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Trademarks / Trademark Law / International Protection

Filing and Prosecuting Trademark Applications

Most countries have their own trademark offices in which applications may be filed. Therefore, when contemplating trademark protection in various countries, it is most helpful to start with a list of countries where registered trademark protection is available. Deciding where to register a trademark involves numerous considerations. Countries where a trademark or service mark is currently in use should be the first to be considered for seeking registered protection. If the trademark owner is contemplating commencing use shortly or expanding use to other countries within a few years, then such countries should also be included. The third category of countries will be those where counterfeit activity is expected to emanate. The last group of countries should be those where third parties have a history of unauthorized registration of other's marks, such as many countries in Latin America and in the Southeast Asian and Pacific region. Cost considerations will be paramount in arriving at a final list.

Although filing applications in most countries entails similar procedures, notable differences exist. With few exceptions, it is possible to register a mark in foreign countries without actually using the mark. Therefore, it is generally not necessary to provide detailed information in foreign trademark applications regarding the existing use of the mark, although some jurisdictions do require that if a mark has been used in that country, that fact must be stated. There are also a handful of jurisdictions which require specific dates of use, such as the date the mark was first used anywhere, the date the mark was first used in international commerce, or the date the mark was first used in that particular jurisdiction. There are even some jurisdictions that will only register your mark if it is already registered in some other specified country. Canada and the U.S. require that the mark be in commercial use before registration will be granted, though the application may be filed claiming that use will be made in the future.

As in the United States, it is necessary to file applications in foreign countries in respect of certain goods or services, although most jurisdictions do not require that the specifications of goods be as detailed as in the United States. Each jurisdiction has its own requirements as to what type of specification of goods or services will be required and permitted.

Almost all jurisdictions, a notable exception being Canada, employ a classification system in which goods and services have been grouped into classes. Most countries follow the same classification system, namely the International Classification of Goods and Services, the Nice Classification system (“Nice Classification”), which, as of the date of this writing, consists of 35 classes of goods and classes of services. It is important to note that many countries still require that separate trademark applications be filed for separate classes of goods and services. For example, as a result, a single application for "beer" in Class 32 and "wine" in Class 33 in the United States, would require two separate applications in many other jurisdictions. Some jurisdictions have grafted their own subclassification system onto the Nice Classification, such as in Japan, in order to assist them in determining whether goods or services are confusingly similar to each other. In other jurisdictions, the transition from an older national classification system to the international classification system presents many problems in addressing issues of confusing similarity.

The WIPO Committee of Experts of the Nice Union revised the Nice Classification, in the 8th edition thereof, which came into force on January 1, 2000, adding three service classes (43, 44, 45) and restructuring Class 42, retaining certain services, but having others re-categorized as part of the existing and new classes.

Trademark applications filed on or after January 1, 2002 will be expected to comply with the new classification requirements, but it is in the discretion of each national trademark office as to the implementation of these changes.

Modified Class 42 and Additional Service Class Headings are as follows :

Class 42 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services;

Class 43 - Services for providing food and drink; temporary accommodation;

Class 44 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; and

Class 45 - Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.

Specific services have also been transferred from the previous Class 42 classification to existing service classes, including, for example, rental of vending services (now Class 35), offset printing (Class 40), photography (Class 41), etc.

Some jurisdictions do not provide registered protection for services per se, including currently India, although this is expected to change in the near future upon the anticipated enactment of The Trade Marks Act of 1999. Therefore, alternative strategies for protection must be considered. Of those jurisdictions that do provide protection for service marks, many do not protect "retail store services", which are considered by many jurisdictions as merely incidental to the selling of goods, and alternative protection must be considered.

In the United Kingdom, for example, in 1984 the law was changed to allow greater protection for marks used in respect of services, although the Registry continued to refuse to accept applications for retail services. Indeed, the U.K. courts at the time held that retail services were too indefinite and were merely ancillary to the business of trading goods in stores. The U.K. has, however, now amended the practice of refusing to accept applications for retail services, and will do so under certain conditions.

In an important ruling in the European Community, Giacommelli Sport S.p.A. ("Giacommelli Sport"),[3] the Second Board of Appeal held that retail services should be accepted for registration as Community Trademarks provided they are defined with some specificity. In light of Giacommeli Sport , the President of the Office on 12 March 2001 released a statement of policy concerning the registrability of retail services as Community Trademarks (Communication No 3/01 of the President of the Office of 12 March 2001).

It is now the Office's policy that retail services will be accepted for registration as Community trademarks and will be classified in Class 35. What is being accepted for registration is not the retailing of goods themselves, but the services rendered in connection with the retailing of goods.

The Office noted that there were two issues concerning whether to allow registration of retail services, namely, whether the term "retail services" is, by itself sufficient to describe the service, and to what extent registration of retail services would conflict with use and registration of a similar mark for goods.

With respect to the first issue, the Office noted that there is currently no consensus among Member States that provide protection for retail services concerning how retail services should be described. While some Member States accept the wording "retail services", other require a listing of the goods used in connection with the retail services. Other Member States require adherence to the explanatory note to Class 35 in the 7th edition of the Nice Classification system which specifies "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase these goods".

The Office stated that it does not adopt the wording contained in the explanatory note to class 35 of the Nice Classification, nor does it accept the view laid out in Giacommelli Sport that a reference to the field of activity is necessary, as according to Article 28 CTMR and Rule 2, and consistent with the approach of WIPO, the term "retail services" is a clear and sufficient specification.

While limiting the Class 35 specification to the specific type of retail services provided is not a necessity, the Office does favor such limitation. The Office recommends that the limitations be expressed "in relation to the field of activity, by for example using phrases such as 'retail services in respect of food and beverages'" or "in relation to the specific nature of the service, by for example using phrases such as 'retail services of a department store', 'retail services of a supermarket' etc." Terms that are not limited to services in respect of the marketing of goods, but rather include the marketing of services, such as "e-commerce", will not be accepted by the Office.

With respect to potential conflict between retail services and particular goods, the Office stated that there is unlikely to be confusion save in those circumstances in which the marks are nearly identical and "well-established" in the market.

Community Trademark applications for retail services pending before the Office will now be accepted, even if a provisional refusal has already been issued. Where a decision concerning an application for retail services has been made and no appeal was filed within the appeal term, the decision is final and cannot be reversed.

Foreign jurisdictions may also require additional documents and materials in order to support a trademark application. For example, most countries require that a Power of Attorney or an Authorization of Agent be filed to support an application, which must be specially prepared. Additional documents may be required, such as certified copies of Certificates of Registration in other countries, Certificates from a local Chamber of Commerce attesting to the business activities of the applicant, specimens, drawings or prints of the mark, Certificates of Adoption or Statements of Ownership. Some countries may even require that documentation be legalized by a foreign consulate or authenticated by the State Department.

There is some degree of international harmonization with respect to trademark office procedures and requirements on the horizon by virtue of the Trademark Law Treaty. This treaty, a WIPO creation, is intended to eliminate certain government requirements, such as legalization, that unduly burden trademark owners. The treaty also requires that ratifying states allow the registration of service marks and multi-class applications as well as mandating that they standardize documents for trademark matters. Additionally, registrations may be assigned without goodwill and standardized chain of title recording procedures having been established. This treaty is more in the nature of a procedural treaty to facilitate obtaining registration and to harmonize procedures among nations than as a substantive treaty that addresses the legal existence and scope of trademark rights.

In many jurisdictions, it is possible to rely on the Paris Convention to establish filing priority, which is especially helpful in countries where the first party to register a mark is the party to own the mark, regardless of prior use of the mark. According to the Paris Convention, a party that files their first trademark application in a member state of the Convention, such as the United States, may within six months of that filing date file applications in other member countries claiming the priority of the first application. Therefore, a party who files its first application in the United States on January 1, 2001 may, until June 30, 2001, file applications in most foreign jurisdictions and claim as their date of filing January 1, 2001, even though the foreign applications were filed later. Although this procedure entails additional costs, it may be worthwhile in certain situations.

It is also possible to utilize multinational filing systems in certain regions in order to obtain trademark protection. For example, Belgium, the Netherlands and Luxembourg have a single trademark registry, commonly referred to as the Benelux Trademark Register. The European Union has adopted its own trademark system, known as the Community Trademark, which will be discussed below. The African Organization for Intellectual Property (OAPI), a group of francophone African nations, have replaced their national trademark offices with a common trademark office which offers a single trademark registration valid in all of the member states. In contrast, the African Regional Industrial Property Organization (ARIPO), a group of anglophone African nations, have retained their national trademark registers while recently establishing a common trademark office that accepts and examines a single application, which is then forwarded to the individual member states for possible acceptance or rejection. This, of course, is reminiscent of the Madrid system, which will also be addressed in detail herein.

Once applications are filed in foreign countries, they may follow quite different paths. Many countries, particularly common law jurisdictions, provide for an extensive examination of trademark applications, although many countries that examine applications for inherent registrability, i.e., descriptiveness, distinctiveness, etc., have varying standards of registrability. Therefore, for example, United States trademark owners are often surprised that their mark may be considered registrable in the United States but will not be considered registrable in many countries outside of the United States. Objections to the inherent registrability of marks are similar to those encountered in the United States, such as that the mark is descriptive or misdescriptive of the goods, the mark is non-distinctive or generic, the mark consists merely of a surname which is not per se registrable in some countries, or a geographic name, the mark is deceptive or laudatory. Anticipating these objections, of course, must be an integral part of the decision to adopt a trademark.

Some countries do not provide for any examination, whereas others will examine only for inherent registrability but will not check to determine whether any third parties may already have conflicting rights registered. Significantly, the United Kingdom is currently considering giving up examination on "relative" grounds, i.e. prior U.K. registered rights, in favor of a pure opposition system similar to the Community Trademark system whereby it is the responsibility of prior trademark owners to oppose applications for identical or confusingly similar marks. In those jurisdictions that will cite prior marks as an obstacle to registration of an application, standards of confusing similarity may vary widely.

The tools used to overcome objections by the trademark office may not work, or may work differently, in foreign jurisdictions when faced with the same problems. Although a trademark office may withdraw an objection based on descriptiveness if shown that the mark has acquired a secondary meaning through use in the marketplace, many jurisdictions will not accept such arguments. Those that do accept such arguments have varying requirements for the quantum of use that must be shown and the form in which such use must be presented. In certain jurisdictions, such as Thailand, it is even necessary to anticipate a registrability objection and file evidence to overcome the anticipated objection when the initial application is filed, as it is not possible to add any information or documentation to the record once the application is filed.

The USPTO may also accept a disclaimer of exclusive rights in an objectionable portion of a composite trademark in order to overcome an objection, although in trademark offices outside of the United States disclaimers may not be accepted. For example, in China, disclaimers are virtually unknown and the Trademark Office will simply require that the objectionable elements of a mark be deleted from the mark.

When confronting an objection based on a similar prior mark in foreign jurisdictions, again the practice of overcoming such objections varies widely. Some jurisdictions will never allow coexistence once a prior mark is cited. Others may allow coexistence only with the consent of the owner of the prior mark, but may additionally request extensive evidence concerning how the marks have already coexisted in the jurisdiction concerned and/or in other jurisdictions, and why there should be no confusion.

As in the USPTO, applications in other jurisdictions may also be published in an official government publication in order to provide third parties the opportunity to object or to "oppose" the application. This practice also varies widely since some countries publish applications even before they are examined for registrability by the trademark office, whereas other countries, as for example Germany, grant the application provisional registration status before publishing for opposition. Oppositions in some jurisdictions may result in an award of attorneys’ fees to the prevailing party, whereas oppositions in other jurisdictions may not even entail an interchange between the parties, but only documents filed by the opponent and responses made by the applicant. Many jurisdictions do not provide for an administrative opposition procedure, rather, they simply register the trademark, publish details of the registration and allow third parties to attack the registration in court proceedings.

The length of time required from the filing of an application to the issuance of a Certificate of Registration in foreign countries also varies widely. Some jurisdictions take only a few weeks or months to issue a Certificate of Registration whereas applications in other jurisdictions may linger for up to ten years, or even longer, before a registration issues.

Once the Certificate of Registration is issued, the Certificate may be valid for as few as five years and for as many as twenty years, depending upon the jurisdiction, and will be subject to renewal payments, and in some countries periodic taxes and affidavits of use. It is essential that trademark rights be entered into a computer docketing system, preferably a system designed expressly for trademark record-keeping, which is managed by a specialist law firm that can notify clients when changes in laws or requirements occur and when action to maintain trademark registrations or applications must be taken.

Although trademark registrations expire after a certain period of years, they may generally be renewed indefinitely, as long as the requirements for maintenance are met. In some countries, this may be as simple as filing a fee with the Trademark Office, whereas in other countries renewal may require the filing of evidence that the registered mark is still in use in the form it is registered and with respect to the registered goods and services. Periodic taxes and maintenance affidavits during the life of a trademark registration may also be required. Finally, in view of changing economic and political situations, it may become necessary to revalidate certain rights in some countries, such as the procedures established in the republics of the former Soviet Union and Yugoslavia, in Nigeria, etc., or to confirm existing rights, such as currently in South Africa and its former homelands.

[3] See Decision of Second Board of Appeal of 17 December 1999 in Case R 46/1998-2.

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© Copyright 2002 Ian J. Kaufman - Posted July 2002
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