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1 Int'l Intell. Prop. L. & Pol'y 393 (1996)
Session VI Panel Discussion: International Trademark Registration Practice

handle is hein.journals/inteproy1 and id is 409 raw text is: Chapter 42 SESSION VI PANEL DISCUSSION: International Trademark Registration Practice* MR. ECK: As Senior Assistant General Counsel of Trademarks for Philip Morris, the question that probably all of you have on your minds is, how does a multinational corporation look at the Madrid Protocol and the Community Trade- mark? Will we use them? I think the answer is yes, no, and maybe, because I think it depends upon the circumstances in each individual case. With respect to the Protocol, we will use it - but, as I said, selectively. One of the biggest drawbacks I see is the limitation of goods. If you file in the United States, you can only claim the goods for which you use the mark, but when you extend it abroad you can have much broader protection. As has been explained, you don't need to file for a broad range of goods anymore. It depends on what you're filing for, because the statute refers to the same or similar goods. In some jurisdictions, such as Gennany, you can have marks in the same class which are not considered to be similar goods. So you have to weigh that very care- fully. With respect to the Community Trademark, I expect that as a corporation we will use it, and we will use it selectively. There are some pros and cons involved. It depends on the facts of circumstances of the mark, the market, and what you want to do with your brand. There also needs to be a lot more study of the Community Trade- mark and the effects of it to determine the pros and cons of it. One of the biggest advantages is if you don't need to use the mark throughout the entire Community. If you obtain a Community trademark and you use genuinely - whatever that means - the mark in the Community, you can protect yourself throughout the entire Community. If your mark is notorious, whether you use the mark or not, you may lose your registration but you can stop somebody else from getting a registration, which is something you should consider as well. AUDIENCE MEMBER: Would you file under both the Madrid Protocol and the EC the same trademark, or would that be redundant? MR. ECK: I think it depends on the circumstances. If I am going to file for a Community Trademark I don't think I would file for a Protocol mark. But when you file for the Protocol you can designate the Community in your registration. This is only a hypothetical situation, as I would not do the same thing in every instance. * For affiliations of the panelists and all speakers, see Appendix A. 393

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