Presentation i3 pm 21 09 17 chantal koller

Best Practices in
IP Management
Trademarks
I3PM - Geneva, September 21, 2017

SPEAKER’S PROFILE
Chantal Koller
• Swiss national
• Law Degree University of Geneva
• 20 years practice in IP
• 15 years with IP firms – 5 years in-house (sports / spirits)
• 10 years with Novagraaf
• Managing Director – Trademarks Switzerland
• Responsible for Business Development in Japan (Trademarks)
• International Judge for the FIG (gymnastics)
c.koller@novagraaf.com – +41 22 979 0930
Copyright © Chantal Koller, Novagraaf 2017

TODAY’S PROGRAM
Strategic
framework
Legal basic
framework
2
Management
methodology
3
Traps & Tips
4
1

STRATEGIC FRAMEWORK
Basic requirements for developing a company excellence
trademark management program:
Business alignment:
• Goals
• Priorities
• Budgets
• Endorsement
Product alignment:
• Branding/Marketing & Comm.
• Priority level
• Geographic
• Evolution

STRATEGIC FRAMEWORK
Management model choices:
Outsourced In-houseHybrid
Key success factors:
• Centralization of data
• Determine authority levels
• Service level agreement
Goal: find the best mix of legal services and formalities that enables your company
not to lose oversight of the portfolio

STRATEGIC FRAMEWORK
Use all soft IP rights at your disposal:
What cannot be protected by trademarks may be protectable through other IP rights.
Use all of them to create a network of legal solutions.
Domain NamesIndustrial Designs Copyright

TODAY’S PROGRAM
Strategic
framework
Legal basic
framework
Management
methodology
3
Traps & Tips
41
2

Some principles specific to trademark protection:
LEGAL BASIC FRAMEWORK
Use confers rights only in a few
(Common Law) countries
If you don’t register it,
you don’t own it!
Use is required to maintain
registration
If you don’t use it properly,
you lose it!
First come-First served
Home country basis is essential
for international strategy
Ensure priority date
in the proper country!
Protection is unlimited in time
& not subject to secrecy
Phase out the filing campaign!

Definition of trademarks:
A trademark is a sign capable of distinguishing the goods or services
of one enterprise from those of other enterprises. Trademarks are protected
by intellectual property rights.
(Source: http://www.wipo.int/trademarks/en/index.html)
1. Sign: traditional and non-traditional types (BUT not concepts)
2. Capable of distinguishing: absolute requirement (*)
3. Goods/services: restricted protection to applicant’s field
of activity
4. Enterprise: the IP right supports business activities

Requirements for achieving trademark registration :
Absolute grounds for refusal:
• Descriptiveness
• Indications of origin
• Language issues
• Legal / public order constraints
• NGO symbols/acronyms
Relative grounds for refusal:
• Earlier third party rights
• Opposition vs. Refusals
• Letters of Consent not
available everywhere
• Searching
…capable of distinguishing… …from those of other enterprises…

A trademark supports business activities; as a consequence, use
is required to maintain a registration valid and/or enforceable:
• Only jurisdictions still requiring a Declaration of Use are US and
MZ – invalidity as a consequence of not submitting it in time
• Other countries: use is necessary to back-up any offensive
action (opposition or legal action) – risks are negative outcome
of offensive action and potential counter attack on validity
• Jurisdictions where administrative proceedings exist for
cancellation based on lack of use are growing
(CH, EU members to come)

Unitary effect of the EUTM
• One territory – one right: divisions are possible only if the EUTM is
dead.
HOWEVER
• 28 national registries capable of containing valid anterior rights

Dependency rule of International Registrations (Madrid System)
• All International Registrations (IRs) need a national basic
application/registration: usually in home country of the
applicant
• The IR is dependent on a valid basic registration for a period
of 5 years from filing

TODAY’S PROGRAM
Strategic
framework
Legal basic
framework
2 Management
methodology
Traps & Tips
41
3

MANAGEMENT METHODOLOGY
Protection process
Strategy
Registration
Management
Exploitation
Business strategy and brand
guidelines drive choices on trade
names, branding options, trademark
architecture, geographical scope,
filing strategy, risks and budget.
File trademarks, manage
refusals, handle oppositions,
follow-up to certification.
Evaluate commercial options
such as licensing,
franchising, sale of IP, spin-
offs, joint ventures.
Manage asset administration
including all changes in ownership
and renewals, monitor for potential
infringements and enforce IP rights.

MANAGEMENT METHODOLOGY

TODAY’S PROGRAM
Strategic framework
Legal basic
framework
2
Management
methodology
3
Traps & Tips1
3

TRAPS & TIPS
Choosing your basic country carefully
Useful tips for global companies:
• Madrid Protocol countries can generate more expensive filing
fees; using a Madrid Agreement basic country approach can help
reducing costs.
• Filing your basic application in a more “discreet” territory can
help in keeping a filing project/campaign confidential.
• Choosing a basic country where examination on absolute/relative
grounds is more/less strict can be different depending on the
distinctive character of the trademark.

TRAPS & TIPS
International Registrations
TRAP
• Unanticipated costs linked to refusals.
TIPS
• Plan approx. 50% of filing budget for addressing refusals in Y2-3
• US designation: will ALWAYS trigger a refusal (90% on G/S)
• Asian countries: list of G/S usually not adapted to European
standards (and other end of spectrum compared to the US)
– usually triggers refusals

TRAPS & TIPS
USA
TRAP
• Use in commerce.
TIPS
• Product alignment before filing.
• Determine basis (foreign registration, intent of use,
used in commerce).
• Specify list of G/S precisely.
• Collect in-use evidence.
• Budget in consequence of procedure (afterburners).

TRAPS & TIPS
Transliterations (China, Japan, Korea, Cyrillic characters…)
TRAPS
• Insufficient legal coverage for local market.
• Pirates registering local nicknames for the brand.
TIPS
• Evaluate business needs and practices for specific product.
• Understand how customers perceive your mark (nicknames).
• Work closely with M&C to determine needs and effective use.
• Work with local distributors/representatives on transliteration(s).
• Register several variations for defensive purposes.

TRAPS & TIPS
Chinese intermediaries
TRAPS
• Misappropriation of designs.
• Invasion of counterfeit products.
TIPS
• Identify the main technical elements and protect respective
IP (patents).
• Register design before starting mass production.
• Use copyright mechanisms.
• Include IP provisions in contracts with manufacturers.
• Mark genuine goods with IP rights registration numbers.
• Register IP rights with Chinese customs.

TRAPS & TIPS
European Union Trademark Registrations (EUTM)
TRAPS
• Doubling/tripling rights with national/international coverage.
• Renewal budget not adapted to needs.
TIPS
• Work on seniorities.
• Keep double rights where use of your mark is doubtful.

TRAPS & TIPS
Recommendations deriving from the Convergence Program (CP):
• Black & White marks are not appropriate to protect color elements which condition
the overall impression (CP4).
• Lists of G/S should be sufficiently precise to encompass goods/services of interest;
no full coverage from class headings (CP1-2).
• Non-distinctive wordmarks should be combined with graphic elements that are
sufficient to distract the attention of the consumer from the descriptive meaning
(CP3).
• Weakly distinctive prior rights can still represent a threat to new registrations when
coinciding on non-distinctive elements (CP5).

TRAPS & TIPS
Final steps of the 2015 Reform: Introduction of the certification mark
• Only to distinguish a certain quality level.
• Meant for organizations/institutions that will certify that third parties, users of the mark,
are reaching certain standards guaranteed by the mark.
• Applicant cannot use the mark himself.
• Requirement of filing Certification Regulations and Infringement Measures together with
the application.

TRAPS & TIPS
Final steps of the 2015 Reform: Absence of graphical representation
• Trademarks no longer need to be submitted with a graphical representation.
• Other supports to be determined at ulterior stage.
• Opens the door to all non-traditional trademarks.
• Support for publication? Open question.

TRAPS & TIPS
Brexit
TRAPS
• Unnecessary double coverage.
• Lack of specific UK coverage.
• Lack of use.
TIPS
• Keep your ears open.
• Identify products which are destined to UK market.
• Prioritize brands that are used only in the UK.
• Address needs for double coverage with your IP specialist.

Thank you for
your attention!
www.novagraaf.com
Chantal Koller
Novagraaf Switzerland SA
3, ch. de l’Echo
1213 Geneva
c.koller@novagraaf.com - +41 22 979 0030

Presentation i3 pm 21 09 17 chantal koller

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