Miscellaneous musings (on recent IP news)

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!

UK Registered Designs - online filing for all filing routes - and other bits

The Intellectual Property Office in the United Kingdom recently introduced an online tool for the filing of UK national registered design applications.

I blogged over two years ago on the online filings of designs when the UK was certainly not alone in not offering an online service. The UK system is new and not yet as developed as I imagine it will become e.g. it does not support priority filings which must still be made by post.

Ignoring any unregistered rights that can persist, this now means design applicants have three (online) routes to protect their designs to the United Kingdom:

1. National UK application
2. Registered Community Design application covering the 28 member states of the European Union including the UK
3. International Design application through the Hague System designating the European Union

What route is preferable will depend on whether a business has interest in protecting their design nationally, across the EU, or in other states that are also a part of the Hague System, or to a handful of jurisdictions with a link (historical or current) to the UK.

There has been much fanfare that Japan, Korea and the US have joined the Hague System relatively recently. These are countries with different design regimes than Europe. I have had to temper clients' enthusiasm that they could now get easy and cost-effective design protection in such countries. It's not going to be quite as straightforward as some circles have made it out to be. For example, the Marques Class 99 blog has explained how the task of claiming priority (which should be a simple formality) is complex and expensive, meaning designating these countries in an International application may be a false economy; i.e. you may as well just file nationally from the start (see 'Priority problems - parts 1 and 2 from 13 October).

Incidentally, the UK is likely to accede to the Hague System in its own right in due course. As I've commented on the SOLO IP blog, I'm not convinced this brings much to the table. However, it would be beneficial if the UK decides to leave the European Union.

The International Design system is useful for obtaining protection to mostly other European countries if protection beyond the EU is required. Iceland, Liechtenstein and Norway - which along with the EU members make up the European Economic Area - can be covered, as can Switzerland.

I've blogged before on the usefulness of a UK National Registered Design to foreign shores. These benefits are highly unlikely to be extended to designations of the UK in a Hague International registration (when it becomes possible to designate the UK).

This is because protection in the overseas jurisdictions arises from legislation enacted locally (and usually a long time ago). To provide protection of a Hague designation of the UK will likely require local legislation to be amended and, to be frank, if this were to happen it more likely independent design legislation would be enacted and a 'link' to the UK ended.

Whether National, Community or International (or a combination thereof) is preferable, official fees for all three filing routes are not expensive.

A little piece on Bosnia-Herzegovina

Being a football fan, I like to take inspiration from my favourite sport (e.g. here) and this week is no different. It's been World Cup 2014 qualification week and whilst I am delighted that England have qualified, I also like to see new teams qualify for the big stage too.

Brazil 2014 will see the first appearance of Bosnia-Herzegovina.

To be accurate, Bosnian players could have appeared for Yugoslavia in 1930, 1950, 1954, 1958, 1962, 1974, 1982 and 1990. There are also three other possible first-timers still in the hunt for qualification, although I feel their participation is unlikely.

Enough football and allow me to take a look at the IP landscape in Bosnia-Herzegovina.

The Institute of Intellectual Property manages intellectual property in the country. Delays are known to be encountered with the processing of trade mark applications filed locally although these have lessened of late.

International routes for trade mark protection and industrial design protection through the Madrid and Hague Systems are available. I was therefore quite surprised to see a large number of national design and trade mark applications from foreigners in the latest Gazette published on their website.

Bosnia-Herzegovina adopted a new trade mark law at the beginning of 2011. This introduced an opposition procedure. Previously, it relied on its relative and absolute grounds examination - this made a large contribution to the delays that were experienced. It also formalised procedures for making registration with Customs for IP rights.

EU accession would appear to be a goal for Bosnia-Herzegovina, but it is far behind other countries in the region. Croatia and Slovenia are already in the EU and Macedonia, Montenegro and Serbia are official candidate countries. Even Albania is ahead in the queue having submitted an application.

Croatia's recent accession to the EU means Bosnia-Herzegovina borders the European Union. To the naked eye, Bosnia-Herzegovina can appear to be landlocked on a map, but it actually has a small coastline on the Adriatic Sea around the town of Neum, which juts into Croatia. This makes the territory around the city of Dubrovnik an isolated exclave of Croatia and of the EU. Travelling to this part of the EU from another part of the EU by road therefore means traversing some territory of Bosnia-Herzegovina.

The horrific Bosnian War of the 1990s ended with the signing of the Dayton Peace Accord which set up Bosnia-Herzegovina as a federal state. There are two entities, the Federation of Bosnia and Herzegovina (mostly inhabited by Bosniaks and Bosnian Croats) and the Republika Srpska (mostly inhabited by ethnic Serbs). It's a jigsaw of a country where the internal borders have been meticulously drawn. On the ground, political conflicts between the two entities are common though.

So much so that it would cause little surprise if Republika Srpska were to declare independence. This would fracture the region even more and, selfishly speaking, we would have another IP jurisdiction on our hands. One that might not be entirely welcome in the international arena (see also Kosovo).

Perhaps if they can have a successful 2014 World Cup, this will be a unifying experience for Bosnia-Herzegovina.

Hague movements, Brunei joins

After a quiet 2013 in the international world of designs comes some news from WIPO of the accession of Brunei to the Hague System for the International Registration of Industrial Designs.

It will be possible to designate Brunei in a Hague application from 24 December 2013.

As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.

Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.

For now though, welcome aboard to Brunei.

Another separate IP jurisdiction: French Polynesia

This blog likes to explore exciting and exotic places that the writer has, unfortunately, little chance of visiting in person!

This week is no difference as it heads to Tahiti, the main island of French Polynesia.

Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.

The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.

3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.

Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").

This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.

That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.

The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.

The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.

Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.

It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.

It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.

It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).

What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.

The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.

On-line Design applications

Following last week's announcement from WIPO on their improved on-line filing facility for Hague International Design applications, this week I will look at the on-line filing abilities of some other Offices.

OHIM provides a platform for filing Registered Community Design applications on-line. This is well used and the ease of uploading representations makes the applications significantly easier.

Compare this to the United Kingdom where paper forms are still required and it can be a bit fiddly collating all the representations into order. The same is the case in Germany, Benelux and Portugal, as examples.

OHIM's Cooperation Fund should help all countries within the EU introduce on-line facilities for filing design applications in the future. Among its initiatives, many national trade mark applications in EU member states can be filed on-line. These are scheduled to be extended to design applications in due course.

Outside the European Union, Switzerland has not yet developed an on-line process although it does accept applications via e-mail. However, Switzerland can be included within a Hague application.

Further afield, Canada and Australia offer on-line tools for which they should be commended.

It is understandable that systems for on-line design applications need to be robust in order to cope with a large number of representations as attachments. This makes them less easy to implement.

In the UK at least, most national designs are filed by local, often individual, designers directly (bigger firms and those professionally represented tend to take the European or International route). Their voice is perhaps less heard than professional IP organisations. This factor may also contribute towards why the UK IPO may not have considered it a priority to implement an on-line filing system for designs. As the UK looks to revamp its design legislation, the practical improvement of developing an on-line tool may also be carried out ahead of any support from OHIM's Cooperation Fund..

New on-line filing tool for Hague Design applications

WIPO have announced the introduction for a new on-line filing system for Hague International Design applications.

It will now be possible to upload multiple design representations at the same time, which may speed up the preparation of applications. A fee calculator will be built into the tool to help with the accurate calculation of fees due (which can be complicated under Hague). Furthermore, it will be possible to pay for applications using a credit card. This will be very useful for filers that do not hold a deposit account with WIPO; previously if you wanted to make payment by credit card then you needed to wait for a WIPO irregularity notice and then make payment through their E-Payment tool.

WIPO have prepared some step-by-step tutorials for the filing of Hague applications including the creation of a user account that is necessary.

With the accession of the United States and the powerhouse economies of the Far East to Hague expected in the not-too-distant future, WIPO are preparing themselves well to be more efficient ready for an increase in the number of filings.

Rwanda to become latest Madrid member

Following on from the eagerly anticipated accession of India to the Madrid Protocol, now it is the turn of Rwanda to join up. We will be able to designate Rwanda in a Madrid Protocol application from 17 August 2013.

Rwanda will become the 91st member of the Madrid family. Having joined the Hague Agreement Concerning the International Registration of Industrial Designs in August 2011, Rwanda is proving to be keen on international arrangements in intellectual property.

Formerly a German colony and then under Belgian administration, Rwanda has a Civil law system (although nowadays Rwanda is also now a member of the Commonwealth).

This Civil law history should mean its Madrid Protocol membership is automatic and requires no legislative amendments locally (although, of course, the Office of the Registrar General may need to make some operational changes). This does mean that the enforceability of International Registrations designating Rwanda is not in question, which is not the case for many African Madrid members with a Common Law legal system.

Rwanda joins Kenya as the only other member of the East African Community to also be a member of the Madrid Protocol. Rwanda will become the 16th member of the Madrid Union in Africa (although again note the questionable enforceability of International Registrations to some African countries).

Welcome aboard Rwanda!

Comoros joins OAPI

News from Africa sees the island nation of the Comoros ratify the Bangui Accord to become the 17th member state of OAPI.

I understand the hard copies of the Comoros' accession documents are yet to reach OAPI. It is believed these will arrive soon but there is a little uncertainty pending their arrival.

The Union of the Comoros is due to become a member on 25 May 2013. From this date, applications filed in OAPI will cover the Comoros. Furthermore, renewals filed after this date will then extend the relevant registrations to cover the Comoros.

In the meantime, if renewals are some time away and you wish to protect your trade mark rights in this country, it is possible to file Extension Applications to cover the Comoros. (This is very much different from the CTM system where new members (such as Croatia) will be automatically covered upon their joining.)

Prior to its accession to OAPI, the Comoros was one of the Cautionary Notice countries of the world. If you have published a Cautionary Notice in the islands then you should now look to register these rights at OAPI either by making an application or, if existing OAPI rights already exist, by making Extension Applications (although if these rights are close to renewal you may be able to save some money by just waiting until renewal can be filed).

I have previously speculated that the Comoros may join OAPI because as a small, francophone country it would represent a quick-win to join this organisation. However, it is located between Mozambique and Madagascar in the south west of Africa and will form a geographic outpost of OAPI - they will need to enlarge the map appearing on their homepage. Saying this, Madagascar was a member of a precursor to OAPI, OAMPI.

The Comoros represents the 17th member of the OHADA - Treaty on the Harmonisation of Business Law in Africa to mirror this with membership of OAPI. The Democratic Republic of Congo (for those of you of a certain age, this might still be Zaire to you) is also due to adhere to OHADA. This country already has its own trade mark legislation and has less need to join up to OAPI too (although this did not prevent Mali and Guinea becoming OAPI members in the 1980s and 1990s respectively).

As one of the world's poorest countries, the Comoran government will be hoping that its accession to OAPI will encourage investment to the islands.

Incidentally, the Comoros disputes the status of Mayotte, part of the Comoros islands archipelago but administered by France (at the wishes of its local population it may be said). Mayotte is covered by French registrations (including International Registrations designating France) and, from 1 January 2014, when it will become an Outermost region of the European Union, Community Trade Marks too.

Caribbean IP Part 25: Trinidad and Tobago

ISO 3166 country code: TT.

As 96% of the population live on Trinidad - Tobago has a population of just over 50,000 - the country is often referred to as just Trinidad (much like Antigua and Barbuda is referred to as Antigua). Nevertheless, I'll refer to it in its more proper longer form.

Trinidad and Tobago is party to a number of International Agreements on intellectual property and plays a particularly active role compared to its regional neighbours. Membership includes the Berne Convention, Locarno Agreement, Nice Agreement, Paris Convention, Patent Cooperation Treaty, Trademark Law Treaty, UPOV Convention, Vienna Agreement and WIPO Convention.

It has yet to join the Madrid Protocol for trade marks or the Hague System for industrial designs.

The trade mark law in Trinidad is modern and the Intellectual Property Office works reasonably efficiently. The forms are straightforward to understand, with some similarities with those in the UK.

The Trinidadian and Tobagonian Government operates a portal which provides the general public on information on intellectual property, most notably on registering a trade mark.

Unfortunately, the actual IPO's website never seems to load for me.

Trinidad and Tobago has recent legislation for the protection of industrial designs dating from 2007 and it is necessary to file locally - or, in other words, a UK registration provides no protection.

The country has modern laws in place, an Office that operates with reasonable speed and has joined various International Agreements. It is felt that - with some amendments to the local trade mark legislation - that the country would be well equipped to join the Madrid Protocol. As a significant market in the English-speaking Caribbean they would be a welcome addition to the Madrid family.

Caribbean IP Part 24: Suriname

ISO 3166 country code: SR.

Suriname, or Surinam, is the smallest independent nation in South America but with a Dutch-colonial history it is often categorised with the Caribbean (see also neighbouring English-speaking Guyana). It is an ethnically diverse nation yet Dutch remains the official language, although there are dialectal differences from the Dutch dialects spoken in Europe.

Suriname is a member of the Berne Convention, Hague Agreement, Nice Agreement, Paris Convention, Strasbourg Agreement and WIPO Convention. Most of these memberships were continuations of the Netherlands' memberships following Suriname's independence in 1975.

Notably, this includes the Hague Agreement for the International Registration of Industrial Designs. However, this membership only extends to the Hague Act and not the Geneva Act. Applicants from Geneva Act only members will not be able to use the Hague System for protecting designs in Suriname. This would include an EU applicant who can rely only on the EU's Geneva Act membership e.g. the likes of British, Danish, Finnish, Irish, Spanish and Swedish applicants.

It is not apparent that independent industrial design registration is available for Suriname. For trade marks, Suriname does not have membership of the Madrid Protocol but national applications can be filed locally. There are backlogs with applications but it isn't a complete black hole and applications do eventually mature to registration.

Service marks are not yet registrable - the trade mark legislation dates from colonial times - and patent protection is unavailable in Suriname. Little mention appears to being made to updating legislation in relation to intellectual property which leaves an impression that Suriname has little interest in intellectual property rights.

Caribbean IP Part 23: Sint Maarten

ISO 3166 country code: SX.

Sint Maarten was a part of the Netherlands Antilles up until its dissolution on 10 October 2010. Much of what was written about Curaçao applies to Sint Maarten.

For a transitional period of one year the Sint Maarten Bureau of Intellectual Property was to be managed in Curaçao (by what was the former Bureau of Intellectual Property of the Netherlands Antilles). Effectively, the laws for Sint Maarten and Curaçao were to remain the same and the Registers would have operated in parallel. Owners of existing Netherlands Antilles registrations were automatically considered to cover both Sint Maarten and Curaçao. Of course, from 10 October 2010 it has been possible to file or renew in Curaçao only, or in Sint Maarten only.

The one-year transitional period in which Sint Maarten should have began operations of its own IP Office has now passed and I am not aware that this Office has been established in the St Maartener capital of Philipsburg or elsewhere in the country. Once this happens then we may see a divergence in practice and timelines compared to the Office in Curaçao.

Caribbean IP Part 16: Haiti

ISO 3166 country code: HT.

Occupying the western third of the island of Hispaniola, Haiti is the only independent country of the Caribbean region where French is an official language (along with Haitian Creole). Haiti was the first independent nation in Latin America and the Caribbean following a successful slave revolt in 1804.

Haiti is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Service de la propriété intellectuelle (Service of intellectual property) is the responsible office in Haiti. Unfortunately, they do not appear to have a web presence of yet. The Haitian Copyright Office, Bureau haitien du droit d’auteur (BHDA), is able to boast a website, however. This is available in French only; there is no English version nor are pages available in Haitian Creole. This is a reflection generally where French appears to maintain prestige in legal matters in Haiti. Haitian Creole is based largely on French but it possesses standard orthography (it is a language available on the translation tool of the Google search engine) and has been official since the 1960s.

IP legislation in Haiti goes back many years - trade mark legislation was last amended in 1956 and that for designs in 1924. Independent registration is necessary for both trade marks and designs and accession to the Madrid Protocol or Hague System would appear to be far off for Haiti.

A trade mark registration is in force for 10 years but has an additional maintenance requirement - the due date being three months into the sixth year of registration - in which the trade mark owner must file evidence of use of their mark in Haiti, or, an executed Affidavit of Non-Use.

Haiti has sought full associate membership of the African Union and shares many IP characteristics with some African states: old laws, communication difficulties and agents that are not always as responsive as we may like. However, it does function in the IP arena and let's be realistic. With Haiti's economic state still suffering from the devastating earthquake of 2010 it is not surprising that the Government has more pressing priorities than modernising its trade mark law, for example.

Caribbean IP Part 13: Dominican Republic

ISO 3166 country code: DO.

The Dominican Republic is the second largest country (in terms of both population and area) in the Caribbean after Cuba. It is an economic power in the Caribbean region.

In IP it is a member of important international treaties such as the Berne Convention, Paris Convention, Patent Cooperation Treaty and WIPO Convention.

It is also a member of the UPOV Convention, the International Union for the protection of new varieties of plants. This was a mandatory requirement for the Dominican Republic when it became party to the 'Dominican Republic - Central America Free Trade Agreement' ("CAFTA-DR"), a free trade agreement which includes the United States.

There are a number of other intellectual property provisions within this agreement including that members "shall make all reasonable efforts to ratify or accede to" inter alia the Hague System for designs and the Madrid Protocol for trade marks. With such unassertive language it may come as little surprise that none of the member states have joined the Hague System and just one (the United States) has joined the Madrid Protocol.

The National Office of Intellectual Property (its Spanish acronym ONAPI) administers IP rights in the Dominican Republic, their website being available in Spanish only. I can, however, establish that it is possible to undertake identical trade mark searches on-line. There also appear to be on-line filing facilities (and there is a resolution in relation to electronic filings), although the web pages were not working for me when I tried.

The Dominican Republic used to be one of the quirkier trade mark jurisdictions around. I remember when it used to have its own classification system and you could choose your registration term (between 5 and 20 years) which caused record-keeping headaches, particularly for databases that liked to auto-calculate renewal dates. In recent times, things have become far more straightforward and the Office works effectively, a short opposition period helping trade mark applications, in smooth cases, mature to registration quickly.

The CAFTA-DR agreement will continue to see pressure from the United States for the Dominican Republic to join the Madrid Protocol. Costa Rica is anticipated to be the first (other than the US, of course) to come on board the Protocol and once they join perhaps there will be a domino effect with the other member countries.

Caribbean IP Part 11: Curaçao

ISO 3166 country code: CW.

Do note that Curaçao was the main island (in population and where the capital was located) of the now dissolved Netherlands Antilles. The ISO 3166 country code for the Netherlands Antilles was AN.

As an example of the latter's continued use, the Bureau for Intellectual Property still uses a domain name with the .an suffix. It was formerly the IP Office for the Netherlands Antilles and being located in the Curaçaoan capital of Willemstad has continued as the IP Office for Curaçao.

The Office has a useful website which details the various IP rights available. It also provides an 'i-Envelope' service for establishing the date of creation of an idea; this appears similar to - and possibly modelled on - the 'i-DEPOT' facility provided by the Benelux Office for Intellectual Property.

Curaçao is a constituent country of the Kingdom of The Netherlands which has extended most of its international treaties to Curaçao. Of particular note is the Madrid Protocol being available for Curaçao; the country must be designated separately and it requires the payment of Individual Fees.

The Bureau for Intellectual Property encourages use of the Madrid Protocol for local applicants and even for foreign applicants who may incorporate a company in the island, which could be beneficial from a tax perspective.

Applications can be made in English, Dutch, Papiamentu or Spanish although a local representative is required. It is also possible to register industrial designs locally, but International registration is not possible as the Hague Union has not been extended to Curaçao by the Dutch Government.

Curaçao boasts an efficient IP Office and with Madrid Protocol applications available to foreign brand owners is an easy Office to deal with. However, as it is not a member of the Madrid Protocol in its own right the country is not listed in the members list provided by WIPO; information on Curaçao is in the small print at the bottom of the list. Therefore, don't forget that it is available through the Madrid Protocol as part of any international trade mark filing strategy.

Caribbean IP Part 7: Bonaire, Sint Eustatius and Saba

ISO 3166 country code: BQ.

This is one of those jurisdictions that has multiple names. Bonaire, Sint Eustatius and Saba is that used by WIPO and is arguably less ambiguous than the other names used: BES Islands or the Caribbean Netherlands.

Bonaire

Saba

Sint Eustatius

The latter demonstrates that it is not an independent part of the Netherlands. It is not even a constituent country of the Kingdom of the Netherlands; note the Kingdom of the Netherlands being different to the Netherlands. They obtained their current status following the dissolution of the Netherlands Antilles on 10 October 2010, that is of special municipalities of the Netherlands. With a collective population of only 21,000, the majority being on Bonaire, this may have been a reason why self-government would have been unattractive.

Many would be forgiven for thinking that now these islands are a part of the Netherlands they would be protected by a trade mark covering the Netherlands (i.e. a Benelux or Community Trade Mark). However, this is not the case and a separate trade mark process is applicable. I use the word "process" here deliberately as a separate Trade Marks Office does not exist. Trade marks are managed through the Benelux Office for Intellectual Property (BOIP) in The Hague, albeit a different section to that administering Benelux trade marks. At least there is a separate website for the part related to Bonaire, Sint Eustatius and Saba: CaribIE.

As you may imagine for a system developed by the BOIP this is an easy on the eye and intuitive website to navigate. Trade mark searches can be conducted on-line and an on-line filing facility exists. According to the guidance notes, it appears that if you are the proprietor filing directly then you do not need an agent but if you appoint one then they must have an address in either Aruba, Curaçao, the Netherlands, Sint Maarten or, naturally, Bonaire, Sint Eustatius or Saba. In practice, most are based in Curaçao, given this is where the Netherlands Antilles' IP Office was, or in the Netherlands. Representatives from Belgium or Luxembourg or other EEA states are not accorded representative rights currently (as they are for the BOIP in Benelux trade mark matters).

It is possible to file trade mark applications in English in addition to Dutch. English has official status on Sint Eustatius and Saba. It is not currently possible to file in Papiamentu which is co-official with Dutch in Bonaire (see also under Aruba).

If you did not confirm old Netherlands Antilles registrations with the CaribIE then the deadline in which to do so has now passed.

The Madrid Protocol has been extended to Bonaire, Sint Eustatius and Saba by the Dutch government but a designation must be requested separately from that of the Benelux or European Community and separate fees must be paid.

Older International Registrations that designated the Netherlands Antilles will have continued to have effect in Bonaire, Sint Eustatius and Saba automatically.

I am not aware that it is possible to register Industrial Designs in Bonaire, Sint Eustatius and Saba. In view of its special status within the Netherlands, I would doubt that Benelux (or indeed Community) Designs provide protection. International Hague System registration has not been available since the freeze of the London Act (applicable to Bonaire, Sint Eustatius and Saba) on 1 January 2010 and an official denunciation of this was made by the Dutch Government on 13 December 2010.

In October 2015, the special status of Bonaire, Sint Eustatius and Saba will be reviewed by the Dutch Government and the islands could be included within the European Union (there are provisions in the Lisbon Agreement to do so). Logistically this may not be desirable for obvious geographic reasons and the islands use the US dollar as their currency, not the Euro.

If the islands do become a part of the European Union then Community Trade Marks and Registered Community Designs would be expected to be automatically extended. However, would it, for example, be possible to file opposition to a Community Trade Mark based on a Bonaire, Sint Eustatius and Saba registration? I would doubt it because OHIM considers Gibraltar a part of the European Union yet basing an opposition on a Gibraltarian registration is not possible (at least not on the opposition form). (This is almost nitpicking as to have a registration in Gibraltar requires one in the United Kingdom; although a CTM opponent could conceivably prefer to base an opposition on a registration in Gibraltar as opposed to the UK to avoid a possible counter-claim to its mark in a larger market.)

To avoid going off at a tangent (bit late!) and back to Bonaire, Sint Eustatius and Saba where many will anticipate little change to its current relationship with the EU. We may not have to worry ourselves about such a scenario.

Caribbean IP Part 6: Belize

ISO 3166 country code: BZ.

Belize is a country of Central America but being a former British possession, as British Honduras, is often linked with the Caribbean region. Spanish is a widely spoken language in this linguistically diverse country and Guatemala holds territorial claims to Belize meaning it sits at the crossroads between the West Indies and Central America.

Belize is a member of the Berne Convention, Hague Agreement, Paris Convention, Patent Cooperation Treaty and the WIPO Convention.

The Belize Intellectual Property Office (BELIPO) administers IP rights in Belize. They have a bold mission statement, "To build a modern intellectual property system that values and protects the vibrant creative culture of Belize." Their website is a dedicated resource to IP and provides for on-line filings of trade marks and industrial designs and it also publishes its Intellectual Property Journal on-line.

Belize has made significant strides in developing its IP legislation this century with new legislation introduced for trade marks, industrial designs and patents in 2000. Before this date, I can recall the former trade marks law requiring a UK registration to obtain local registration. In those days, applications could be made direct to the General Registry and I recall that they were not easy to get hold off if you wanted to query a delay in registering a trade mark. These days a local agent is required. You can even use the law firm in which the current Prime Minister of Belize is senior partner (although, unsurprisingly, he is on a leave of absence from the firm whilst he carries out these duties).

A Statement of Use is required in order to renew trade marks in Belize although non-use can be excusable; "lack of a suitable distributor in Belize" usually being an acceptable reason, for example.

It is possible to designate Belize in a Hague design application. It is only available to those with an entitlement under the Hague Act as Belize has not become party to the Geneva Act. In any case, this membership does not appear to be reflected in the Industrial Designs Act - Cap. 254 and therefore I find it unlikely that such Hague designs would be enforceable in Belize; the country following the Common Law doctrine.

With the Prime Minister winning re-election earlier in the year - and him coming from an IP agency - will the coming years see Belize join the Madrid Protocol and make efforts to put their Hague system membership in order?

Hague happenings

The Hague System for the International Registration of Industrial Designs does not compete with its trademark counterpart under the Madrid System.

There are some fairly obvious reasons for this:

1. In the "hierarchy of intellectual property" designs do not sit as high up as patents or trademarks.

2. The country scope of the Hague System is not as comprehensive as the Madrid System.

3. The confusion with - and to a certain extent non-compatibility - of the Hague and Geneva Acts of the Hague System.

The value of designs is expanding, as I have previously blogged, and the number of registered designs is increasing.

The country scope of the Hague System is far from comparable to the Madrid System for trade marks.

Europe is widely covered by Hague - the EU being a member making a notable contribution here. Africa is a patchwork of members and non-members (as it is also with respect to Madrid) with OAPI membership noteworthy. However, the membership barely touches Asia or the Americas let alone Australia at all.

Hague membership sits at 60 members. However, this is a bit misleading as 15 are a party to the Hague Act only and 45 are a party to the Geneva Act. For those of you with more exposure to trade marks, you can align this with the Madrid Agreement and the Madrid Protocol. Similar to how the Madrid Agreement is being phased out (with just Algeria being a member of the Madrid Agreement but not the Madrid Protocol), it seems the aim of WIPO to replace the Hague Act with the Geneva Act; a previous Act, the London Act is already "frozen".

It is complicated a bit further in that some of the members of the Hague Act only are member states of the European Union or of OAPI; with the EU and OAPI being members of the Geneva Act. Applicants from these countries can take advantage of both the Hague Act and the Geneva Act (using different entitlements).

Expansion of the Hague System is arguably less of a priority for IPR owners. Designs are often protected in a home jurisdiction only, as WIPO's statistics for 2010 seem to evidence. 77% of direct applications for Registered Community Designs were by EU applicants in a total of 76,865 filings. In the same period the EU was designated in an International Hague Application on only 3,512 occasions.

When the UK Government examined the EU's plan to accede to the Hague System it came out in support but against a simultaneous application to join it at a national level. It was asserted that the majority of IPR holders that sought design registration outside of the UK would need it in the EU anyway.

The figure for Hague designations of Switzerland is similar to that of the EU. Conversely, this figure is higher than the number of applications filed directly to the Swiss Federal Institute of Intellectual Property. This does suggest more regular use of the Hague System by Swiss applicants to protect in their home country and the EU.

New joiners tend to join the Geneva Act. Of the 15 Hague Act only countries, only four (Belize, North Korea, Morocco and Suriname) do not also have effective Geneva Act membership through being a part of the EU or OAPI.

Of these, Belize, as a Common Law country, should amend local legislation to reflect their membership but I cannot see anything in their Industrial Designs Act - Cap. 254 regarding this and would therefore have doubts concerning the enforceability of an International Registration in Belize.

North Korea faces stringent UN sanctions and most banks in the West will refuse to transfer funds there. Use of the Hague System circumnavigates this somewhat (as official fees are transmitted to WIPO) but potential applicants should be cautious and I would consider avoiding designating North Korea, even if it is possible to do so.

For Geneva Act qualifying only applicants, Suriname at the top of South America also cannot be included. The same applies for Morocco for the time being at least, but according to my sources at WIPO this country is moving towards Geneva Act accession.

The Republic of Korea - for the avoidance of doubt, that's South Korea - is expected to provide notable Asian presence with its expected accession to the Hague System. Over 57,000 design applications were filed in South Korea in 2010 which makes it a considerably large design filings country. Internal politics - an election is scheduled for later this year - have slowed the accession proceedings for the time being.

China and Japan have also been mooted as future members but this could be over enthusiasm from WIPO officials. During 2010, a humongous 421,273 design applications were filed in China (and it's not often I get to use the word 'humongous' in an IP blog!).

The United States have also been suggested as future members; I'm certainly aware that they have an upcoming election but more in the dark about any possible Hague membership application.

Of the current members, do be careful in designating Ghana for the same reason as Belize above. I cannot see amendments to Ghana's local law to allow for the enforceability of Hague International Designs. Incidentally, this is the same situation with respect to the Madrid Protocol and Ghana.

The situation in Namibia is ambiguous. Constitutionally Namibia should recognise the international treaties it has become a party to, but it has yet to implement specific legislation catering for Hague designs. With its history tied to neighbouring South Africa, it has a mixed Civil Law and Common Law system.

The other member countries are Civil law countries, which take into account international obligations. This includes Rwanda, which has a legal system derived from Belgian Civil law, although is now a part of the Commonwealth of Nations.

The Hague System languishes behind the Madrid System but it provides a very cost effective way to obtain design protection across Europe (beyond the EU). The addition of manufacturing powerhouses such as China and South Korea can only see its stature grow as a major commercial player could add momentum to a membership increase.

WIPO's own 2012 report on the Hague System, containing statistics and pretty graphs, was issued in May.

Got a Registered Community Design, got Europe?

As my 'Got a CTM, got Europe?' blog proved popular and continues to receive regular hits - and following on from my blog on the rising importance of registered designs - it seems worthwhile to write about protecting designs throughout Europe.

As before, I will use the definition provided by Wikipedia for Europe.

We will focus on the applicant being from a member state of the Hague System (Geneva Act) e.g. an applicant from the European Union. This rules out applicants from non-Hague countries such as the United States. However, a US applicant with "a real and effective commercial or industrial establishment" or "habitual residence" in a member state could take advantage of the system. Ownership could also be through a trust company incorporated in, say, the EU and then licensed back. However, there is no provision for the recording of a license at WIPO against a Hague International Registration which could make this less desirable.

Benefits of the Hague system, contrasting to the Madrid Protocol for trade marks, are:

1. There is no need for a base registration.
2. You can designate your own country (e.g. the EU) in an application.

This means a single International application can be made to cover the home country of, say, the European Community plus Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Croatia, Georgia, Iceland, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Serbia, Switzerland, Turkey and Ukraine.

For the sake of argument, if we were to file one design with seven reproductions and no deferment of publication it would cost CHF 1560 (approximately €1300/$1630) in official fees.

The inclusion of the European Community would not provide protection to any further territories within Europe but outside of the European Union with the exception, as far as I understand, of the Isle of Man. My understanding extends further to it not providing protection to Gibraltar, as I have previously blogged.

Nevertheless, the Isle of Man is covered by a registration in the United Kingdom. A registration in the United Kingdom is required to provide automatic protection to Gibraltar. It also provides protection to the Sovereign Base Areas of Akrotiri and Dhekelia (as I cannot see that design legislation was delegated to the Republic of Cyprus government). It is this same law, dating from when Cyprus was a British colony, that still appears to be in force to protect designs in the Turkish Republic of Northern Cyprus ("TRNC"). The TRNC, recognised only by Turkey, has not introduced design legislation of its own.

Obtaining a Registered Design in the United Kingdom, under the same criteria as the International filing above, would cost £60 in official fees (approximately €75/$95).

Such a UK Registered Design would need to be extended to the Channel Islands. Official fees here are £120 in Jersey (approximately €150/$190) and £100 in Guernsey (approximately €125/$155) plus an official fee of £22 (approximately €28/$35) each to the UK Designs Registry for the certified copies required to substantiate the applications locally.

Kosovo introduced a new designs law in 2011 with the assistance of OHIM. With official fees of €40 (approximately $50) it is also inexpensive.

The EU designation will cover Denmark, but a Danish national design registration is required to provide protection to the remote Faroe Islands. Denmark operates a deposit system for designs meaning they are registered quickly and efficiently. The basic fee is DKK 1200 (approximately €165/$205).

This means a significant part of Europe can be covered by six simple applications at a very reasonable cost (official fees of approximately €1911/$2395).

Many businesses will consider protection for Gibraltar, the TRNC and the British bases on Cyprus, the Channel Islands and Faroe Islands as unnecessary. The estimated combined population is little over half a million with over half of this figure made up of the TRNC's population, although this figure is disputed. Omitting filings to cover these territories will see official fees drop to approximately €1340/$1680).

You may have agent charges on top of the official fees and, with the probable exception of a Hague filing, agent fees will be more expensive than those charged by the Design Offices. I can speak for my firm and know we can provide very reasonable costs for coordinating the filings.

Further afield, the only remaining European states to have design legislation are Belarus, Kazakhstan and Russia. In these countries designs are more expensive due to higher official fees, agent charges and more vigorous examinations resulting in increased chances of objections. However, as the rest of the continent can be protected so inexpensively there can be room left in budgets to pursue registration in these three emerging markets that form a Customs Union.

Increase in International trade mark and design filings

WIPO has announced an increase of International filings for both trade marks and designs during 2011.

Trade mark filings have risen by 6.5% compared to 2010.

That looks good on the face of things, but we will analyse further. OHIM's figure, when the figures for International designations are removed, is an increase of 6.9% year-on-year but compare this to an increase of EU designations in Madrid applications of 11.9%.

I have found some US graph statistics for their filings which are far from specific with the figures so I've used very rough amounts. Nevertheless, removing the Madrid figures from the total sees US filings increase from 2010 to 2011 by approximately 9.5%. This compares to an increase in the Madrid figures of US designations of 11.5%.

Can we draw conclusions from these figures? Firstly, are we comparing a like-for-like Madrid system from 2010 to 2011? The answer is, broadly, yes we are. Israel was a notable joiner to Madrid on 1 September 2010 but this is it really. Kazakhstan (8 December 2010) and Tajikistan (30 June 2011) also came on board but they were already Madrid Agreement members. Denmark's extension of the Madrid Protocol to Greenland - with a population of little over 50,000 - on 11 January 2011 is, I feel, unlikely to have made much inroad into the statistics.

Given this, perhaps the figures show some increased confidence in the global economy but one in which trade mark owners are being more careful with their money. The EU and US have often been filed separately from an International application - there can be some differences and practical advantages by keeping the US and the EU away from an International registration - but costs constraints may appear to have pushed many to consider these acceptable.

When it comes to designs the situation is similar. We have to go on rough graph statistics from OHIM this time. Registered Community Design filings increased by 4% from 2010 to 2011 whereas designations of the EU in a Hague International application rose by 6.6% in the same period.

Again, is this a like-for-like comparison? Yes, largely it is with neither Azerbaijan (joined on 8 December 2010) nor Rwanda (31 August 2011) troubling the statisticians from 2010 to 2011.

A difference in the Hague system compared to Madrid is that you do not require a base application in your home country and can include your home country within an application. This could also demonstrate a stronger global economy as EU applicants go via Hague because they have interest in protecting their designs not just in the EU but outside it too.

The Hague system will welcome Tajikistan on 21 March 2012 as it already has done with Montenegro on 4 March 2012. The Madrid system (which may see its Madrid Agreement part become extinct) is also hoping to increase its members this year. Both will continue to offer great value ways of obtaining broad trade mark and industrial design protection.

Just be aware of the issues in Common Law countries that do not enshrine their obligations to Madrid or Hague in their national laws. As I've touched on before, I have some doubts regarding the enforceability of Madrid International Registrations in Bhutan and some African countries.