1. 1 HOW TO PROTECT A MARK? Giulio C. Zanetti, IDLO Turin, November 6, 2009

2. 2 1. National Route WIPO ARIPO 2. International Route Madrid System Banjul System 3. Regional Route OHIM OAPI EU System Bangui System HOW TO GET PROTECTION?

3. 3 Madrid system for the International Registration of Marks

4. 4 National Filing v. Madrid File in many Offices File in many languages Fees in local currency Usually local agent Many registrations Many renewals Changes recorded via each national Office File in one Office (O/O) File in one language Fees in one currency Local agent only if refusal One int. registration One renewal Changes recorded via International Bureau Non-Madrid Madrid

5. 5 –only procedure => no substance –effects of IR = effects of national registration –closed systems => entitlement NB

6. 6 WHO may use the system? natural person legal entity an establishment in or: a domicile in or: the nationality of any having a Contracting Party }

7. 7 Certifies that particulars in international app. = those in basic app. or basic reg. Checks formalities Records in the International Register Publishes in the International Gazette Notifies designated Contracting Parties Substantive Examination refusal within set time limits refusalno refusal = effect of a national registration Review of Basic Madrid Procedure OFFICE OF ORIGIN INTERNATIONAL BUREAU OFFICE OF DESIGNATED CONTRACTING PARTY International Application Precondition: basic application or basic registration

8. 8 Office of Origin certifies certain facts in the relationship between the international application and the basic application or registration (e.g., same applicant, same mark) 1. Office of Origin tasks international application Madrid System

9. 9 International Bureau formality examination inscription in the International Register publication in the Gazette notification to designated Contracting Parties 2. International Bureau tasks Madrid System

10. 10 Office of the Designated CP substantive examination ….. opposition 12/18+ months provisional refusal no provisional refusal/withdrawn = national registration 3. Office of the Designated Contracting Party tasks Madrid System

11. 11 No irregularity: registration in the International Register correction within time limits reception scanningexamination Irregularity: irregularity letter no correction within time limits application considered abandoned – entitlement – designated Contracting Parties – fees paid – classification of goods/services – Vienna Classification The Procedure Before the International Bureau

12. 12 – Madrid Agreement Concerning the International Registration of Marks (1891) MADRID SYSTEM – Protocol Relating to the Madrid Agreement (1989; came into operation on April 1, 1996)

13. 13 Agreement Protocol MembersStatesStates + Organizat Basic markbasic reg basic reg + applicat LanguagesFrench Eng/French/Spanish Feessupplementary + complementary andcompl or Individual fee Refusal12 months 12 or 18 months Madrid System Comparison between Agreement & Protocol

14. 14 Advantages of the Madrid System Facilitates the international protection of marks of a country’s own nationals Facilitates the protection of foreign marks, thereby encouraging inward investment The country’s Office draws revenue from: –handling fees –designation fees

15. 15 Advantages of the Madrid Protocol Simplicity, economy and flexibility at the application stage: a single application in one language filed with the trademark office of the home country to obtain protection in several countries. at the post-registration stage: guarantee on the period within which potential grounds of refusal to protect a mark can be raised by the offices of the designated countries possibility of designating other countries after registration easy handling of operations: a single request to record changes (transfers, changes of name or address, etc.) which may affect the registration as a whole or in part; a single request for renewal.

16. 16 Administrative Efficiency Centralized filing and administration Default position….protection granted Determined timescales

17. 17 Flexibility Ability to relinquish designations Ability to add subsequent designations Different coverage in different designations More freedom to secure appropriate protection cost effectively

18. 18 2 Treaties 2 Possible types of Designations 3 Types of International Applications One System

19. Review of the SC Article 9sexies(2) Extraordinary power to the Assembly to restrict or repeal the SC Review by Madrid Working Group Met 4 times 2005-2007 Recommended a repeal of the SC Assembly adopted amendment Entry into force is September 1, 2008

20. A P !! AP A or Vietnam AP A+PA+P France Algeriaa From September 1, 2008 This is no longer an ‘Agreement-only’ filing; now a ‘mixed’ (A+P) filing - So it is still subject to ‘cascade’ + basic registration

21. AP P France Italy Japan Germany From September 1, 2008 From Sept. 1, 2008, because of the repeal of the SC, a filing such as this will no longer be ‘mixed’, but will, instead be a ‘Protocol-only’ filing P !! P P !!!

22. 2009 : Agreement-only States - Algeria - Bosnia and Herzegovina - Kazakhstan - Sudan - Tajikistan

23. For an Applicant, two other elements are determined by whether the Agreement or the Protocol governs a designation …. The refusal period ?? The payment of individual fees

24. New Article 9sexies (1)(b) excludes the application of a declaration extending the refusal period and a declaration for inividual fees in AP / AP situations

25. P Denmark Switzerland Australia P P P AP Germany A/P P!!... but, even tho’ its designation is governed by the Protocol, Switzerland will not receive individual fees and will not have the benefit of extended refusal period. P.. so, no cascade, and basic regn. / application

26. 26 Representation Before the International Bureau Rule 3

27. 27 Date of the International Registration Article 3(4) of the Agreement and Protocol –Reception of application by OO, if received by IB within 2 months Rule 15 (four mandatory elements) –identity of applicant –designated Contracting Parties –reproduction of the mark –indications of goods and services

28. 28 Refusals Are there any limitations on the right to refuse? Time Limit Grounds

29. 29 Time Limits Notification of provisional refusal : –12 months Mandatory under Agreement Optional under Protocol –18 months Optional under Article 5(2)(b) of the Protocol –‘18 months +’ in case of opposition Article 5(2)(c) of the Protocol

30. 30 Non-Valid Grounds for Refusal –formal grounds –classification of the goods/services (Rule 12 ! ) –multi-class registration (Art. 5(1))

31. 31 Statement of Grant of Protection - if no notification of Refusal issued, a CP may send SGP after: (a) all procedures complete (protection granted), or (b) (i) ex officio exam complete + (ii) after expiry of opposition period (protection granted). WIPO will record the statement and transmit it to the Holder

32. 32 Responding to Refusals Refusals can be based on….. A substantive inherent objection A prior cited registration/application An objection to the specification of goods Other objections

33. 33 The Community Trademark system

34. 34 What is the OHIM? Official EU Agency In charge of managing -The Community trade mark system (1996) -The registered Community design system (2003) Financial Autonomy Around 700 Staff - From all EU Countries - 3 Languages Minimum Seat: Alicante, Spain

35. 35 Geographical Scope of Community Protection The Internal Market: -Approx. 500 million citizens -EU as a single territory -GDP: $ 14.44 trillion Unitary character: - ‘All or nothing’ principle Enlargement - Automatic extension

36. 36 Main Advantages of the Community Trade Mark Use requirement: Easy to meet Community protection available in two ways: Direct route via the OHIM Designating the EC in an international application (The Madrid Protocol)

37. 37 CTMs in the EU: Which way to go? Direct route: No need for a basic application Need to be represented Limited to countries of the EU Via the international route (The Madrid Protocol) Need for a national basic application Representation only in case of objections or oppositions Countries beyond the EU may be designated Subsequent designations possible

38. 38 Main Advantages of the Community Protection Simplification of administrative procedures: – single application – single language – reduced translation costs – 1 Office to decide on registrability – 1 single set of fees Open to anyone Community court system – simplified legal procedures if trade mark or design is infringed Community-wide border enforcement

39. 39 OHIM Language Regime Bulgarian Czech Danish Dutch English Estonian Finnish French German Greek Hungarian Italian Latvian Lithuanian Maltese Polish Portuguese Romanian Slovak Slovenian Spanish Swedish Official EU LanguagesOHIM Languages English French German Italian Spanish BG CS DA DE ET EL EN ES FR IT HU LV LT MT NL PL PT SK SL FI RO SV

40. 40 Fees for a Community Trade Mark Basic Fee for CTM application€900€750 e-fee Search Fee (optional) €192 Basic Fee for CTM registration€850€850 Total €1.750 €1.600 e-fee Extra Class Fee €150 per class over 3 Fee for an Opposition€350 €350 Fee for an Appeal€800 €800 Basic Fee for the Renewal €1.500 €1.350 e-fee Extra Class Fee (renewal)€400 per class over 3

41. 41 Representation NEED TO BE REPRESENTED Any applicant without a seat or real and effective establishment within the EU needs to be represented by: –A legal practitioner –A professional representative authorised to act before the OHIM –An employee (if place of business/commercial establishment in Community or economic connections) EXCEPTION: –Filing of an application FINDREP: Representative consultation service –http://oami.europa.eu/en/db.htm

42. 42 Duration of the Registration Duration: 10 years from the date of filing Renewal: Every 10 years – provided that the renewal fees are paid Renewal fees: 1.500 EUR paper renewal 1.350 EUR e-renewal

43. 43 Relative Grounds OPPOSITION Earlier rights (Article 8, CTMR) Upon opposition By the proprietor of an earlier mark -In case of identity -In case of similarity and there exists a likelihood of confusion (association) on the part of the public Earlier trade mark application or registration: -Community trade mark -National trade mark within EU -International trade mark within EU Earlier filing / priority date

44. 44 Articles 50, 51 and 52 CTMR Procedure after registration of CTM Cancel CTM after it has been registered Before OHIM (directly) or before Courts (indirectly) Fee (both for invalidity and revocation): EUR 700 CANCELLATION

45. 45 The exclusive right to prohibit third parties to use identical/similar signs for identical/similar goods or services: -Affix the sign to the goods or to the packaging thereof; -Offer the goods, putting them on the market or stocking them as well as offer or supply services with that sign; -Import or export goods under that sign; -Use the sign on business papers and in advertising. Rights conferred by a Community trade mark

46. 46 Right to oppose the registration of a subsequent trade mark if there is a risk of confusion Right to transfer or to license the trade mark for the totality or part of the goods or services. Rights conferred by a Community trade mark

47. 47 Information:  (+ 34) 965 139 100  (+ 34) 965 131 344  information@oami.europa.eu  Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa, 4 E-03008 Alicante SPAIN

48. 48 Thank you!!! gzanetti@idlo.int