17 January 2012

Cautionary Notices - not worth the paper they're printed on?‏

This blog has since been updated (January 2014).

Whilst it has decreased in recent years there are still a number of countries around the world without trade mark legislation. It has become established practice to publish Cautionary Notices in the local press of these jurisdictions that alert third parties to a proprietor's trade mark rights.

But how valuable are these publications? Yes, they warn the local public of a proprietor's rights but could they unhelpfully attract the attention of the bad guys like counterfeiters?

The obvious problem in countries without trade mark legislation is there is no IP law per se to back up the trade mark "registrations" obtained by publishing Cautionary Notices.

Ethiopia is really an exception. However, Ethiopia is not a mere Cautionary Notice jurisdiction in the strictest sense. Cautionary Notices do need to be published but this is after formal paperwork is filed and approved with a local IPO. The Federal High Court in Ethiopia is able to hear trade mark infringement cases and, I believe, has done so thus creating a body of case law. Ethiopia also has plans to introduce a more typical trade mark law and it could be anticipated they will grant priority rights to registrations granted under the current system.

Myanmar (or Burma as the country is still referred to by some Governments) also has a more formalised system in place where a Trade Mark Declaration is lodged with a Registration Office prior to the publication of a Cautionary Notice. According to my research, case law exists that includes the throwing out of a trade mark infringement action on the basis that there was no provision for the same in Myanmar's law. However, the court was willing to entertain cases relating to passing off; Myanmar following a Common Law doctrine.

Until 1993, Eritrea was a part of Ethiopia, but upon independence did not introduce a trade mark law or even replicate the Ethiopian registration procedures. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. The publication of Cautionary Notices in Eritrea has an unpredictable nature as it is not clear if there is any case law. It is also worth mentioning that the government - Eritrea is a single-party state - restricts the publication of Cautionary Notices from time-to-time. If the separation of government and judiciary is not what we might expect, it could be expected that the value of any Cautionary Notice, when it is allowed to be published, is not going to held in high regard.

The Comoros is an island chain between Madagascar and Mozambique. My understanding was that it is yet to introduce IP legislation following independence from France in 1975. However, the WIPO website indicates a trade mark law dating from the 1960s. It would appear this never came into operation and formal registration is not possible; or this may merely be the French legislation in force at the time. Cautionary Notices are an established means to show trade mark ownership and with a prior law drafted you could argue there is good faith to recognise trade mark rights. It should also be noted that the Comoros is a party to inter alia the Paris Convention. Its francophone heritage could mean future membership of OAPI is a possibility and it could represent a "quick win" in introducing trade mark legislation to the islands. However, this may prove unlikely as it would form a geographic outpost of this organisation. It is worth mentioning that the Comorian island of Mayotte is not a part of the independent Union of the Comoros (despite their claims to the contrary) and instead remains a part of France. As from 31 March 2011, when it became an overseas department, protection is accorded by French and Community Trade Marks (including relevant International Registrations).

Somaliland is recognised by the international community as a part of Somalia, but in practice seems to enjoy de facto independence. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trade mark legislation but in the absence of a Trade Marks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”.

and Grenada represent optional Cautionary Notice jurisdictions based on their Merchandise Marks Acts, in Gibraltar's case from 1888 and Grenada's from 1889. Both have a dependent registration status for their more formal Trade Mark laws. In Grenada's case this must be from the United Kingdom. In Gibraltar's case it is different as the Trade Marks Registry also accepts applications with a Community Trade Mark basis; it is questionable how easy to enforce these would be though in the absence of specific legislation to recognise them.

The remainder of the world's Cautionary Notice countries consist of an island group in the Indian Ocean, the Maldives, and a number of island countries in or near Oceania, namely, the Cook Islands, the Marshall Islands, the Federated States of Micronesia, Nauru, Niue, Palau, the Pitcairn Islands and Timor-Leste.

The latter is the exceptional case in this small list as it has a Civil law system based on that of Indonesia, which includes some remedies against trade mark misuse. Whilst the penalties are not considered a sufficient deterrent, Cautionary Notices are nevertheless considered useful.

The other islands derive their legislation from Common Law countries: Australia, New Zealand, the United Kingdom and the United States. Cautionary Notices for non-used marks could have limited value. I am not aware of publications having ever taken place in the Pitcairn Islands but this is no surprise given the population is estimated at less than 50 (although there is a dedicated publication for the islands if you would like someone to make enquiries).

The Cook Islands and Niue provide an unusual situation due to their evolved relationship with New Zealand. Registrations granted under New Zealand Trade Marks Act of 1953 cover the Cook Islands and Niue whereas those granted under New Zealand Trade Marks Act of 2002 do not. This Act does not extend to the Cook Islands and Niue due to their increased levels of self government. As an alternative to introducing their own trade mark legislation, I imagine they could recognise the 2002 Act (or ask the New Zealand Government to extend the Act, if this is more appropriate) but that this would only be done on their specific action. Incidentally, Tokelau remains an unincorporated territory of New Zealand - and therefore directly covered by New Zealand trade marks - despite two UN supported referenda encouraging it to move to a self-governing state in free association with New Zealand like the Cook Islands and Niue.

One issue with Cautionary Notices is their cost. They don't really come cheap. This is not to say they are usually excessively more expensive than a standard trade mark application in many countries, but take into account that regular re-publication is expected in order to make them worthwhile. The term for republication varies but if you took it at an average of every three years then you can do the maths and work out that this will work out more expensive than your regular trade mark renewals. With estimated populations of 82 million and 60 million people respectively, Ethiopia and Myanmar represent potential markets of significance. Political developments in Myanmar may see its pariah state status improve and being situated between India and China it has obvious high growth potential. However, note that most of the Pacific island nations support tiny populations.

I would be reluctant to come to firm conclusions, but sitting on the fence can become painful after a while! So... I would tend to treat Ethiopia as a regular trade mark jurisdiction. Comoros at least shows good intentions towards trade marks although how trade mark rights generated through Cautionary Notices would fare in any enforcement appears unknown. For Timor-Leste it seems that Cautionary Notices do provide some value even if it is somewhat limited. Eritrea represents particular ambiguity and I would endeavour to explore the registration of a trade name first of all, if possible.

Gibraltar is a special case. Ideally have a UK registration to extend to the territory, but in the absence of this it is possible there will be a CTM in place which can form the basis of an application, albeit with questionable enforceability. Nevertheless, this may well provide as much value as the publication of a Cautionary Notice.

For Grenada, it seems churlish that you need to obtain a registration from a country (the UK) miles away, but I would suggest that UK registration is nevertheless sought. If a UK registration is not obtainable because of a prior right, a Cautionary Notice may prove desirable, but only after it is searched that the UK prior right has not been registered locally in Grenada first.

For the other countries, Common Law rights would seem to provide for protection and I would consider the publication of Cautionary Notices to be a supplement to these rights rather than an alternative. The expense of Cautionary Notices would also be a notable disadvantage to "defensive" publications.

I am lucky enough to have the contacts that can arrange for the publication of Cautionary Notices around the world if ever a reader needs assistance.