5 February 2019

Brexit (sorry!) and implications for trade mark records management

Perhaps you're a BoB (Bored of Brexit)? That's understandable as it seems to become more exasperating by the day.

Nonetheless, it will have implications on how trade mark records and data are managed. This might be pretty dull too, but it is important.

How data is managed in IP databases and on Trade Mark Registers is critical to trade mark management whether it is to ensure the proper management and advice of your business/your client's trade marks, or by having reliable information on the rights of third parties.

If Brexit does not ultimately happen - a result that may see IP professionals discovering a skill for cartwheeling - then the status quo will be maintained.

If Brexit does happen, in whatever form (hard/soft/no deal), the UK has indicated that it will continue to recognise EU rights by 'cloning' them into an equivalent UK right.

I previously speculated that this would be automatic. At the time, many thought they'd instead need to be a formal conversion procedure. Let me not be smug (and, alas, I don't know this week's lottery numbers) as I may not be right - the UKIPO's guidance states equivalent UK rights will be created with "minimal administrative burden", but it is anticipated it will be done proactively by the UKIPO.

The UKIPO's guidance states that "any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out". However, to me, it seems that it will be easier (and cheaper) to allow a new right to be created so how many will go to the effort of opting out?

"this is a worldwide issue, not specific to UK businesses and attorneys"

So on Brexit day, all existing EU registrations will be cloned into a UK registration with the same details. Check how many EU registrations you have on your records... take a deep breath and realise all (or nearly all presuming many will not opt out) of these will need duplicating into a UK record - and this is a worldwide issue, not specific to UK businesses and attorneys, as it relates to anyone owning EU trade marks.

I expect many databases will have a tool (or develop a tool) to allow this to be done automatically. Nonetheless, it may represent a big increase in the number of records a business is managing. Some businesses pay per record on their IP database so the impact on their overheads is immediate.

It should be mentioned that cloned EU rights are likely to have a letter prefix to their numbers and this may require a more manual update. This currently happens when searching the UK Register whereby UK national rights are prefixed 'UK' and EU rights are prefixed 'EU', and there are different prefixes for those that are designations in International Registrations.

High lapse rate?

Of all the EU marks on the Register, how many of the owners have commercial interests in the UK? Certainly not all and so I think it's fair to anticipate a high lapse rate at renewal time. This could be the first time private practice firms have the opportunity to charge fees on these records. Some private practice firms struggle to make money on the renewals part of their business - the work involved in regular chasing clients for instructions that end up being a "not interested" is typically not money making. A high(er) lapse rate would only make this worse.

Then there are the UK clients that would often file in the UK first and then the EU (and other countries) come later as their plans to penetrate other markets firm up. These clients are going to end up with two UK registrations with a reasonable likelihood that the first (older) one will be maintained and they won't need to renew the second (cloned) one when it comes due for renewal. Nonetheless, there would still be an obligation for a private practice firm (and in-house department) to keep records of the second cloned one.

There's also International Registrations designating the EU. Here the UKIPO will support this to be cloned into an equivalent UK national right. They may alter this stance if WIPO will allow International Registrations designating the EU to have "continuation of effects" to the UK with "minimal administrative burden" (e.g. no fees).

Let's say WIPO will allow continuation of effects but will require payment of a fee. Now a UK business who has an IR designating the EU (with base mark from the UK) could now request a continuation of effects of the EU designation to the UK. This would mean they have triplicate protection in the UK (1 - the original UK national registration, 2 - a cloned national from the EU designation and 3 - a fresh (continuation of effects) designation of the UK in the International Registration). I hope you are following me, but this is not completely far fetched as it would allow a business to let the two national UK registrations lapse, maintaining their rights in the UK and EU (and any other countries designated in the IR) exclusively through the International Registration.

Those involved in data management should be prepared, and this has only explored registered EU marks, not those pending on Brexit day.

Duplicate protection is not always bad. I worked on a portfolio audit once that had old East and West German registrations. Upon German reunification both registrations extended to the whole of Germany. My audit discovered the old West German registration had inadvertently lapsed - the duplicate (East) German registration came to the rescue to ensure protection across Germany. Every cloud...

7 November 2018

WIPO to introduce Division and Merger for International Registrations

Those managing International trade mark registrations may be pleased to note of new provisions for Division and Merger that are being introduced by WIPO from February 2019.

This will give greater flexibility to International Registrations. Division, in particular, has been a disadvantage of International Registrations over (some) National registrations.


As a recap, division can occur where there are objections to some of the classes in a multi-class application, the classes with objections can be transferred to a divisional application and be dealt with later. This allows the acceptable classes to move forward without delay. It can also be used to divide goods/services within a single class, although this is less common.

Division will now be possible for individual countries designated in an International Registration, provided division exists within the national law. Countries can opt out of accepting requests for division and/or can also notify WIPO of their incompatibility with the national law.

There will be a specific form for requesting division, a Form MM22. Unusually, this form is not to be filed with WIPO but with the National Office of the designated country in which you wish to request division. Currently, all WIPO forms are filed either directly with WIPO and/or through the Office of origin.

There will also be a fee due to WIPO of 177 Swiss francs. This can be paid through a current account held with WIPO or by bank transfer. Presumably, it would also be possible to not pay the fee and wait for an Irregularity Notice and then pay the fee by credit card through the E-Payment Service, although this would add delay.

As WIPO mention, the National Office may examine the request for division of an International Registration to ensure that it meets the requirements in their law before presenting it to WIPO. The Office may also require the payment of a fee, directly to them, different from the fee due to WIPO. It should also be mentioned that division is likely to be happening in foreign countries and therefore you are also likely to incur professional fees of a local agent.

Alternatively, you may be handling a specific designation of an International Registration on behalf of a client. For example, if you are a UK practitioner and have been entrusted with only the UK designation, then you would be making the request for division of an International Registration to the UK Intellectual Property Office ("UKIPO"). The UKIPO currently has a form for requesting division of a national application - a Form TM12 - which carries a fee of £100. I anticipate this fee will also apply to requests for division of an International Registration and perhaps the UKIPO may produce their own Form MM22 with a more similar look and feel to their Form TM12.

It is not clear if, for example, the UKIPO would also, on request, take the WIPO fee from a UKIPO deposit account and pass to WIPO, like they can do with new International applications filed through them as Office of origin.

Once division has taken place, WIPO will create a new International Registration (covering just the one designated country) - I would guess with the same number and a letter suffix.

Central Attack

The divided part of an International Registration will retain the same base mark. If this is lost (e.g. through Central Attack) within the first five years of registration then both the original International Registration and the divided International Registration will be cancelled.


The new regulations will allow for the merger of International Registrations under two circumstances:

1. Merger of international registrations resulting from the recording of a partial change in ownership; and
2. Merger of international registrations resulting from the recording of division

The second is clear. Presuming you overcome the issues with the divided part then you can merge it back into the main International Registration it was divided from. You'll then have just one registration to manage, renew and maintain.

The first is not entirely clear to me. If you record a partial change in ownership of an International Registration, this will create a new International Registration for the part where ownership has been partially changed. It seems therefore that if the two (or more) International Registrations subject to a partial change in ownership then come to all be back in the same ownership at a later date that they can then be merged together. If so, I do not see if this would be used much in practice.

There will be new WIPO form for mergers, a Form MM24, and it will be possible to file them direct with WIPO. No fee will be payable.

Countries can opt out of accepting requests for merger and/or can also notify WIPO of their incompatibility with the national law.

These steps will add flexibility to the International system, in particular division. Nonetheless, the relationship between WIPO, the Office of origin and the National Offices of designated countries is not always well understood and the addition of extra forms may prove to be more beneficial to more experienced users of the International system.

5 September 2018

From single class to multi-class...

I was asked by an old colleague recently, "Do you know what countries have gone from a single class system to a multi-class one in the last 10 years?" - a question which followed with a hint to put it into a blog piece, notwithstanding its somewhat niche interest. Not that I ever give in to peer pressure...

The scenario is: you have inherited a mature trade mark portfolio with many single class registrations. Is it possible to consolidate matters by re-filing multi-class applications with a view to allowing the single class registrations to lapse in the future? The administration in managing the trade mark portfolio would reduce and, although it would not be realised straightaway, renewal costs should be reduced in the future. (If any marks are not in use then re-filing could be a way of resetting the non-use period if a mark is of continued interest.)

The risks are perhaps obvious. Allow an old registrations to lapse to rely on a newer registration could result in a third party having earlier rights. This can be mitigated by undertaking searches for any intervening marks. There may also be possible prior co-existence and acquiescence. The appetite for risk differs with each business, and it's certainly possible to take a different approach for different countries depending on their commercial importance.

You must also watch out for countries that do not allow for duplicate registrations. In these countries it will be necessary to voluntarily surrender an existing registration to overcome a refusal. In the best case with these, there will be a lag when you do not have registered rights while the application is pending registration. At worst, another issue raises its head after voluntarily surrendering the old registration.

Anyway, if you are thinking of undertaking such an exercise, here is a list of countries that may have gone from single classes to multi-class in 'recent' times, perhaps in the last 10 years, perhaps more than that. This is done from my memory so there's no guarantee this is right! It's not meant to be exhaustive. It's a pointer - you'd need to research, double-check and apply it to a specific portfolio.

Bahrain *
Brunei #
Cambodia #
China #
Colombia #
Costa Rica
Dominican Republic
Egypt *
El Salvador
The Gambia #
Ghana *
India #
Indonesia #
Kenya #
Laos #
Mexico * (in practice the IMPI will examine each class in an IR as though it is a separate application)
Mozambique *
Namibia #
Oman * (multi-class applications expected to be allowed locally soon)
Spain # (this change happened back in the early 2000s when they also abolished quinquennial taxes if you remember them)
Syria *
Thailand #
United Kingdom # (definitely more than 10 years ago, more later)

The countries marked with * are single class when filing nationally, but they can be designated in a multi-class International Registration. Those marked # are now multi-class nationally and/or can be designated in a multi-class International Registration.

This leads nicely on to Replacement. Techinically, this happens automatically, but to get it noted on Trade Marks Registers it needs to be requested formally. In simple terms, replacement is to International trade marks what seniority is to EU trade marks. (Seniority is also a useful tool in consolidating rights but as readers of this blog may be very familiar with this, I will not touch on it here.)

If you have old single (or multi-) class national registrations and you now have International Registrations designating these countries then replacement may be a useful exercise to consolidate things and make a note of the older rights. You may need to obtain local advice on how each national Office will look at this; you'll typically need the help of a local associate to request replacement at each national Office anyway. It may be for this reason that replacement is hardly utilised, or perhaps it's ignorance, or because it could be a fiddly (and thus expensive) job involving liaising with multiple countries (cf. seniority which is centrally handled with the EUIPO).

Another tool more often used in the consolidation of trade marks is the merger of trade marks. The United Kingdom became a multi-class jurisdiction with the introduction of its 1994 Act - quite scarily - nearly 24 years ago.

They introduced a provision to merge single class registrations for the same trade mark in the same ownership into a single registration so that savings on renewal fees could be made. They have changed the criteria set down at various times and currently the registrations must also share the same filing date.

Ireland, which went multi-class around 1996, has a merger procedure as do Hong Kong and New Zealand. It's also possible to merge trade mark registrations in Guernsey. Just south of Guernsey is Jersey, where trade marks have to be based on UK registrations. The Jersey Registry is able to reflect in its own records where merger has taken place, but be aware for other UK dependent jurisdictions because the local laws are often rather short and may be silent with respect to mergers.

So if you're looking to consolidate a number of single-class registrations into multi-class registrations then, if the risks are acceptable, make sure to take into account International Registrations, replacement and mergers as well as the what might be more obvious re-filings and seniority.

2 May 2018

North and South Yemen

We all know about North and South Korea. They've not exactly been out of the news recently.

I'm far too young to remember North and South Vietnam, although I (just) have memories of East and West Germany competing at the Olympic Games and of being too young to appreciate the significance of the fall of the Berlin Wall.

Germany wasn't the only country to unify in 1990. As a young boy, my first atlas was prior to the unification of Yemen and being a geography geek from a young age I would have spent time memorising for which part Aden was the capital and which part had Sana'a as its capital.

One of my first, but probably not my first atlas (what is the plural for atlas?). It's still an old one.

Prior to 1990, Yemen consisted of independent north and south parts. Officially both countries had relatively similar names - the Yemen Arab Republic versus People's Democratic Republic of Yemen. Both had their own set of trademark laws.

A devastating Civil War, which often does not reach our regular news reports, has been going on since 2015. The internationally recognised government was ousted in the capital Sana'a by Houthi rebels. They now control territory similar to that which constituted North Yemen. Since occupation, I understand the Trademark Office has continued to operate from the capital.

I have now heard information that the Government located in Aden, in what was South Yemen, is now also receiving trademark applications (based on the same laws and regulations), and also receiving confirmations of registrations/renewals issued by the Trademarks Office up in Sana'a.

Yemen's poverty has meant it is not high up on the list of most important jurisdictions to many trademark owners, and the sad Civil War has only lessened its commercial importance. Nonetheless, if Yemen is a country where you do need to protect trademarks, it would be worth investigating whether you need to file in both the North (in Sana'a) and South (in Aden) to best protect your interests.

10 October 2017

Trademark developments in Austria

In accordance with the latest EU Directive on trademarks, the trademark legislation in Austria has recently been updated.

In come Certification marks and the ability to divide applications. Out goes a need for notarised documents when recording trademark assignments.

It's all change with respect to renewal fees. Austria applied a unique approach to trademark renewals, more commonly seen with patents, in that the renewal fee increased over time i.e. the renewal for the second term of 10 years was lower than that for the third term of 10 years, which was in turn lower than the fourth term of 10 years.

These fees still apply to registrations falling due for renewal before 1 September 2018, but then a new fee system will come in. This will see a set fee irrespective of whether this is the registration's first renewal, second, third or 10th renewal.

However, it's not all that simple. Registration terms will change to being calculated from the application date. They have until now been calculated from a later registration date - and just for a bit of added complexity, the renewal date would be 'extended' to the last day of that month.

Existing registrations falling due for renewal on or after 1 September 2018 will have their renewal dates shortened so they are calculated from the application date.


Therefore, if you have a case that was applied for on 23 November 2007 and matured to registration on 2 October 2008, it would fall due for renewal on 31 October 2018.

If it is renewed it will then remain in force until 23 November 2027.

To compensate trademark owners, if the term is shortened by one year or more, there is a fee discount available of €70 per year.

Austrian trademarks registered from 1 September 2018 will fall due for renewal 10 years from their application date. Until then, the term will be calculated from its registration date.

We will have nearly one more year where Austrian trademark renewal fees are calculated on a sliding scale and then after this still a number of years where the calculation of Austrian renewal fees will require careful checking.

Information from the Austrian Patent Office regarding renewal/maintenance fees is contained here (see page 5).

9 October 2017

Indonesia makes the Madrid System a '100 Club'

Last week Indonesia deposited its instrument of accession to the Madrid Protocol and brought the number of contracting parties into triple figures.

It follows hot on the heels of Thailand, which will be available for designation in International applications in less than a month.

The ASEAN (Association of Southeast Asian Nations) countries are committed to joining the Madrid Protocol and now eight out of the 10 countries are on board. Brunei, Cambodia and Laos joined up in the last two years leaving Malaysia and Myanmar as the only ASEAN countries not a part of Madrid. Malaysia has undergone consultations and appears to be in the process of taking steps to ready itself to accede.

In Myanmar, the IP world is still waiting for the country to adopt a formal trademark law. Currently, a deposit registration system with a Cautionary Notice publication supports Common Law rights in trademarks. After years of waiting, there are now indications that Myanmar will be opening a new IP Office to operate a formal trademark law. It appears the new law may be a stepping stone towards Madrid membership or, in other words, first of all there will only be a national system for registration but presumably once the Office is up to speed it can look to accede to the Madrid Protocol and have International Registrations designate Myanmar.

There are some concerns on how well Indonesia may manage meeting the strict timelines for examining International applications. It has made a declaration under Article 5(2)(b) of the Protocol to extend the refusal period to 18 months but it could be they still struggle to meet this given an expected increase of applications now it will be easier for foreign parties to simply tick a box to file in Indonesia in an International application. Could this therefore see a backlog in the examination of national applications?

It will be interesting to see how much Indonesian businesses use the Madrid system. Domestic applicants make a lot of trademark applications in their home market. Now they will have easier access to designate most of their ASEAN partners in an International application, Australia, just to the south may also be an attractive market, as well as the powerhouse economies of Asia, Europe and the United States.

12 May 2017

Miscellaneous musings (on recent IP news)

Madrid Protocol

I'll start my musings on Madrid (the Madrid Protocol) where Hong Kong is beginning steps to become available for International trademarks, although this is not likely until 2019 at the earliest.

Under Article 3bis of the Madrid Protocol, "The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration. However, no such request can be made with respect to the Contracting Party whose Office is the Office of origin."

This is interpreted so that Hong Kong applicants will not be able to designate (mainland) China and vice-versa. As many will know, Hong Kong is not a sovereign state and is a Special Administrative Region of China. As such, any Madrid membership will be made by China on its behalf.

Notwithstanding this, the Netherlands has membership of the Madrid Protocol and has extended this to Bonaire, Sint Eustatius and Saba (sometimes referred to as the BES Islands or the Caribbean Netherlands). Bonaire, Sint Eustatius and Saba are special municipalities of the Netherlands. There are 817 live International Registrations which designate Bonaire, Sint Eustatius and Saba and where Benelux is the Office of origin (that's not to say all applicants are from the Netherlands, some are from Belgium or Luxembourg).

From the above, it seems a Contracting Party can have different Office of origins and is not necessarily caught by an Article 3bis restriction.

Anyway, it seems Hong Kong and (mainland) China will look to come to another arrangement outside of the Madrid Protocol.

Eurasian Trademark

Another IP system we may need to become aware of is through the Eurasian Trademark system. This may be with us in 2018. It will cover Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.

It seems it will be a mix between how the International and EU trademark systems work. There will be no need for a base application/registration, but applications can be filed with anyone of the five national IP Offices. Although it will be a unitary right across all countries, it will be examined by each national IP Office separately. In the event of refusal, this can be argued nationally. A final refusal in any country will result in refusal of the Eurasian trademark, but conversion/transformation into national applications in the non-refused countries appears to be possible.

It's not clear if this system will look to link to the International trademark system. I'm not sure I can envisage it being used much by Western trademark owners when all member countries are members of the Madrid Protocol anyway (Russia and Kazakhstan being particularly cheap under Madrid). However, it may be useful for local portfolios (think, in particular, marks in Cyrillic script) as there is no requirement to get an unnecessary base registration (with the 'Central Attack' fears that can pose). Any attractiveness to Western trademark owners may come down to costs.


Remaining in the Eurasian region and Russia will be joining the Hague System for Designs. They will join other regional countries as members: Armenia, Azerbaijan, Georgia, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan and Ukraine. Accession is anticipated for later this year and will be for the Geneva Act only.

The UK is also likely to accede to the Geneva Act of the Hague System in early 2018. This will be welcomed, particularly if UK applicants shall no longer have easy direct access to the Registered Community Design system when 'Brexit' happens.

Representation at the EUIPO

Whether UK practitioners will still be able to work directly with the EUIPO is something that is very much on the radar of British IP professionals that undertake a lot of EU work. There has been talk of Brits opting into "EU citizenship" and this may present an opportunity, although a) anyone remaining in the UK would still not be resident in the EU/EEA and b) this is an idea that might not get any further than being just an idea. Nonetheless, it could be an interesting angle that may not currently be being looked at for British professionals looking to retain representation rights.

Series marks 

Remaining in the UK and the UKIPO has recently issued guidance on series marks. Although not exclusively available in the UK, they are a bit of an alien concept to some trademark professionals in other countries. A Series of trademarks is a number of marks with very small differences. Any differences between the marks must not substantially change how they look, sound or alter their meanings. As a common example, a black and white version of a trademark and a colour version of a trademark can often be included in the same application (and at no extra cost).

The IPO's guidance reflects a strict approach for marks to form a series.

Enjoy your weekends readers!

24 June 2016

Brexit and trademarks

The United Kingdom has decided in yesterday's referendum that it will leave the European Union.

Personally, I'm gutted. Having lived and worked on the continent, I regard myself as a Europhile. It may be a great shame that our younger people may not have so many opportunities to live and work in Europe.

There will be an impact on trademarks. What exactly needs to be determined? For now we do not need to worry.

The Prime Minister has indicated that he will stand down and it is his replacement who will submit the Article 50 request to the European Union that begins the formal withdrawal process. Indications are that this will take place in October and the withdrawal process will have a two-year negotiating period once submitted.

I think there's a chance of another General Election in the intervening period. This means we could be looking at between two-two and a half years before EU trademarks will no longer cover the UK.

Furthermore, I understand this negotiating period is extendable if agreed by both parties - a "cooling-off" period in trademark terms, I suppose.

Automatic re-registration?

What will happen to EU trademark (and design) registrations once the UK does leave the EU?

My hunch is that they will automatically continue to cover the UK. My reasons are:

1. There are so many of them that having a formal revalidation process would be a burden on UK IPO resources.
2. EU trademarks are searchable on the UK IPO's systems so it should be a fairly straightforward task to convert/duplicate them to become UK national registrations.
3. As for EU designations in International registrations, it should be possible, working with WIPO, to organise automatic 'Continuation of Effects' to the UK.
4. They would not want to discriminate UK businesses by making them pay to revalidate EU trademarks which they legitimately obtained thinking they had the UK covered.
5. It's certainly arguable that the UK IPO could lose out on a windfall that could be generated by a formal revalidation process, but I would argue that this would be a temporary spike (and the Office would need temporary staff for this) whereas they can bring in extra fees in a more managed way as registrations fall due for renewal and get assigned.

Reverse seniority?

I wonder if there is a need to allow seniority claims to be reversed so where an EU registration has claimed seniority from a UK registration then this UK registration can be reinstated (presuming it has since lapsed).

This may be beneficial in the case of very old prior rights where the corresponding EU registration does not date back as far. This could carry official fees for the UKIPO as I believe they would require examination. Whether such requests can restore the specification of the original UK registration or can only comprise that which is included in the EU registration (where they are different) would be a question to be answered in this eventuality.

From a practical point of view, an automatic revalidation process would negate the need to request "reverse seniority" in the vast majority of cases.

EEA and representatives

We wait to see if the UK's withdrawal from the EU will also be a withdrawal from the European Economic Area. If it remains in the EEA then the impacts on the management of trademarks will be less.

If it decides to leave the EEA then things may change more. Currently, only an Address for Service in the EEA is required for trademark matters before the UK IPO. Leave the EEA and the rules may change so that an Address for Service is in the UK only. In practice this would not be a big deal as the vast majority of Addresses for Service for UK national registrations are in the UK already, as opposed to other EEA countries. (Disclaimer: this is based on my regular scouring of the Trade Marks Journal and Register, and not on a detailed analysis of Addresses for Service.)

However, this could scupper any plans to automatically duplicate the EU Register to the UK as a large number of EU trademarks have IP representatives in other EEA countries. Perhaps these could be left be, with a UK Address for Service only needing to be appointed when there's subsequent dealings with the UK IPO.

UK Professional Representatives

Leave the EEA and the ability of UK Professional Representatives to act before the EUIPO (and other EU Offices) could be impacted. The Institute of Trade Mark Attorneys has indicated that they will "be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office."

If UK Professional Representatives can no longer act before the EUIPO then this lucrative strand of work will go elsewhere, firms in Germany, Ireland and the big IP units near Alicante likely destinations in my view.

If they can continue representing though then they will be well placed to continue the UK's strong level of representation before the EUIPO. Such work could also be supplemented by corresponding UK filings too.

However, we may see a change in filing strategy. If the UK is an added country to consider in filing programmes then the attractiveness of an International trademark may increase. The rationale being the more countries to be covered, the more attractive it is to use.


In Scotland the people were in favour of remaining in the European Union. This may now lead to another Scottish referendum and further implications to trademarks. I've blogged previously on what could happen in this event.

Gibraltar and Northern Ireland

Gibraltar (overwhelmingly) and Northern Ireland (much more narrowly) also voted to remain in the European Union - the out votes of England, in particular, and Wales tipping the balance towards leave.

Politically I cannot see Northern Ireland looking to go it alone or look to instead form a part of a united Ireland and so will find itself alongside England and Wales (with or without Scotland).

Gibraltar is unlikely to make a bid for independence or accept co-hegemony from Spain (as the Spanish Government was keen to offer early on). Its local trademark system currently allows for the re-registration of UK or EU trademarks, but they may close the door on EU trademarks (which have more doubtful enforceability anyway).


The Channel Island of Jersey lies outside of the European Union and its citizens were not entitled to vote in the referendum.

However, their trademark legislation allows for the automatic protection of EU trademarks to the island (i.e. without the need to re-register them locally). Conversely, UK national registrations must go through a formal re-registration process and get a local registration.

They would need to change their local law to stop EU trademarks providing protection to Jersey. I understand discussions in recent years saw them happy with the status quo but the UK's withdrawal from the EU may make them revisit this issue and we could perhaps anticipate an entirely revamped trademark law in Jersey (neighbouring Guernsey has taken its own route and runs a very efficient Registry).


Nothing changes overnight. There is no need to take action just yet. I think by "pro-actively" filing in the UK now then you may end up with duplicate UK registrations in the future. Keep your ears and eyes open as things become clearer.

20 May 2016

Delays at WIPO

A few days ago WIPO advised of increased delays following an update to its IT systems.

WIPO is not known for its streamlined operations compared to other offices such as the EUIPO or the UK's Intellectual Property Office, but it now seems there will be further delays with International trademark applications and transactions.

Madrid Real-Time Status is a handy tool provided by WIPO, but there's been little movement on incoming procedures on some of the cases I have been monitoring for a month or more now.

WIPO tries to reassures that,

Deadlines for responding to irregularity letters are calculated as of the date of communication of the letters in question.  Their late communication therefore has no bearing on the time available to respond.

It would appear the upgrade in IT systems will be beneficial in the long run and hopefully see an increase in the timeliness of action by WIPO.

WIPO, if desired by member states, may also look to implement a 'Performance Framework'. This could involve information on the performance of WIPO being published on a regular basis and would include information on pendency rates of all Madrid transactions. This would be another welcomed step with users who are currently left frustrated by slow movement at WIPO and not what many have come to expect of a modern Intellectual Property Office in 2016.

Things will hopefully be improving.

29 January 2016

New EU trademark regulations - some practicalities

23 March 2016 will see some fundamental changes to trademarks in the European Union.

Gone will be Community Trade Marks to be replaced with European Union trade marks.

The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).

The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.

New fee structure

Official fees will change. It's generally good news.

The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.

If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.

For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.

If you do have a three class or more application to file then you may want to consider filing it before 23 March.

Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.

Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!

There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.

Misleading invoices

The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.

It is important that trademark owners and representatives remain vigilant.

In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.

New website

We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.

I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.

Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.

Speaking of which, watch out in case the Office adopts new social media handles.

If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.

Old specifications for class headings

The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.

Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.
  • The deadline is 24 September 2016
  • The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
  • Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class
If the deadline is not acted upon then any specifications for class headings will be interpreted literally (the means what it says approach).

EEA representation

Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.

Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.

International Registrations

A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.

This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.

At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.

There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:

1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.