Title: The%20accession%20of%20the%20EC%20to%20the%20Madrid%20Protocol%20Consequences%20for%20Trademark%20Filing%20Strategies%20A%20tentative%20US%20business%20perspective%20Ingrid%20Desrois%20
1The accession of the EC to the Madrid
ProtocolConsequences for Trademark Filing
StrategiesA tentative US business
perspectiveIngrid Desrois Geneva October 7,
2004
2The accession of the EC to the Madrid Protocol
- Procter Gamble some data
- 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
3The accession of the EC to the Madrid Protocol
- Major product categories
- 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 - House Home Care
- CASCADE, ARIEL, Mr CLEAN/Mr PROPER, DASH, FAIRY,
VIZIR, ANTIKAL, SWIFFER, FEBREZE, TIDE
4The accession of the EC to the Madrid Protocol
- Health Care Wellness
- VICKS, VAPORUB, NYQUIL/MEDINAIT, CREST,
BLEND-A-MED, SPINBRUSH, ACTONEL, CACIT, DIDRONEL
- Baby Family Care
- PAMPERS, KANDOO, BOUNTY, CHARMIN
- Pet Nutrition Care
- IAMS, EUKANUBA
- and not to forget PRINGLES, SUNNY D, FOLGERS
5The accession of the EC to the Madrid Protocol
- Filing Strategy
- 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
6The accession of the EC to the Madrid Protocol
- Filing Strategy in the EU before 1/10/2004
- CTM preferred route but value of national filings
not neglected - Searches screening in all countries, full
availability searches in first to launch
countries or prior to launch (depending on
individual cases)
7The accession of the EC to the Madrid Protocol
- Filing Strategy in the EU after 1/10/2004
- 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)
8The accession of the EC to the Madrid Protocol
- Looking into the future
- 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
9The accession of the EC to the Madrid Protocol
- Conclusion
- 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. Lets hope that our friends in the
white zone will soon be happy members of the
big Protocol family