Managing your Trade Mark portfolio with Madrid System in 8/10 ASEAN countries

Transcription

1 Managing your Trade Mark portfolio with Madrid System in 8/10 ASEAN countries Waiting for the Organiser The webinar will begin shortly

2 Managing your Trade Mark portfolio with Madrid System in 8/10 ASEAN countries South-east Asia IPR SME Helpdesk 28 February 2019

3 Welcome to the Webinar Moderator: Your picture here TRAN THI THANH TAM Project Officer South-east Asia IPR SME Helpdesk

4 Webinar Interaction Tools?!?!? Turn on full screen here Raise your hand here Send the IP expert a question here Webinar 24 hour technical support number: Contact Us section question@southeastasia-iprhelpdesk.eu

5 Agenda (Brussels time zone) 10:00 10:05: Introduction to the Helpdesk and its services Tran Thi Thanh Tam, Project Officer 10:05 10:20: Introduction on trade marks Marta Bettinazzi, IP Business Advisor 10:20 10:50: Managing your Trade mark portfolio with Madrid System in 8/10 ASEAN countries 10:50 10:55: Q&A 11:55 11:00: Closing Vanja Kovacevic, Southeast Asia Director in S&O/ HD External Expert

6 Snapshot: Helpdesk Free Services Enquiry Helpline Website & Blog Newsletter, E-Bulletin Training Workshops & Live Webinars E-learning & Business Tools Training Materials

7 Introduction on Trade Marks MARTA BETTINAZZI IP Business Advisor, South-East Asia IPR SME Helpdesk 28 February 2019

8 Speaker s bio Name: Ms. Marta Bettinazzi Title: IP Business Advisor, South-east Asia IPR SME Helpdesk Location: Ho Chi Minh City, Vietnam marta.bettinazzi@southeastasia-iprhelpdesk.eu Your picture here Ms. Marta Bettinazzi is the new IP Advisor of the South-east Asia IPR SME Helpdesk project located in Ho Chi Minh City. Marta is in charge of delivering IPR trainings across South-east Asia, advising European SMEs on enquiries related to South-east Asia. Marta holds a Master Degree in Law from the University of Pavia (Italy), and a Ph.D in Roman Law and European legal culture from the Universities of Pavia and Saarbrücken (Germany). She has also completed an LLM program in European and International Law at the Europa Institut in Saarbrücken (Germany), specializing in European Economic Law and IPR. After working for two years as post doc researcher at the University of Pavia, she started her practice as lawyer in a Law firm in Milan. question@southeastasia-iprhelpdesk.eu

9 What is a trade mark? A trade mark is a sign that identifies and distinguishes in the marketplace the products of one enterprise from those of other enterprises. The products that it identifies may be goods or services. question@southeastasia-iprhelpdesk.eu

10 Conditions The signs must be capable of distinguishing the product or service of an enterprise from that of another enterprise (distinctiveness) Not protectable are signs that are not distinguishable (generic terms or descriptive terms) misleading signs functional features signs that need to be kept in the public domain signs that infringe against public order or signs containing state emblems.

11 Kind of signs that can be used as Trade Marks? Traditional words, names, letters, numerals, drawings, pictures, shapes, colors, labels any combination of these Un traditional single colours three dimensional signs (shapes of products or packaging) moving images, holograms, sounds, smells gestures, tactile marks (feeling or touch) fluid/mutating trade marks.

12 Examples of trade marks A trade mark composed of only words, letters, numbers A stylized version of a word trademark Purely figurative trademarks Trademarks that include both figurative elements and words question@southeastasia-iprhelpdesk.eu

13 Un traditional trade marks Single-color trade mark Three-dimensional trade mark (shape of product and packaging)

14 Registration The application form Submit a completed trade mark application: a graphic illustration of the trade mark and a description of the goods and services and/or class(es) for which trade mark registration is asked Formal examination The office examines the application to make sure that it complies with the administrative requirements or formalities Substantive examination In some countries, the trade mark office does only a partial substantive examination under which it verifies whether the proposed trade mark is liable to be rejected on absolute grounds Publication and opposition In many countries, the trade mark is published in a journal, with a set period of time for others to oppose its registration. Registration The trade mark is registered, and a registration certificate is issued that is generally valid for 10 years (plus renovations) question@southeastasia-iprhelpdesk.eu

15 The exclusive rights The owner of a registered trade mark is allow to prevent all others from marketing identical or similar products under an identical or confusingly similar trade mark. (a) affixing the trade mark to goods or their packaging; (b) stocking or selling goods bearing the trade mark or supplying services under the service mark; (c) importing or exporting goods under the trade mark (d) using the trade mark on business papers, websites and in advertising. question@southeastasia-iprhelpdesk.eu

16 Tips for a better trade mark The stronger a trade mark, the higher the likelihood of it receiving registration and the greater the protection provided by the courts Coined or fanciful trademarks are invented words or signs without any real meaning. Arbitrary trademarks are words or signs that have a meaning, but one that has no logical relation to the product they advertise Suggestive trademarks are trademarks that hint at the nature, quality or attributes of the product, but do not describe these attributes. Descriptive trademarks are not inherently distinctive and are protected only if they have acquired secondary meaning Generic signs are words or signs that name the species or object to which they apply. NO REGISTRATION Distinctive trademarks can lose their status and become generic by improper usage question@southeastasia-iprhelpdesk.eu

17 Well-known marks Well-known marks are trade marks that are considered by the authorities as well known by the consuming public in a particular territory Any type of trade mark can become well known over time. Well-known marks generally benefit from additional protection. Well-known marks may be protected even if they are not registered (or have not even been used) in a given territory. Well-known marks are protected against confusingly similar trade marks even for dissimilar products. question@southeastasia-iprhelpdesk.eu

18 International protection IP is territorial in nature Each country has its own legal framework Rights registered in one county are (in principle) protected only in that country Companies need to register Trade Marks in every country they want to do business This is why the Madrid system is so important

19 Final Tips Design a strong trade mark Maximize the protection (translation in local languages, register different spellings, protect also the font or color combination) Verify the availability of the new trade mark, and also the corresponding domain name and social media usernames in the countries of your interest Register before entering the market to minimize the risk question@southeastasia-iprhelpdesk.eu

20 Managing your Trade Mark portfolio with Madrid System in 8/10 ASEAN countries Vanja Kovacevic External Expert, South-East Asia IPR SME Helpdesk Southeast Asia Director, Schmitt and Orlov Asia 28 February 2019

21 Speaker s bio Name: Vanja Kovacevic Firm: Schmitt and Orlov Asia Location: Bangkok, Thailand vanja@schmitt-orlov.asia Your picture here Vanja is Southeast Asia Director in S&O, who established firm s SE Asia practices, which led her to develop strong understanding in regional ASEAN IP work, especially in Vietnam, Cambodia, Thailand and Laos. Vanja advises clients on all ASEAN IP issues from registration to enforcement. In her 12 years of experience working with different aspects of IPR on two continents, Vanja has been handling wide range of cases, from prosecuting to enforcing industrial rights and copyrights, transactional work such as IPR licensing and assignments of IPR, due diligences of IPR in M&A transactions, IT licensing, domain names, e-commerce and internet law, media and entertainment, as well as data privacy matters. She has been advising variety of enterprises ranging from volunteering in a startup incubator, to SMEs and multinationals. Vanja is also appointed trade mark and industrial design agent, as well as domain name panelist at ADR.eu. Before joining S&O and becoming recognized for her SEA work, Vanja established and was heading IP department in a large Croatian commercial law firm, when she has been first recommended for both, her IP and IT work, by Chamber and Partners, Legal 500 and World Trademark Review.

22 What is Madrid System? International centralized system of trade mark protection: Single application 119 member countries 3 languages Centralized payment World Intellectual Property Office (WIPO) WIPO Singapore Office Governed by: Madrid Agreement Concerning the International Registration of Marks (1891); Protocol Relating to the Madrid Agreement (1989, in operation since 1996)

23 Poll question 1: Which ASEAN countries have not joined the Madrid system? A. Laos and Cambodia B. Myanmar and Brunei C. Myanmar and Malaysia D. I don t know

24 Brunei (BN) Cambodia (KH) Indonesia (ID) ASEAN Members Laos (LA) Philippines (PH) Singapore (SG) Thailand (TH) Vietnam (VN)

25 Advantages and disadvantages of the System Advantages One stop shop one registration in multiple territories Choosing the application language Cost-effective (no foreign filing agents or translations) Subsequent expansion of territories Fixed deadline for registration or refusal (12 or 18 months) 10 years validity Centralized management (one (e-)renewal; one change) WIPO online tools for portfolio management

26 Advantages and disadvantages of the System Disadvantages Basic registration required Dependent of Basic registration for 5 years Central Attack Long registration period Deadlines for office actions differ between countries and can be short (e.g. CN 30 days, TH 60 days, VN 3 months) Jurisdictions missing: Malaysia, Myanmar (Canada, Brazil, etc.)

27 How to manage your TM portfolio with the System Who can file Entities/ persons: having a business in a member country domiciled in a member country, or nationals of a member country Where to file National IP Office of a member country (Country of Origin)

28 Madrid System Filing steps 1. National application in a Country of Origin with National IP Office (Basic Registration) 2. Paying fees (WIPO) and filing with National IP Office 8.Registration or notification on total or partial refusal 7. Substantial examination by IP offices in designated countries (12 or 18 months) 3. Formal examination by WIPO 6. WIPO forwards application to IP offices of designated countries 4. Publication in the WIPO Gazette of International Marks 5. Receiving the Certificate from WIPO

29 Case Study Filing international trade mark in 4 ASEAN jurisdictions Basic registration in Germany (DE) R Figurative trade mark, colour 2 classes Designating Cambodia, Laos, Thailand, Vietnam

30 Case Study Search

31 Case Study Case Study Search

32 Case Study Fees

33 Case Study

34 Case Study Completing MM2 form Application Paying Office of Origin s fees for handling application and forwarding to WIPO Paying fees to WIPO Submitting application (MM2+fees) to the IP Office of Origin Examination 12 or18 months or

35 Take Aways Search: Fees: Forms: E-Payment: WIPO Account: Madrid portfolio manager: ww3.wipo.int%3a443%2fmpm%2f

36 Poll question 2: In your own case, do you think which is better? A. Filing national TM in each country B. Filing international TM in multiple countries with Madrid system C. Both ways are as good as the other D. I need further investigation before deciding

37 Managing your Trade Mark portfolio with Madrid System in 8/10 ASEAN countries Comments? Questions?

38 Thank you for your attention! Stay connected! News Developments Projects Activities Training materials Channel: iprseasia South-East Asia IPR SME Helpdesk South-East Asia IPR SME Helpdesk question@southeastasia-iprhelpdesk.eu