The example of a global enterprise by Gerhard Bauer, Chief Trademark Counsel, Daimler AG, Germany

Transcription

1 2/28/2011 Madrid, the Trademark Capital of the World: Analyses and Forecasts as India Adopts the Madrid Protocol International Filing Strategies for Trademarks A user s point of view The example of a global enterprise by Gerhard Bauer, Chief Trademark Counsel, Daimler AG, Germany Products and Brands Products Brands Trade Marks The Daimler Group Product Range Product names 1 Company SUV 11 (12) Brands GLK-CLASS > 50 Products G-CLASS SPORTS TOURER LIMOUSINE COUPE ROADSTER SLR S-CLASS SLS-AMG CL-CLASS (Passenger Cars, Vans, Trucks, Buses etc.) SL-CLASS R-CLASS CLS-KLASSE > trademarks E-CLASS M-CLASS CLK-CLASS SLK-CLASS GL-CLASS C-CLASS B-CLASS A-CLASS 1

2 Creation Enlargement of product portfolio leads to need of protection not only for.. Clearance Trademark searches MERCEDES-BENZ passenger car trademarks are not only nomenclature trademarks -S-CLASS, E 350,... but also Special editions - INDIANAPOLIS, EVOLUTION etc. Features -ESP, PRE SAFE, EASY PACK, KEYLESS GO, Claims -The Best or Nothing, Follow your own star, Year New technologies NECAR, F-CELL, E-CELL,. What trademarks to protect? A-CLASS Threats to the trademarks BAS ESP INCENIO FIDIS SERTAN LUCIDA etc. More threats Even more threats 2

3 2/28/2011 How do we protect? The national way Daimler Trade Mark Portfolio The Madrid way (International Registration according to the Madrid Agreement and the Protocol) No of Appl. / Reg. The regional way European Community (CTM) Benelux OAPI DE IR No. of Appl./Reg. CTM Rest (national) Sum Countries covered The Combination way (linking and making use of all systems) Cost distribution 3% 9% 2% 86% DE CTM IR national 3

4 Who may apply? Generally; no special limitations Subjects of an EC country; Subjects of countries being a member to the Paris Convention or WTO; Subjects of countries having bilateral agreements Subjects and members of Agreement/ Protocol member countries Costs? Cost effective if Cost effective Very cost protection is since covering the effective (no local sought only in few countries; not cost effective for applications in many countries whole territory of the EC; enlargement of the EC included counsel required; only one renewal) Trade Mark Amendment of trade mark Different trademark or amended form may be chosen for each different country Must be identical for all countries Must be identical for all countries Can be amended Not possible at all Not possible at all depending from the rules of each country (helpful to overcome objections) Languages Depends on the country filed Dual language regime: filing in any language of the EC; second language compulsory being one of the languages of the Office (EN, FR, ES, IT, DE) English or French or Spanish (depending of the choice between Agreement and Protocol) Specification of goods / services Depending from country One specification since registration covers whole territory of the EC Limitations in the specification of the trademark in the home country (due to examination/ opposition) will affect the International Registration 4

5 Application and Examination country; based on absolute and/or relative grounds; may be slow since no time limits set Based on absolute grounds only; relative grounds remain open for opposition; generally examined in due time Formal requirements checked by WIPO; forwarded to designated countries for substantive examination; examination must be completed in months Opposition country basis One single opposition procedure; must be filed within three months after publication Designated countries must notify WIPO about possible oppositions within specified time period otherwise registration is valid Use requirement country rules apply Use in one single member region sufficient to support the complete registration country rules apply Assignment of trade mark Generally no limitations; country by country rules apply No limitations Can be assigned only to a party that is entitled to file a Madrid application Extension of registration Additional Automatic Territorial extension applications may be extension to available upon separate filed in different accessing new request and additional countries at any time member states; fees subject to no third party rights; additional costs no separate request; no additional costs Attack / cancellation Must be attacked Successful attack Dependancy from home on a country by based on prior right application / country basis; expensive; time consuming; in one member country destroys entire registration; registration for 5 years; successful attack will destroy registration in differing results conversion possible all designated but expensive countries; conversion into national applications possible (only Protocol) 5

6 Policy / strategy Enforcement country basis Infringement within the EC can be litigated in specialised CTM courts; decision valid in all member countries country basis since registration is a bundle of national rights Decisions have to be taken on a case by case basis Strong mark to be used in a large number of countries for the same goods / services --> Madrid system A mark to be used in a specific geographical region (e.g. European Community) and some other countries -depending on their (not yet)-accession to the Madrid system --> CTM and/or national applications preferred If general use of a mark is not guaranteed or use for somewhat different goods / services --> CTM and/or national applications preferred If a weak mark makes amendments necessary --> national applications to be preferred Outlook Despite the competition created by the introduction of the CTM system the Madrid system becomes more and more interesting due to the broad country coverage (85 countries as of Nov. 2010) the accession of countries like Japan, Australia and Singapore (2000) the accession of the United States of America (2003) the accession of the European Community (2004) (hopefully) more accessions by India, Asian countries, Latin American countries Thank you! 6