ASIAN PATENT ATTORNEYS ASSOCIATION 59TH COUNCIL MEETING

“INTELLECTUAL PROPERTY FROM A GLOBAL PERSPECTIVE: WHAT IT TAKES TO MAKE IT CLICK”

Linda WangTAY & PARTNERS

Any budgetary constraints? The more detailed and thorough, the higher the cost

Is there need to also search the local language translation of the mark (especially if Roman alphabet is not used, e.g., Chinese, Japanese, Korean, Thai)?

Different levels of searching can be performed. Often a 2-step process:

(1) A preliminary search of trade mark registers• Free on-line searches of Registry’s database – this can

quickly rule out marks that are obviously not available

TRADE MARK AVAILABILITY SEARCH

TRADE MARK AVAILABILITY SEARCH

(2)Search to determine conflicting prior use – either generally or industry specific (many countries give priority to rights based on first use)

• On-line search engines: Yahoo!, Google, MSN, social networking sites, etc.

• Register of companies and businesses• Internet domain names• Telephone and other industry / business relevant

industries

FREE ON-LINE SEARCH DATABASES

Full directory of Intellectual Property Offices and their website addresses:

http://www.wipo.int/directory/en/urls.jsp

Some free on-line searchable databases:

Australiahttp://pericles.ipaustralia.gov.au/atmoss/falcon.application_start Canadahttp

://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/tmSrch.do?lang+eng

FREE ON-LINE SEARCH DATABASES

CTMhttp://oami.europa.eu/CTMOnline/RequestManager/ Hong Konghttp://ipsearch.ipd.gov.hk/tmlr/jsp/main.jsp International Registration (ROMARIN database)http://www.wipo.int/romarin/ Japan http://www.ipdl.inpit.go.jp/homepg_e.ipdl Malaysia https://iponline.myipo.gov.my/ipo/main/search.cfm

FREE ON-LINE SEARCH DATABASES

Philippineshttps://trademarks.ipophil.gov.ph/tmsearch/ Singapore

http://tmsearch.ipos.gov.sg/eTMSearch/eSearchOption.jsp South Korea

http://detseng.kipris.or.kr/ndetsen/loin1000a.do?method=loginTM&searchType=S UK

http://www.ipo.gov.uk/types/tm/t-os/t-find.htm USAhttp://tess2.uspto.gov/bin/gate.exe?f=tess&state=4003:f6tlgk.1.1

CLASSIFICATION OF GOODS & SERVICES

Some useful sites on classification of goods and services –

Euroclass Trademark Classification Tool http://oami.europa.eu/ec2/

Nice Classification http://www.wipo.int/classifications/nivilo/nice/index.htm

UK Intellectual Property Office Trademark Classification Tool http://www.ipo.gov.uk/tm/t-find/t-find-class.htm

Vienna Classification http://www.wipo.int/classifications/nivilo/vienna/index.htm

WHICH REGISTRATION SYSTEM?

National registrationSeparate filings in each of country in which registration is

sought. Registered rights are limited to that country. Renewals and other changes in ownership information are also separately filed in each country .

Community Trade Mark (CTM)Unified system of protection throughout the European Union

(EU) with the filing of a single application. If granted, the CTM registration is recognised in all the EU countries. For countries of the EU, go to http://europa.eu/about-en/27-member-countries/index_en.htm

WHICH REGISTRATION SYSTEM? The Madrid Protocol (“Protocol”)A centralised process through which the owner of a live application or

registration in a member country (“home” application or registration) may obtain an International Registration (“IR”) by filing one application in one language and paying one fee. The home application or registration acts as the basis for the IR and as many member countries as the owner wishes, may be designated. For member countries of the Protocol, go to www.wipo.int/madrid/en/members/

The application is examined in each of the designated countries and if allowed, that country becomes part of the IR. There is no change to the substantive process and procedures employed by the national trade mark offices of the member countries. The IR is essentially a bundle of individual national registrations.

WHICH REGISTRATION SYSTEM? A COMPARISON

Territory of Registered RightsNational: Only in the country of registrationCTM: All EU member states. The future expansion of the EU is

automatically reflected in the coverage of existing CTMs.Protocol: In each of the designated member countries which

allowed registration of the application. The EU or individual EU member states may be designated. The IR may be extended to cover further Protocol countries (“subsequent designation”) at any time after registration. The applicant therefore has flexibility over the countries in which protection is sought and the costs involved.

WHICH REGISTRATION SYSTEM? A COMPARISON

CostsNational: Low if protection is required only in that country. CTM: Filing fee covers all EU countries. No choice of countries is

allowed. Payment of fees are however split between application and registration. Can be expensive to monitor later CTM applications for opposition purposes.

Protocol: Costs can be controlled to an extent as the filing fees are dependent on the number of countries designated. All fees are however due on filing (not split between filing and grant). Unless there are problems (objection, opposition), a local agent in the designated country is not necessary.

WHICH REGISTRATION SYSTEM? A COMPARISON Who Can Apply? National: No restrictionsCTM: No restrictionsProtocol: Must be a national of or domiciled in or have an industrial or

commercial presence in one of the member countries (“home country”). A “home application”, that is, a previously filed application or a registration for the same mark in the applicant’s home country is required.

Registrability RequirementsNational: Based on requirements of the national lawCTM: Must be registrable in all EU member states. If any one member rejects

the application, it is not registrable as a CTM although it may be possible to convert it to a national application in some cases.

Protocol: Possible to proceed to registration in the remaining designated countries despite rejection by some designated countries.

WHICH REGISTRATION SYSTEM? A COMPARISON

Scope of Goods and Services for Registration National: Generally, no restriction provided the specified goods and

services fall within the class filed. If priority of an earlier application is claimed, the goods and services are to follow that of the priority application although additional goods and services may be specified (without priority)

CTM: Same as in a national filing.Protocol: The goods and services specified must not be broader than

what is covered by the home application irrespective of whether priority of the home application is claimed. The USPTO for example has more stringent requirements regarding the specification of goods and services. Thus, if the home application is one filed with the USPTO, the IR will have a more limited identification of goods and services.

WHICH REGISTRATION SYSTEM? A COMPARISON

ExaminationNational: Based on the national law and practiceCTM: Only on absolute grounds (i.e., the mark is

descriptive or non-distinctive). No examination on relative grounds (i.e., earlier conflicting marks).

Protocol: Based on the national laws and practice of each of the designated member countries, most of which will examine based on absolute and relative grounds.

WHICH REGISTRATION SYSTEM? A COMPARISON

Opposition National: Based on the national law and practiceCTM: Since there is no examination on relative grounds, opposition is the

only way to deal with later filed conflicting marks. Hence, many CTM applications are opposed. Although OHIM will notify owners of later conflicting applications, policing the marks and having to file oppositions can be expensive and add up to overall costs.

Protocol: Based on the national laws and practice of each of the designated member countries.

Time for Obtaining Registration National: Depends on the prosecution standard and practice of the country.CTM: Can take longer than using the national route for some EU countries.Protocol: Protection may be quicker than by using the national route for

some countries or regions because of the strict time limits set by the Protocol.

WHICH REGISTRATION SYSTEM? A COMPARISON

Term of ProtectionNational: Based on national lawCTM: 10 years from the date of filing the application Protocol: 10 years from the date of filing the application provided the

home application or registration remains valid for the first 5 years. If it fails for any reason (refused, withdrawn, invalidated or cancelled), then the IR and all member country extensions will also be cancelled. This is called the “central attack”. A cancelled IR may be converted into national applications retaining the filing date of the original application but this must be done within 3 months of the cancellation. After the first 5 years, the IR becomes independent and can remain valid despite failure of the home application or registration.

WHICH REGISTRATION SYSTEM? A COMPARISON

Non-Use CancellationNational: Based on national lawCTM: At risk of cancellation if not used for 5 years or more. Bona fide

commercial use in only one country of the EU is sufficient to avoid cancellation in all member states.

Protocol: Based on the national law of each designated country. There must be bona fide commercial use in the country to avoid cancellation in that country.

Maintenance of RegistrationNational: Separate filing at the IP Office of the countryCTM: Simplified maintenance (only one renewal fee and one filing to

update changes to ownership information)Protocol: Simplified maintenance

WHICH REGISTRATION SYSTEM? A COMPARISON

Assignments and Transfer of RegistrationNational: Based on national law and separate filing at the IP Office of the

countryCTM: Must be assigned or transferred for the whole of EU. No option for

assignment or transfer for only part of the EU. No restriction with regard the assignee.

Protocol: Possible to assign or transfer to only some or all of the designated countries. The assignee must be a national of, or domiciled in or have a presence in one of the member countries of the Protocol.

InfringementNational: Based on national law. Injunction applies to that country onlyCTM: Possible to have an injunction that covers the whole of EUProtocol: Pursued through the courts of the designated country and injunction

applies to that country only

WHICH REGISTRATION SYSTEM?

If used appropriately as part of a carefully planned legal strategy, the different filing and registration systems available can reward the client with extensive and efficient trade mark protection as well as noticeable savings in time and costs.

As with most legal issue, there is no substitute for careful and thoughtful analysis of what advantages and disadvantages are offered by each registration system and which system or combination of systems would best meet the client’s needs.

SOME USEFUL ONLINE RESOURCES

OHIM’S Community Trade Mark website (with searchable database)http://oami.eu.int/en/default.htm WIPO’s Madrid Protocol websitehttp://www.wipo.int/madrid/en/index.html Madrid Protocol Fee Calculatorhttp://www.wipo.int/madrid/feecalc/firststep Text of the Madrid Protocolhttp://www.wipo.int/madrid/en/legal_texts/madrid_protocol.htm Text of the Madrid Agreementhttp://www.wipo.int/madrid/en/legal_texts/madrid_agreement.htm IP practitioner’s internet toolhttp://www.ipd.gov.hk/eng/intellectual_property/study_aids/

internet_tools_practitioner.htm

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