19 December 2011

From the cold to the canal

Our continental drift takes us across the Atlantic this week to North America. Britain may not be the global power she once was, but she still appears in the centre of most maps so its logical for me to start in the left hand corner of the world for this latest blog instalment.

As before, Wikipedia will be our guide when determining the definition of North America. There are a handful of islands belonging to Colombia and Venezuela that are technically in North America but I will exclude them from this piece.

The United States of America is the obvious powerhouse in the region. I have a certain reluctance to file through the Madrid Protocol though. There is a high rate of Office Actions issued, although this can be partly explained by filing too broad specifications which could be avoided with better preparation. My main concern is with the onerous maintenance requirements that I feel make it lose out in the cost savings advantage to a national filing in the long term.

The Madrid Protocol is not an extensive tool for filing in North America anyway with only Antigua and Barbuda, Bonaire, Sint Eustatius and Saba, Cuba, Curacao and Sint Maarten being available. Three of these make up a part of the Kingdom of the Netherlands but registration is secured separately from that in the Benelux. Incidentally, Bonaire, Sint Eustatius and Saba is a single jurisdiction for trade marks, alternatively referred to as the BES Islands or the Caribbean Netherlands; however, the Trade Marks Office is in Europe being managed by the Benelux Merkenbureau.

US and INTA encouragement to adopt Madrid in this region has not been as successful as could be expected. Fellow NAFTA members Canada and Mexico appear no closer to membership. In fact, Canadians have generally negative feelings towards the Protocol.

Greenland is covered by a Danish registration and, since 11 January 2011, in designations of Denmark in an International Registration. If you already have an International Registration designating Denmark before this date the option exists to request renunciation and simultaneously designate Denmark in a subsequent designation (although this will lose you your original filing date). Note that Community Trade Marks do not provide any protection to Greenland as it is outside the EU.

Community Trade Mark applications do cover Guadeloupe and Martinique. However, a national registration from France (including an International Registration designating France) is required for the other French possessions in North America: St Barthélemy, St Martin and St Pierre and Miquelon.

Incidentally, St Martin and Sint Maarten are the same island. It is just the names in French and Dutch. In practice, there is no border and the two communities mix and get on very well.

In the main, individual applications are required. It's the case for all Central American nations: Belize, Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua and Panama. The two countries making up the island of Hispaniola, Dominican Republic and Haiti, also require national applications.

It's also the case for Bermuda, an overseas territory of the United Kingdom. A UK registration can be of assistance in securing protection in Bermuda. It will in any case be needed in case protection is required in parts of the Caribbean.

A UK national registration is a prerequisite for registration in Grenada. In the absence of the UK registration some protection can be accorded through the publication of a Cautionary Notice under the Merchandise Marks Act.

A UK registration can also form the basis of an application or at least have some persuasive value in some of the Commonwealth islands of the Caribbean. However, many of these countries have been introducing new trade mark legislation in recent times that reflects a more independent line.

The Cayman Islands maintain a solely dependent filing system although a CTM or International Registration designating the UK can form this basis, not just a UK national registration.

Anguilla, Bahamas, Barbados, British Virgin Islands, Dominica, Jamaica, Montserrat, St Kitts-Nevis, St Lucia, St Vincent and the Grenadines, Trinidad and Tobago and Turks and Caicos Islands complete the British colonial legacy of the Caribbean. Don't confuse Dominica with the Dominican Republic.

Do note that a handful of Caribbean states are continuing to use the former British classification system. "Archaic" would be an understatement when describing this. It contains no provisions for service marks, although I have seen services placed, rather questionably, in the miscellaneous Class 50 (10). The UK ditched it way back in 1938, although it still hung around for a bit with some old registrations not being reclassified until the 1990s. In the UK we referred to this classification as "Schedule III" but as more and more people do not remember it, this term appears to be falling out of use.

In the British Virgin Islands, after some debate this year, a UK registration basis is the only way to register a service mark.

Canada is the most notable classification "anomaly" in the region in that it does not use a classification system at all.

Aruba, a constituent country of the Kingdom of the Netherlands, must be protected through a separate local application contrary to the other parts of the Kingdom which can be included through a Madrid filing.

Puerto Rico and US Virgin Islands complete the set of trade mark jurisdictions in North America. Federal US registrations cover the external territories of the US but Puerto Rico, in particular, is usually the subject of local applications. I understand they are better in the event of fighting localised infringement. The US Virgin Islands operates a deposit system that merely registers Federal registrations upon production of a certified copy. At least it is cheap to secure local protection there if ultimately required although many do not bother.

The conclusion, and whereas Europe required just 10 or 11 filings, for North America it's a whopping 31 or 32.
  • US filing (if budget allows, otherwise include in Madrid filing)
  • Madrid Protocol filing designating: Antigua and Barbuda, Bonaire, Sint Eustatius and Saba, Cuba, Curacao, Denmark, France and Sint Maarten
  • 30 x more national filings in Anguilla, Aruba, Bahamas, Barbados, Belize, Bermuda, British Virgin Islands, Canada, Cayman Islands, Costa Rica, Dominica, Dominican Republic, El Salvador, Grenada, Guatemala, Haiti, Honduras, Jamaica, Mexico, Montserrat, Nicaragua, Panama, Puerto Rico, St Kitts-Nevis, St Lucia, St Vincent and the Grenadines, Trinidad and Tobago, Turks and Caicos Islands, United Kingdom, US Virgin Islands
If you take out the three members of NAFTA then the population of North America is less than 70 million and represents high trade mark costs per head of the population. Nevertheless, the influence of the US which has a large Hispanic population is clear, many use the US dollar and receive US television making them very American brand savvy.