whose registrability, validity, property rights and infringement are determined at the local level in the designated countries.  There is no ‘unitary character’ as with a CTM.

How do you get an IR?  An IR is obtained through an application made to the World Intellectual Property Organisation (WIPO);  The application is based on an existing, national registration (or also an application for registration in the case of the Protocol);

How do you get an IR?  There are locus standi requirements for ownership of an IR (we will discuss these later);  The application is filed via the national trade marks registry (the Office of Origin) which maintains the base registration/application;  The form is completed in English, French or Spanish;

How do you get an IR?  The application is transmitted by the Office of Origin to WIPO in Geneva;  WIPO conducts an initial formalities check and communicates any deficiencies back to the office of origin;  When all is in order, WIPO grants an International Registration (NB this is NOT the same as a confirmed grant of registered rights), publishes it in the WIPO Gazette and then forwards the application to the countries designated in the application;

How do you get an IR?  The local registries in the designated countries then examine the application under local law in accordance with local procedures;  The local registry then reports back to WIPO stating whether the application acceptable or whether there is an objection;

How do you get an IR?  If there is no objection and no opposition is filed (where the local system provides of opposition), WIPO will issue a notice of acceptance to the applicant and the mark then has registered protection;  If there is an objection, WIPO will pass the objection to the applicant with a notice of initial refusal. The applicant must then deal directly with the local registry concerned in an attempt to overcome the objection;

How do you get an IR?  If the objection is overcome, the local registry informs WIPO and a notice of acceptance is issued.  If the objection is maintained, then WIPO issues a notice of final refusal and protection is not granted for that country.

How do you get an IR?  The local registry must confirm or refuse protection of a designation under an IR governed by the Madrid Agreement within 12 months;  The local registry must confirm or refuse protection of a designation under an IR governed by the Madrid Protocol within 18 months (unless an opposition is filed, in which case there is no time limit).

…and then what?  An IR under the Madrid Agreement lasts for 20 years (though after 10 years a decennial annuity is payable – effectively a renewal after 10 years);  An IR under the Madrid Protocol lasts for 10 years;  Renewals are made centrally through WIPO, which then communicates renewal to the registries of the designated countries.

Interesting stuff about IRs…  Not everyone can own an IR – the initial applicant and any subsequent propietor must qualify under the locus standi provisions;  For the Madrid Agreement proprietorship qualification falls under the cascade doctrine: the owner must either:-

Interesting stuff about IRs… 1.Have a ‘real and effective commercial establishment’ in a country party to the Madrid Agreement; and/or 2.Be domicile in a country party to the Madrid Agreement; and/or 3.Be a national of a country party to the Madrid Agreement. …and the qualification is in that strict order.

Interesting stuff about IRs…  Though the Madrid Protocol has the same locus standi requirements (with the attachment being to a country party to the Protocol rather than the Agreement), the cascade doctrine does not apply.  This issue can become stickier than a sticky thing being sticky where an assignment is concerned.

Interesting stuff about IRs…  For the first 5 years from creation of an IR, the subsistence of any designation under it is dependent upon the continuing subsistence of application/registration upon which it is based;  If the base is revoked, invalidated, surrendered or allowed to lapse within 5 years of the IR’s grant, the IR fails and protection is lost. This is known as central attack.

Interesting stuff about IRs…  If an IR under the Madrid Protocol suffers central attack all is not lost – any of designations can be transformed into ordinary national applications under national law and will benefit from the original priority date of the failed IR.

Interesting stuff about IRs…  It is possible to claim seniority for a designated country whether there is triple identity with an earlier, national registration (Article 4bis of both treaties);  In some countries this happens automatically;  In others, positive action by the proprietor is necessary.

Interesting stuff about IRs…  It is possible to add further countries to an IR by way of subsequent designation;  Beware that the subsequent designation will require renewal within the same time frame as the rest of the IR;  Subsequent designation does not revive the central attack period.

Interesting stuff about IRs…  IRs can be bought and sold (either in whole or in part, and in respect of some or all of the designated countries [but remember locus standi restrictions for the assignee!]);  IRs can be licensed and a licence may be recorded either centrally at WIPO or locally under national procedures;

Interesting stuff about IRs…  The designations under an IR are treated as property rights in accordance with the national law of the country concerned;  IR designations may stand as security;  Cautions against further dealing may be filed.

Interesting stuff about IRs…  Though there is no prohibition generally by WIPO on broad specifications of goods and services, some national registries (e.g. the USPTO in the United States) may have stricter requirements.  If a mark is somewhat ‘dodgy’ on either absolute or relative registrability grounds, the cost savings of using the Madrid system may be lost;  Linguistic concerns and local scripts may render international filing inappropriate.

Interesting stuff about IRs…  Though stonking good value for money, the calculation of the official fees for an IR is fiendish! They are charged in Swiss Francs;  Luckily WIPO has a fee calculation automaton on its website at  The variables for calculation include:-

Interesting stuff about IRs… 1.Whether the mark is in colour or monochrome; 2.The number of International Classes specified (you get three in the basic price – any more incur a supplementary fee as a surcharge); 3.The countries designated (some charge individual fees (a kind of surcharge) varying on the number of Classes and type of mark, whereas countries not charging an individual fee incur a standard complementary fee); 4.Designation of certain developing nations incurs a substantial fee reduction to promote trade.

Interesting stuff about IRs…  Designation of certain countries under the Madrid Protocol requires additional procedures: 1.The designation of the UK, Ireland and/or Singapore require a declaration of a bona fide intention to use the mark; 2.The designation of the EU as a whole (more later) requires nomination of a second, official language and filing of a supplemental form (MM17) if seniorities are claimed;

Interesting stuff about IRs… 3.The designation of Cuba, Ghana and/or Japan requires payment of an individual fee on application and a further individual fee on grant of protection; and 4.Designation of the United States requires filing of supplemental form called an MM18 to provide details of the basis of registration.

Interesting stuff about IRs…  The EU as a whole qualifies as a designation under the Madrid Protocol as a supranational organisation in addition to each EU member state (except Malta) individually;  Effectively you can designate a CTM under the Madrid Protocol or base an IR under the Madrid Protocol on a CTM application/registration;

Interesting stuff about IRs…  Special fees and opposition timings apply for designations of the EU as a whole; and  Transformation on failure of an IR designating the whole EU can transform the designation into a CTM application NOT individual, national applications.  Conversely, a failed designation of the EU can be converted either into national applications in available member states or (at the proprietor’s election) individual, applications under the Madrid Protocol - effectively subsequent designations (except in Malta, because Malta individually is not a member of the Protocol).

Interesting stuff about IRs…  NB - The base registration on which an IR is founded DOES NOT FORM PART OF THE IR AND IS NOT A DESIGNATION UNDER IT!  NB – The designation of a country under an IR does not mean that protection has been granted there (especially tricky to spot on some databases).

International Filing Projects: Considerations and Strategies  It is not a case of “Which system should I use?” (to the exclusion of others), but, “Which one is most efficient?”;  Mixing and matching – consider combinations of CTMs, IRs, national filings, and other multinational systems (African Union, OAPI, Andean Pact); as appropriate.

International Filing Projects: Considerations and Strategies  It is generally sound advice to conduct pre-filing availability searches to avoid disappointment;  Availability for registration AND use should be investigated;  The ‘piecemeal’ approach is most cost effective – but make sure a search is conducted for a country prior to commencement of actual use. Conversion and transformation are useful in speculation.  Some proprietors have other concerns (e.g. regulatory compliance for pharmaceutical manufacturers).

International Filing Projects: Considerations and Strategies  Shush, don’t tell everyone, but not all European countries are in the EU;  The unitary character of the CTM means that sometimes, large territorial coverage of the EU is best done by way of an IR;

International Filing Projects: Considerations and Strategies  The IR is not necessarily the cheapest route to international protection if the mark raises registrability issues – part of the cost efficiency of IRs is the fact that use of local agents is redundant;  International protection is not appropriate where a mark neither translates nor transliterates well in all countries. Also, not everyone writes in Roman script!

International Filing Projects: Considerations and Strategies  The locus standi requirements of IRs can create complex problems upon future assignment, if not upon initial application;  Central attack creates uncertainty for IRs in their early years;  Is the proprietor desperate to sue? Speed of registration may be important.

Any questions?

Thank you for listening!