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STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
UNVEILING THE BENEFITS AND PITFALLS OF
THE MADRID & HAGUE SYSTEMS
Introduction
Rob S. Katz
Banner & Witcoff, USA
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STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
Robert S. Katz
Banner & Witcoff (US)
Lena Shen
Dakun IP (CN)
Iván L. Sempere
Padima (ES)
Overview
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STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
Robert Katz
Banner Witcoff, U.S.
5
General Process of these WIPO Tools –
Trademarks/Design
WIPO
Region 1
Region 3
Region 1
Region 2
Region 2
Region 3
Applicant
Applicant
6
•
Money savings
o
Bypasses local counsel
•
Administrative simplicity
o
Not always, but usually
o
Can limit flexibility
What’s the Upside
7
•
Law and practices are not the same
o
Basics
o
Cutting edge opportunities
•
Pitfalls and traps exist
•
Don’t always learn about issues early
•
Bypass local counsel can come at a price
•
Users should be as smart as local counsel
Considerations
Trademarks via Madrid
Lena Shen
Dakun IP, P.R. China
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STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
115 members with 131 countries
Coverage of Madrid System
Madrid registration process at a glance
Possible Examination Outcomes
no news by 12/18m:
protection is granted
statement of grant of protection:
protection is
granted
Notification of provisional refusal:
local agent to
involve if needed to further proceed
Madrid System V. National TM
Madrid system
National TM
coverage
131
200+
cost
generally speaking, lower
1. basic fee
2. designation fee
3. agent fee in the original country
1. official fee of each office
2. agent fee in the original country
3. agent fee of the local attorney
4. possible fees for notarization, legalization and postage
examination
time
refusal period: 12 or 18 months
vary
certificate
normally no registration certificate from
designated countries
yes
basic TM
required?
yes
No
legal effect
The same (theoretically speaking)
valid term
10 years from international registration date
vary
document
requirements
simple
complex in some countries (even required notarized and
legalized documents)
priority
the same (6 months)
subsequent
designation
possible
not available
other
procedures
simple for renewal/change/transfer (one act to
cover all designated jurisdictions)
complex (to proceed in each jurisdiction)
low c
os
t
simpl
e
B
ig
ge
st a
dv
an
ta
ge
w
ith
M
ad
rid
Cost estimate example: a CN applicant filing TM for 4 jurisdictions
Madrid (CHF)
National TMs (designation official
fees & normal attorney fees)(CHF)
Basic fee 653
--
Japan
266
850
USA
460
1200
EU
789
1200
Vietnam
100
480
Total
2002
3730
registration; (post registration) change, transfer, renewal
Madrid system: one filing, one fee, one deadline
National registration: multiple filings, separate fees and payments,
different deadlines
basic mark requirement and central attack
Article 2 of the Madrid Protocol requires the owner of a mark to file a basic application or
obtain a basic registration (basic mark) in the home country before filing an international
application, and Article 6 mandates that the resulting international registration and all
extensions of protection are dependent on that basic mark for five years from the date of
the international registration.
Biggest issue and risk of using Madrid system
Some proposals to modernize the system
1. to maintain the basic mark requirement BUT reduce the
dependency period from five to three years;
2. to eliminate the basic mark and dependency requirements.
Madrid-
Pro and Cons for CN filing and rights
Cost saving
Slow in examination
Easier and simpler in
management
No registration certificates &
slow/failure in data update
Pros and Cons for CN filing through Madrid
More tolerant in
goods/service description
examination
Document delivery
problem
No review & simple issue
turned into complex procedure
IR: 12/18 months
National: 4+3 months (maximum 9+3 months)
CNIPA directly mails notifications to
international registrant, sometimes
lost or delay in receiving which may
cause the loss of the right.
Solution:
to
involve local
agency in some
procedure so it
will be copied
for future notice
Pls see examples on
next slide
CNIPA very slow and
even
reluctant
in
correcting or updating
its online data.
Solution for no
certificate:
to
apply for a certified
copy of registration
with CNIPA
Goods example in IR
Goods example in national TM
class 9
(0910, 0913,
0914, 0916…)
electrical, pneumatic, hydraulic and
thermal apparatus for controlling, tuning,
switching and measuring as well as
accessories therefor
temperature indicator; barometer; electric regulating device; transformer (electrical); sensors; thermostat; thermal regulation device;
humidity meter; temperature sensor; pressure sensor; liquid level sensor; oil level sensor
class 11
(1101,
1105~1108…)
apparatus for lighting, heating, steam
generating, cooking, refrigerating, drying,
ventilating, water supply and sanitary
purposes
lighting fixtures and devices; cooling equipment and devices; water cooling device; air conditioning equipment; device for wetting air
device; air dryer; air cooling device; ventilation equipment and devices (air conditioning); air disinfection device; drying equipment and
devices; air purifier; thermostatic valve (heating device component); electric heating device; water supply equipment; hot air flow
regulator; hot air device; heat pump; gas valve for steam heating system; radiators for central heating systems;
More tolerant in goods/service description examination,
advantage or disadvantage?
Possible disadvantage:
more risk of being refused, more uncertain in enforcement
No review & simple issue turned into complex procedure (review of refusal)
If it is a national TM,
some can have been solved before filing or by replying to a Notification of Amendment, cheaper & quicker.
issues
Examples
Accepted after amendment
Unacceptable
goods/services
35: Retail/wholesale services
Distribution for others; providing online markets of goods and services for the sellers and
buyers
9: smart watches
smart watches (data processing)
9: digital storage media, particularly digital collectibles,
digital tokens, non-fungible tokens (NFTs) and digital art
digital storage media, particularly digital collectibles
Lack of
documents
Where the applicant for extension of an IR in China requires to protect a 3-D mark, color combination mark and sound mark or requires to protect a collective
or certification mark, it shall, within 3 months after the international registration, submit the relevant materials to the Trademark Office of CNIPA through a
legally established Chinese trademark agency. If it fails to submit the relevant materials within the aforesaid time limit, the Trademark Office shall reject such
an IR.
Obvious refusal
ground
Applicant:
a Sweden company
Refusal ground:
The graph, comprised in the sign, which is similar to the National Flag of the United States, shall not be used as a trademark without the
permission of the United States government. “LEXINGTON” in the sign is likely to mislead the public as to the origin of the designated goods