16 February 2012

Down Under Trade Marks

Finally, we reach 'Down Under' in our continental journey across the world as we look at trade mark protection in the continent of Australia and within its wider Oceania definition.

The obvious big gun in this region - in terms of population and area - is Australia. This is the only member of the Madrid Protocol in the region although this could change soon with New Zealand getting closer to membership. (Ignore the misleading headline in the link; also New Zealand would not be the first country to allow on-line International applications.)

For now, New Zealand is covered by national filings and it boasts an extremely efficient and organised Trade Marks Office. Registrations in New Zealand cover its dependent territory of Tokelau, but not the Cook Islands or Niue when granted under the Trade Marks Act 2002. Cautionary Notices form the only rudimentary way of protecting trade marks in the Cook Islands and Niue.

Cautionary Notices are also available in the Marshall Islands, the Federated States of Micronesia, Nauru and Palau.

The situation for the Pitcairn Islands is unknown. There is a local publication for the island (only one is inhabited) but the population is estimated at less than 50. The nearest it gets to a trade mark legislation is a Registration of Business Names Ordinance.

Norfolk Island, culturally related to the Pitcairn Islands, is automatically covered by an Australian trade mark.

Britain's colonial legacy is ubiquitous in this region and a United Kingdom National trade mark registration is a pre-requisite for protection in Kiribati, the Solomon Islands and Tuvalu, all now independent from the UK. Incidentally, there are no agents in Kiribati or Tuvalu. A UK basis is an option in Fiji where it can greatly reduce the registration timeline compared to a local substantive application. Note that Fiji does not have provision for service marks.

Samoa allows purely local applications or applications based on an overseas registration provided they are filed within two years of the overseas registration being obtained. Papua New Guinea and Tonga represent jurisdictions where only local applications can be filed. Tonga previously operated on the basis of requiring a UK National trade mark registration but introduced its own law to get away from this colonial stranglehold.

This is also the intention in Vanuatu which has introduced a new Trade Marks law repealing the old dependent legislation. The previous legislation was introduced in 2008 to allow for protection of other EU registrations but the Office then interpreted this to be registrations in EU member states only but not Community Trade Marks. The "new" legislation derives from 2003 but no regulations have been issued and no fees set and so it is not operational. It is believed registration cannot be obtained in the meantime based on the old legislation. Wait and see...

The French territories within the Pacific are covered by French registrations (including International registrations designating France) but not Community Trade Marks. New Caledonia could represent a case to keep an eye on as it is due to have a referendum on independence from France in the next few years. Paris, as well as London, with some separatist issues.

US Federal registrations cover the whole of the USA. However, both American Samoa and Guam have their own registration systems. American Samoa's trade mark law is somewhat 'light'; there is not even any renewal provisions (making re-filing the only possibility) and, in my experience, seems to operate as a deposit registry. Guam has a local system of registration, which requires use, and an alternative USPTO deposit system where proof of a US Federal registration is required. Because the USPTO allocates separate registration numbers to Madrid Protocol registrations and it should be possible to obtain certified copies of these, I believe it would be possible to deposit one of these in Guam under the latter system.

If a business only has interests in the Pacific they could forego US Federal registration in favour of a State registration in Hawaii. Non-American trade mark owners are presumed to conduct business inter-state - although this is easier in the congruent 48 states - but a registration in Hawaii is very cheap. The Department of Commerce and Consumer Affairs has halved the official fee (to just $25) for this calendar year, like it did last year.

The Northern Mariana Islands are not known to have a trade mark law of their own meaning a US Federal registration should provide protection automatically. In fact, there are provisions within an anti-counterfeiting law to protect not just trade marks registered with the USPTO, but also trade marks registered in any State or Territory of the US, or foreign trade mark or those protected by Common Law.

(The provinces of Indonesia and special territories of Chile would be covered by national registrations in Indonesia and Chile respectively and are excluded here.)

To conclude, this sparsely populated continent would require 11 applications:

1. Madrid Protocol application designating Australia, France and United States of America
2. National applications in American Samoa, Guam, Kiribati, New Zealand, Papua New Guinea, Samoa, Solomon Islands, Tonga, Tuvalu and United Kingdom
(Vanuatu currently not possible.)

Then six Cautionary Notices in Cook Islands, Marshall Islands, Federated States of Micronesia, Nauru, Niue and Palau.

Australia and New Zealand represent respected developed markets. The other jurisdictions are usually only on the radar of owners of large trade mark portfolios.