International Trademark Protection And Management

International Trademark Protection and Management By Dr. Kalyan C. Kankanala, Brain League IP Services.

© 2009 Brain League IP Services Pvt. Ltd

STRUCTURE 

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International Agreements and Conventions Regional Agreements International Protection Strategy Trademark portfolio management

INTERNATIONAL AGREEMENTS AND CONVENTIONS

PARIS CONVENTION     

National Treatment No Domicile Requirement Right of Priority Registration Well Known Marks

TRIPS AGREEMENT 

Minimum standards

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Acquired distinctiveness Well-known Marks Proposed use - Use within three (3) years Likelihood of confusion Renewal period – 7 years

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OTHER ARRANGEMENTS  

Trade Mark Law Treaty NICE Agreement

REGIONAL AGREEMENTS

EUROPEAN COMMUNITY TRADEMARK 

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OHIM - Office for Harmonization in the Internal Market - Alicante, Spain One registration for all EU countries Use in one country sufficient Cost Advantage Not free from infringement action No national review

OAPI     

16 French speaking countries in Western Africa OAPI office – Yaound, Cameroon Registration valid in all countries Opposition, Infringement and Cancellation - National Law Members - Benin, Burkino Faso, Cameroon, Central African Republic, Chad, Congo, and Equatorial Guinea. Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo.

ARIPO     

Banjul Protocol on Marks - 8 out of 16 countries have acceded ARIPO - Harare, Zimbabwe Single application - Designate Countries Application - Reviewed by Designated Countries in 12 months - Registration Opposition, Cancellation, Infringement and so on - National Law

Member Countries         

The Gambia, Ghana, Kenya, Mozambique, Sierra Leone, Somalia, Sudan, And Zambia

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Botswana, Lesotho, Malawi, Namibia, Swaziland, Tanzania, Uganda and Zimbabwe

TM accession

MADRID SYSTEM 

Madrid Agreement

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Madrid Protocol

INTERNATIONAL PROTECTION STRATEGY

PROTECTION STRATEGY      

Perimeter Classes Route Budget Enforceability Attorney

PERIMETER  

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Value of the Mark Geographical Exent of use - Sales, Production, Competitors, Advertising and so on Kind of business Likelihood of Counterfeiting

EXAMPLE 

A company starts selling pens in India under the Mark 'Fountain'. The pens are manufactured in Germany and are transported to India by road. The company fears that counterfeit pens will be made by Chinese manufacturers and sold in India.

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In which countries should the company protect the mark for the pen?

EXAMPLE 

A company, 'X', based out of Bangalore manufactures components that are used in wireless communication devices. It sells the components to companies such as RIM, HTC and so on, who manufacture wireless devices and are based out of China, USA and Europe and have world wide market.

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Where should the company protect its mark 'wirnil' for the components?

CLASSES   

Goods or Services Relevant classes Multi-class application

EXAMPLE 

A person starts a training center under the name, "Centra" with the objective or providing professional skills training, and placements and for carrying out research.

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The trademark must be registered in ______ classes.

ROUTE    

National Regional International Filing Strategy

BUDGET    

Size Timeline Increase Allocation

AVERAGE COST 

Europe - CTM Registration

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Filing fee - Around 1,700 Euros Registration Fee - 2, 400 Euros

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One country

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Filing Fee - Around 600 Euros Registration Fee - Around 1, 000 Euros

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USA

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Filing fee - Around 900 Dollars Registration Fee - Around 1, 500 dollars

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EXAMPLE 

A company wishes to file for protection of its mark in UK, Germany, Switzerland, France and Italy.

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Advise all possible filing options and the most cost effective filing option.

ENFORCEABILITY    

Mark Country Region Timeline

EXAMPLE 

X, a company based out of France, sells cell phones in USA, France, Germany, Netherlands, UK, Italy, Slovania, Portugal, India, China, Japan, Russia, Brazil, Canada and Australia. X has a budget of two lakh rupees.

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Advise X on the countries in which it must file.

ATTORNEY     

Real Reliable Capable Cost effective Transparent

PORTFOLIO MANAGEMENT

PORTFOLIO MANAGEMENT       

Selection and Clearance Use Protection Maintenance Enforcement Audit Online Tracking and Analysis

EXAMPLE 

X files for trade mark protection in USA but does not use the mark in USA. X's trade mark will be _______.

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X fails to pay the renewal fee after the mark is registered. The mark will be _______.

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X knows that Y is using its trade mark but does not take any action for ten years. Can X file an infringement suit against Y?

THANK YOU

© 2009 Brain League IP Services Pvt. Ltd