legal challenges in protecting gaurav miglani trademarks ... practical... · sum up the benefits...
TRANSCRIPT
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