Legal challenges in protecting trademarks abroad & benefits of using EUTM & Madrid systems

Gaurav MiglaniIP AttorneyLL.M

Why protect the mark internationally?

❖ The market is global but trade mark rights are territorial

❖ In most countries rights are acquired by registration

❖ First to apply v. First to use

Kurkure story

Kurkure story

❖ There’s even a chicken flavour

When to protect?

❖ Before the product is launched in the relevant market?

❖ Before you have signed an Agreement and appointed your first distributor?

❖ Most countries, rights are determined by filing date, file as soon as it is selected and cleared for adoption.

❖ Paris convention 6 month’s window to claim priority

Where all to protect?❖ Largely a business decision, consider filing in:

❖ Business operations

❖ Plans of business expansion in near future

❖ Countries that have sizeable revenue streams

❖ From where the goods are sourced

❖ Defensive filings in countries with high counterfeit rates

❖ Defensive filings in countries that are first to file.

One of the most vital factors❖ Costs

❖ Filing costs

❖ Prosecution

❖ Maintenance

❖ Enforcement

❖ One mark suitable for world market can save lot spent on promoting different brands for different countries.

Challenges - Adoption of the mark

❖ Find a mark that’s clean to adopt and use worldwide

❖ Gmail was compelled to offer googlemail.com in Germany, Poland, Russia and initially in the UK as well

Challenges - Adoption of the mark

❖ What is the business commitment to the mark?

❖ Is it a mark to be used for short term promotional use only or for a product?

Challenges - Adoption of the mark❖ If its your house mark, thats irreplaceable, it may be wiser to

file without a search

❖ If search reveals many conflicting marks

❖ Adopt a new one

❖ Obtain an infringement opinion

❖ Must consider conducting clearance searches well in advance of launch.

❖ Searches now extend to app stores, social media platforms.

Challenges - Adoption of the mark❖ Must obtain local agent’s opinion on search

results

❖ There may be marks on Register which are liable to be cancelled

❖ Registrations which are merely defensive

❖ No search can be completely risk free, more so in common law countries.

Challenges - Filing trademark application

❖ Translation issues

Challenges - Filing trademark application

❖ Application should reflect the way the mark is to be used in a country

❖ Cultural issues

❖ Some marks may have negative connotations when translated

❖ Osram in Polish & Lumia in Spanish

Challenges - Filing trademark application

❖ Legalisation of power of attorneys and related documents & translations

❖ Most countries require power of attorneys if application is filed by local agents

❖ Extremely time consuming and costly

❖ Hiring local attorneys

Challenges - Filing trademark application

❖ Classification issues

❖ Single class countries v. Multi class countries

❖ Some countries require that description of goods / services must conform to general class headings

❖ China and US have detailed identification manual

❖ Canada has no classification system at all

Challenges - Filing trademark application

❖ Apply for class heading or your own detailed specification

❖ Class heading may not cover all goods, approach varies from country to country - EUTM

❖ Unduly broad specifications clog the Register.

EU Trademark system

❖ EUTM - Single registration protects the mark in all EU member countries

❖ New member states are added, protection automatically extends

❖ One single application in one language

Benefits of EUTM

❖ Time saving and cost effective

❖ Maintain just a single trade mark registration.

❖ Genuine use in one member state may be sufficient to protect EUTM in all member states from cancellation on grounds of non-use.

❖ No examination in relation to prior marks.

Madrid Protocol route❖ Simplified filing system that allows brand

owners to obtain and maintain trade mark registrations in multiple countries through a single trade mark office.

❖ Simple and economical procedure

❖ One single language

❖ One set of fee

Madrid route - what is required?❖ Single application indicating goods and services

and designating countries of interest

❖ Entitlement:

❖ real and effective industrial or commercial establishment, or

❖ domicile, or

❖ national of country which is Party to Protocol.

Madrid route - What is required?

❖ Basic mark

❖ Applicant needs to have a basic registration, or

❖ a basic application in the office of origin.

Filing international application❖ Determine office of origin

❖ Determine basic application or registration

❖ File MM2 (English, French and Spanish)

❖ List of goods must be covered by or narrower than the list contained in basic application or registration

Next steps

❖ Office of origin forwards the application to International Bureau

❖ IB examines for compliance with formal requirements

❖ Any irregularity if notified must be remedied within 3 months

❖ Once remedied, mark is recorded in International Register and published in WIPO Gazette

Next steps

❖ Offices of designated contracting parties conduct substantive examinations

❖ If protection is not refused within 12 / 18 months the mark is deemed registered

❖ If a refusal is issued, applicant must respond within time frame prescribed.

Managing an International Registration

❖ International registration can be renewed through single Madrid e-renewal service

❖ Changes in ownership, name and address, limitation to goods and services can all be recorded through single application to WIPO

❖ Progress can be tracked through free Madrid Real Time status online service.

❖ Possible to expand scope of International registration by designating contracting parties not previously designated.

Sum up the benefits❖ Save attorney filing costs

❖ Save legalisation and translation costs

❖ Hassle of dealing with multiple attorneys / law firms

❖ Protocol sets time limits, protection is usually secured in shorter time frame.

❖ Any change to the application is easy to record and need not be filed with individual offices.

❖ Great tool to manage large portfolios

❖ Simplified renewal and maintenance.

THANK YOU