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 #
Nicaragua
Oman * (multi-class applications expected to be allowed locally soon)
Panama
Peru
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.

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