International International Trademark Protection Trademark Protection

and Managementand Management

ByByDr. Kalyan C. Kankanala,Dr. Kalyan C. Kankanala,Brain League IP Services now BananaIPBrain League IP Services now BananaIP

© 2009 Brain League IP Services Pvt. Ltd Now BananaIP

STRUCTURESTRUCTURE

International Agreements and International Agreements and ConventionsConventions

Regional AgreementsRegional Agreements International Protection StrategyInternational Protection Strategy Trademark portfolio managementTrademark portfolio management

INTERNATIONAL INTERNATIONAL AGREEMENTS AND AGREEMENTS AND

CONVENTIONSCONVENTIONS

PARIS CONVENTIONPARIS CONVENTION

National TreatmentNational Treatment No Domicile RequirementNo Domicile Requirement Right of PriorityRight of Priority RegistrationRegistration Well Known MarksWell Known Marks

TRIPS AGREEMENTTRIPS AGREEMENT Minimum standards Minimum standards

Acquired distinctivenessAcquired distinctiveness Well-known MarksWell-known Marks Proposed use - Use within three (3) Proposed use - Use within three (3)

yearsyears Likelihood of confusionLikelihood of confusion Renewal period – 7 yearsRenewal period – 7 years

OTHER ARRANGEMENTSOTHER ARRANGEMENTS

Trade Mark Law TreatyTrade Mark Law Treaty NICE AgreementNICE Agreement

REGIONAL REGIONAL AGREEMENTSAGREEMENTS

EUROPEAN COMMUNITY EUROPEAN COMMUNITY TRADEMARKTRADEMARK

OHIM - Office for Harmonization in OHIM - Office for Harmonization in the Internal Market - Alicante, Spainthe Internal Market - Alicante, Spain

One registration for all EU countriesOne registration for all EU countries Use in one country sufficientUse in one country sufficient Cost AdvantageCost Advantage Not free from infringement action - Not free from infringement action -

No national reviewNo national review

OAPI OAPI 16 French speaking countries in Western Africa16 French speaking countries in Western Africa OAPI office – Yaound, CameroonOAPI office – Yaound, Cameroon Registration valid in all countriesRegistration valid in all countries Opposition, Infringement and Cancellation - Opposition, Infringement and Cancellation -

National LawNational Law Members - Benin, Burkino Faso, Cameroon, Members - Benin, Burkino Faso, Cameroon,

Central African Republic, Chad, Congo, and Central African Republic, Chad, Congo, and Equatorial Guinea. Gabon, Guinea, Guinea Equatorial Guinea. Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo. Senegal, and Togo.

ARIPOARIPO Banjul Protocol on Marks - 8 out of 16 Banjul Protocol on Marks - 8 out of 16

countries have accededcountries have acceded ARIPO - Harare, ZimbabweARIPO - Harare, Zimbabwe Single application - Designate Single application - Designate

CountriesCountries Application - Reviewed by Designated Application - Reviewed by Designated

Countries in 12 months - RegistrationCountries in 12 months - Registration Opposition, Cancellation, Infringement Opposition, Cancellation, Infringement

and so on - National Lawand so on - National Law

Member CountriesMember Countries

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

Botswana,Botswana, Lesotho,Lesotho, Malawi,Malawi, Namibia,Namibia, Swaziland,Swaziland, Tanzania,Tanzania, UgandaUganda and Zimbabweand ZimbabweTM accessionTM accession

MADRID SYSTEMMADRID SYSTEM

Madrid AgreementMadrid Agreement

Madrid ProtocolMadrid Protocol

INTERNATIONAL INTERNATIONAL PROTECTION STRATEGYPROTECTION STRATEGY

PROTECTION STRATEGYPROTECTION STRATEGY Perimeter Perimeter ClassesClasses RouteRoute BudgetBudget EnforceabilityEnforceability AttorneyAttorney

PERIMETERPERIMETER Value of the MarkValue of the Mark Geographical Exent of use - Sales, Geographical Exent of use - Sales,

Production, Competitors, Advertising Production, Competitors, Advertising and so onand so on

Kind of businessKind of business Likelihood of Counterfeiting Likelihood of Counterfeiting

EXAMPLEEXAMPLE A company starts selling pens in India A company starts selling pens in India

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

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

EXAMPLEEXAMPLE A company, 'X', based out of Bangalore A company, 'X', based out of Bangalore

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

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

CLASSESCLASSES Goods or ServicesGoods or Services Relevant classesRelevant classes Multi-class applicationMulti-class application

EXAMPLEEXAMPLE A person starts a training center A person starts a training center

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

The trademark must be registered in The trademark must be registered in ______ classes.______ classes.

ROUTEROUTE NationalNational RegionalRegional InternationalInternational Filing StrategyFiling Strategy

BUDGETBUDGET SizeSize TimelineTimeline IncreaseIncrease AllocationAllocation

AVERAGE COSTAVERAGE COST Europe - CTM RegistrationEurope - CTM Registration

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

One countryOne country

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

USAUSA

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

EXAMPLEEXAMPLE A company wishes to file for A company wishes to file for

protection of its mark in UK, protection of its mark in UK, Germany, Switzerland, France and Germany, Switzerland, France and Italy. Italy.

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

ENFORCEABILITYENFORCEABILITY MarkMark CountryCountry RegionRegion TimelineTimeline

EXAMPLEEXAMPLE X, a company based out of France, X, a company based out of France,

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

Advise X on the countries in which it Advise X on the countries in which it must file.must file.

ATTORNEYATTORNEY RealReal ReliableReliable CapableCapable Cost effectiveCost effective TransparentTransparent

PORTFOLIO PORTFOLIO MANAGEMENTMANAGEMENT

PORTFOLIO MANAGEMENTPORTFOLIO MANAGEMENT Selection and ClearanceSelection and Clearance UseUse ProtectionProtection MaintenanceMaintenance EnforcementEnforcement AuditAudit Online Tracking and AnalysisOnline Tracking and Analysis

EXAMPLEEXAMPLE X files for trade mark protection in USA but X files for trade mark protection in USA but

does not use the mark in USA. X's trade does not use the mark in USA. X's trade mark will be _______.mark will be _______.

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

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

THANK YOUTHANK YOU

© 2009 Brain League IP Services Pvt. Ltd Now BananaIP