Trademark Regimes


Trademark prosecution in the United States has been fairly well described herein. However, it may be useful to describe the various trademark regimes from the perspective of filing for protection in foreign states. An example of the methods of obtaining trademark rights in a member country of the European Union, provides an excellent means for explaining how the various regimes operate, their interaction and the strength and weaknesses in using each. The EU is particularly interesting in that in addition to individual national protection, community wide protection of trademark rights is possible through the filing of one application with the central office (Office of Harmonization of the Internal Market – OHIM). With 28 member nation states and a population of more than 500 million, the EU generates a nominal gross domestic product (GDP) of more than 16 trillion US dollars, constituting approximately 23% of global nominal GDP. Any company considering entering the EU market and protecting its brand must understand these regimes in order to obtain the required protection at the lowest cost and most efficient means. Since our prior trademark experience includes practice in the Czech Republic, we will use the good ol’ CR as our example country.


1.    National Trademark Registrations.

a.    Description:

National trademarks are prosecuted through the local Intellectual Property Office (IPO) of the state where protection is sought. Protection is limited to the state’s territory. In the Czech Republic, applications are filed with the Industrial Property Office (the “Office”). Obstacles to registration include prior trademark rights and common law rights, e.g. business names, geographical indicators and trade names. Use of the trademark is not a prerequisite to application or registration.

The trademark registration can be applied for by any natural or legal person who:

  • produces goods and brings them onto the market, or
  • carries on trade with goods, or
  • provides services for third persons.

The trademark registration can only be applied for goods or services that are indicated in the applicant’s object of activity, i.e. its listed business activities. The trademark registration can be applied for either directly by the applicant or through a representative, particularly a solicitor or a patent attorney. Where the applicant is not a resident of the Czech Republic, he must file the application for a trademark registration through the mediation of a Czech bar association or Patent Attorney Chamber member. The registration is good for 10 years with subsequent 10 year renewals.

b.    Procedure:

After filing the application, the Office determines whether the application has all the necessary particulars. If some faults are detected that would hinder proceeding further (such as an incorrect classification of the list of goods or services), a written invitation is sent to the applicant to remove the faults in a due time schedule. If the applicant’s fails to react to the above Office invitation and the faults are not removed, the Office stops the application procedure. If the application is free of such faults or if the applicant removed the faults, the Office carries out a substantive examination of the designation to be registered. The purpose of this examination is to determine whether the trademark to be registered is qualified for registration. If the designation is of such character that makes it impossible to register, the Office notifies the applicant of this fact. The applicant then has an opportunity to either remove the obstacle to registration or oppose the decision of the Office. If the removal of the registration obstacle is impossible, the Office rejects the registration of the respective trademark.

If the trademark to be registered is qualified for registration in the register, the trademark application is published in the Office Journal. Within a period of three months from the publishing date, anyone with previously acquired rights and whose rights can be potentially infringed by the published designation may oppose the registration of the trademark in the register. When an opposition to a trademark registration is filed, the Office must decide whether the opposition is justified and whether the applied designation infringes the prior rights of the opponent. If the Office determines that the applied trademark will infringe a prior holder’s rights, the Office will reject the trademark application. If no opposition is filed within the three month opposition period or if this opposition is rejected as unjustified, the Office registers the applied trademark in the trademark register. Notice of the registration will be sent by the Office in writing to the owner, who can then request a certification of the trademark registration.

c.    Fees:

Application, Registration and Renewal Fees for the Czech Republic

Basic Application Fee for an individual mark                                                                        5,000 CZK

Supplemental Application Fees for each class of goods or services in excess of 3               500 CZK

Renewal Basic Fee                                                                                                                      3,000 CZK

International Application Fee                                                                                                   2,500 CZK

Territorial extension or reduction of the international registration                                     500 CZK

* note that the registration fees are non-refundable.

d. Summary:

  • No domiciliary or residency requirements.
  • Must use local counsel for filing if not a resident.
  • Registrability referenced to national law.
  • Obstacles to registration include common law rights, geographical indications of origin and trade names.
  • Must have a national or regional registration or application for registration prior to application for an international registration.
  • Cost for registration in each territory is high. Hence, the registration of national trademarks is used primarily where a business needs;

1. protection in a small amount of distribution and manufacturing territories only,

2. protection in its distribution and manufacturing territories with an eye towards exploiting the international registration systems in the future.

  • Must renew each national trademark separately through the individual IPO where the trademarks are registered.
  • Infringement actions must be prosecuted with the individual IPO in the territory where infringement occurs. Hence, there is no central organization with which injunctions, seizures, etc. may be obtained.
  • Need for local counsel increases the cost of protection.

2.    Community Trademark (CTM).

a.    Description:

The CTM is a unitary trademark registration for member states of the EU and WTO (World Trade Organization). Priority may be claimed from existing national trademark registrations, although prior registrations are not required, and third parties may oppose with prior national trademark rights. The National courts have jurisdiction over infringement actions and counterclaims to cancellation actions, but they may issue community wide injunctions. Use in one member state prevents cancellation for non-use in another.

A CTM application and a CTM are valid in the European Community as a whole. The application and the ensuing registration extend automatically to all 28 Member States of the European Community indivisibly. It is not possible to limit the geographic scope of protection to certain Member States. Furthermore, there is one single registration procedure, which is centrally handled before the Office of Harmonization for the Internal Market (OHIM). No actions before the national industrial property offices are necessary. Conversely, invalidation, refusal or the expiration of the CTM necessarily applies for the whole of the Community. Lastly, the CTM is one single asset of property. A Community trade mark may be transferred, separately from any transfer of the undertaking which is its proprietor, in respect of some or all of the goods or services for which it is registered. However, it can only be transferred for the whole of the Community and not with respect to individual countries. Hence, you may not transfer the trademark rights for part of the Community while retaining those rights for the remainder. However, territorially or otherwise limited licenses, even limited for a particular Member State, are possible. A Community trade mark may be licensed for the whole or part of the European Union. A license may be exclusive or non-exclusive.

Earlier national trade marks constitute earlier rights against a CTM, and vice versa. The Office does not examine such earlier rights of its own motion. Only the proprietor of the earlier right can raise this issue, either by filing an opposition within 3 months of the publication of the CTM application, or following the registration of the CTM by filing an application for a declaration of invalidity on relative grounds. If an earlier right in only one Member State exists, it goes without saying that this right can not be invalidated by the later filing of a CTM by another person. The opposition or invalidity procedure before the OHIM will, in such cases, offer ample leeway for an amicable settlement, e.g. co-existence or license agreements. Lastly, a CTM application which has been refused, or a CTM which has been declared invalid or revoked, may be converted into national trade mark applications in all the Member States of the European Community in which the ground for refusal does not apply. The ensuing national trade mark applications will retain the date of the CTM application.

Upon opposition, a mark shall not be registered as a CTM if a relative ground for refusal applies. Opposition must be filed within three months from the date of publication of the CTM application in the CTM Bulletin by the proprietor of the earlier right.

The following constitutes an earlier right:

  1. an earlier CTM or a CTM application;
  2. an earlier national trade mark or a national trade mark application filed or registered in a Member State of the European Union;
  3. an international registration under the Madrid agreement or the Madrid Protocol with effect (designated) in a Member State of the European Union;
  4. a non registered mark or another sign used in the course of trade of more than mere local significance valid in a Member State;
  5. a trade mark which is well-known in a Member State (within the meaning of Article 6ter of the Paris Convention).

The CTM application or the CTM will be refused on the basis of an earlier mark;

  1. if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier mark is protected;
  2. if because of its identity or similarity to the earlier trade mark and the identity of similarity to the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade mark;
  3. if it is identical or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier mark has a reputation and where that mark would suffer unfair advantage or detriments in respect of its distinctive character or its repute.
  4. * note that the national registration procedures refuse on similar grounds.

It should be again noted that where a ground for refusal exists in any part or country of the European Union, the CTM may not be registered as a whole. For example, if there is an identical national trade mark for the same goods or services in just one of the Member States, the CTM will, on opposition of the proprietor of that earlier mark, not be registered. These grounds for opposition also constitute grounds for a declaration of invalidity that may be requested after the registration of the CTM.

b.    Procedure:

CTM applications can be filed either directly with OHIM or at any member state IPO. There is a two month period for payment of the application fees. Once the payment is received by the Office, it is irrevocable and will not be refunded.

The procedure for the registration of a CTM is an examination procedure which comprises the following three main parts:

  1. Examination of the application, which includes whether or not a filing date may be accorded, the formalities examination and the examination as to absolute grounds for refusal, during which search reports are established.
  2. Publication of the application.
  3. The procedure up to registration which may comprise opposition proceedings.

The first part of the procedure starts with the receipt of the application, either directly at the OHIM or via a local industrial property office.

The second part of the procedure is the publication of the application in part A of the CTM Bulletin, where the result of the examination by the OHIM has been positive.

The third part of the procedure is reserved for third parties to invoke their earlier rights in opposition proceedings. Opposition may be lodged within three months following the publication of the CTM application. Where the outcome of opposition proceedings is positive for the applicant, or where no opposition has been filed, the CTM will be registered.

Appeals proceedings constitute a special procedural phase. Appeals can be filed during the aforementioned parts of the procedure against decisions of the Examiners, the Opposition Divisions and the Administration of Trade Marks and Legal Division.

c.    Fees:

CTM Application, Registration and Renewal Fees

Basic Application Fee for an individual mark                                                                                  900 €

E-File Application                                                                                                                                 750 €

Supplemental Application Fees for each class of goods or services in excess of 3                       150 €

Basic registration Fee for an individual mark                                                                                 850 €

Supplemental Registration Fees for each class of goods or services in excess of 3                     150 €

Renewal Basic Fee                                                                                                                             1,500 €

Renewal Fee for each class of goods or services in excess of 3                                                     400 €

Fee for the conversion of a trademark into a national trademark                                              200 €

* note that the registration fees are non-refundable.

d. Summary:

  • Not a closed convention as entities of member states of the WTO may file.
  • Priority may be claimed from existing national registrations.
  • OHIM accepts registrability then sends to member states for approval.
  • OHIM notifies applicant of member state response. Applicant may then modify application depending upon percent of risk.
  • OHIM publishes CTM application.
  • Oppositions must be filed within 3 months of publication.
  • If the application fails in one country, the application fails entirely.
  • If successfully opposed, may convert to national applications.
  • May not be suitable for an applicant who wishes to use different or varying marks in different countries.
  • May not assign registration with respect to certain countries.
  • Use in one country constitutes use in all.
  • Able to register sound and olfactory (smell) marks.
  • Automatic extension into future member states.
  • Allows for a single registration certificate to be filed with EU Custom’s authorities.
  • Availability of community wide injunctions/judgments regarding infringement.
  • Single application for the region.
  • Single language of procedure.
  • Single administrative center.
  • Single file to be managed.
  • Initial expenses for protection could be significantly higher than seeking protection in individual countries. Overall expense of obtaining protection in all 28 member states is significantly less than obtaining protection in all of these individual member states.

3.    International Registration (WIPO)

a. Description:

The Madrid system is a union of member states where an owner of trademark in a member country may apply for an international registration of a trademark and obtain protection in designated countries of the union. The Madrid system consists of two treaties; the Madrid Agreement and the Madrid Protocol. Which treaty governs depends upon the country of origin and the country where protection is sought. The international registration is founded on the requirement of a basic national or regional (CTM) registration or application for registration. Under the Agreement, an applicant for the international registration of a mark must have already obtained registration of the mark in the country or region of origin (basic registration). Under the Protocol, an international application may be based on either a registration with the Office of origin (basic registration) or on an application for registration filed with that Office (basic application). The international application may relate only to goods and services covered by the basic application or registration. The two systems are administered by the International Bureau of the World Intellectual Property Organization (WIPO).

In relation to the question of which treaty governs, it depends upon which treaties the originating country has ascended. The country of origin, for your purposes, is the country where the trademark is first filed and that trademark is the basis of the international registration. The Czech Republic is a signature to both treaties (the United States is signature to only the Madrid Protocol) and therefore determining which treaty governs depends upon which treaties the designated country is a signature;

Where the country of origin is a signature to both treaties, as is the Czech Republic, the international application or registration will;

  1. with respect to any other country also party to both the Agreement and the Protocol, be governed exclusively by the Agreement.
  2. be governed by the Protocol as regards countries bound only by the Protocol, and
  3. be governed by the Agreement as regards countries bound only by the Agreement,

Where the country of origin is a signature to only the Madrid protocol, as is the United States, the international application or registration will apply;

  1. where the Contracting Party whose Office is the Office of origin is a party to the Protocol but not the Agreement, only to other Contracting Parties which are also party to the Protocol.
  2. where the Contracting Party whose Office is the Office of origin is a party to the Agreement but not the Protocol, only to other States which are also party to the Agreement.

Differences:

Madrid Agreement                                                              Madrid Protocol                                                   

Based on national registration                                            Based on national application

National registration may take 12 months or more if your trademark is opposed. Filing under the Protocol allows you to apply for the international registration at or after the time of the national application. hence, filing under the Protocol is potentially faster.

12 month notice period                                                         18 month notice period

The notice period pertains to the time that must be allowed for others to oppose your trademark registration. The 12 month period begins when the trademark is published by the international office, which is typically 3 months after the application is filed.

10 year renewal                                                                      10 year renewal

The trademarks may be renewed every 10 years.

Central attack;

Results in cancellation in all countries.                             If attacked, may convert to local applications.

If at any time within 5 years of the international application, the trademark is attacked in the country of origin resulting in cancellation, all designated countries’ registrations are cancelled with no possibility of conversion. Under the Protocol, the international registration may be converted to local applications.

Flat fees                                                                                  Variable national office fees

In addition to the basic registration, designation and class fees, individual fees are allowed by member countries under the Protocol.

Proceedings in French only                                                 Proceedings in French or English

b. Procedure:

Since the international registration is based on a trademark from the country of origin, you must already have a trademark application (under the Protocol) or registration (under the Agreement) in the country of origin prior to applying for the international registration. Hence, you must first file a Czech national trademark application and then seek the international registration. Under the Protocol, you may request the international application to be made at the time of filing the national application. If the request for international trademark registration comes with the national trademark application, the national trademark section deals with this application urgently, so as to issue the application in the bulletin. In order to retain the priority date of the national application, the international bureau must receive the international application within 6 months of filing the national application. Hence, the international application should be filed at the time of filing the national application and in fact, the Czech IPO will not guarantee that the international application will reach the WIPO before the priority deadline unless it is co-filed with the national application. Under the Agreement, you must wait until the national trademark has been registered before applying for the international registration.

Once the application is received by the IPO of the country of origin, it is forwarded to the international bureau with certification of the registration or application. The International Bureau checks that all the filing requirements are met and that the goods and services are correctly classified. If so, the trademark is recorded in the International Register. The International Bureau then notifies of the international registration to the Offices of the designated countries. The International Bureau does not examine whether the trademark as such qualifies for protection, or whether an identical or similar trademark has already been registered; that is a matter for the Offices of the designated countries.

From the date of the international registration, the protection of the mark in each of the designated countries is the same as if the mark had been the subject of an application filed directly with the Office of that country. If no refusal is notified within the prescribed time limit, the protection of the mark in each designated country is the same as if the mark had been registered by the Office of that country.

The Office of a designated country has the right to refuse protection of a mark in the territory of that country. Refusal may be made on any of the grounds on which an application for registration filed directly with that Office might be refused. Notification of the refusal is sent to the International Bureau and recorded in the International Register.

The International Bureau must be notified of any provisional refusal by the Office of the designated country concerned within the time limit specified in the Agreement or Protocol. This time limit is generally 12 months. A Contracting Party may however declare that, when it is designated under the Protocol, this time limit shall be replaced by 18 months. A Contracting Party that has made this declaration may further declare that a provisional refusal based on an opposition may be notified even after the expiry of this 18-month period, provided however that the Office concerned has, within the 18-month period, notified the International Bureau of this possibility. Any procedure subsequent to the refusal, such as review, appeal or response to an opposition, is carried out directly between the trademark owner and the Office concerned, without any involvement on the part of the International Bureau. Hence, any problems in accepting the designation of the international registration at the national level must be handled by local counsel.

It is only at the end of the applicable time limit that the holder of an international registration is in a position to know whether the trademark has been accepted for protection in each of the designated countries, or whether protection has been refused in one country or whether there is still a possibility of refusal on the basis of an opposition in a particular country. Where an Office finds no reason for refusing protection, it may, before the expiration of the applicable time limit for provisional refusal, issue a statement of grant of protection. Such statement is recorded in the International Register and published in the Gazette and a copy is transmitted to the holder of the international registration.

For a period of five years, the international registration of the trademark is dependent upon the existence of the registration of the same trademark in the country of origin. If for any reason this trademark is cancelled in the country or origin within the five year period from the date of the international registration, its international registration will also be cancelled and the trademark deleted from the international register.

c. Fees.

Fees are assessed for both the international application at the country of origin and the international registration. In the Czech Republic, the fees for the international application, renewal and extension or reduction of designated countries are paid at the time of application to the Czech IPO.

The fees for the international registration must be paid directly to the International Bureau (WIPO). The fee schedule depends upon whether the international registration is governed by the Agreement, the Protocol or both:

Madrid Agreement: Application and Registration Fees

Basic Application Fee – Black & White                                                                                              653 CHF

Basic Application Fee – Color                                                                                                             903 CHF

Supplemental Application Fees for each class of goods or services in excess of 3                      100 CHF

Complementary Fee for each designated country                                                                          100 CHF

Madrid Protocol: Application and Registration Fees

Basic Application Fee – Black & White                                                                                             653 CHF

Basic Application Fee – Color                                                                                                            903 CHF

Supplemental Application Fees for each class of goods or services in excess of 3 *                  100 CHF

Complementary Fee for each designated country unless Individual Fee applies                      100 CHF

* Unless only member countries where an Individual Fee applies are the designated states.

Individual Fee for each designated country where an Individual Fee applies. Varies and is set by the designated country.

Madrid Agreement and Protocol: Application and Registration Fees

Basic Application Fee – Black & White                                                                                             653 CHF

Basic Application Fee – Color                                                                                                            903 CHF

Supplemental Application Fees for each class of goods or services in excess of 3                     100 CHF

Complementary Fee for each designated country unless Individual Fee applies                      100 CHF

Individual Fee for each designated country where the Individual fee applies except where the designated country and the country of origin are both bound the Agreement. Varies and is set by the designated country.

Madrid Agreement, Protocol or Both: Designations Subsequent to International Registration

Designations subsequent to international registration – Basic Fee                                           300 CHF

Designations subsequent to international registration – Complementary Fee *                     100 CHF

Supplemental Application Fees for each class of goods or services in excess of 3                   100 CHF

Complementary Fee for each designated country unless Individual Fee applies                    100 CHF

* For each designated country unless Individual Fee applies.

Individual Fee for each designated country where Individual fee applies. Varies and is set by the designated country.

Fees cover the period between the effective date of the subsequent designation to the end of the then current term of the international registration.

Madrid Agreement or Protocol: Renewal Fees

Basic Fee                                                                                                                                            653 CHF

Supplemental Fee unless Individual Fee applies                                                                          100 CHF

Complementary Fee for each designated country unless Individual Fee applies                    100 CHF

Individual Fee for each designated country where Individual fee applies. Varies and is set by the designated country.

d. Summary:

  • Ability to obtain protection in several countries with a single international application.
  • Registration is a bundle of separate national registrations.
  • Registrations can only be enforced at the national level.
  • Registrations are vulnerable to attack for non use in each country.
  • Must be a national or have a place of business in a member state.
  • Use of the mark is not a basis for filing or registration.
  • Application filed through the country of origin. Request then forwarded by the International Bureau to the national trademark offices of the designated countries.
  • Each national office processes the application in accordance with national laws, i.e. on absolute and relative grounds.
  • National office reports to WIPO results; acceptance, rejection, opposition.
  • If no refusal, trademark is deemed accepted and enjoys all the benefits of a national registration.
  • Initial costs can be moderate depending upon the number of initially designated countries. Cost for similar protection as the CTM are higher but there remains the ability to include 62 additional states.
  • Infringement actions must be prosecuted at the national level and there is no central authority where union wide injunctions may be obtained.

Advantages:

  • One Filing in English for 60+ Countries
  • One International Registration with One Renewal
  • Subsequent Designations

Disadvantages:

  • Dependency and Central Attack
  • Narrow Identification of Goods and Services
  • No Amendments to the Mark