International Trademark
Treaties and Strategies
Pamela C. Gavin, Esq.
Gavin Law Offices, PLC
GRIPLA October 28, 2010
Paris Convention
National Filings
Madrid Protocol
Community Trademarks
Paris Convention
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National Treatment
Convention Priority
Protects well-known marks,
trade names, and claims deriving
from unfair competition
Registrations are independent
from each other
Currently 173 signatories
Practice Pointers
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Within six months of filing U.S.
marks, recommend to clients to file
foreign applications in Paris
Convention (and certain other)
countries (e.g., China)
Can include goods/services in
original application, as well as other,
non-priority goods/services
National Filings – Know Your
Country!
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Rules differ from nation to nation
• First to file vs. first to register?
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Scope of searches and claims
• Identical/similar? Class headings or detailed?
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Assistance of local counsel helpful
Most expensive option
May be more vigorously examined than Madrid
applications which face strict exam time
deadlines
May also be more “enforceable” before local
courts (e.g., BOIP)
German National Filing Illustration
• Filing for Class Headings allowed
• Examination covers only inherent registrability
(not third party rights)
• Marks are opposed after registration issues
• Bases for opposition: Registered marks; nonregistered marks; business signs; company
names (e.g., Daimler even though not used on
cars in Germany but is used in trade); titles of
works (books, software), well-known
trademarks
Implications– Practice Pointers
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Preclearance implications
Properly advising client
If claim class headings, how to show
“genuine use” to keep registration
alive?
Rely on advice of local counsel
Madrid Protocol
Strategic Insights
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Allows for trademark owner to obtain
protection in any or all member
states selectively with simplified
process
National examinations are required;
if pass, country is included in IR
Madrid Protocol
Challenges and Practice Pointers
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Requires showing of “use” in each country
Applicant for an IR (bundle of national rights)
must be a national of, or domiciled in a member
country.
In an application filed under the Madrid Protocol,
the description of goods and services must be no
broader than those in the home application
regardless of whether priority is claimed.
Action for infringement is taken through the
courts of the country concerned and generally
any injunction extends to that country only.
Madrid Protocol: Challenges and
Practice Pointers
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To minimize risk of “central attack” base
filings on U.S. registrations over five years
old
Cost savings from filing may be negated
by use of local agents if problems arise
Filings based on U.S. registrations may
have more narrow claim for
goods/services than extensions based on
other national registrations or CTMs.
Community Trademarks
CTM Key Facts
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Centrally administered by Office for
Harmonization in the International
Market (OHIM)
Single filing covers 27 EU nations &
500 million consumers
OHIM reduced app/reg fees 40% in
2009 (2075 Euros  900 Euros)
Unitary right enforceable across EU
CTM Advantages
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Class headings allowed
Use required in only one member
Increasing # member states; fees
being reduced
Overall filing costs & admin fees low
considering geographic scope
CTM Disadvantages
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CTM may not be used to oppose a national
registration if CTM is used only in a single
country (BOIP-on appeal)
Objection in one state can defeat entire
application; conversion into national
applications does not refund CTM filing
fees & Nat'l fees apply
Increasing members => increased risk of
objections?
Key Facts (Cont’d)
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If CTM in infringed, Pan-EU
injunction possible
Oppositions can be based on prior
CTMs, national marks or
International (Madrid) trademarks
with effect in one of the member
states
Hypotheticals
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Company A is well known in U.S. and
owns many registrations. Upon
researching EU expansion, search results
reveal identical mark registered in several
nations in Company A’s field. How can
Company A expand into EU?
Company B faces an unknown potentially
“blocking” competitor in many countries.
Company B predates competitor in a large
nation and via watching services notices
the competition seeks registrations there.
What to do?
Hypotheticals (Cont’d)
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Company C would like to expand
internationally selectively. Which
treaty best supports?
THE END
QUESTIONS?
THANK YOU!