NATIONAL SEMINAR. Madrid System for the International Registration of Marks

Transcription

1 NATIONAL SEMINAR Madrid System for the International Registration of Marks Comparison of Different Trademark Protection Routes: National System, Madrid System and CTM System Uğur G. Yalçiner Managing Partner at Yalçiner Patent & Consulting Ltd., Acting President of Patent and Trademark Attorneys Association, Ankara, Turkey 27 April Prague

2 CONTENTS 1) Historical Background of Turkey and Czech Republic with the MADRID System 2) Lifecycle of a Trademark, Key Features, Advantages and Important Points of the MADRID System 3) Advises for TRADEMARK ATTORNEYS filing under the Madrid System 4) Advises for TRADEMARK OWNERS benefiting from the Madrid System 5) CONCLUSION 2

3 1) Historical Background of Turkey & Czech Republic with the MADRID System 1891 Madrid Agreement entered into force EU Customs Union 1996 Accesion to Madrid Protocol 1999 Accesion to Madrid Agreement 1993 Accesion to Madrid Agreement Madrid Protocol Period Withdrawal from Madrıd Agreement 1996 Accesion to Madrid PROTOCOL

4 2) Lifecycle of a Trademark,- Key Features, Advantages and Important Points of the MADRID System Pre-Registration and Post-Registration Processes Pre-Application Registration Post-Registration Availability Search Clearance Filing Trademark Application Registration in case of REFUSAL or OPPOSITION Change in Ownership for Limitation of Goods/Services Assignment/Licence Trademark WATCH RENEWAL 4

5 The Advantages of the MADRID System LOWER FEES Application (filing) Fees Fees for Changes after Application (filing) Renewal Fees EASIER PROCEDURES (Completing all the procedures that need to be performed separately in many countries WITH A SINGLE PETITION) Change in Ownership Limitation of Goods/Services Assignment / Licence Subsequent Designation 5

6 APPLICATIONS FILED DIRECTLY TO COUNTRIES for a coloured TM in 1 class (NO REFUSAL OPPOSITION) (Including Attorney fees) COUNTRY National Application Fee (US $) USA (US) 1,200 1,350 CHINA (CN) 850 1,000 AZERBAIJAN (AZ) 1,300 1,400 MOROCCO (MA) 900 1,150 SYRIA (SY) 1,800 2,100 ITALY (IT) 1,550 1,700 SPAIN (ES) 1,700 1,800 BAHRAIN (BH) 1,300 1,500 CUBA (CU) 2,000 2,300 JAPAN (JP) 2,800 3,000 SWITZERLAND (CH) 2,700 3,000 AUSTRALIA (AU) 1,900 2,100 VIETNAM (VN) 950 1,150 TURKEY (TR) TOTAL 21,650 24, Countries. Average fee per country 1,650 Office of Origin Czech Republic (CZ) MADRID Application and Registration Fees for Coloured TM in 1 Class (Including Attorney Fees) 5,000 Reduction is 78 % when compared to separately filed national applications. Average 23,100 6

7 Separate Applications & Registrations in 27 Countries will cost about 1650 x 27 = 44,550 CTM (EM) Application Official Fees (via Madrid System designating EM) (Excluding Attorney Fees) Application fee for B/W TM in 1, 2 or 3 classes 1764 CHF 1700 Application fee for Coloured TM in 1, 2 or 3 classes 2014 CHF 1940 Application Fees (Excluding Attorney Fees) for 27 EU Countries under the Madrid System (Exc. Malta) designating seperately App. fee for 27 EU countries B/W TM in 1 class App. fee for 27 EU countries B/W TM in 2 classes App. fee for 27 EU countries B/W TM in 3 classes 4570 CHF 4972 CHF 5374 CHF App. fee for 27 EU countries colour TM in 1 class App. fee for 27 EU countries colour TM in 2 classes App. fee for 27 EU countries colour TM in 3 classes 4820 CHF 5222 CHF 5624 CHF

8 44,550 Reduction is 96 % Average 1,820 Reduction is 89 % Average 4,900 8

9 APPLICATION FEES IN 93 COUNTRIES FOR 1, 2 or 3 CLASSES (Excluding Local Attorney Fee) App. fee for coloured TM in 1 class in 93 countries separately (93 x 1,650 = 153,000 Number of classes Colour / B&W March 2015 WIPO fee (CHF) 1 class / Colour 17,362 1 class / Black&White 17,112 2 class / Colour 21,444 2 class / Black&White/ 21,194 3 class / Colour 25,526 3 class / Black&White 25,276 Reduction is 89 % 16,500 20,000 25,000 9

10 Post-Application Change Fees - MADRID SYSTEM Official Fees for Full / Partial Assignment, License, Limitation of Goods/Services (For all countries in which TM is registered via MADRID System) 177 CHF 170 Change in Ownership (For all countries in which TM is registered) 150 CHF 144 Renewal Fees Renewal fee of a trademark, registered in 1 class in 93 countries (Excluding Local Attorney Fee) 19,000 CHF 18,000 Average per country 195 Renewal fee of a trademark, registered in 2 classes in 93 countries (Excluding Local Attorney Fee) Renewal fee of a trademark, registered in 3 classes in 93 countries (Excluding Local Attorney Fee) 24,000 CHF 23,000 29,000 CHF 28,

11 RENEWALS Coloured TM in 1 class COUNTRY USA (US) CHINA (CN) AZERBAIJAN (AZ) MOROCCO (MA) SYRIA (SY) ITALY (IT) SPAIN (ES) BAHRAIN (BH) CUBA (CU) JAPAN (JP) SWITZERLAND (CH) AUSTRALIA (AU) TURKEY (TR) VIETNAM (VN) When any trademark is separately renewed in each country, the fees including the fees of Attorneys Abroad and excluding local Attorney fees are; Renewal Fee for MADRID Registration in 14 countries for Coloured Trademark in 1 Class 2,956 CHF in each country Renewal fee for 14 countries 7,000 12,600 Average 9,800 2,800 Reduction will be 70 % when compared to renewals performed separately for each country. 11

12 The Important Points of the MADRID System Effects/Results of the Refusal/Invalidity of Basic Application and/or Registration on Madrid Application (Dependency) REFUSAL/CANCELLATION/INVALIDITY due to 3rd Party (Opposition / Litigation) REFUSAL/CANCELLATION/INVALIDITY due to by Trademark Owner (not replying office actions, withdrawal of application, abandonment of registration, failure to renew trademark, etc.) TRANSFORMATION WHEN REFUSAL/TERMINATION OCCURS WITHIN FIRST 5 YEARS OF MADRID APPLICATION DATE 12

13 Dependency Publication of (BA) Partial of full Refusal of (BA) Basic Application (BA) Madrid Protocol Application National at the Office of Origin National at the Court(s) of Office of Origin 5 years 13

14 3) Advises for TRADEMARK ATTORNEYS in filing trademark applications under the Madrid System Actions To Be Taken Before Filing the application Actions To Be Taken During Application Actions To Be Taken After filing the Application While the Are Underway at TPI, WIPO and Designated Countries Actions To Be Taken After The Completion of Registration 14

15 3) Advises for TRADEMARK ATTORNEYS in filing trademark applications under the Madrid System Pre-Application Application Availability Search Clearance Registration Post- Registration 15

16 EX-OFFICIO REFUSAL OF TRADEMARK APPLICATION IN VARIOUS COUNTRIES ON GROUNDS OF SIMILARITY? 16

17 EX-OFFICIO REFUSAL ON GROUNDS OF SIMILARITY? GERMANY COUNTRY USA ARGENTİNA UAE CZECH REPUBLIC CHINA ESTONIA PHILIPPINES INDIA JAPAN CANADA SOUTH KOREA MEXICO POLAND PORTUGAL RUSSIA SINGAPORE SYRIA SAUDI ARABIA THAILAND TAIWAN UKRAINE GREECE Ex Officio Refusal? / No, but not implemented COUNTRY GERMANY AUSTRIA BULGARIA INDONESIA ITALY KHAZAKSTAN FYROM OHIM ROMANIA TUNISIA Ex Officio Refusal? / No, but not implemented No No No No No No No No No 17

18 Advices for TRADEMARK ATTORNEYS (1 / 2) Pre-Application Application Registration Post- Registration 1) Right to File an Application Condition of residence in OO or the presence of legal residence or an active enterprise established in OO in accordance with the law 2) Requirement of Dependency on national application and/or registration (Same trademark, same or narrower good/service list, dependency on multiple registrations and/or applications) 3) Correctness of translations of goods/services 4) Priority Rights (Partial priority, multiple priority) 5) Consideration of the possibilities regarding the refusal/invalidity of basic application and/or registration, on which Madrid application is based, in the country of origin. 18

19 Advises for TRADEMARK ATTORNEYS (2 / 2) Pre-Application Application 6) Disclaimer for statements that are to be out of the scope of protection 7) Indication of a Second Language, when EM (OHIM) is designated 8) Evidence of Use or Declaration of Intention to Use, when USA is selected (MM18) 9) Declaration of Intention to Use for Singapore, Ireland and the United Kingdom 10) Consideration of Replacement conditions Registration 11) Cooperation with OO and WIPO during formal examination Post- Registration 19

20 Advises for TRADEMARK ATTORNEYS Pre-Application Application Registration 1) Taking action against refusal, when REFUSAL decision is taken in countries 2) Differences in periods of opposition in case of refusal (non extendable 30 days for China, non extendable 2 months for Turkey, etc.) 3) Limitation of goods & services / abandonment procedures in different ways compared to another country or other countries 4) Watching others Trademark Applications and Oppositions (In some countries exofficio similarity examination is not available) 5) Watching Transformation conditions closely within first 5 years in case of refusal/cancellation in country of origin Post- Registration 20

21 PERIODS FOR OPPOSITION AGAINST PUBLICATION OF TRADEMARK IN DIFFERENT COUNTRIES? 21

22 PERIODS FOR OPPOSITION AGAINST PUBLICATION OF TRADEMARK IN DIFFERENT COUNTRIES? COUNTRY USA ARGENTINA UAE PHILIPPINES COUNTRY GREECE BULGARIA ESTONIA JAPAN CANADA EGYPT SOUTH KOREA PORTUGAL ROMANIA SINGAPORE TUNISIA Opp. agst Pub. within 30 days 30 days 30 days 30 days Opp. agst Pub. within 2 months 2 months 2 months 2 months 2 months 2 months 2 months 2 months 2 months 2 months 2 months COUNTRY SYRIA THAILAND GERMANY AUSTRIA CZECH REPUBLIC CHINA INDONESIA FYROM OHIM SAUDI ARABIA TAIWAN INDIA POLAND TURKEY Opp. agst Pub. within 90 days 90 days 3 months 3 months 3 months 3 months 3 months 3 months 3 months 3 months 3 months 4 months 6 months 3 months COUNTRY INDIA POLAND Opp. agst Pub. within 4 months 6 months 22

23 OPPOSITION AGAINST PUBLICATION FEES? Fee for Resolution by Opposition Against Publication If Periodical Watch Is Conducted Opp. agst COUNTRY Pub. Fee EURO ( ) SAUDI ARABIA 4303 PHILIPPINES 2476 SINGAPORE 1934 SOUTH KOREA 1220 UAE 1124 JAPAN 1100 OHIM 1000 CANADA 914 AUSTRIA 900 POLAND 800 GREECE 700 CHINA 682 UKRAIN 600 USA 521 COUNTRY Opp. agst Pub. Fee EURO ( ) ESTONIA 495 GERMANY 470 ROMANIA 400 TAIWAN 400 CZECH REPUBLIC 386 THAILAND 340 INDONESIA 337 INDIA 310 PORTUGAL 305 RUSSIA 300 SYRIA 292 TUNISIA 236 EGYPT

24 NON-USE PERIOD OF REGISTERED TRADEMARK IN DIFFERENT COUNTRIES? 24

25 COUNTRY USA CHINA INDONESIA JAPAN CANADA KAZAKHSTAN SOUTH KOREA MEXICO RUSSIA SYRIA THAILAND TAIWAN UKRAIN PHILIPPINES GERMANY ARGENTINA NON-USE PERIOD OF TRADEMARK? Non use Period Period starts? 3 years From registration 3 years From registration 3 years From registration 3 years From registration 3 years From registration 3 years From registration 3 years From registration 3 years From registration 3 years From registration 3 years From application 3 years From application 3 years From registration 3 years From registration 3 / 5 years 5 years 3 years from application, 5 years from registration From provisional registration 5 years From registration COUNTRY Non use Period Period starts? AUSTRIA 5 years From registration UAE 5 years From registration BULGARIA 5 years From registration CZECH REPUBLIC 5 years From registration ESTONIA 5 years From registration INDIA 5 years From registration ITALY 5 years FYROM 5 years From registration EGYPT 5 years OHIM 5 years From registration POLAND 5 years From registration PORTUGAL 5 years From registration ROMANIA 5 years From registration SINGAPORE 5 years From registration SAUDI ARABIA 5 years From registration TUNISIA 5 years From application GREECE 5 years From application 25

26 Advises for TRADEMARK ATTORNEYS Pre-Application 1) Limitation of goods & services / renunciation procedures in different countries during registration procedures or after registration 2) Watching others Trademark Applications and Oppositions (In some countries ex officio similarity examination is not available) 3) Watching Transformation conditions closely within first 5 years in case of refusal/cancellation in country of origin 4) Change in Ownership (Title, address, type changes) 5) Assignment / Licence 6) RENEWAL Application Registration Post- Registration 26

27 4) Advises for TRADEMARK OWNERS benefiting from the Madrid System 27

28 4) Advises for TRADEMARK OWNERS benefiting from the Madrid System 1) Conducting an AVAILABILITY SEARCH prior to application 2) Taking into consideration the USE REQUIREMENT separately within a certain period of time in every country where application was made and registration was granted 3) WATCHING OTHER S TRADEMARK PUBLICATIONS FOR EACH COUNTRY SEPARATELY, during registration procedures and after registration 4) WATCHING ALL PROCEEDINGS/DECISIONS IN THE REGISTRY OF TRADEMARK filed on the WIPO website during application procedures 5) Requesting PERIODICAL REPORTS FROM TRADEMARK ATTORNEY, if the application is filed through an attorney. 28

29 5) CONCLUSION Trademark is child, needs to be taken care of. Even if it becomes old, it still needs care. TRADEMARKS ALWAYS NEED TO BE TAKEN CARE 29

30 NATIONAL SEMINAR Madrid System for the International Registration of Marks THANK YOU Comparison of Different Trademark Protection Routes: National System, Madrid System and CTM System Uğur G. Yalçiner Managing Partner at Yalçiner Patent & Consulting Ltd., Acting President of Patent and Trademark Attorneys Association, Ankara, Turkey 27 April Prague 30