Filing strategy

Question 1

As a starting point, where should we consider filing a trade mark?

Answer 1

1) Where it is visible to a consumer (retail or franchise outlets)

2) Sourcing and manufacturing countries (e.g., to stop counterfeits)

3) Transit points (e.g., to stop counterfeits)

4) IP abuse hotspots (where common IP issues around)

Question 2

How do you decide what type of mark to file, especially if there are figurative elements in the mark?

Answer 2

1) Budget - can the client afford more than one mark? Do they have a logo and word mark, or just one or the other?

2) Colour or black and white? Depends what aspects of the mark are important.

3) Should they file a word or logo or both? Think about genuine use problems going forwards. If they are likely to keep the name but change the logo or branding, it may be preferable to prioritise the word mark.

Question 3

What non-traditional mark considerations should be considered?

Answer 3

Primarily packaging or 3-D marks, depending on if they have a unique way of packaging the product or there are shapes involved.

Can also consider, smells, sound, holograms etc if they are vital for the business, but be wary of absolute ground objections.

Question 4

What less important filing strategy points should we consider?

Answer 4

• Registering designs
• Registering copyright, for example in China or other hotspots where IP squatters and counterfeits are common.
• License recordals - in some countries, the license must be recorded for the person using its use to count for the purposes of genuine use.
• Custom recordals e.g., with the UK or EU, to spot counterfeit goods.
• Domain names

Question 5

What timeline considerations are there for when you should register a mark?

Answer 5

1) Budget - can we space it out?

2) Non-use and use based jurisdictions. How long is the non-use period e.g., in China it is three years. Also, do we need use to get a more enforceable registration e.g., in the US? Discuss with local attorneys.

3) Paris convention deadline - priority period

4) Evergreening considerations - are we going to be invalidated for bad faith?

5) How long will it take to get a registration? Canada currently numerous years. Faster in the UK. Discuss how long it will be until they launch.

Question 6

Five benefits of a Madrid registration?

Answer 6

1) Centralised so only requires one application.
2) Generally cheaper when designating more than a few countries.
3) Objections apply country to country, rather than in the EU where the whole thing can be refused
4) Fewer formalities e.g., PoA
5) Provides a bundle of rights which makes it easier to assign

Question 7

Five cons of a Madrid registration?

Answer 7

1) Centralised attack wipes out all designations and is expensive to convert to nationals
2) Some countries, especially in Africa, are included in Madrid protocol but is not fully implemented
3) Home registration requirements – watch out for “real and effective industrial or commercial
establishment
4) Sub-classification system in some countries can mean gaps in protection (e.g. China).
5) Can make licence recordal more difficult, e.g. for China

Question 8

Which important countries are not part of the Madrid protocol?

Answer 8

South Africa: One of the most significant economies not part of the system.
Hong Kong SAR: A major financial hub not covered by the designation of China.
Nigeria: A major African economy.
Taiwan: Registered independently of China.
Saudi Arabia: A significant missing member of the Gulf Cooperation Council (GCC).
Kuwait: Another significant GCC country not in the system.
Argentina: A major South American market not in the system.
Macau SAR: Separate jurisdiction from China.

Question 9

What considerations should you have when filing a Madrid protocol?

Answer 9

• Speed of national
• Base application - e.g., in the EU there may be more grounds for objection/opposition
• Breadth of specification - starting in the UK and narrowing in the US/Canada likely to be preferable, although note bad faith post-SkyKick
• Non-use issues
• Ownership - particular issues in certain countries

Question 10

Should you file single or multi-class when filing?

Answer 10

• Depends on the country as some countries only allow single class
• Can the registration be divided
• Delaying application can be beneficial?

Question 11

What is a defensive registration?

Answer 11

• A trade mark registration (under the old act in the UK) for well-known trade marks to register in other classes without being attacked e.g., for non-use. Not really recognised anymore.

Question 12

Which important territories are not covered by an EUTM?

Answer 12

• UK
• Ukraine
• Switzerland
• Liechtenstein
• Norway
• Iceland
• Balkan states (Albania, Bosnia and Herzegovina, Montenegro, North Macedonia, Serbia, Kosovo)
• Microstates (Andorra, Monaco, San Marino, Vatican City)

Question 13

Advantages of filing an EUTM?

Answer 13

Cover 27 countries in one application – v cost effective.
* Can claim seniority from earlier national registrations to reduce renewal costs.
* Can maintain registration with use in only part of the EU (so avoiding non-use attacks in
other part of EU).
* No restrictions on applicant.
* Only examined on absolute grounds.
* No opposition on bad faith.
* EU wide injunctions available and EU Customs measures

Question 14

Disadvantages of filing an EUTM?

Answer 14

An objection in any one country can mean whole application fails (though can convert).
* Expensive as a base for a Madrid registration and more difficult now for UK companies
* Slower than UK to registration.
* If a non-distinctive or descriptive mark then demonstrating acquired distinctiveness is more
challenging as need to show use in all countries where the objection is valid.
* The EU Office can notify earlier EUTM owners as part of its searc

Question 15

Advantages of filing national registrations?

Answer 15

Standalone trade marks unaffected by refusals or issues in other jurisdictions.
* Can be very quick to register.
* Rarely any ownership requirements.
* Specification can be easily tailored.
* Local language registration certificate.
* All options available under the national registration system.
* Simple…

Question 16

Disadvantages of filing national registrations?

Answer 16

Expensive if covering more than a few countries.
* Use requirement can not be avoided.
* Administratively more difficult e.g., multiple renewals and deadlines
* Sometimes fees are chargeable per item in specification