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

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

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

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

‘uncontrolled’ accumulation of registrations Case Study I Switzerland ‘uncontrolled’ accumulation of registrations

Streamlining via the EC system? Switzerland ‘uncontrolled’ accumulation of registrations

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(art. 115 CTMR: EN, FR, DE, IT, ES) seniority claims (art. 34 CTMR) conversion in case the registration is refused, withdrawn or ceased to have effect (art. 112 CTMR)

B registers the conflicting mark YY. Claiming seniority 1.1.2007 1.1.2008 1.1.2009 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.

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

Streamlining via international route? Switzerland ‘uncontrolled’ accumulation of registrations

Madrid Union (84 Members) Agreement only 6 Protocol only 28 both treaties 50 (including EC) Following the accessions by these seven countries and by the EC, the Madrid Union will have, on October 1, 77 members: 66 Contracting Parties to the Protocol and 56 to the Agreement. In this map are indicated, in light blue the 11 countries still bound only by the Agreement; in dark blue, the 45 countries which are bound by both treaties, and in green-blue the 20 countries which are bound only by the Protocol, to which should be added the European Community. As we can see, the Madrid system continues to expand in different regions in the world. Europe is still the region the most largely represented (with 42 Members). But the System has now also 19 members in Asia, 12 in Africa and 3 in the Americas. Altogether, the Madrid Union countries account today for more than half of the world population (3.1 billion people) (out of 6.1 billion). Their combined Gross Domestic Product represents about 2/3 of the world gross product. This means that the Madrid System is certainly offering a very attractive market for making business to all those who are entitled to use it.

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

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

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

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

Designation of the EC

Claiming seniority (MM17)

Procedure 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

Conversion: two options (art. 159 CTMR) European: according to the rules of the CTMR (arts. 112-114 CTMR): translation required international: transformation into a ‘subsequent designation’ (rule 24(7) CR): no translation required

Subsequent designation 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 international registration expiry

Designation of the US

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

Declaration on ‘Intention of use’ (MM18)

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

United States of America Protocol Member as a basis P P United States of America P P AP European Community Albania As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, . . . [READ SLIDE]. A Egypt

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

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

Fee structure (art. 8) …optional individual fee Agreement: Protocol: 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))

Risk of a ‘central attack’ 5 years after the international registration no longer any influence, dependency (-) (art. 6(2)) before expiry of the period of 5 years risk of a ‘central attack’, dependency (+) (art. 6(3)) EC designation: conversion (arts. 112-114 CTMR) Protocol: transformation (art. 9quinquies MP)

O AP P AP A P AP AP Party to both treaties as a basis Egypte P AP AP P Europese Gemeenschap Switzerland AP AP As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, . . . [READ SLIDE]. SAFEGUARD CLAUSE China

Repeal of the ‘safeguard clause’ historically: Agreement takes precedence amended art. 9sexies 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.’

Influence on refusal periods Agreement 12 months 12 of 18 months Protocol 18+ months in case of opposition

Influence on fees …optional individual fee Agreement: Protocol: 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))

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

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

National route: harmonisation treaties 2006 Singapore Treaty on the Law of Trademarks 1994 Trademark Law Treaty

Advantages 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)

Singapore Treaty: in force since March 16, 2009 Australia Bulgaria Denmark Kyrgyzstan Latvia Poland Republic of Moldova Romania Singapore Switzerland United States of America

contact: m.senftleben@rechten.vu.nl The End. Thank you! contact: m.senftleben@rechten.vu.nl