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.

Ethiopia introduces trade mark law

The Federal Democratic Republic of Ethiopia has recently introduced trade mark legislation to replace its quirky Cautionary Notice system.

This is positive news for Africa's second most populous country - it's ahead of Egypt and only behind Nigeria in this respect - and one of the world's fastest growing economies.

The country's coffee industry has made significant efforts around its brands - with the support of their IP Office - so it was important their own trade mark law was brought up-to-date.

During the Scramble for Africa in the late 19th Century, Ethiopia was one of only two African nations not to have been controlled by one of the European powers of the time. It retains pride with this fact and perhaps this explains why the new law, which is modern in the main, contains some quirks. A seven-year term of registration stands out. Perhaps they are conscious on losing out on renewal fees bearing in mind the old system established six-year terms, with short-form Cautionary Notices to be published in intervening two-year periods. It has also shown no enthusiasm for joining the Madrid Protocol club.

Certain bureaucratic elements are retained, namely, the need to submit a legalised Power of Attorney and a legalised "home" registration certificate. At least the latter requirement has been relaxed and a legalised Extract of the Commercial Register can be submitted as an alternative.

Well-known marks are recognised, priority can be claimed and registrations will be vulnerable to cancellation on the grounds of non-use if they are not used for a continuous period of three years.

There is an 18-month "sunrise" period in which owners of existing rights filed before 7 July 2006 can re-register their trade marks under the new law. The deadline in which to file these - and claim the filing dates of the existing rights - is informally set at 24 June 2014.

Applications filed after 7 July 2006 will be prosecuted under the new law. If they are already registered then it is possible to request fresh, updated Certificates of Registration and indeed it seems advisable to do this.

As is typical when a country introduces a new trade mark law there remain practical details that are unknown. Waiting to see how things will operate is not a bad idea, but I would recommend that trade mark owners with interests in Ethiopia should look to make their re-registration decisions shortly. This will give them plenty of time to collate all the necessary supporting documentation and file it with their applications. This will help avoid late filing expenses and also, perhaps more importantly, help the Ethiopian Intellectual Property Office remain organised and speed up registration times.

Journey to the East

My blog now takes a look at trade mark protection across Asia, the world's largest continent that contains 60% of the world's population.

There is much cross over between Europe and Asia and so there will be some duplication from a previous blog on Europe.

The Madrid Protocol is not as extensive at protecting trade marks in Europe as it is in Asia, but it is nevertheless a useful tool and is more extensive than in Africa or the Americas.

India is hopefully not far away from joining as the Trademarks Amendment Bill, 2009 has been passed by both Houses of Parliament. It is now down to the Indian Government to accede to the Protocol.

Armenia, Azerbaijan, Bahrain, Bhutan, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam make up the current Madrid Protocol members in Asia.

Of these countries, Bhutan is a Common Law country but I cannot see any reflection of its Madrid Protocol membership within its Industrial Property Act of 2001. This puts the enforceability of a Bhutanese designation into question. Readers might be aware of similar issues faced in Africa.

Oman introduced legislation in 2008 to allow for the recognition of International Registrations.

The Democratic People's Republic of Korea ("DPRK") - or North Korea to most of us - is currently under UN sanctions and that of national governments. Banks in the UK, and I believe in the US and elsewhere, refuse to transfer funds to the DPRK. With respect to Madrid applications the official fees would be passed to the DPRK Government direct and I have enquired with WIPO whether they have put a stop to this (especially as it is a UN agency). Ironically, given WIPO is currently undertaking a survey on things such as customer service, a response to my query is still awaited! If you have any need to register in the DPRK - nationally or via Madrid - do be careful not to breach any sanctions that are in place. Provisional Refusals to Madrid designations can be issued willy-nilly which will require the appointment of a local agent.

The Cooperation Council for the Arab States of the Gulf has its own Patent Office, but this does not manage trade mark rights which continue to be handled nationally in the member states: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. (Bahrain and Oman can be included in a Madrid Protocol filing, however.)

The Association of Southeast Asian ("ASEAN") nations have commitments towards intellectual property rights but there is no regional registration possible. Therefore, separate applications are required in Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam. (Singapore and Vietnam can be included in a Madrid Protocol filing, however.)

Commitments towards IP harmonisation in the ASEAN are not exactly moving at a rapid pace and there are large differences between the developed law of Singapore with that of Laos, for example. Myanmar still operates a Cautionary Notice system.

The Maldives and Timor-Leste also represent Cautionary Notice jurisdictions within Asia.

National filings are the course of action in the remainder of the continent: Afghanistan, Bangladesh, India, Iraq, Jordan, Lebanon, Nepal, Pakistan, Sri Lanka and Yemen.

In Iraq, the autonomous Kurdistan Region operates its own Trade Marks Office and it is possible to "confirm" Federal registrations in the local Kurdistan Register. This seems desirable particularly whilst the Kurdistan Region enjoys greater stability than the rest of Iraq and the Trade Marks Office in Baghdad is not known for its excellent record keeping.

There are also a handful of partially recognised states within Asia. Abkhazia began operating its own Trade Marks Office quite recently. Also within the Caucasus region lie the de facto independent states of Nagorno-Karabakh Republic ("NKR") and South Ossetia. I am advised by the Ministry of Economy in NKR that they recognise Armenian registrations. Kindly note that de jure this territory is a part of Azerbaijan; even Armenia does not recognise it officially. As for South Ossetia, there is a "Committee for Patent and Trademark" which I believe is exploring the opening of an Intellectual Property Office as in Abkhazia, but the situation is unclear at the moment. With a small population and undoubtedly higher priorities, I would not anticipate any developments in this regard soon unless they are supported by Russia. Note that western governments, as is the case with Abkhazia, consider South Ossetia de jure a part of Georgia.

The northern third of the island of Cyprus is declared as the Turkish Republic of Northern Cyprus, recognised only by Turkey. It has its own Trade Marks Office. The island of Cyprus also contains two military bases of the United Kingdom, the Sovereign Base Areas of Akrotiri and Dhekelia. (Greek) Cypriot trade mark law is mirrored and, with respect to this article being specific to Asia, a Madrid Protocol designation of Cyprus should provide protection.

Palestine has two separate systems for registering trade marks reflecting its non-congruent territory, one being in the West Bank and the other in the Gaza Strip.

Taiwan is not recognised by many countries in official diplomatic circles, but "cultural offices" nurture bilateral relationships, for example, the British Trade & Cultural Office. Taiwan operates its own separate trade mark system from mainland China. The same is true for the two Special Administrative Regions of China, Hong Kong and Macao. Under the "One country, two systems" principle, Hong Kong and Macao maintained their separate Trade Marks Offices following their return to China by the United Kingdom and Portugal respectively.

Last but not least, there are some small territories in the Indian Ocean that constitute a part of Asia. Christmas Island and Cocos (Keeling) Islands form territories of Australia and Australian trade marks cover all Australian territories; there is specific mention of Christmas Island and Cocos (Keeling) Islands in the Australian Trade Marks Act 1995. It is possible to designate Australia in a Madrid Protocol application.

The British Indian Ocean Territory ("BIOT") provides protection automatically for UK trade marks in accordance with BIOT Ordinance No. 9 of 1984. I cannot locate this legislation on-line and so cannot see if it is anticipatory enough that it could be interpreted as allowing for protection of Community or International Trade Mark registrations. For the avoidance of doubt, a United Kingdom National registration would be required. This territory, despite being British, would be more of interest to American brand holders popular with US service personnel as the only inhabited island, Diego Garcia, is a military base. The islands have a controversial recent history in that the native inhabitants were involuntarily removed and there have been a number of court cases involving them in recent years.

The number of trade mark applications required to cover Asia is therefore 32 (plus some Cautionary Notices):

1. A Madrid Protocol application designating Armenia, Australia, Azerbaijan, Bahrain, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam

2. National trade mark applications: Abkhazia, Afghanistan, Bangladesh, Bhutan, Brunei, Cambodia, Gaza Strip, Hong Kong, India, Indonesia, Iraq, Jordan, Kurdistan Region, Kuwait, Laos, Lebanon, Macao, Malaysia, Nepal, Pakistan, Philippines, Qatar, Saudi Arabia, Sri Lanka, Taiwan, Thailand, Turkish Republic of Northern Cyprus, United Arab Emirates, United Kingdom (to cover British Indian Ocean Territory), West Bank and Yemen

3. Cautionary Notice publications in Maldives, Myanmar and Timor-Leste

Whilst considerable more than is required in Europe, it is the half the amount of Africa and North America combined, two continents which collectively have only 40% of Asia's population.

It's time for Africa‏

This week we move to the world's second largest continent, Africa, and explore ways of obtaining trade mark protection here.

In Africa there are 16 countries that are members of the Madrid Protocol. However, this is not as simple as it should be. Botswana, Ghana, Kenya, Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia are usually considered Common Law countries and would require specific legislation to be passed locally in order to recognise Madrid Protocol registrations. This appears to have happened for Botswana and Kenya.

Sudan follows Sharia Law, which is based on legal precedent and analogy and is therefore considered similar to Common Law; it was also previously governed by Britain. For years it piled up Madrid designations but now processes them (and it could be said usually a lot quicker than national filings) and gives at least tacit recognition of them. However, it cannot be ruled out that in the absence of specific legislation amendments that any positive Trade Marks Office and court judgements in favour of Madrid holders could be annulled on appeal.

The Liberian Trade Marks Office has taken it upon itself to follow trade mark legislation that makes reference to Madrid registrations. However, this drafted legislation has not been passed by the Liberian Parliament and so this country represents another case of "proceed with caution". The same can be said of Namibia, which constitutionally should recognise the international treaties it has become a party to, but has yet to implement specific legislation catering for Madrid marks; it has a mixed Civil Law and Common Law legacy from being governed by South Africa.

The other (Civil Law) countries that are members should recognise Madrid marks in the same way as national registrations. These are Algeria, Egypt, Madagascar, Morocco, Mozambique and São Tomé and Príncipe. If you can add Botswana and Kenya to this list and you have eight African countries which could be designated in a Madrid Protocol application. Others could be included depending on how you evaluate the risk.

You could definitely argue that an International Registration that is ultimately not enforceable is worthless. However, I'd suggest it could have some value and this is when it comes to searching. The International Register is easily searchable and global companies regularly perform knock-out searches including this Register. They may or may not know if an IR designating, for example, Lesotho, Swaziland and Zambia has doubtful enforceability in these countries but at the earliest stage of their searches they are looking to quickly eliminate a large number of trade mark candidates and this may enable them to do this. I do feel this benefit is not substantial but take into account that the costs of including most countries in a Madrid Protocol application are fairly incremental.

If there is an ability to file through Madrid then this effectively makes the ARIPO route redundant. Those that read a previous blog may recall that only Botswana and Zimbabwe can be safely designated in an ARIPO application so if Botswana is included in a Madrid filing then it's easier to file in Zimbabwe separately.

A single application at OAPI will cover 16 countries of Africa.

There are still a handful of countries where the only trade mark protection available is through the publication of Cautionary Notices. Comoros, Ethiopia, Eritrea and Somaliland fall within this group; Eritrea when such Cautionary Notice publications are allowed.

With the exception of the aforementioned Somaliland region, the situation in Somalia remains perilous and finding out information on the ground is a difficult task. It is believed the Trade Marks Office no longer functions as it has probably been destroyed. Furthermore, the press is fragmented - it is considered very dangerous to be a journalist in Somalia - making the publication of Cautionary Notices nigh on impossible.

The region of Puntland has declared autonomy within Somalia (as opposed to independence like Somaliland). It enjoys a level of stability higher than the rest of Somalia but again it is difficult to arrange publication of Cautionary Notices. According to the monitoring team at the BBC, the region has no local press.

South Sudan, considered the world's newest country, is in a trade mark limbo at the moment whilst it organises the various arms of its government and administration. The authority that will handle trade mark registrations is apparently "reserving" trade marks on behalf of interested parties for the time being. I am not aware of how this works in practice and I was under the impression that it will adopt trade mark legislation comparable to that of (northern) Sudan. This remains unknown along with any possibilities for revalidation and/or obligations to sign up to Madrid, although doubts in enforceability of the latter will persist if the legislation proves to be a simple duplication.

Western Sahara is a disputed territory largely under the administration of Morocco and Moroccan trade mark laws are applied directly. In Morocco it is possible to lodge trade mark applications at a number of cities around the country including some in the territory of Western Sahara.

According to the United Nations, Western Sahara remains a decolonised territory (despite Spanish withdrawal), but in the remainder of the territory – a small slither of land known as the Free Zone – it is thought unlikely that Spanish registrations would provide any protection, even those granted before the Spanish left in 1975. Can Cautionary Notices be published in this area? It is not clear that there is a local press in circulation. Perhaps it is interesting to note that Western Sahara - as the Sahrawi Arab Democratic Republic - is a member of the African Union whereas Morocco is the only African country that is not.

Other quirks on the continent of Africa include Tanzania which operates two Trade Marks Offices. One is on the mainland or the former Tanganyika and the other is on the island of Zanzibar. When Tanganyika and Zanzibar merged to form Tanzania they maintained their separate trade mark systems.

Sierra Leone is now unique on the continent in using the former British classification system. In isolated St Helena - an island where the British exiled Napoleon - it is still a prerequisite to have a UK registration before local registration can be sought. In the absence of any amendments to the regulations this is seen to be a United Kingdom National Registration or, in other words, you cannot use a Community or International Registration designating the UK.

The French, Portuguese and Spanish territories located in Africa (e.g. Réunion in the Indian Ocean, Madeira and the Canary Islands in the Atlantic Ocean) are covered by Community Trade Marks (and national registrations in France, Portugal or Spain). An International Registration designating the European Union or France, Portugal and Spain would provide the same protection, although see my previous blog on why designating the EU in an International can be undesirable.

So the grand total for complete trade mark protection in Africa requires 32 or 33 applications (and a couple of Cautionary Notice publications). This may sound a lot, but it is a similar amount as required in North America of which it has nearly double the population. Madrid and OAPI filing routes also represent good value for this continent. You can lower this amount if you are willing to take calculated risks and designate additional countries such as Sudan in a Madrid Protocol application.

1. Madrid Protocol application designating Algeria, Botswana, Egypt, Kenya, Madagascar, Morocco, Mozambique and São Tomé and Príncipe

2. Community Trade Mark application to cover French, Portuguese and Spanish territories around Africa (can be included in Madrid application if need be)

3. OAPI application covering 16 countries of west Africa

4. 30 national applications in: Angola, Burundi, Cape Verde, Democratic Republic of the Congo, Djibouti, Ethiopia, Gambia, Ghana, Lesotho, Liberia, Libya, Malawi, Mauritius, Namibia, Nigeria, Rwanda, St Helena, Seychelles, Sierra Leone, South Africa, South Sudan*, Sudan, Swaziland, Tanzania (Tanganyika), Tunisia, Uganda, United Kingdom (as basis for application in St Helena), Zambia, Zanzibar and Zimbabwe
5. Cautionary Notice publications in Comoros, Eritrea (when allowed by the Goverment) and Somaliland. (Ethiopia indicated as a national application.) 
* when it becomes possible to lodge applications
(Lists exclude Somalia and Western Sahara.)

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”.

Gibraltar 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.