Caribbean IP

Back in September I began a regular feature reviewing Intellectual Property in the Caribbean region.

This journey of island hopping, which also took me to Central America and the top of South America, has now ended.

The full list of the jurisdictions and their reviews is now provided:

Anguilla

Antigua and Barbuda

Aruba

Bahamas

Barbados

Belize

Bermuda

Bonaire, Sint Eustatius and Saba

British Virgin Islands

Cayman Islands

Cuba

Curaçao

Dominica

Dominican Republic

Grenada

Guyana

Haiti

Jamaica

Montserrat

Puerto Rico

St Kitts and Nevis

St Lucia

St Vincent and the Grenadines

Sint Maarten

Suriname

Trinidad and Tobago

Turks and Caicos Islands

US Virgin Islands

Furthermore, Guadeloupe, Martinique, St Martin and French Guiana are covered by French and Community Trade Marks (including International designations) whereas St Barthélemy is covered by French national registrations and International Registrations designating France only.

This is a region that for many years was stagnant on the IP front but there are now changes happening with many of the jurisdictions introducing new legislation over the last decade. With the dissolution of the Netherlands Antilles in 2010 there was also the creation of three new trade mark jurisdictions: Bonaire, Sint Eustatius and Saba (also known as the Caribbean Netherlands or the BES Islands), Curaçao and Sint Maarten.

Things will continue to change with the Bahamas and the British Virgin Islands - both using the very archaic former British classification system for trade marks - expected to introduce new trade mark legislation in the next couple of years.

I did not cover St Helena in my series. This is located in the middle of the Atlantic Ocean but is sometimes erroneously included with the other Saints (Kitts, Lucia, Vincent) and assumed to be in the Caribbean. Given its remoteness it is a very low volume trade mark jurisdiction but if you need any support here then do not hesitate to reach out to me.

I hope this series has been of interest and welcome comments, suggestions or questions.

Caribbean IP

I'll now start a regular feature on intellectual property in the Caribbean. I'll use the definition of the Caribbean provided by Wikipedia and supplement it with Belize, Guyana and Suriname. As these three countries are not officially Spanish-speaking they are more often associated with the Caribbean than they are with Central America or South America.

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It is easy to think of the Caribbean as paradise holiday islands in the sun, which can be true, but it is a diverse region containing high income territories such as the Cayman Islands and the British Virgin Islands to Haiti, often considered the "poorest country in the Western Hemisphere", and communist Cuba.

This is a region where lots of IP legislation has been modelled on that of the United Kingdom, and many British firms have good contacts in this part of the world. 12 of the independent Caribbean jurisdictions have a British colonial past, and five remain British overseas territories. However, do not rely solely on the UK Intellectual Property Office's advice contained on their website. I have found that this contains errors, particularly with respect to designs. I brought these to their attention when I wrote that blog post but it seems as though they are not in a rush to amend these pages.

The Caribbean contains three independent nations that can also be put into a Latin America bracket: Cuba, the Dominican Republic and Haiti.

I will not include the French overseas departments of Guadeloupe and Martinique or the overseas collectivities of St Barthélemy and St Martin as these (except St Barthélemy) are covered by French and Community Trade Marks (including International designations). Inhabited Caribbean islands belonging to Colombia, Honduras, Mexico, Nicaragua and Venezuela will also be excluded.

This will leave two insular areas of the United States: Puerto Rico and the US Virgin Islands, and finally the Dutch Verwantschapslanden (kindred countries): Aruba, Bonaire, Sint Eustatius and Saba, Curaçao and Sint Maarten.

To avoid any bias which I could have - and I have been lucky enough to visit three of the region's beautiful islands - I will approach this in alphabetical order:

• Anguilla
• Antigua and Barbuda
• Aruba
• Bahamas
• Barbados
• Belize
• Bonaire, Sint Eustatius and Saba
• British Virgin Islands
• Cayman Islands
• Cuba
• Curaçao
• Dominica
• Dominican Republic
• Grenada
• Guyana
• Haiti
• Jamaica
• Montserrat
• Puerto Rico
• St Kitts and Nevis
• St Lucia
• St Vincent and the Grenadines
• Sint Maarten
• Suriname
• Trinidad and Tobago
• Turks and Caicos Islands
• US Virgin Islands

Bermuda is omitted here as it is not a Caribbean country; it is actually located closer to Canada. However, it is an associated member of the economic group the Caribbean Community (CARICOM). Furthermore, Britain's second oldest remaining colony (after Bemuda), St Helena is often wrongly assumed to be with the other "Saint" islands in the Caribbean. It is very remote being located in the South Atlantic Ocean; Africa is the usual continent it is assigned to.

Nevertheless, if there is time I will also take a look at Bermuda and St Helena. In the meantime, stay tuned for 'Episode 1: Anguilla' next week.

As my practice concentrates on trade marks and designs I will focus on these IP rights in the main, but being able to handle extension of UK patent rights where this is a purely administrative task, I may touch on these too.

UK Registered Designs - how far do they go?

I sometimes describe registered designs to clients as suffering from middle child syndrome when it comes to intellectual property rights stuck between big brother patents and younger sibling trade marks, with copyright being a close cousin and spoilt only child. Design law gets less attention and suffers from a lack of harmonisation worldwide; it's law being made up of bits of the other three. It's tagged on to a dominating patent regime of some countries, part of copyright and/or, as in the case of the EU, being controlled by its Trade Marks Office.

It does not always get completely disregarded and, for example, the UK is looking to improve its registered design system at the moment.

Some countries do not have design legislation and in some it is often assumed that a UK registration covers some countries automatically. Some of these assumptions come from the UK IPO website - or from private firms who advise based on this information. Therefore, I have explored how up-to-date the IPO's information is and provide my findings here. Independently, I have passed these on to the IPO so, if they agree, they can update their own website pages.

Of note is that Registered Community Designs ("RCDs") will not, except in a few cases, have the same effect as a United Kingdom Registered Design in these jurisdictions. This is a similar situation as with respect to UK Trade Marks and their Community Trade Mark counterparts.

Many of the countries that have introduced local design legislation provided for 12-month transitional periods for owners of UK Registered Designs to apply locally. I believe these periods have now concluded, where applicable.

Legislation introduced in 2002 brought design registration to Anguilla. Unfortunately, the law is is not available on-line without paying a fee.

Antigua and Barbuda now has independent design legislation.

Bermuda has a design law that allows for automatic protection of UK registrations but also allowing for purely local applications.

It is believed UK registrations will be automatically protected in the British Indian Ocean Territory.

The Falkland Islands also provide for automatic protection. Note the UK IPO's advice, "The Supreme Court of the Falkland Islands is empowered to declare that rights in a UK design have not been acquired in the Falkland Islands on any grounds for cancellation existing under UK law, including publication of the design in the Falkland Islands prior to the UK registration." This provision tends to be replicated in other jurisdictions providing automatic protection.

Fiji also provides for automatic protection. However, it is possible, and would indeed seem recommendable if this country is of commercial interest, to advertise the design rights already obtained in the UK in a Fijian newspaper.

Gambia now has its own law after implementing regulations were brought in during 2010.

Both Gibraltar and Grenada have laws providing for automatic protection.

With respect to Gibraltar, its status with the EU under Article 299(4) of the Treaty of Rome should allow for automatic protection of RCDs. However, there have not been amendments to Gibraltar's local Designs Act to reflect this and, as such, I believe it would be unwise to rely on RCDs being enforceable in Gibraltar.

Guernsey is a 'secondary' design jurisdiction and re-registers designs including those from the United Kingdom and Registered Community Designs.

Guyana also provides for automatic protection although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana (e.g. in the UK only), a registered design owner would be prevented from taking action. This could be a fair defence in many of the other jurisdictions too.

UK Design legislation is extended to the Isle of Man (by the British Government not the Manx Government) to provide automatic protection. Obviously, this has been amended to reflect a Registered Community Design covering the UK. Therefore, I am confused by the IPO's statement that RCDs do not cover the Isle of Man as my interpretation is that they would.

Jersey is a re-registration jurisdiction. Only a UK National Registered Design can be registered locally; no provision is made for RCDs.

UK Registered Designs are automatically protected in Kiribati.

Malta now has independent design legislation and being part of the European Union is also protected through a RCD.

United Kingdom Designs (Protection) Act No. 181 of 1887 is not available on-line but is understood to be the local legislation providing for automatic protection of UK Registered Designs in Montserrat.

St Helena is another with the fairly standard "recognise UK Registered Designs automatically" law.

I cannot see that St Kitts and Nevis has a design law to allow for either automatic protection of UK Registered Designs or for independent local applications.

St Lucia and St Vincent and the Grenadines now allow for independent design registration and UK Registered Designs will not have effect.

I cannot see that there is any design legislation in the Seychelles at all, let alone any that would give provision to automatic protection of a UK Registered Design. However, it is possible to register copyrights.

Sierra Leone offers an unclear situation through my on-line enquiries (I've not bothered my associate in Freetown at this stage). I cannot locate a design law which would allow for automatic protection of a UK Registered Design. It is possible to designate Sierra Leone in an ARIPO design application but in the absence of any design legislation, questions should be asked of its enforceability. Sierra Leone had plans for a new IP law in late 2008 but I do not believe this came into force.

UK Registered Designs extend automatically to the Solomon Islands.

Swaziland operates its own national design registration system now.

Tanzania is made up of two separate IP jurisdictions, Tanganyika (the mainland) and the island of Zanzibar. The mainland seems to lack design legislation but provisions within its Patent Act provide for automatic protection of UK Registered Designs. When it comes to Zanzibar, local independent legislation is in place.

My interpretation of the Tuvalu Chapter 62: United Kingdom Designs Protection would be that it provides for automatic protection of UK Registered Designs but I make this statement with a disclaimer. The UK IPO seems to think a local re-registration application is necessary.

In his over six years in power, Idi Amin CBE ("Conqueror of the British Empire") obviously forgot to repeal Uganda's United Kingdom Designs Protection Act. This remains in force to this day and provides for automatic protection of UK Registered Designs.

Vanuatu's design law is in a state of limbo - and for the same reason as its trade mark counterpart i.e. an absence of implementing regulations - is not yet in operation and it is therefore not possible to file for designs at this time.

The situation with the British Virgin Islands as described by the UK IPO would appear to be the same situation as exists in Bermuda (above).

After all this, I will provide a concluding table which I must stress is based on my interpretations and the taking of some information at face value.

Jurisdiction	UK	RCD
Anguilla	No	No
Antigua and Barbuda	No	No
Bermuda	Automatic	No
British Indian Ocean Territory	Automatic	No
British Virgin Islands	Automatic	No
Cayman Islands	No	No
Falkland Islands	Automatic	No
Fiji	Automatic	No
Gambia	No	No
Gibraltar	Automatic	Automatic but questions remain
Grenada	Automatic	No
Guernsey	Extendable	Extendable
Guyana	Automatic	No
Isle of Man	Automatic	Automatic
Jersey	Extendable	No
Kiribati	Automatic	No
Malta	No	Automatic
Montserrat	Automatic	No
St Helena	Automatic	No
St Kitts and Nevis	No	No
St Lucia	No	No
St Vincent and the Grenadines	No	No
Seychelles	No	No
Sierra Leone	No	No
Solomon Islands	Automatic	No
South Georgia and the South Sandwich Islands	No	No
Swaziland	No	No
Tanzania (Tanganyika)	Automatic	No
Tuvalu	Automatic	No
Uganda	Automatic	No
Vanuatu	No	No
Zanzibar	No	No

Many readers will be aware of the excellent value of the RCD system - 27 countries protected for a basic official fee of €350. The UK itself also provides for cost-effective design registration with the basic official fee being only £60 (about €70). Global owners of design rights may wish to ensure they obtain protection at not only the European Community level but also at the UK level, particularly if protection is required in parts of the Americas, Africa or the Pacific. RCDs and UK Registered Designs are both obtained very quickly.

As always, any comments or questions are welcomed.

Cayman Islands - trade mark developments commentary

There have been recent developments in the regulations surrounding trade marks in the Cayman Islands.

The developments will not change much for some trade mark owners. It will have its most notable impact on trade mark owners who use an agent or specialist annuity payment provider based outside the Cayman Islands who have previously been dealing with the General Registry directly. They will now need to use a local agent which will raise costs. Caymanian agents are not particularly cheap and this is not surprising as the Cayman Islands enjoy the highest standard of living in the Caribbean; the islands are a key international financial centre and luxury tourist destination.

In my experience, having an agent on the ground in the Cayman Islands is not a bad thing. The General Registry has had issues with resources and a local agent is able to go to the Registry and help out physically; something not available to non-resident agents.

The new legislation also requires a stricter requirement on the payment of annuities although it remains to see if the Registrar will be equipped enough to proactively cancel trade mark registrations for failure to pay annuities ex officio.

The law appears to maintain the current requirement to have a UK, Community or International Registration designating the UK to form the basis of a local Cayman Islands application. This will be a disappointment to some, particularly for trade mark owners with little need for UK/European protection which they will need to get in advance. This is an obvious disadvantage to local Cayman Islands applicants.

It also maintains the Cayman Islands as one of the most expensive trade mark jurisdictions in the world, especially considering it is a deposit registry. Even taking away the need to obtain registration in the UK or EU (this could be needed by a business anyway), it is the annual fees that ramp up the costs in the Cayman Islands. It is not clear if the fees will change under the new legislation, but presuming they remain the same, a three class registration will cost $4390.20 in official fees to obtain and maintain in force for its first 10-year term - and this is without the agents fees on top. It is hoped it will still be possible to bulk pay the annual fees up to the next renewal date as this can go some way to reducing the agents fees as well as reducing the administrative burden.

With an estimated population of only 55,000, the Cayman Islands do not represent the best value trade mark jurisdiction out there. When you require protection here, be sure to budget accordingly.

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.