EUROPE:
ONE CONTINENT
THREESYSTEMS
© 2012 Dr. Peter E Wild, Wild Schnyder AG Switzerland
TheCommunity Trade Mark
TheCommunity Trade Mark
& Candidate CTM Countries
TheMadrid System
Switzerland, Norway
TheCommunity Trade Mark
& Candidate CTM Countries
SEARCHES
• All registers which are available in a
specific territory
• Example Switzerland: National and
WIPO
• Example Germany: National and WIPO
and CTM
• Searching only WIPO or only CTM is
useless
FILING A TRADEMARK
TM Filing ALL NATIONAL 1/2
• ADVANTAGE
–
–
–
–
Tailored to need
Fast(er) examination
Obstacles jeopardize only one country
Non EU countries available (CH, NO, LI...)
–
–
–
–
–
Handling (PoA, Agent in each Country...)
Different legal regimes
Independent from basis
List of goods and services to be adjusted
Cost
• DISADVANTAGE
TM Filing ALL NATIONAL 2/2
• COSTS
– Official fees: 27x
– Agent fees: 27x
– Local Attorney: Much more complex handling,
additional fees
→→VERY EXPENSIVE SOLUTION IF ALL OR MANY
EU COUNTRIES ARE COVERED
ALL NATIONAL
TM Filing WIPO 1/2
• ADVANTAGE
–
–
–
–
Tailored to need
Handling (for filing)
Obstacles jeopardize only one country
Non EU countries available (CH, NO, LI...)
–
–
–
–
–
Different legal regimes
Slow examination
Handling (for examination/refusals)
Depends on basis for five years
List of goods and services to be adjusted
• DISADVANTAGE
TM Filing WIPO 2/2
• COSTS
– Official fees: 27x limited fee
– Agent fees: 1x
– Local Attorney: None
– ---- INEXPENSIVE SOLUTION IF ALL OR
MANY EU COUNTRIES ARE COVERED
WIPO
TM Filing CTM
• ADVANTAGE
–
–
–
–
One Agent, One application
ONE, fast examination
Handling
Costs
• DISADVANTAGE
– Obstacles jeopardize the entire CTM in all countries:
Example
– Non EU countries NOT available (CH, NO, LI...)
– Independent from basis
CTM
Combination of Systems
• National and WIPO
• CTM as WIPO extension
• CTM and WIPO
USING AND DEFENDING A TM
VALIDATING USE
• CTM
– Use in one country validates mark for the
entire EU (all 27 countries)
– Under review: pending case „Leno
Merken“ (C-149/11)
• National/WIPO
– Use in one country validates mark only in
that country
TM Enforcement ALL NATIONAL
• ADVANTAGE
– Picking forum and countries where law and
facts are strong
• DISADVANTAGE
– One country at a time; expensive for many
countries; patchwork
TM ENFORCEMENT WIPO
• Like National TM
TM ENFORCEMENT CTM
• In national courts for that territory
OR
• EU wide injunctions!
What is the best way to
proceed?
• IT DEPENDS on
– Timing
– Know Obstacles
– Characteristics of the mark
– Cost issues
– Planned use/enforcement
Thank you!
© 2012 Dr. Peter E Wild, Wild Schnyder AG Switzerland