Transcript The accession of the EC to the Madrid Protocol Consequences for Trademark Filing Strategies A tentative US business perspective Ingrid Desrois – Geneva.

The accession of the EC to the Madrid Protocol
Consequences for Trademark Filing Strategies
A tentative US business perspective
Ingrid Desrois – Geneva October 7, 2004
The accession of the EC to the Madrid Protocol
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Procter & Gamble – some data
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A US corporation founded in 1837
Present in at least 140 countries
Approximately 100,000 employees
Over 300 brands
Approximately 100,000 trademark registrations worldwide including
some 900 international registrations
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The accession of the EC to the Madrid Protocol
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… Major
product categories
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Personal & Beauty Care
ALLDAYS, ALWAYS, TAMPAX, OLAY, OLD SPICE, SKII, COVER GIRL, MAX
FACTOR, CLAIROL, PANTENE, HEAD & SHOULDERS, PERT, VS
SASSOON, HERBAL ESSENCES, ZEST, SAFEGUARD, NOXZEMA,
CAMAY, HUGO BOSS, JEAN PATOU, GIORGIO BEVERLY HILLS, LAURA
BIAGIOTTI, VALENTINO …
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House & Home Care
CASCADE, ARIEL, Mr CLEAN/Mr PROPER, DASH, FAIRY, VIZIR, ANTIKAL,
SWIFFER, FEBREZE, TIDE
The accession of the EC to the Madrid Protocol
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Health Care & Wellness
VICKS, VAPORUB, NYQUIL/MEDINAIT, CREST, BLEND-A-MED,
SPINBRUSH, ACTONEL, CACIT, DIDRONEL …
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Baby & Family Care
PAMPERS, KANDOO, BOUNTY, CHARMIN …
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Pet Nutrition & Care
IAMS, EUKANUBA
and not to forget PRINGLES, SUNNY D, FOLGERS …
The accession of the EC to the Madrid Protocol
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Filing Strategy
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Differentiate between new product launches and upgrades
- new products are generally intended for global launch
- upgrades will spread to those geographies where the original brand
is already on sale unless upgrade is vehicle for globalization of
existing brand
Overall the launch calendar for all initiatives depends on product
category
Filing strategy adapted to launch plan
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The accession of the EC to the Madrid Protocol
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Filing Strategy in the EU before 1/10/2004
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CTM preferred route but value of national filings not neglected
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Searches = screening in all countries, full availability searches in first
to launch countries or prior to launch (depending on individual cases)
The accession of the EC to the Madrid Protocol
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Filing Strategy in the EU after 1/10/2004
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No significant changes in light of high level of comfort with CTM direct
but explore Madrid Protocol with EC designation – opting back,
flexibility of adding/removing countriers from designation list, cost
savings (of course)
The accession of the EC to the Madrid Protocol
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Looking into the future
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The Protocol with EC designation should become more attractive to
rightholders from all countries including the US once
- the USPTO changes practice on identification of goods. The US
user requirement rules might also be worth reconsidering.
- neighbouring countries such as Canada and Mexico join the
Protocol
- plus of course the rest of the ‘white space’ on the world map
- member states reduce the 12/18 months to a more business world
realistic timeframe
- member states systematically issue notices of grant of protection
which are vital to enforcement
- countries which are currently only Agreement will join the Protocol
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The accession of the EC to the Madrid Protocol
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Conclusion
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Regardless of the size of the business and country of origin, I would
always consider the Protocol with EC designation to be a reliable,
simple to administer and good value for money system. Let’s hope
that our friends in the ‘white zone’ will soon be happy members of the
big Protocol family …