16 January 2014

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

I posted on this topic back almost exactly two years ago in January 2012 and the blog continues to be popular.

In the subsequent two years though some things have changed so it was time for an update.

While it has decreased in recent years - including in the last two years - there are still a few 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 was probably the most high profile of the Cautionary Notice countries but they adopted a trade mark law in 2013.

I speculated two years ago that the Comoros could join OAPI and this is exactly what it did from 25 May 2013.

In the absence of a UK National Registration it was also possible to publish a Cautionary Notice in Grenada under its archaic Merchandise Marks Act. New legislation has removed the requirement for a UK National Registration.

So another three countries dropped off the "Cautionary Notice list" and this leaves:

Myanmar (or Burma as the country is still referred to by some Governments) has a somewhat 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. However, WATCH THIS SPACE, Myanmar has trade mark legislation drafted and it is hoped this will come into force during 2014.

Until 1993, Eritrea was a part of Ethiopia, but upon independence did not introduce a trade mark law or even replicate the (old) 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 unpredictable.

The Maldives have a similar situation. There is no codified IP law. However, locally incorporated companies can register their trademarks under the name of the company. Monthly fees must be paid to maintain a registration (albeit these are small).

In the absence of a locally incorporated company - and this seems common even for large international businesses - it is possible to publish a Cautionary Notice in a local newspaper. As a Muslim country, publications should be avoided for "alcoholic beverages".

Somaliland is recognised by the international community as a part of Somalia, but in practice enjoys 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”. As another Muslim country, publications should be avoided for "alcoholic beverages".

Gibraltar represents an optional Cautionary Notice jurisdictions based on its Merchandise Marks Act 1888. This British overseas territory has a dependent registration status for its more formal Trade Mark laws. The local Trade Marks Registry accepts applications with a UK (including International designations) and a Community Trade Mark basis. It is questionable how easy to enforce the latter would be though in the absence of specific legislation to recognise them. As a part of the European Union, Gibraltar should be covered by a Community Trade Mark automatically but there are doubts to this. I have blogged in more detail regarding Gibraltar previously.

The remainder of the world's Cautionary Notice countries consist of 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. While the penalties are not considered a sufficient deterrent, Cautionary Notices are nevertheless considered of some use.

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).

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.

Some firms can publish a single Cautionary Notice for multiple jurisdictions through a pan-Oceania publication. (We can do this too.) However, this does not have the same circulation figures as a national newspaper. I am therefore wary of doing this because of the unclear value Cautionary Notices provide in the first place and feel publication in local newspapers per jurisdiction may prove to provide improved protection.

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 can vary 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 an estimated population of 60 million people, Myanmar represents a potential market of significance. Political developments seem likely to 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. This does explain why some brand owners may opt for a single pan-Oceania Cautionary Notice publication for these jurisdictions. It could be considered a "better-than-nothing" approach that will not cost as much.

I would be reluctant to come to firm conclusions, but I like to provide an opinion that might be helpful. 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. Because of a CTM's questionable enforceability, it could be worthwhile supplementing it with the publication of a Cautionary Notice. Publication costs for Cautionary Notices in Gibraltar are not too expensive.

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.