D ARBY & D ARBY www.darbylaw.com

THE MADRID PROTOCOL: SHARING EXPERIENCES

THE US VIEWPOINT

Intellectual Property Law Since 1895

Paul Fields, Esq.ECTA

June 8-11, 2005

European Communities Trade Mark Association24th Annual Conference

A different approach.

FIRST YEAR STATISTICS

� Over 1,000 International Applications/Registrations filed with the United States as the Office of Origin in the First 12 Months of the United States introduction into the Madrid Protocol.

� By May 2005 there were over 2800 International Applications/Registrations identifying the United States as the Office of Origin.

� 8,692 Requests for Extension of Protection designating the United States were filed between November 2003 and November 2004.

� By May 2005 10,313 Requests for Extension of Protection to the United States were filed.

FIRST YEAR STATISTICS

� 726 Trademarks originating from Requests for Extension Protection Have Been published in the USPTO Official Gazette.USPTO Official Gazette.

� First Registration based on a Request For Extension of Protection Issued on February 1, 2005 - Registration No. 2,923,503 - OSTEOSOFT owned by Merk KgaA.

� Over 95% of all Requests for Extension of Protection Receive Office Actions refusing registration by the USPTO.

2004 INTERNATIONAL REGISTRATIONS BY OFFICE OF ORIGIN

4,753

4,0004,5005,000

2,959

2,041 1,987 1,934

1,025

0500

1,0001,5002,0002,5003,0003,5004,000

Germany France Benelux Italy Switzerland USA

Source: WIPO Statistical Supplement for 2004

2004 REQUESTS FOR EXTENSIONOF PROTECTION TO US

1,531

1,400

1,600

941769 766

598

0

200

400

600

800

1,000

1,200

Germany France Switzerland Italy Benelux

Source: WIPO Statistical Supplement for 2004

TOP TEN OFFICES OF ORIGIN BY VOUME IN 2004

Germany20.3%Other

23.6%

France12.6%

Benelux8.7%

Italy8.5%

Switzerland8.3%

U.S.4.3%

Austria4.1%

China3.4%

Spain3.0%U.K.3.1%

Source: WIPO Statistical Supplement for 2004

COMMON FILING MISTAKES: OUTBOUND FILINGS

� WIPO Form MM2:

�Failure to Insert Basic Application or Registration Number

COMMON FILING MISTAKES: OUTBOUND FILINGS

Applicants who claim priority in Box 6 above failto include the application number in Box 5.

OTHER OUTBOUND FILING MISTAKES

� Goods/Services beyond scope of those in the basic application/registration.

� Mark described in International Application does not match mark covered by Basic Application/Registration.

� Applicant’s name is not identical to the name that appears in the Basic Application/Registration.

COMMON FILING MISTAKES - INBOUND FILINGS: REQUESTS FOR EXTENSION OF PROTECTION ERRORS

1. WIPO MM2 Form

Legal Entity Information Requested in Box 2(f) IsMissing - Guarantees Office Action by USPTO

COMMON FILING MISTAKES - INBOUND FILINGS: REQUESTS FOR EXTENSION OF PROTECTION ERRORS

2. GOODS AND SERVICES TOO BROAD -Check Manual of Acceptable Identification of Check Manual of Acceptable Identification of Goods and Services available at <http://tess2.uspto.gov/netahtml/tidm.html>to ensure that the goods and services are properly identified.

CTM APPLICATIONS FILED IN 2004 BY STATE OF ORIGIN

10,1649,62710,000

12,000

Source: SSC009 Statistics of Commodity Trademarks published by OHIM

6,460

5,4354,816

4,372

2,0741,447 1,321 1,290

0

2,000

4,000

6,000

8,000

U.S. Germany U.K. Spain Italy France Netherlands Japan Switzerland Austria

TOTAL CTM APPLICATIONS FILED 1996-2004

95,810

80,00090,000

100,000

Source: SSC009 Statistics of Commodity Trademarks published by OHIM

67,453

51,182

31,071 30,52526,812

11,771 11,548 8,971 8,389

010,00020,00030,00040,00050,00060,00070,000

U.S. Germany U.K. Italy Spain France Netherlands Japan Switzerland Sweden

CTM APPLICATIONS FILED IN 2004 BY VOLUME

U.S.17.5%

Other23.6%

Germany16.6%

U.K.11.1%

Spain9.4%

Italy8.3%

France7.5%

Netherlands3.6%

Japan2.5%

23.6%

Source: SSC009 Statistics of Commodity Trademarks published by OHIM

TOTAL CTM APPLICATIONS FILED 1996-2004 BY VOLUME

U.S.24.3%

Other17.2%

Germany17.1%

U.K.13.0%

Italy7.9%

Spain7.8%

France6.8%

Netherlands3.0%

Japan2.9%

Source: SSC009 Statistics of Commodity Trademarks published by OHIM

INTERNATIONAL REGISTRATION v. CTM REGISTRATION

� CTM has a broader identification of goods and services - greater scope of protection

� No “Central Attack” issue as in International Registrations� No “Central Attack” issue as in International Registrations

� Canada, Mexico, and many South American countries not members of Madrid Protocol

� Cost/Benefit Analysis: -CTM Application - Total Filing Fees (including registration fees) Approx: $2506.00-International Registration Covering the EU: Filing and Certification Fees Approx: $3000.00