The accession of the EC to the Madrid Protocol Consequences for Trademark Filing Strategies A tentative US business perspective Ingrid Desrois – Geneva October 7, 2004

The accession of the EC to the Madrid Protocol Procter & Gamble – some data A US corporation founded in 1837 Present in at least 140 countries Approximately 100,000 employees Over 300 brands Approximately 100,000 trademark registrations worldwide including some 900 international registrations

The accession of the EC to the Madrid Protocol … Major product categories Personal & Beauty Care ALLDAYS, ALWAYS, TAMPAX, OLAY, OLD SPICE, SKII, COVER GIRL, MAX FACTOR, CLAIROL, PANTENE, HEAD & SHOULDERS, PERT, VS SASSOON, HERBAL ESSENCES, ZEST, SAFEGUARD, NOXZEMA, CAMAY, HUGO BOSS, JEAN PATOU, GIORGIO BEVERLY HILLS, LAURA BIAGIOTTI, VALENTINO … House & Home Care CASCADE, ARIEL, Mr CLEAN/Mr PROPER, DASH, FAIRY, VIZIR, ANTIKAL, SWIFFER, FEBREZE, TIDE

The accession of the EC to the Madrid Protocol Health Care & Wellness VICKS, VAPORUB, NYQUIL/MEDINAIT, CREST, BLEND-A-MED, SPINBRUSH, ACTONEL, CACIT, DIDRONEL … Baby & Family Care PAMPERS, KANDOO, BOUNTY, CHARMIN … Pet Nutrition & Care IAMS, EUKANUBA and not to forget PRINGLES, SUNNY D, FOLGERS …

The accession of the EC to the Madrid Protocol Filing Strategy Differentiate between new product launches and upgrades - new products are generally intended for global launch - upgrades will spread to those geographies where the original brand is already on sale unless upgrade is vehicle for globalization of existing brand Overall the launch calendar for all initiatives depends on product category Filing strategy adapted to launch plan

The accession of the EC to the Madrid Protocol Filing Strategy in the EU before 1/10/2004 CTM preferred route but value of national filings not neglected Searches = screening in all countries, full availability searches in first to launch countries or prior to launch (depending on individual cases)

The accession of the EC to the Madrid Protocol Filing Strategy in the EU after 1/10/2004 No significant changes in light of high level of comfort with CTM direct but explore Madrid Protocol with EC designation – opting back, flexibility of adding/removing countriers from designation list, cost savings (of course)

The accession of the EC to the Madrid Protocol Looking into the future The Protocol with EC designation should become more attractive to rightholders from all countries including the US once - the USPTO changes practice on identification of goods. The US user requirement rules might also be worth reconsidering. - neighbouring countries such as Canada and Mexico join the Protocol - plus of course the rest of the ‘white space’ on the world map - member states reduce the 12/18 months to a more business world realistic timeframe - member states systematically issue notices of grant of protection which are vital to enforcement - countries which are currently only Agreement will join the Protocol

The accession of the EC to the Madrid Protocol Conclusion Regardless of the size of the business and country of origin, I would always consider the Protocol with EC designation to be a reliable, simple to administer and good value for money system. Let’s hope that our friends in the ‘white zone’ will soon be happy members of the big Protocol family …