best practices in ip management...

Best Practices in IP Management Trademarks

I3PM - Geneva, September 21, 2017

SPEAKER’S PROFILE

Chantal Koller

• Swiss national

• Law Degree University of Geneva

• 20 years practice in IP

• 15 years with IP firms – 5 years in-house (sports / spirits)

• 10 years with Novagraaf

• Managing Director – Trademarks Switzerland

• Responsible for Business Development in Japan (Trademarks)

• International Judge for the FIG (gymnastics)

[email protected] – +41 22 979 0930

Copyright © Chantal Koller, Novagraaf 2017

mailto:[email protected]

TODAY’S PROGRAM

Strategic

framework Legal basic

framework

2

Management

methodology

3

Traps & Tips

4

1


STRATEGIC FRAMEWORK

Basic requirements for developing a company excellence trademark management program:


Business alignment: • Goals • Priorities • Budgets • Endorsement

Product alignment: • Branding/Marketing & Comm. • Priority level • Geographic • Evolution

STRATEGIC FRAMEWORK

Management model choices:


Outsourced In-house Hybrid

Key success factors: • Centralization of data • Determine authority levels • Service level agreement

Goal: find the best mix of legal services and formalities that enables your company not to lose oversight of the portfolio

STRATEGIC FRAMEWORK

Use all soft IP rights at your disposal:


What cannot be protected by trademarks may be protectable through other IP rights.

Use all of them to create a network of legal solutions.

Domain Names Industrial Designs Copyright

TODAY’S PROGRAM

Strategic

framework

Legal basic

framework Management

methodology

3

Traps & Tips

4 1

2


Some principles specific to trademark protection:


LEGAL BASIC FRAMEWORK

Use confers rights only in a few (Common Law) countries

If you don’t register it,

you don’t own it!

Use is required to maintain registration

If you don’t use it properly,

you lose it!

First come-First served

Home country basis is essential for international strategy

Ensure priority date

in the proper country!

Protection is unlimited in time & not subject to secrecy

Phase out the filing campaign!

Definition of trademarks:


A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected

by intellectual property rights.

(Source: http://www.wipo.int/trademarks/en/index.html)

1. Sign: traditional and non-traditional types (BUT not concepts) 2. Capable of distinguishing: absolute requirement (*) 3. Goods/services: restricted protection to applicant’s field

of activity 4. Enterprise: the IP right supports business activities


http://www.wipo.int/trademarks/en/index.html

http://www.wipo.int/trademarks/en/index.html


Requirements for achieving trademark registration :


Absolute grounds for refusal: • Descriptiveness • Indications of origin • Language issues • Legal / public order constraints • NGO symbols/acronyms

Relative grounds for refusal: • Earlier third party rights • Opposition vs. Refusals • Letters of Consent not

available everywhere • Searching

…capable of distinguishing… …from those of other enterprises…


A trademark supports business activities; as a consequence, use is required to maintain a registration valid and/or enforceable:


• Only jurisdictions still requiring a Declaration of Use are US and MZ – invalidity as a consequence of not submitting it in time

• Other countries: use is necessary to back-up any offensive

action (opposition or legal action) – risks are negative outcome of offensive action and potential counter attack on validity

• Jurisdictions where administrative proceedings exist for cancellation based on lack of use are growing (CH, EU members to come)


Unitary effect of the EUTM


• One territory – one right: divisions are possible only if the EUTM is dead.

HOWEVER • 28 national registries capable of containing valid anterior rights


Dependency rule of International Registrations (Madrid System)


• All International Registrations (IRs) need a national basic application/registration: usually in home country of the applicant

• The IR is dependent on a valid basic registration for a period

of 5 years from filing

TODAY’S PROGRAM

Strategic

framework

Legal basic

framework

2 Management

methodology

Traps & Tips

4 1

3


MANAGEMENT METHODOLOGY

Protection process


Strategy

Registration

Management

Exploitation

Business strategy and brand guidelines drive choices on trade names, branding options, trademark architecture, geographical scope, filing strategy, risks and budget.

File trademarks, manage refusals, handle oppositions, follow-up to certification.

Evaluate commercial options such as licensing, franchising, sale of IP, spin-offs, joint ventures.

Manage asset administration including all changes in ownership and renewals, monitor for potential infringements and enforce IP rights.

MANAGEMENT METHODOLOGY


TODAY’S PROGRAM

Strategic framework Legal basic

framework

2

Management

methodology

3 Traps & Tips 1

3


TRAPS & TIPS

Choosing your basic country carefully


Useful tips for global companies: • Madrid Protocol countries can generate more expensive filing

fees; using a Madrid Agreement basic country approach can help reducing costs.

• Filing your basic application in a more “discreet” territory can

help in keeping a filing project/campaign confidential.

• Choosing a basic country where examination on absolute/relative grounds is more/less strict can be different depending on the distinctive character of the trademark.

TRAPS & TIPS

International Registrations


TRAP • Unanticipated costs linked to refusals. TIPS • Plan approx. 50% of filing budget for addressing refusals in Y2-3 • US designation: will ALWAYS trigger a refusal (90% on G/S) • Asian countries: list of G/S usually not adapted to European

standards (and other end of spectrum compared to the US) – usually triggers refusals

TRAPS & TIPS

USA


TRAP • Use in commerce. TIPS • Product alignment before filing. • Determine basis (foreign registration, intent of use,

used in commerce). • Specify list of G/S precisely. • Collect in-use evidence. • Budget in consequence of procedure (afterburners).

TRAPS & TIPS

Transliterations (China, Japan, Korea, Cyrillic characters…)


TRAPS • Insufficient legal coverage for local market. • Pirates registering local nicknames for the brand. TIPS • Evaluate business needs and practices for specific product. • Understand how customers perceive your mark (nicknames). • Work closely with M&C to determine needs and effective use. • Work with local distributors/representatives on transliteration(s). • Register several variations for defensive purposes.

TRAPS & TIPS

Chinese intermediaries


TRAPS • Misappropriation of designs. • Invasion of counterfeit products. TIPS • Identify the main technical elements and protect respective

IP (patents). • Register design before starting mass production. • Use copyright mechanisms. • Include IP provisions in contracts with manufacturers. • Mark genuine goods with IP rights registration numbers. • Register IP rights with Chinese customs.

TRAPS & TIPS

European Union Trademark Registrations (EUTM)


TRAPS • Doubling/tripling rights with national/international coverage. • Renewal budget not adapted to needs. TIPS • Work on seniorities. • Keep double rights where use of your mark is doubtful.

TRAPS & TIPS



Recommendations deriving from the Convergence Program (CP): • Black & White marks are not appropriate to protect color elements which condition

the overall impression (CP4). • Lists of G/S should be sufficiently precise to encompass goods/services of interest;

no full coverage from class headings (CP1-2). • Non-distinctive wordmarks should be combined with graphic elements that are

sufficient to distract the attention of the consumer from the descriptive meaning (CP3).

• Weakly distinctive prior rights can still represent a threat to new registrations when

coinciding on non-distinctive elements (CP5).

TRAPS & TIPS



Final steps of the 2015 Reform: Introduction of the certification mark • Only to distinguish a certain quality level. • Meant for organizations/institutions that will certify that third parties, users of the mark,

are reaching certain standards guaranteed by the mark. • Applicant cannot use the mark himself. • Requirement of filing Certification Regulations and Infringement Measures together with

the application.

TRAPS & TIPS



Final steps of the 2015 Reform: Absence of graphical representation • Trademarks no longer need to be submitted with a graphical representation. • Other supports to be determined at ulterior stage. • Opens the door to all non-traditional trademarks. • Support for publication? Open question.

TRAPS & TIPS

Brexit


TRAPS • Unnecessary double coverage. • Lack of specific UK coverage. • Lack of use.

TIPS • Keep your ears open. • Identify products which are destined to UK market. • Prioritize brands that are used only in the UK. • Address needs for double coverage with your IP specialist.


Thank you for your attention! www.novagraaf.com Chantal Koller Novagraaf Switzerland SA 3, ch. de l’Echo 1213 Geneva [email protected] - +41 22 979 0030

http://www.novagraaf.com/

mailto:[email protected]

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