1. Options for protecting your trademarks in the European Union A Presentation by Mark Kennedy – OHIM External Relations KIPO Seminar on The Community Trade Mark & Madrid Protocol Seoul, Friday November 12 th 2004 (Presentation Material supplied by Nicolás Vigneron – OHIM External Relations)

2. Trade Mark Overview in Europe Generally admited that around 3 million TMs exist in Europe National TM Applications (2003) Germany62 041 France63 405 United Kingdom26 083 Spain53 989 Benelux23 301

3. Trade Mark Overview in Europe International TM Applications (2003): all countries 21 847

4. Trade Mark Overview in Europe International TM Designations (2003): 360 562

5. Trade Mark Overview in Europe Community Trade Marks : (2003) 57 637 applications

6. What are the systems currently available to the applicants to protect their trade marks in Europe? National Trade Mark International Trade Mark (IR) Community Trade Mark (CTM) or a combination of these systems

7. National applications Relevant option when applicant is excluded from CTM or IR country not included in CTM or IR slightly different TMs in different countries different owners in different countries Administrative management of application and post registration not facilitated : Various titles (23 harmonised Trade Mark sytems but discrepencies still exist, 23 national or regional offices, 19-20 languages, various representatives may be needed

8. What are the systems currently available to the applicants to protect their trade marks in Europe? National Trade Mark International Trade Mark (IR) Community Trade Mark (CTM) or a combination of these systems

9. The International Option (Madrid Protocol): Rights in up to 77 countries possibility of subsequent designations in the Madrid Protocol IR (all countries in the EU)in 1 classin 3 classes home registration app. € 400€ 400 Basic fee IR € 450€ 450 13 countries UE €1637+€2120 + 10 new member states€ 580+€ 720 Total app. € 3067 € 3690

10. Madrid Protocol Signatories

11. The International Option : Dependent on basic application –Central attack (only around 100 cases in total) –Scope of protection dictated by goods/services of basic application the Owner must be entitled according to Madrid Protocol No professional representative required to file but could be needed during examination process in each designated country

12. The International Option : Administrative centralization of formalities by the International Bureau (one language, translation done by WIPO, renewal and post- registration records centralized (except in some countries for licenses)) Examination process within 18 months (but opposition may be longer) Refusal in individual countries does not affect registration (but examination based on different TM legal systems) Change of the trade mark not available

13. The International Option : The International system is very often used : –when the applicant is interested in countries that are not members of the EU –more cost efficient when the applicant is only interested in a few countries within the EU + Switzerland and expansion to other EU countries is highly unlikely

14. What are the systems currently available to the applicants to protect their trade marks in Europe? National Trade Mark International Trade Mark (IR) Community Trade Mark (CTM) or a combination of these systems

15. The Community Trade Mark (CTM) option: Accessible to all: Any person or business entity may apply for a CTM. But for non European applicants, one European representative must be appointed the appointed representative can be a OHIM professional representative or legal practitioner

16. The Community Trade Mark (CTM) option: Reduced administrative constraints: - one office : the OHIM - one single application and legal system - one single fee system and attractive fees (one part payable at application 975€ and the second part has to be paid only if CTM registered 1100€ - one single language (one of the 20 EU languages + designation of one of the 5 OHIM languages for communication purpose)

17. The Community Trade Mark (CTM) option: Incorporation of prior trade mark by claiming seniority Ü consequences: more effective management of TM Portofolio because - prior date of national registration is conserved - the national or international registration does not need to be renewed

18. The Community Trade Mark (CTM) option: Easy registration : broad concept of the goods and services (acceptance of class headings) Wide notion of what can be a CTM (Word, Figurative, 3D, names, other types) Effective protection : Throughout all member states Cost effective prosecution (no need to prosecute those who infringe in each Member State + CTM courts)

19. End of Part One

20. CTM Link to the Madrid System

21. Flexibility of the CTM system : link between Madrid Protocol and CTM As from 1 st of October 2004 two new options: CTM can be a basis for International Application EC could be designated in International Application

22. Extend your CTM protection to the world - International Applications based on a CTM – The OHIM may receive IA (in any of the 20 official languages of the EU), translate when necessary, certify and transmit them to WIPO within 2 months. – only for CTM applicants or owners domiciled or having effective establishment within the EC – OHIM must notify to the International bureau any relevant changes affecting the basic CTM during the dependency period (5 years following the date of the International Application). – Transmittal fee of 300€ charged covering all other successive procedures

23. WIPO notifies the International registrations designating the EC to the OHIM Indirect CTM applications are examined in the same way as direct CTM applications. Obtain CTM protection though International Registrations Incoming International Applications designating the EC

24. Following such an examination, the OHIM will notify to the IB a provisional refusal of protection within 18 months. It could be either ex officio (absolute grounds) or based on an opposition (relative grounds). The provisional statement will have then to be confirmed or withdrawn once all procedures will have been completed (no time limit). Obtain CTM protection though International Registrations Incoming International Applications designating the EC

25. IIX re-pub of IR + 6 months AG examination + 3 months opposition period End of the opposition period Opposition Admissibility examination = max 18 months notification X 9 months 1st Statement of grant of protection OR Provisional refusal on AG 2nd Statement of grant of protection OR Provisional refusal on RG AND Examination of Incoming International Registrations

26. Links between Community, National and International Systems IR designating National TM IR designating CTM Conversion to national Article 154 CTMR Conversion (opting back to Madrid) Article 154 CTMR Transformation in case of central attack Article 9 quinquies MP Transformation in case of central attack Article 9 quinquies MP Replacement Article 4 bis MP Article 152 CTMR National TM Direct CTM Conversion to national Article 108 CTMR

27. Some Madrid and CTM Facts Madrid: TOP 10 countries of origin – 2003 DE 4999 FR 3281 BX 2104 CH 2204 IT 1806 ES 914 AT 723 UK 599 CN 413 CZ 355 TotalTOP 1017398 Totaloverall21847

28. Major filing countries first half 2004 Germany263918.8% France158411.3% Benelux1261 9.0% Italy1238 8.8% Switzerland 968 6.9% USA 749 5.3% Austria 593 4.2% China 485 3.5% United Kingdom 457 3.3% Spain 439 3.1% Other359325.7% Madrid System

29. Some Madrid and CTM Facts CTM: TOP 10 countries of origin – 2003 US 11083 DE 9370 UK 6301 ES 5690 IT 4855 FR 4120 NL 2191 JP 1530 CH 1505 SE 1056 Totaloverall 57637

30. Some Madrid and CTM Facts Official fees: National, CTM, Madrid designations – 3 classes National fees 25 EU countries direct filing $ 6.450,00 CTM direct $ 2.500,00 Madrid Protocol designations 24 EU countries w/o CTM $ 3.450,00 Madrid Protocol designation: CTM $ 2.260,00

31. Some Madrid and CTM Facts Official fees and other costs (professional representatives average USD1,000 per country included): National, CTM, Madrid designations – 3 classes, not including U.S. representative cost National fees 25 EU countries direct filing $ 1.200/country = $ 30.000 CTM direct $ 2.500,00 plus $ 600,00 to $ 1.000,00 Madrid Protocol designations 24 EU countries w/o CTM $ 3.450,00 plus international fee - $ 510,00 - plus professional representation at international level plus professional representation at national level when objections are raised at national level Madrid Protocol designation: CTM $ 2.260,00

32. Madrid Agreement & Protocol Languages : Agreement : French only Protocol : French, English & Spanish Fees (other than basic fee) : Agreement : identical designation fee for all countries bound by the Agreement Protocol : designation fee determined by Protocol only countries

33. Madrid Agreement & Protocol Refusal notification deadlines : Agreement : 12 months Protocol : 18 months + possible extensions

34. Madrid Agreement & Protocol Dependency – general rule : Under both systems : 5 years from IR date meaning that whatever happens to the basic reg’n will be reflected/mirrored by the IR – limitation of goods, cancellation, Not assignments

35. Madrid Agreement & Protocol Dependency - Central attack : … so if you attack successfully the basic reg’n ie have it struck off completely this is what happens to An Agreement IR : it ‘dies’ in all designated countries A Protocol IR : will likewise ‘die’ in all designated countries unless the owner asks for transformation ie conversion keeping the priority date but having to go through the process of a national trademark application

36. Madrid Agreement & Protocol Dependency - Central attack : Two examples Basic reg’n France thus IR governed by Agreement : successful central attack – IR ‘dies’ Basic reg’n US thus IR governed by Protocol : successful central attack – IR can be transformed – same of course for IR based on CTM but …

37. Madrid Agreement & Protocol Dependency - Central attack : … if the IR is based on CTM what do OHIM statistics say so far on ‘survival’ chances for CTMs …

38. TM facts: Global figures (end July 2004) Applications 387.925 Registrations 221.353 Oppositions 71.445 Oppositions settled 56.669 Cancellations 953 Cancellations settled 514 Appeals 5.811 Appeals settled 4.822 Actions before CFI 350 CFI cases settled 150 Further appeals to ECJ 32 ECJ decisions 15

39. “Success rate”: OHIM’s record Applications100 Refusal on absolute grounds 3 Withdrawal before publication 5 Publications 92 Oppositions ca. 18 to 20 % of applications Refusal after opposition 2 Withdrawal before registration 9 Registrations 80 Appeals ca. 25 % of appealable decisions Appeals “success rate” ca. 25 to 30 %

40. Using the CTM as a basic application or registration CTM as a basic mark Entitlement Application Form Languages (all, but … - MP languages) Fees - € 300,00 Examination Can OHIM keep the two months? Yes, unless … (applicant’s responsibilities)

41. Designation of the European Community Direct filing vs. MP designation: What is different Form Professional representation Fees Languages Publication Searching Translation Examination Opposition Appeals Seniority Conversion Dependency Renewal Administration Effect of registration

42. Designation of the European Community Direct filing vs. MP designation: What is different Form Filing at OHIM or via national EU office vs. request of extension of protection to the EC in the application for international registration or subsequent extension request addressed to WIPO

43. Designation of the European Community Direct filing vs. MP designation: What is different Professional representation Applicants (and other parties) without seat or residence or establishment must be represented in OHIM proceedings by European professional representative vs. representation before OHIM required only when objections are raised

44. Designation of the European Community Direct filing vs. MP designation: What is different Fees € 975,00 filing fee and € 1.100,00 registration fee vs. € 1.875,00 individual fee with reimbursement of € 1.100,00 when protection is not granted Question on reimbursement : how / to whom ?

45. Designation of the European Community Direct filing vs. MP designation: What is different Languages First language 1 of 20 second language ES,DE,EN,FR,IT vs. first language ES,EN,FR (for US: EN) second language ES,DE,EN,FR,IT (for US: ES,DE,FR,IT)

46. Designation of the European Community Direct filing vs. MP designation: What is different Publication Application and registration with full particulars in all languages vs. publication in WIPO Gazette and republication in OHIM Bulletin of bibliographic date (not including list of goods and services)

47. Designation of the European Community Direct filing vs. MP designation: What is different Searching No difference Search reports for MP designations sent to proprietor of Madrid registration Change of search system in 2008

48. Designation of the European Community Direct filing vs. MP designation: What is different Translation Bulletin: Translation into all 20 EU languages vs. Re-publication of bibliographical data (no translation)

49. Designation of the European Community Direct filing vs. MP designation: What is different Examination Full examination for formalities, classification and registrability (absolute grounds) vs. no examination for formalities (except seniority claims) no examination of classification no difference in substantive examination communication of acceptance or provisional refusal on absolute grounds within 6 months from receipt of designation

50. Designation of the European Community Direct filing vs. MP designation: What is different Opposition Time limit: 3 months from publication date vs. 3 months counted from 6 months from republication date no differences in examination

51. Designation of the European Community Direct filing vs. MP designation: What is different Appeals No differences

52. Designation of the European Community Direct filing vs. MP designation: What is different Seniority May be claimed in CTM application or within 2 months from filing date, or after registration vs. claiming in international application, documents to be submitted to OHIM, or claiming after acceptance with OHIM directly

53. Designation of the European Community Direct filing vs. MP designation: What is different Conversion “Failed” CTM may be converted into national applications in Member States vs. “failed” designation may be converted into national applications or into subsequent designations in Agreement and Protocol countries (“opting-back”) keeping his priority

54. Designation of the European Community Direct filing vs. MP designation: What is different Dependency Concept does not exist vs. 5 year dependency rule (“central attack”)

55. Designation of the European Community Direct filing vs. MP designation: What is different Renewal Request addressed to OHIM, fee € 2.500,00 vs. request addressed to WIPO, fee € 2.300,00

56. Designation of the European Community Direct filing vs. MP designation: What is different Administration Application addressed to OHIM (transfers, name changes, …) vs. application addressed to WIPO

57. Designation of the European Community Direct filing vs. MP designation: What is different Effect of registration Effective from date of publication of registration vs. effective retroactively from date of international registration

58. Designation of the European Community Direct filing vs. MP designation: What is the effect of the differences? Effects for OHIM: all positive, “burden- sharing” Effects for trade mark owners and representatives ???

59. Thank you for your attention Questions and Answers information*oami.eu.int www.oami.eu.int