Eck, Robert J.

Hoffmann, Thomas J.

English

Fordham University School of Law

Fordham Intellectual Property, Media and Entertainment Law Journal Volume 4 Volume IV Number 1 Volume IV Book 1 Article 30 1993 Panel Commentaries Robert J. Eck Philip Morris Thomas J. Hoffmann Hoffmanns, Ltd. Follow this and additional works at: https://ir.lawnet.fordham.edu/iplj  Part of the Entertainment, Arts, and Sports Law Commons, and the Intellectual Property Law Commons Recommended Citation Robert J. Eck and Thomas J. Hoffmann, Panel Commentaries, 4 Fordham Intell. Prop. Media & Ent. L.J. 417 (1993). Available at: https://ir.lawnet.fordham.edu/iplj/vol4/iss1/30 This Conference Proceeding is brought to you for free and open access by FLASH: The Fordham Law Archive of Scholarship and History. It has been accepted for inclusion in Fordham Intellectual Property, Media and Entertainment Law Journal by an authorized editor of FLASH: The Fordham Law Archive of Scholarship and History. For more information, please contact tmelnick@law.fordham.edu. MADRID PROTOCOL ON TRADEMARKSPANEL COMMENTARIES'Robert J. Eck*My commentary will be from the viewpoint of a large multina-tional company. Philip Morris and its affiliated companies haveabout 60,000 registrations worldwide. With those numbers, anyinternational treaty that purports to simplify filing and maintenanceat less cost is something that catches our attention.Will my company use it? The answer is yes, but selectively,for reasons that I will get into later, some of the reasons that Ms.Walters has already stated.One of the most lauded benefits of the Madrid Protocol is itssimplicity: in filing, in maintenance, and in paperwork. All a U.S.applicant will have to do is to file one application in its home of-fice, pay one fee in U.S. dollars, and designate the number ofcountries to which he wishes the international registration to ex-tend. That's all that he has to do to get on file-no certified cop-ies, no legalizations, no foreign powers of attorney.As you know, now we have to file separate applications in eachindividual country, with foreign powers of attorney, which some-times requires legalization; and, if you're filing under the ParisUnion, you have to file a certified copy of the U.S. application.Under the Protocol that won't be necessary.The maintenance-which I refer to as renewals, assignmentrecordals, change of name and address-is also simplified. All youwould have to do is file one document with the International Bu-reau of WIPO and your job is done. I think this is probably thebiggest benefit under the Madrid Protocol for acquisitions, mergers,reorganizations and so on, because you can do it with just onet The following two panel commentaries were presented at the Fordham Conferenceon International Intellectual Property Law and Policy held at Fordham University Schoolof Law on April 15-16, 1993.* Senior Assistant General Counsel, Trademarks, Philip Morris, New York, N.Y.;Washington University, St. Louis, B.S.C.E. 1961, J.D. 1964.19931418 FORDHAM INTELL. PROP., MEDIA & ENT. L.J.document.The other benefit-there are more benefits, but I'm just goingto talk about two which are important to me-is cost reduction. Infiling and maintaining registration under the Protocol, all you haveto pay is the statutory fees of each designated country. You don'thave to pay any foreign agents for filing your application becauseyou don't need them.The cost reduction stops, however, if the designated countryrejects your application, in which case you have to hire a foreignagent; or if someone opposes your application-the same thing-you have to hire a foreign agent. Whether the foreign agentswill increase their fees because of the loss of filing work, no oneknows, but I think that is probably something that could be expect-ed in the future.Now, let's consider a couple of detriments. My major con-cern-the one that Ms. Walters has referred to-is the UnitedStates Patent and Trademark Office's practice of restricting goodsin a specification to the precise goods for which an applicant isusing the mark or intends to use the mark. In foreign countries,you can get broader protection; you can get coverage in an entireclass. And in some countries, for a small additional fee, you canget multi-class protection; we could conceivably protect all possiblecollaterally related goods by filing foreign national applications.If you have a client that is in a business where his class ofgoods covers a wide range of goods, you have to think very seri-ously as to whether you want to file national applications, orwhether you want to file under the Protocol, or do a combination:file in some countries under the Protocol, file in other countries fornational applications.I should say that even if you file under the Protocol, I believeyou can still file for national trademark protection for the full rangeof goods in addition to international registration.The Protocol states that if the same owner owns an internation-al registration and a national registration, the international registra-tion will be deemed to replace the national registration withoutprejudice. So, if you have a national registration that has broader[Vol. 4:407MADRID PROTOCOL ON TRADEMARKScoverage or priority, you could still rely on that. That is somethingto think about.The other detriment that I see is "central attack," which is aterm-of-art which you won't find in the text of the Madrid Agree-ment or the Madrid Protocol. It refers to the dependency of theinternational registration on your basic application or basic registra-tion. Within the five-year term, if your basic application is rejectedor your basic registration is canceled, all the attendant extensionsfall as well.So, if you have a client that has a propensity for filing highlydescriptive, laudatory, geographical, and other marginal marks-asI do at times-you have to consider whether you are going to filethrough national applications directly, because the offices of foreigncountries allow registration a lot more easily than the very stiffprosecution practice of the United States Patent and Trademark Of-fice.The other thing that a U.S. applicant has to be concerned aboutis the stringent use requirement of the United States-bona fide usein the ordinary course of trade, made not merely to reserve theright to a mark. Judicial decisions haven't fully developed whatthat constitutes, but the legislative history suggests that you haveto have real commercial use in order to defend a non-use attack.So, if you have adopted a mark, filed under the Protocol, andengaged in a test market-which is good commercial use-andobtained registration, but a few years later you no longer are usingthe mark in the United States, but the mark is still of commercialimportance to you abroad, you are vulnerable to a non-use attack.If it occurs, your international registration will fall.Another concern for U.S. applicants is the substantive groundsthat can be raised in a cancellation attack or an opposition, and thatis, common law use and concurrent user rights. We all know ofpeople, whether it has happened to ourselves or somebody weknow, who do a complete search of a mark, clear the mark, startto use it, and there's some small guy somewhere out in the hinter-lands who is using the same or similar mark on the same or similargoods and you have a problem. So this is one of the things that1993]420 FORDHAM INTELL. PROP., MEDIA & ENT. L.J.you have to balance in considering whether to apply under theMadrid Protocol or to file national applications directly.On balance, I think that the Protocol is a good thing and I sup-port it. I think that American companies will use the Protocol, butthey will use it selectively.There is one other point I want to say-and then I will give thefloor to Professor Hoffmann--on the remarks on transformation,which Ms. Walters explained to you.With transformation, there is no loss of priority-which is abenefit-but you do lose two things. One is, you have to pay addi-tional fees. When you file for transformed national applications,you have to retain a foreign agent. The other thing that youlose-which I think is more important-is the registration rightbetween the dates that your international registration is canceledand the date that your transformed national application matures toa registration. During that window, an infringer can infringe yourmark without retribution. There are some potential actions you canbring in various countries, but for the most part that is not the case.Thomas J. Hoffmann*I am going to say a few introductory remarks. While I'm doingthat, in the materials that were handed out there is a copy of theProtocol, I would like you all to read Article 4 is, which was re-ferred to by Bob Eck.Wow! This is an exciting time to be in the area of internation-al intellectual property. This has been a very good program, andI have to commend Professor Hansen for putting it together andassembling a group of people who are really creative in their think-ing and looking at problems. We all represent clients who arecreative and we must rise to that standard and be creative in ourthinking also.* Trademark attorney, Hoffmanns, Ltd., Chicago, Ill.; Kenyon College, B.A. 1962;University of Michigan, B.S. 1963; George Washington Law School, J.D. 1967.[Vol. 4:407MADRID PROTOCOL ON TRADEMARKSI think we have heard the issues addressed by people who areclearly thinking outside the lines. We're not hearing the standard,doctrinaire things; we're hearing from people who are questioning,coming up with new solutions to newer problems that are arisingall the time. That is very, very exciting.I think it's particularly appropriate for the students who arehere today. I have been on the faculty of John Marshall LawSchool since 1971. In our conferences, one of the joys is beingable to have the students come and participate, so I'm glad to seeso many students are taking advantage of this expanded facultywho have come to address you. On behalf of Dean HowardMarkey of John Marshall Law School, I also want to extend ourcongratulations to Fordham University School of Law for this fineprogram.Carlisle, Lynn Beresford, and Jeff Samuels have done a fantas-tic job with the Madrid Protocol and the implementing legislation.At our first meeting of the advisory committee, we started out with"Where is Madrid?" and went from there. They have done anexceptional job of getting into the international trademark area,understanding the problems of the Bob Ecks of the world, oursmaller clients, and the profession.There are so many things to say. The two presentations todayhave really given you an outline of what is going on with the Ma-drid Protocol. There are many creative minds here. Until now,those of us who have been working on the Madrid Protocol havebeen talking to ourselves, and we have not had the cross-fertiliza-tion from people who have gone through the Patent CooperationTreaty, gone through the design legislation, and other experiences.Thinking a little outside the lines, I would like to open my timeto questions. I hope that you will have questions that we can allrespond to or that I will respond to, and in response to those ques-tions I will try to get into some of the points that I would like tomake.1993]

Panel Commentaries

bepress Legal Repository

https://ir.lawnet.fordham.edu/cgi/viewcontent.cgi?article=1074&amp;context=iplj

Panel Commentaries

Abstract

Similar works

Full text

Available Versions

Fordham University School of Law

bepress Legal Repository