Barbara J. Grahn, Partner, Fox Rothschild, Minneapolis Roberto Kunz-Hallstein, Partner, Dr. Kunz-Hallstein Rechtsanwälte, Munich, Germany

Transcription

1 Presenting a live 90-minute webinar with interactive Q&A Madrid Protocol: Obtaining and Maintaining International Trademark Protection Filing Procedure, Deficiency Notices, Subsequent Designations, Application Amendments, and More THURSDAY, SEPTEMBER 20, pm Eastern 12pm Central 11am Mountain 10am Pacific Today s faculty features: Barbara J. Grahn, Partner, Fox Rothschild, Minneapolis Roberto Kunz-Hallstein, Partner, Dr. Kunz-Hallstein Rechtsanwälte, Munich, Germany The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions ed to registrants for additional information. If you have any questions, please contact Customer Service at ext. 1.

2 Tips for Optimal Quality FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial and enter your PIN when prompted. Otherwise, please send us a chat or sound@straffordpub.com immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again.

3 Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar. A link to the Attendance Affirmation/Evaluation will be in the thank you that you will receive immediately following the program. For additional information about continuing education, call us at ext. 2.

4 Program Materials FOR LIVE EVENT ONLY If you have not printed the conference materials for this program, please complete the following steps: Click on the ^ symbol next to Conference Materials in the middle of the lefthand column on your screen. Click on the tab labeled Handouts that appears, and there you will see a PDF of the slides for today's program. Double click on the PDF and a separate page will open. Print the slides by clicking on the printer icon.

5 MADRID PROTOCOL THE BASICS An international treaty that provides a system for obtaining and maintaining trademark registration in multiple jurisdictions through a single office Administered centrally by the World Intellectual Property Organization (WIPO) in Switzerland 101 member countries or contracting organizations up to 117 countries or regions (including the EU) Must be based on a basic application or registration Must be filed through the Office of Origin Can only designate members of the same treaty or treaties as the member whose office is the Office of Origin for the US, this means only Protocol members 5

6 MADRID PROTOCOL THE BASICS Available to anyone who Is a national of a contracting state, or a national of a state member of a contracting organization Is domiciled in a contracting party Has a real and effective industrial or commercial establishment in a contracting party Owner and mark must be identical, goods and services must be the same or more limited cannot exceed the scope of the basic application, but can be equivalent or fall within the scope of the goods or services in the basic application 6

7 MADRID PROTOCOL - ADVANTAGES Cost Savings and Ease of Managing Simplified filing and maintenance. One application may cover up to 101 countries / regions Not required to engage local counsel unless application is refused Easy Handling: Renewals, assignments, limitations, restrictions, may be filed with WIPO All forms are available online at: May obtain resitration more quickly in some countires than by filing directly Can add countries or regions later through a subsequent designation 7

8 MADRID PROTOCOL - DISADVANTAGES Dependence for 5 years any limitation or cancellation of the basic application or registration affects the International Registration (IR) Central Attack Successful opposition or cancellation of the basic registration cancels the IR Option of transforming the IR into national registrations (keeps priority, but wipes out any cost savings) Limited scope of protection due to US national law (more stringent requirements regarding identification of goods and services) Limitations on Assignment can only be assigned to a party that meets the requirements for owning a Madrid Protocol registration Enforcement evidence of registration more difficult to obtain (certified copies, translations) 8

9 MADRID PROTOCOL FILING PROCESS IN THE US USPTO TEASi Form No. 11 Madrid Protocol Forms Application for International Registration Can base the Madrid filing on more than one US application or registration Don t forget to enter priority information have to enter the information regarding the priority application fully and separately Can file for some or all of the goods in the basic application or registration, limit goods in some countries by class or within a class If filing based on more than on basic application, or if the basic application doesn t yet appear in TSDR, must use the free-text form 9

10 MADRID PROTOCOL FILING PROCESS Can pay through PTO account, but option to pay through a WIPO account. WIPO has a fee calculator that is useful to calculate the cost of the application: Basic fee (for marks in b/w) is currently 653 CHF. Individual fees vary by country. The PTO charges $100 per class to certify the application. The fee is shown before you file the application in dollars. Get an on-screen success message when file is completed saying the application has been submitted If application was populated from TSDR, the application will be auto-certified PTO sends confirming application was automatically certified and forwarded to WIPO, otherwise, may take a few days for PTO to certify the application to WIPO 10

11 WIPO EXAMINATION PROCESS When WIPO receives the application from the PTO, it conducts a formal examination of the application - as to name and address, quality of mark image, payment of fee, designation of at least one member, classification of goods and services If no objection, mark is published and IR issues approximately 3 months after filing signifies only compliance with WIPO s formal requirements If WIPO has objections, it will issue a Notice of Irregularity. Description of goods or services Classification of goods or services Insufficiency of fees Respond to the Notice of Irregularity through the PTO in most instances Allow time for the PTO to forward the response to WIPO before the deadline 11

12 EXAMINATION BY DESIGNATED PARTY OFFICE When WIPO issues the IR, it notifies the designated Contracting Parties Each designated party will conduct a substantive examination of the designation according to its own rules and process Notification of Provisional Refusal from a designated Office to WIPO, WIPO sends to applicant Great variation in how refusals are handled by individual countries time and requirements for response vary considerably Even if local counsel not required, may be helpful to engage 12

13 REFUSALS Deadlines: Vary from country to country A: China: 15 days Information in Members Profile Database Extensions: not always available No uniform proceeding for replying Reply to be filed with the designated national office Appointment of a local attorney Mostly necessary, especially rarely possible for the owner to reply directly A: Countries where appointment of attorney is material requirement (Germany, Switzerland, EUIPO): Final refusal just for not appointing an attorney; Preclusion from the proceeding 13

14 REFUSALS Citations of earlier marks: Consents: as proprietors of the international registration IR 123 MARK we hereby consent to the use and registration of the trademark IR 456 TRADEMARK in Country to distinguish the goods of the international classes 3 and 5 <specify goods> in the name of Owner, Address. A:Most former USSR states: Irrevocable consent Alternative: Limitation of goods 1) Application directly with WIPO for the single country (Form MM 6) 2) Information of the national Office either personally or through attorney 14

15 REFUSALS Amendments to i.d. of goods or services Some Offices require that amendments be filed through WIPO Form MM6 to request recording of a limitation of goods or services can request for only some members Can amend directly with the Office of the member in some cases. 15

16 REFUSALS Alternative (if no consent accepted): Temporary assignment: Temporary assignment of the single designation with WIPO (Form MM5) Information of the national Office either personally or through attorney After the statement of grant filing of a request for reassignment with WIPO Application for merger with WIPO 16

17 REFUSALS If an Office issues a provisional refusal, it must follow up with a final decision Confirming the Refusal Withdrawing the refusal Statement of the goods or services for which protection is granted Sends the notice as soon as all possibility of review or appeal have expired If there is a subsequent decision by another external body that affect protection, Office can issue a further statement 17

18 COMMON ERRORS When indicating the in the application form, use an address that is unlikely to change Deadlines: In some countries, deadlines are not extendable and the original documents necessary for the reply, especially POA, must be presented within the deadline Reply to Irregularity Notices by WIPO: Mainly to be filed through the Office of Origin and not directly with WIPO By contrast, a reply to a Refusal must be filed with the designated national or regional Office and not with WIPO 18

19 REGISTRATION For applications based on US application, the office of each designated member must grant or refuse protection within 18 months of the date WIPO notifies the office of the designation. If no refusal within that time, protection is considered granted. You may hear nothing. If so, the mark is protected (tacit acceptance). Some members issue interim status reports e.g., telling you the examination is complete Some members issue a Statement of Grant of Protection confirming that the mark is protected. Some members issue actual registration certificates Some countries (Japan and Cuba) send a request for payment of second part fees after application is examined to be paid to WIPO 19

20 E-SERVICES e-notifications provides for notification of actions and provides copies of the notifications from the offices Madrid Monitor e-alerts alert each time the status of an IR is updated Madrid Portfolio Manager - requires WIPO User Account e-subsequent Designation e-renewal no option of partial renewal as to G/S e-payment 20

21 TRACKING YOUR APPLICATION Madrid Monitor 21

22 TRACKING YOUR APPLICATION Realtime Status 22

23 TRACKING YOUR APPLICATION Summary by Office 23

24 SPECIAL CONSIDERATIONS U.S. Declarations of use (Section 8) must be filed between the 5 th and 6 th anniversary of registration, and every ten years just as for national registrations Upcoming changes in Mexico To require declaration of use on renewal Not sure how it will work Declarations of use in Philippines Within 3 years after date of IR or subsequent designation Between the 5 th and 6 th year after statement of grant Within one year after renewal of IR China Madrid designations handled differently with respect to standard descriptions of goods and services 24

25 LICENSING Can record a license with WIPO Some countries still require recording with the national office Some countries don t recognize recorded licenses at all, e.g., Germany 25

26 HELPFUL LINKS Madrid Home Page: Madrid Forms: Madrid Monitor: USPTO Madrid Protocol Page: 26

27 THANK YOU! 27

28 Barbara J. Grahn Roberto Kunz-Hallstein Fox Rothschild LLP Dr. Kunz-Hallstein Rechtsanwälte Campbell Mithun Tower - Suite 2000 Galeriestrasse 6 a 222 South Ninth St Munich Minneapolis, MN Germany 28