Madrid Protocol
I'll start my musings on Madrid (the Madrid Protocol) where Hong Kong is beginning steps to become available for International trademarks, although this is not likely until 2019 at the earliest.
Under Article 3bis of the Madrid Protocol, "The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration. However, no such request can be made with respect to the Contracting Party whose Office is the Office of origin."
This is interpreted so that Hong Kong applicants will not be able to designate (mainland) China and vice-versa. As many will know, Hong Kong is not a sovereign state and is a Special Administrative Region of China. As such, any Madrid membership will be made by China on its behalf.
Notwithstanding this, the Netherlands has membership of the Madrid Protocol and has extended this to Bonaire, Sint Eustatius and Saba (sometimes referred to as the BES Islands or the Caribbean Netherlands). Bonaire, Sint Eustatius and Saba are special municipalities of the Netherlands. There are 817 live International Registrations which designate Bonaire, Sint Eustatius and Saba and where Benelux is the Office of origin (that's not to say all applicants are from the Netherlands, some are from Belgium or Luxembourg).
From the above, it seems a Contracting Party can have different Office of origins and is not necessarily caught by an Article 3bis restriction.
Anyway, it seems Hong Kong and (mainland) China will look to come to another arrangement outside of the Madrid Protocol.
Eurasian Trademark
Another IP system we may need to become aware of is through the Eurasian Trademark system. This may be with us in 2018. It will cover Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
It seems it will be a mix between how the International and EU trademark systems work. There will be no need for a base application/registration, but applications can be filed with anyone of the five national IP Offices. Although it will be a unitary right across all countries, it will be examined by each national IP Office separately. In the event of refusal, this can be argued nationally. A final refusal in any country will result in refusal of the Eurasian trademark, but conversion/transformation into national applications in the non-refused countries appears to be possible.
It's not clear if this system will look to link to the International trademark system. I'm not sure I can envisage it being used much by Western trademark owners when all member countries are members of the Madrid Protocol anyway (Russia and Kazakhstan being particularly cheap under Madrid). However, it may be useful for local portfolios (think, in particular, marks in Cyrillic script) as there is no requirement to get an unnecessary base registration (with the 'Central Attack' fears that can pose). Any attractiveness to Western trademark owners may come down to costs.
Hague
Remaining in the Eurasian region and Russia will be joining the Hague System for Designs. They will join other regional countries as members: Armenia, Azerbaijan, Georgia, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan and Ukraine. Accession is anticipated for later this year and will be for the Geneva Act only.
The UK is also likely to accede to the Geneva Act of the Hague System in early 2018. This will be welcomed, particularly if UK applicants shall no longer have easy direct access to the Registered Community Design system when 'Brexit' happens.
Representation at the EUIPO
Whether UK practitioners will still be able to work directly with the EUIPO is something that is very much on the radar of British IP professionals that undertake a lot of EU work. There has been talk of Brits opting into "EU citizenship" and this may present an opportunity, although a) anyone remaining in the UK would still not be resident in the EU/EEA and b) this is an idea that might not get any further than being just an idea. Nonetheless, it could be an interesting angle that may not currently be being looked at for British professionals looking to retain representation rights.
Series marks
Remaining in the UK and the UKIPO has recently issued guidance on series marks. Although not exclusively available in the UK, they are a bit of an alien concept to some trademark professionals in other countries. A Series of trademarks is a number of marks with very small differences. Any differences between the marks must not substantially change how they look, sound or alter their meanings. As a common example, a black and white version of a trademark and a colour version of a trademark can often be included in the same application (and at no extra cost).
The IPO's guidance reflects a strict approach for marks to form a series.
Enjoy your weekends readers!
Showing posts with label EUIPO. Show all posts
Showing posts with label EUIPO. Show all posts
29 January 2016
New EU trademark regulations - some practicalities
23 March 2016 will see some fundamental changes to trademarks in the European Union.
Gone will be Community Trade Marks to be replaced with European Union trade marks.
The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).
The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.
New fee structure
Official fees will change. It's generally good news.
The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.
If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.
For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.
If you do have a three class or more application to file then you may want to consider filing it before 23 March.
Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.
Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!
There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.
Misleading invoices
The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.
It is important that trademark owners and representatives remain vigilant.
In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.
New website
We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.
I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.
Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.
Speaking of which, watch out in case the Office adopts new social media handles.
If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.
Old specifications for class headings
The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.
Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.
EEA representation
Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.
Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.
International Registrations
A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.
This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.
At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.
There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:
1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.
Gone will be Community Trade Marks to be replaced with European Union trade marks.
The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).
The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.
New fee structure
Official fees will change. It's generally good news.
The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.
If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.
For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.
If you do have a three class or more application to file then you may want to consider filing it before 23 March.
Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.
Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!
There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.
Misleading invoices
The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.
It is important that trademark owners and representatives remain vigilant.
In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.
New website
We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.
I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.
Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.
Speaking of which, watch out in case the Office adopts new social media handles.
If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.
Old specifications for class headings
The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.
Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.
- The deadline is 24 September 2016
- The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
- Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class
EEA representation
Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.
Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.
International Registrations
A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.
This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.
At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.
There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:
1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.
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