• SNIPPETS

    Oh Nuts!

    Gabrielle Chanel, affectionately known as Coco, began selling hats in Paris in 1910. She quickly became a fixture in French fashion society. Her reputation was guaranteed by the launch, eleven years later, of her Chanel No. 5 perfume range. Since that time, the Chanel company has become one of the largest and most successful fashion houses in the world. It sells perfumery, cosmetics, jewellery, watches, handbags, clothing and accessories on a worldwide basis, including £13 million worth of annual sales in the UK. One of Chanel’s leading fragrance and toiletry brands in the UK is Coco. It accounts for about one third of the UK company’s annual sales.

    In 2001, Samantha Roddick, the daughter of the Body Shop founder, Anita Roddick, opened a store in London which she describes as “a fashionable erotic emporium selling a wide range of erotica-related products”. Ms Roddick’s aim was “to sell items of high quality in an attractive environment that is not smutty or alienating”. Her business was designed to appeal to women and was not one of the “more down-market and sleazy sex shops which are mainly directed at men”.

    Ms Roddick decided to name her extremely tasteful shop after a species of palm tree which grows only in the Seychelles. The fruit of the tree is a large nut with two lobes, which is said to resemble certain, intimate parts of the female anatomy. According to local folklore, the female trees and the male trees copulate, no doubt tastefully, only at night and anyone witnessing this act will die. The name of the tree is Coco de Mer and Ms Roddick chose the name because it is a “potent and particularly feminine symbol of fertility”.

    Ms Roddick sought to register her trade mark in the UK for a wide range of goods in Classes 3, 14, 18 and 25. Chanel opposed the application based on their earlier trade mark rights in Coco for identical goods. In the UK Registry, the Hearing Officer decided that the two marks were confusingly similar and he therefore rejected Ms Roddick’s application. He commented that few people in the UK would understand the true meaning of the phrase Coco de Mer. Coco would therefore be seen as the distinctive and key element in the mark applied for. It (Coco) would not lose its impact as a result of being subsumed within a phrase (Coco de Mer). Further, the device element in Ms Roddick’s mark would be seen “merely as an abstract shape of no particular significance”.

    Ms Roddick appealed to the High Court (Mr Justice Patten) who confirmed the Hearing Officer’s decision. He accepted the Hearing Officer’s overall analysis of the two marks and his conclusion on similarity. In the judge’s view, the average consumer “may well assume that there is an economic link between the two products and that goods bearing the Coco de Mer mark are simply a variant of those marked Coco”.

    SPECIAL SUPPLEMENT

    As from 1st October 2004 the link between the Madrid Protocol and the European Union will enter into force. From that date it will be possible for trade mark owners to:

    • designate the entire EU as a single territorial designation in an application for an international trade mark registration, and
    • base an application for an international registration filed under the Madrid Protocol on a Community Trade Mark (CTM).

    This article looks at how designations of the EU as part of an international trade mark registration under the Madrid Protocol will be examined and processed by OHIM and also at the special provisions made by OHIM for filing international registrations under the Protocol based on a CTM. The general process of obtaining trade mark registrations under the Madrid Protocol system is not considered in detail here. Jenkins’ publication “The Madrid Protocol – A Practical Guide” provides a comprehensive guide to obtaining and dealing with international registrations under the Protocol. We will be pleased to provide copies on request.

     

    Background

    The Madrid Protocol became operational on 1 April 1996 and has, since that time, operated alongside the very much older Madrid Agreement for the international registration of trade marks. Both provide a system for obtaining international registrations for trade marks. The Protocol was created with the idea of adapting certain elements of the older Madrid Agreement to make the international registration system more attractive to a wider range of countries. One of those adaptations was to allow for an intergovernmental organisation with a regional office for registering trade marks to become a member of the Protocol. This has made it possible for the EU to join the Protocol.

    Very briefly, the general principle behind the international registration of trade marks under the Madrid Protocol is that it allows for centralised issue by the World Intellectual Property Organisation (WIPO) of an international trade mark registration extending to any number of countries who are a party to the Protocol, the international registration being based on a corresponding national application or registration in the holder’s home country. Protection in the countries designated is subject to the right of those countries to refuse protection of the trade mark in their countries within a specified time frame. As new countries join the Protocol, and/or if the holder wishes to increase his geographical protection, the international registration can be extended to cover further countries by filing a “subsequent designation”. Filing, renewal and recordal of transactions relating to the International Registration are all effected centrally through WIPO thus resulting in cost savings as well as administrative convenience.

    At the time of writing, there are sixty-five member countries for which the Madrid Protocol is operational.

    1. DESIGNATING THE EU AS PART OF AN INTERNATIONAL REGISTRATION

    An EU designation of an International Registration will have, from the date of its registration, the same effect as a direct CTM application. After examination by OHIM and allowing for third party objections, provided no notification of refusal is issued, or any such refusal is overcome, the EU designation shall have, from that same date of registration, the same effect as a direct CTM registration.

    EU designations of international registrations filed under the Protocol will be examined by OHIM and will be subject to the same procedures as direct CTM applications, that is examination on absolute grounds of registrability, the conduct of searches by those EU national Offices that conduct searches and possible opposition and/or observations by third parties. However, the format and timeframes of these procedures are somewhat different from those for direct CTM applications.

     

    Applying for an International Registration under the Madrid Protocol

    Any Protocol application for an international trade mark registration designating the EU will be filed in the normal way through the trade mark office in the applicant’s country of origin. This office of origin transmits the application to WIPO who, following a formalities examination, will register the mark, publish it in the WIPO Gazette and inform all member states designated of the registration. In this way OHIM will be informed that an international registration designating the EU has been filed and details will be provided. OHIM, in turn, will notify details of the international registration to all EU member states that produce search reports for direct CTM applications as those member states will also produce search reports for EU designations of international registrations.

    As with direct CTM applications, the EU designation in an international registration must indicate a second language.

    The EU designation of an international registration may contain claims to seniority from earlier marks registered in one or more EU member states, as may a direct CTM application.

     

    Publication by OHIM

    Following publication by and receipt of details of the international registration from WIPO, OHIM will itself publish the following details of the registration:

    • Date of registration
    • Language of filing the International Registration
    • Second language indicated by the applicant
    • International Registration number
    • Date of publication in the WIPO Gazette
    • Reproduction of the mark
    • Numbers of the classes of goods/services
    • in which registration is sought.

    Important features of this publication by OHIM are:

    • firstly, that it will not include a list of the goods/services claimed, and
    • secondly, that this publication sets in motion the timeframe which will determine the deadline by which third parties may oppose the registration (see below).

    This publication is equivalent to publication for opposition purposes of a direct CTM application.

    If the EU designation is not refused, or if any provisional notice of refusal has been overcome, then OHIM will also publish this fact confirming protection of the EU designation of the international registration. This publication is the equivalent to publication of a direct CTM registration.

     

    Examination

    OHIM has elected to have 18 months in which to issue to WIPO any notice of provisional refusal of the EU designation of the international registration. It may notify WIPO of a refusal based on an opposition after the 18 month period provided that it has informed WIPO before expiry of the 18 month deadline of the possibility of oppositions being filed.

    An examination will be conducted for absolute grounds of registrability of the mark and in relation to whether a second language has been indicated in the application as well as whether it is necessary for a representative to be appointed. If a notice of provisional refusal is issued on any of these subjects the applicant will be allowed a period of two months to withdraw or limit his EU designation, to submit observations and arguments against an objection on absolute grounds, or to remedy a deficiency regarding representation or the required second language. Failure of the applicant to respond or to overcome the ground of provisional refusal will result in OHIM taking a decision to refuse protection for all or part of the application as it considers appropriate.

    Any notice of provisional refusal issued by OHIM will be sent to WIPO for onward transmission to the holder and a two month time limit for responding will be set. The two month time limit will be calculated from the day on which OHIM issues the notice so care must be taken to calculate the response date correctly once the notification has been received by the applicant or his representative.

    Any decision by OHIM to issue a final refusal, in whole or in part, may be appealed.

    If, as a result of OHIM’s objections, the international registration is refused or renounced by the holder, OHIM will refund to the holder part of the individual EU designation fee that was paid with the application. The proportion of the fee refunded is noted below.

     

    Search

    As with a directly filed CTM application, search reports in respect of the EU designation of the International Registration will be produced by OHIM and also by EU member states that operate a search for direct CTM applications.

     

    Seniority Claims

    EU designations of international registrations may claim seniority from earlier national trade mark registrations or designations of earlier international registrations effective in an EU member state in the same way as with direct CTM applications/registrations. Seniority may be claimed at the outset when filing the application for international registration or it may be claimed later before OHIM.

    Where seniority is claimed on filing the international application through WIPO, this is done by annexing to the application form a Claim of Seniority Form MM17. A separate Form MM17 is required for each seniority claim included in the international application. The relevant certified documents supporting the seniority claim(s) must be supplied to OHIM, not WIPO, within three months of OHIM being notified of the EU designation by WIPO. In this situation, WIPO is already aware of the existence of the seniority claim and OHIM will therefore only notify WIPO if there is any amendment to the claim. OHIM will however, inform the national EU trade mark offices of seniority claims being filed for their territories.

    As of the date on which OHIM publishes the fact that there has been no refusal notice issued in respect of the EU designation or that any such refusal has been overcome, the holder of the international registration may claim seniority directly before OHIM. If the holder claims seniority before OHIM in advance of that date, the claim shall be deemed not to have been received until that date. In this situation of the seniority claim being made directly to OHIM, OHIM will inform WIPO as well as the relevant national offices of the claim.

     

    Opposition

    The opposition term is three months and this term begins six months after the first publication by OHIM of details of the EU designation having been filed at WIPO. There will be no separate publication at the start of the three month opposition period. Effectively, potential opponents will have nine months from the original OHIM publication of details of the EU designation in which to consider and file opposition.

    If an opposition is filed prior to expiry of the six month period following OHIM’s first publication of the EU designation, the opposition will be deemed to have been filed the day following expiry of that six month period, ie. the first day of the official three month opposition period.

    OHIM will notify the holder of the international registration via WIPO of a provisional refusal based on an opposition. Where it is necessary for a representative to act before OHIM for the applicant and one has not already been appointed, the applicant will be given two months in which to appoint a representative. Failure to do so will result in refusal of the EU designation as will failure to respond to OHIM’s notification of the opposition.

    The opposition will be suspended in the event that another provisional refusal based on absolute grounds is, or has already been, issued and is as yet unresolved. If the refusal on absolute grounds becomes final then no decision will be taken on the opposition and the opposition fee will be refunded to the opponent.

     

    Statement of Grant of Protection

    If by the beginning of the opposition period OHIM has not raised objection on absolute grounds of registrability it will send to WIPO a Statement of Grant of Protection confirming that the examination on absolute grounds is completed but the application is still subject to opposition and/or observations.

    Where no notification of provisional refusal has issued as a result of examination by OHIM, opposition by a third party or observations by a third party, OHIM will send a further Statement of Grant of Protection to WIPO confirming that the mark is now protected throughout the EU.

     

    Recordal of Transfers (Assignments) and Licences

    Recordal of the transfer of ownership of an EU designation or of a licence being granted on an EU designation takes place in the International Register.

     

    Conversion of an EU Designation of an International Registration

    Where an EU designation of an international registration is refused or ceases to have effect it can be converted in one of two ways and, in both cases, will enjoy rights as of the date of filing of the original international registration or its priority date (if applicable) or the date of subsequent designation of the EU (if appropriate) and any relevant attendant seniority rights. Conversion may be into:

    a) one or more national trade mark applications in selected EU member states, or

    b) designations of one or more EU member states under the Madrid Protocol or the Madrid Agreement provided that the designated countries were members of the Madrid Protocol or the Madrid Agreement on the date conversion was requested. For the moment this would only rule out conversion in this way for Malta which is the only EU member state that is not currently an individual member of the Protocol. WIPO Form MM16 is used for converting an EU designation into separate EU member state designations. The form must be filed at OHIM for onward transmission to WIPO.

    Where conversion has to be considered, the option of being able to convert to separate designations of one or more EU member states under the Protocol is extremely useful for proprietors who wish to retain the protection for their mark in the form of an international registration. They will then continue to retain such benefits as central renewal and central recording of assignments and licences.

     

    Transformation of an EU Designation of an International Registration into a CTM Application

    Where, within a period of five years from its date of registration, an international registration which designates the EU has been cancelled by WIPO at the request of the holder’s office of origin, the EU designation may be the subject of transformation into a direct CTM application provided the direct CTM application is filed within three months of the international registration being cancelled. The direct CTM application must indicate that it is a transformation application.

     

    Replacement of a CTM Registration by an International Registration

    International registrations replace earlier national registrations in designated states for the identical mark provided:

    • the specification of the international registration covers the goods/services of the older member state registration, and
    • both registrations are in the same ownership.

    Replacement takes place automatically but holders who believe their registrations meet the requirements of replacement are advised to request the relevant national (or regional in the case of OHIM) office to place in the Register a note of the replacement. Once the national or regional office has done this, it notifies WIPO who will then record and publish this information. OHIM has made provision for EU designations of international registrations to replace earlier CTM registrations and to enter a notice in the register to this effect upon request.

     

    Subsequent Designations

    A request for a subsequent designation of the EU to be added to existing international registrations under the Madrid Protocol will be dealt with and examined by OHIM in the same way as new Protocol applications.

     

    Invalidation of an EU Designation of an International Registration

    The effect of an EU designation of an international registration may be invalidated by OHIM or by a Community Trade Mark Court and once the decision has become final OHIM will notify WIPO of this fact.

    Invalidation of an EU designation of an international registration takes the place of revocation or invalidation of a direct CTM registration.

     

    Use Requirements

    The date on which OHIM publishes the fact that there has been no refusal notified in respect of the international registration or any such refusal has been withdrawn is the date from which the mark must be put into use in the EU and from which any periods of non-use must be calculated for purposes of invalidity actions against the EU designation. That date is the equivalent to the publication of registration for a direct CTM registration.

     

    Some Important Trigger Points

    The date of notification by WIPO to OHIM of the filing of the EU designation triggers:

    • The start of the timeframe for supplying seniority documents to OHIM if seniority is claimed in the application.
    • The start of OHIM’s 18 month timeframe for notifying provisional refusals of the application to WIPO.

    The date of the first publication by OHIM of the details of the international registration following publication in the WIPO Gazette triggers:

    • Calculation of the beginning and end of opposition period.

    The date of publication by OHIM of the fact that there has been no refusal notice issued on the EU designation or any such refusal has been overcome triggers:

    • The date as of which seniority claims may be filed directly at OHIM.
    • Calculation of the five year period during which the mark must be put into use in the EU if it is not to become vulnerable to cancellation for non-use.

    The date on which OHIM issues a notice of provisional refusal triggers:

    • Calculation of the deadline by which the holder’s response to the provision refusal is due.
    • Calculation of the deadline by which the holder must appoint a representative (if needed).

    The date on which WIPO, at the request of the office of origin, cancels an international registration designating the EU triggers:

    • The start of the timeframe during which an application may be filed for transformation of the EU designation into a direct CTM application.

    Main Fees

    Fees payable to WIPO in respect of filing a single EU designation of an international registration are the Swiss franc equivalent of:

    • 1,875 for filing a single designation of one mark in up to three classes.
    • 400 for the fourth and each subsequent class.

    Fees payable to WIPO in respect of renewal of an EU designation of an international registration are the Swiss franc equivalent of:

    • 2,300 for renewal of a single EU designation in up to three classes.
    • 500 for renewal of the fourth and each subsequent class.

    Where an EU designation of an international registration is finally refused by OHIM for all goods/services in the application, the holder will be refunded the amount of 1,100 for the EU designation in up to three classes plus a further 200 for the fourth and each subsequent class.

    If the EU designation is subject to a partial refusal then a partial refund is applicable calculated to a formula.

    2. INTERNATIONAL REGISTRATIONS BASED ON A CTM APPLICATION OR REGISTRATION

    Applicants wishing to apply for an international registration based on a CTM application or registration must file their application through OHIM as the office of origin.

    Applicants may use the official WIPO application form but OHIM also produces its own form which is an adaptation of the WIPO form. The OHIM form can be accessed on OHIM’s website.

    OHIM will inform the applicant of the date it receives the application.

    The application may be filed at OHIM in any of the twenty official EU languages BUT if this is not one of the languages of the Madrid Protocol (English, French or Spanish) then the application must indicate one of these as a second language and this will be the language in which OHIM submits the application to WIPO.

    Where the international application is filed in a language that is not English, French or Spanish, the applicant may provide a translation of the goods and services and any other text matter in the application into his chosen second language. If he does not do so he must authorise OHIM to include the requisite translation in the application to WIPO. If the international application is based on a very recent CTM application for which OHIM, in the normal course of processing that direct CTM application, has not yet prepared translations into all EU languages, including the applicant’s indicated second language, OHIM will arrange for such translation without delay. However, in such cases, it may be advisable for the applicant to supply his own translation to ensure the application is forwarded to WIPO as soon as possible.

    If the international application is filed before the basic CTM application on which it is based becomes registered, the applicant must indicate whether he wishes the international application to be based on the pending CTM application or on the eventual registration of that application. If the eventual registration is chosen then the application form for the international registration will be deemed to have been received by OHIM on the day on which the basic CTM becomes registered. The official fees will also be due on the date of registration of the basic Community Trade Mark.

    When all formality examinations have been satisfied OHIM will forward the application to WIPO.

    The filing of subsequent designations basically follows the same rules except that an application for a subsequent designation must be filed in the language of the international registration and it may be, but does not necessarily have to be, filed through OHIM as an intermediary.

    The separate country designations of the International Registration will all then be examined by the relevant national offices as though they were direct national applications.

    Dependency of the International Registration on the Basic CTM Application or Registration

    If, within a period of five years from the date of the international registration, the CTM application or registration on which it is based fails or ceases to have effect, OHIM will notify WIPO of this and the international registration will be cancelled. However, the international registration will be able to be transformed into national applications in the separate designated states that are members of the Protocol and these applications will enjoy the priority date of the international registration (or of the subsequent designation if the EU was designated subsequently) provided the transformation applications are filed within three months of the international registration being cancelled by WIPO.

     

    Fees

    • The fee levied by OHIM as office of origin for filing an application for an international registration based on a CTM application or registration is 300 and this is payable to OHIM.
    • In addition there are application fees for the international registration payable to WIPO. These include a basic fee, supplementary fees for classes of goods/services above three, complementary fees for designated member states that do not levy an individual fee for examining the international registration, and individual fees for designated member states that have elected to receive a fee set by them as a condition of their membership of the Protocol.

    All fees payable to WIPO must be paid to directly to WIPO – this is made clear on the new OHIM application form for an international registration based on a CTM application or registration.

     

    Summary

    The interaction between the CTM and Madrid Protocol systems that will become reality on 1st October 2004 will offer to trade mark owners a wider range of choices in trade mark registration and management than ever before. The CTM system itself has proved to be enormously popular with trade mark owners. The Madrid Protocol, although a little slower to achieve popularity, now has sixty-five member countries including major countries in the Asian, North American, Pacific and European market areas. This will now be enhanced by the provision of the opportunity to cover the entire EU with a single designation of an international registration under the Madrid Protocol.