Basic mark requirement under the Madrid System

Transcription

1 AIPPI Question Q 239 National Group: Title: Contributors: Czech Republic Basic mark requirement under the Madrid System JUDr. Jan HÁK, PhD. Reporter within Working Committee: Date: April 30, 2014 I. Current law and practice 1) Is your country party to (i) the Madrid Agreement Concerning the International Registration of Marks, (ii) the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks nad/or (iii) the Trademark Registration Treaty? Czech Republic is a party to the Madrid Agreement Concerning the International Registration of Marks, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and Trademark Registration Treaty 2) a) To the extent it can be established, in how many published cases was a central attack used in the past ten years in your country? The Industrial Property Office of the Czech Reublic do not follow this fact specifically. Therefore, relevant data retrospectively for a period of the last 10 years can not be obtained. According to the information of the employees of the Office, 15 international registrations of a trademark lost their validity because of cancellation /termination of a national trademark in In 2013, there were 24 such international trade mark registrations, and in the first quarter of this year, there were 7 international trademark registrations that lost their validity for that reason. b) If these cases contain important considerations rearding the rationale, effect and effectivness of a central attack, please summarise such. A more detailed information about the proceedings in individual cases was not obtained. 3) a) In your experience, is the system of international registrations often used (rather than alternatives, such as the filing of separate national registrations)? Yes, registration of trademarks in the member countries of the Madrid Agreement and the Protocol to the Madrid Agreement is provided mainly through the international registration. 1

2 An exception are the countries of the European Union. If only the EU countries are of interest to the applicant, the applicant usually takes the option of protection through a Community trade mark.the national trade mark registrations in the countries of the Madrid Agreement and the Protocol are usually the option selected only when the applicant is interested only in protection in one or two countries. b) If the answer is no, is this because it is difficult to obtain the basic application or registration and/or are there other reasons? If so, which are those other reasons? xxx c) If the answer is yes, is this because it is more efficient in terms of costs or otherwise and/or are there other reasons? If so, which are those other reasons? The reason for registration of trademarks via the international system are the costs of the application proceedings, when by one application with one fee and royalties of one representative allow to obtain protection in a number of countries around the whole world. The costs will increase in case that any of the countries, in which protection was sought, issues the so called Avis de refus provisoir (Provisional refusal of Protection). This provisional rejection can be considered as analogous to the substantive assessment notice in the national proceedings. Despite these additional costs the international registration is more effective in terms of financial costs than the national proceedings, because the provisional refusals of protection are issued only in certain designated countries (if at all). Owner of an international trademark will achieve considerable savings in maintenance costs in the future because instead of a series of national renewals the owner pays the costs associated with only a single international registration. 4) If your country is part to the Protocol: is transformation often used in your jurisdiction? Why, or why not? According to a communication of the employees of the Industrial Property Office, transformation of registrations under the to the Madrid Agreement is small. But in recent months, a surge of interest was recorded. The possibility of converting of the national registration to the international one is not used, probably only because of not knowing this possibility. 2

3 5) II. Policy considerations and proposals for improvements of the current law a) Should the basic mark requirement be abolished? Why, or why not? The condition of the 5-year concurrent validity of the identical trademark in the country of origin of the applicant with the international trademark has become very bindding and dangerous in its own way for the applicant already by the signature of the Protocol to the Madrid Agreement, which Protocol enabled the filing of an international application already after the domestic national application has been filed, rather after it has been registered, as it was required according to the Madrid Agreement. From the perspective of the applicant, this condition is an unreasonably long period of legal uncertainty. This condition is advantageous only for potential opposing parties, not for the holder of the industrial right. b) If the answer to (a) is yes, how should the new system work: We propose to retain the condition of co-existent validity of the national registration in the country of origin, but this period may be reduced to two years. This is the period, in which the national registration procedure is completed, including any eventual decision on the opposition. In a number of cases, the filing of an international application is made not sooner than in the subsequent years of validity of the national registration. For example, if the international application is filed not sooner than in the 8th year of the national registration validity, it is necessary to renew the national registration, because also in this case there would be a termination of the international registration. This condition is applicable even in case the owner from a Member State of the EU opts for designation of the Community trademark, and therefore, could abandon the national registration. Simultaneously with the shortening of the period of co-validity to two years we suggest to extend this requirement alternatively to the Community trademark that is the validity of the national registration in the country of origin or of the Community trade mark for a period of 2 years. c) Should any national registration or application qualify as a basic registration? No. However, the Community trademark could be regarded as the basic registration. or ii) should there be new central filing at WIPO with WIPO functioning as a mailbox receiving applications and forwarding those to the designated jurisdictions for examination? No. or 3

4 iii) should WIPO even do more, such as engaging in harmonisation (see below under III)? Harmonisation in the field of formal proceedings. c) Do you foresee any problems in the implementation of such new system? If so, what? We believe that there should not occur any more serious problems with the implementation of this amendment. 6) a) Should the dependency on the basic mark be abolished? Why or why not? We consider dependence of the international trademark on a national trademark in the country of origin for a period of 5 years as an excessively long. b) If not, should the dependency be changed? If so, how (e.g. to a different period, to applying in case of particular cancelallation grounds only or to having effect only in jurisdictions where the attacker has prior rights)? Why? We propose to reduce the time dependence of the national and the international registrations to 2 years, with that alternatively the Community trademark registration could be applied for instead of for the national one in the country of origin. 7. Do you support a freeze of the application of the five year dependency clasuse and what are your considerations in this respect? See 5a) and 6a above. 8) a) Do you find that the basic mark requirement does not function well in the context of translations, transliterations and transcriptions in coutries with different writting systems/languages? If so, would you support a change to the Madrid System with the purport that, when assessing genuine use, use of a translated, transliterated or transcribed mark is considered as use of the mark? Please list any requirements such use should meet in your view (e.g. identical pronunciation and/or meaning). If the trademark consists of characters other than the Latin ones, or if it contains characters in Arabic, Cyrillic, Chinese, Japanese, etc., the letters (words) mentioned in the databases should be listed with transliteration into Latin characters in these databases. If a trademark consists of digits (Roman, Arabic, Japanese, etc) their transcription should also be given in the registration database. In this context, we propose to add a column with said data to the database of trademarks. 4

5 Use of the trademark in the registered original form, or in its Latin transliteration eventually, would be to prove. In case that transcription to Latin was not given in the records, a trademark consisting of different script would be considered as a figurative trademark, and also a proof of its use would be accepted only if it was a use in its original script. In the case of registration of two trademarks by two different entities that are identical in their meaning, but are only either in the Arabic or in the Latin scripts, registration of both marks would be possible. b) Are there any other aspects realating to the basic mark requirement that do not fuction well and if so, what should be changed? See 6b) above III. Proposals of harmonization Is harmonization desired? If yes, please, respond to the following questions without any regard to your national laws. Yes, see below. 9) Should absolute and relative grounds be harmonised, enabling the examination of international registrations to be handled by WIPO, as well as possibly also oppositions and cancellation actions (in a manner similar to Community Trade Mark registration handled by OHIM), or should such not be harmonised (because it may not be feasible or for other reasons)? Note that this question only aims to ask whether such harmonization is desired as a result of change to the basic mark requirement, the question as to how such a new systém should look exceeds the scope of this working question. Before filing of an international trademark application, individual trademarks are considered independently and objectively by the respective national registration authority in the country of origin in terms of their compliance with the relevant national legal provisions, which provisions have already been harmonized partially. Further harmonization of the absolute grounds for refusal of protection is, in our opinion, excluded because of different cultural and political level of the individual member countries of the Madrid Agreement and the Protocol to the Madrid Agreement, and also because of the reason of practicing different religions. Relative grounds for refusal are solved by individual national authorities. In this context, the subject of harmonization should be only the time limits within which the entities in individual countries may submit objections against granting of protection to an international registration of a trademark via their national authorities (which objections are then forwarded in the form of an interim protection refusal by the national office of WIPO), as the differences in these time limits are too large. 5

6 Although an international trademark application is now the only application which is filed with WIPO through the national authorities in the country of origin, we consider this practice to be adequate to the needs of applicants. 10) Please briefly list your considerations for the answer given under 9) (which may e.g. relate to feasibility, efficiency, costs, the potential need for new judicial authorities, etc.). Final recommendations - opinion: - Reduce the time limit for the condition of concurrent validity of the registration of the trademark in the country of origin of the applicant and of the international trade mark to 2 years; - Alternatively, to allow application of this condition on the Community trademark; - To harmonize the time limits for eventual filing of objections by entities in individual signatory countries through the national registration offices in order to increase legal certainty for owners of international trademarks. Summary: The reason for registration of trademarks via the international system are the costs of the application proceedings. Owner of an international trademark will achieve considerable savings in maintenance costs in the future. The condition of the 5-year concurrent validity of the identical trademark in the country of origin of the applicant with the international trademark has become very bindding. From the perspective of the applicant, this condition is an unreasonably long period of legal uncertainty. This condition is advantageous only for potential opposing parties, not for the holder of the industrial right. We propose to retain the condition of co-existent validity of the national registration in the country of origin, but this period may be reduced to two years Before filing of an international trademark application, individual trademarks are considered independently and objectively by the respective national registration authority in the country of origin in terms of their compliance with the relevant national legal provisions, which provisions have already been harmonized partially. Relative grounds for refusal are solved by individual national authorities. 6

7 In this context, the subject of harmonization should be only the time limits within which the entities in individual countries may submit objections against granting of protection to an international registration of a trademark via their national authorities. Although an international trademark application is now the only application which is filed with WIPO through the national authorities in the country of origin, we consider this practice to be adequate to the needs of applicants. 7