Should ‘Central Attack’ be abolished?

Nadaline Webster,

The International Trademark Association's Board of Directors met a few weeks ago in New York in their first meeting of the year. Amongst the topics of discussion, was the potential reduction in the dependency period of an international trademark registration on the initial domestic registration.

This dependency period currently lasts 5 years and it creates a vulnerability known as "central attack" for your international registration, where its entire validity can be brought to jeopardy by simply contesting the basic registration. A Resolution on the Madrid Protocol Dependency Period in favour of reducing the dependency period to 3 years was considered by the Board and approved.

But Is It enough?

In a blog post last year, Randy Michaels of Trust Tree listed 'Central Attack' as one of his key reasons for caution before leaping into international applications. Your international registration enjoys protection for the first 5 years on the basis of your initial application or registration. If another company can successfully apply to have that basic registration cancelled or there are other issues, your international registration will also fall. While he does point out some potential remedies in that event, should it occur, your application will have been a very expensive waste of time...with the remedies being no less expensive nor any less time-consuming!

In a recent interview with Alicante News (January 2017), Frank Meixner, Head of Corporate Trademarks for Bayer in Germany, mentioned the possibility of the dependency period being reduced or abolished

"What is being discussed and would be attractive for us is the abolition of the five-year dependency period. It’s a risk that if you lose the basic home registration then your whole Madrid trademark may implode, so it would be nice if that were ever abolished."

They are not the only ones who feel that way!

In September 2015, Marques (a European Association representing Trade Mark owners established in 1986) surveyed their members to gauge their thoughts on the potential reduction or abolition of this dependency period. They found that not only did 80% of their membership stand in favour of doing away with the dependency period altogether, but also the requirement to base your application on a home registration at all.

Somewhat controversially, the survey suggested that the small number (10%) of respondents with direct experience of central attack wished to keep the dependency period and that 10% was comprised of companies with large portfolios who may have rights to be protected in a large number of countries. It seems to suggest that the policy only benefits a tiny portion of trademark owners and disadvantages the majority.

The Marques survey could find very few unattractive consequences of eliminating the dependency period amongst its respondents and those are listed here:

  • The trademark owners who actively utilise this system would lose a tactic from their arsenal - although they could, of course, still file objections through the various national offices.
  • There is a likelihood that application costs to the World Intellectual Property Office would increase given the concomitant increase in examination requirements - they did propose that this increase could potentially be offset by also eliminating the need to apply in your home office initially.
  • There would be a loss of the 'certification' by the Office of Origin in first examination - although they did indicate that their respondents didn't necessarily consider this loss to be an insurmountable one.

Are there any outstanding reasons to retain the dependency period?

Anna Ronkainen, TrademarkNow’s Chief Scientist, thinks not.

“The possibility of central attack creates an unnecessary and unwanted uncertainty, especially considering the unpredictability of likelihood of confusion judgments especially in some higher courts. In today’s global business this is just untenable.”

It may yet be some time before finalised decisions in this regard will be made. In the interim, reducing your vulnerability to 'Central Attack' in whatever way possible remains critically important. The adage, "knowledge is power" might well apply in this case and the ability to thoroughly search all areas of interest to you, short and long term, is one of the best ways to minimise that risk. TrademarkNow provides a platform that will allow you to get a complete picture of risk in seconds, across multiple regions with results ranked by threat level with linguistic and cultural meanings included in your results.

To celebrate World IP Day, TrademarkNow in conjunction with Dr. Holger Gauss, Attorney and Partner at Grünecker, and Tiffany Valeriano, Trademark Executive at TrademarkNow are hosting a 'World Intellectual Property Organisation (WIPO) Registration Masterclass.' This 30-40 minute webinar will explore what impacts the clearance process as well as potential things that may go wrong in the process. >> REGISTER HERE

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