The%20accession%20of%20the%20EC%20to%20the%20Madrid%20Protocol%20Consequences%20for%20Trademark%20Filing%20Strategies%20A%20tentative%20US%20business%20perspective%20Ingrid%20Desrois%20

1
The accession of the EC to the Madrid
ProtocolConsequences for Trademark Filing
StrategiesA tentative US business
perspectiveIngrid Desrois Geneva October 7,
2004
2
The 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

3
The 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

4
The 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

5
The 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

6
The 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)

7
The 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)

8
The 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

9
The 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