WIPO to introduce Division and Merger for International Registrations

Those managing International trade mark registrations may be pleased to note of new provisions for Division and Merger that are being introduced by WIPO from February 2019.

This will give greater flexibility to International Registrations. Division, in particular, has been a disadvantage of International Registrations over (some) National registrations.

Division

As a recap, division can occur where there are objections to some of the classes in a multi-class application, the classes with objections can be transferred to a divisional application and be dealt with later. This allows the acceptable classes to move forward without delay. It can also be used to divide goods/services within a single class, although this is less common.

Division will now be possible for individual countries designated in an International Registration, provided division exists within the national law. Countries can opt out of accepting requests for division and/or can also notify WIPO of their incompatibility with the national law.

There will be a specific form for requesting division, a Form MM22. Unusually, this form is not to be filed with WIPO but with the National Office of the designated country in which you wish to request division. Currently, all WIPO forms are filed either directly with WIPO and/or through the Office of origin.

There will also be a fee due to WIPO of 177 Swiss francs. This can be paid through a current account held with WIPO or by bank transfer. Presumably, it would also be possible to not pay the fee and wait for an Irregularity Notice and then pay the fee by credit card through the E-Payment Service, although this would add delay.

As WIPO mention, the National Office may examine the request for division of an International Registration to ensure that it meets the requirements in their law before presenting it to WIPO. The Office may also require the payment of a fee, directly to them, different from the fee due to WIPO. It should also be mentioned that division is likely to be happening in foreign countries and therefore you are also likely to incur professional fees of a local agent.

Alternatively, you may be handling a specific designation of an International Registration on behalf of a client. For example, if you are a UK practitioner and have been entrusted with only the UK designation, then you would be making the request for division of an International Registration to the UK Intellectual Property Office ("UKIPO"). The UKIPO currently has a form for requesting division of a national application - a Form TM12 - which carries a fee of £100. I anticipate this fee will also apply to requests for division of an International Registration and perhaps the UKIPO may produce their own Form MM22 with a more similar look and feel to their Form TM12.

It is not clear if, for example, the UKIPO would also, on request, take the WIPO fee from a UKIPO deposit account and pass to WIPO, like they can do with new International applications filed through them as Office of origin.

Once division has taken place, WIPO will create a new International Registration (covering just the one designated country) - I would guess with the same number and a letter suffix.

Central Attack

The divided part of an International Registration will retain the same base mark. If this is lost (e.g. through Central Attack) within the first five years of registration then both the original International Registration and the divided International Registration will be cancelled.

Merger

The new regulations will allow for the merger of International Registrations under two circumstances:

1. Merger of international registrations resulting from the recording of a partial change in ownership; and
2. Merger of international registrations resulting from the recording of division

The second is clear. Presuming you overcome the issues with the divided part then you can merge it back into the main International Registration it was divided from. You'll then have just one registration to manage, renew and maintain.

The first is not entirely clear to me. If you record a partial change in ownership of an International Registration, this will create a new International Registration for the part where ownership has been partially changed. It seems therefore that if the two (or more) International Registrations subject to a partial change in ownership then come to all be back in the same ownership at a later date that they can then be merged together. If so, I do not see if this would be used much in practice.

There will be new WIPO form for mergers, a Form MM24, and it will be possible to file them direct with WIPO. No fee will be payable.

Countries can opt out of accepting requests for merger and/or can also notify WIPO of their incompatibility with the national law.

These steps will add flexibility to the International system, in particular division. Nonetheless, the relationship between WIPO, the Office of origin and the National Offices of designated countries is not always well understood and the addition of extra forms may prove to be more beneficial to more experienced users of the International system.

From single class to multi-class...

I was asked by an old colleague recently, "Do you know what countries have gone from a single class system to a multi-class one in the last 10 years?" - a question which followed with a hint to put it into a blog piece, notwithstanding its somewhat niche interest. Not that I ever give in to peer pressure...

The scenario is: you have inherited a mature trade mark portfolio with many single class registrations. Is it possible to consolidate matters by re-filing multi-class applications with a view to allowing the single class registrations to lapse in the future? The administration in managing the trade mark portfolio would reduce and, although it would not be realised straightaway, renewal costs should be reduced in the future. (If any marks are not in use then re-filing could be a way of resetting the non-use period if a mark is of continued interest.)

The risks are perhaps obvious. Allow an old registrations to lapse to rely on a newer registration could result in a third party having earlier rights. This can be mitigated by undertaking searches for any intervening marks. There may also be possible prior co-existence and acquiescence. The appetite for risk differs with each business, and it's certainly possible to take a different approach for different countries depending on their commercial importance.

You must also watch out for countries that do not allow for duplicate registrations. In these countries it will be necessary to voluntarily surrender an existing registration to overcome a refusal. In the best case with these, there will be a lag when you do not have registered rights while the application is pending registration. At worst, another issue raises its head after voluntarily surrendering the old registration.

Anyway, if you are thinking of undertaking such an exercise, here is a list of countries that may have gone from single classes to multi-class in 'recent' times, perhaps in the last 10 years, perhaps more than that. This is done from my memory so there's no guarantee this is right! It's not meant to be exhaustive. It's a pointer - you'd need to research, double-check and apply it to a specific portfolio.

Bahrain *
Brunei #
Cambodia #
China #
Colombia #
Costa Rica
Dominican Republic
Egypt *
El Salvador
The Gambia #
Ghana *
India #
Indonesia #
Kenya #
Laos #
Mexico * (in practice the IMPI will examine each class in an IR as though it is a separate application)
Mozambique *
Namibia #
Nicaragua
Oman * (multi-class applications expected to be allowed locally soon)
Panama
Peru
Spain # (this change happened back in the early 2000s when they also abolished quinquennial taxes if you remember them)
Syria *
Thailand #
United Kingdom # (definitely more than 10 years ago, more later)

The countries marked with * are single class when filing nationally, but they can be designated in a multi-class International Registration. Those marked # are now multi-class nationally and/or can be designated in a multi-class International Registration.

This leads nicely on to Replacement. Techinically, this happens automatically, but to get it noted on Trade Marks Registers it needs to be requested formally. In simple terms, replacement is to International trade marks what seniority is to EU trade marks. (Seniority is also a useful tool in consolidating rights but as readers of this blog may be very familiar with this, I will not touch on it here.)

If you have old single (or multi-) class national registrations and you now have International Registrations designating these countries then replacement may be a useful exercise to consolidate things and make a note of the older rights. You may need to obtain local advice on how each national Office will look at this; you'll typically need the help of a local associate to request replacement at each national Office anyway. It may be for this reason that replacement is hardly utilised, or perhaps it's ignorance, or because it could be a fiddly (and thus expensive) job involving liaising with multiple countries (cf. seniority which is centrally handled with the EUIPO).

Another tool more often used in the consolidation of trade marks is the merger of trade marks. The United Kingdom became a multi-class jurisdiction with the introduction of its 1994 Act - quite scarily - nearly 24 years ago.

They introduced a provision to merge single class registrations for the same trade mark in the same ownership into a single registration so that savings on renewal fees could be made. They have changed the criteria set down at various times and currently the registrations must also share the same filing date.

Ireland, which went multi-class around 1996, has a merger procedure as do Hong Kong and New Zealand. It's also possible to merge trade mark registrations in Guernsey. Just south of Guernsey is Jersey, where trade marks have to be based on UK registrations. The Jersey Registry is able to reflect in its own records where merger has taken place, but be aware for other UK dependent jurisdictions because the local laws are often rather short and may be silent with respect to mergers.

So if you're looking to consolidate a number of single-class registrations into multi-class registrations then, if the risks are acceptable, make sure to take into account International Registrations, replacement and mergers as well as the what might be more obvious re-filings and seniority.

Delays at WIPO

A few days ago WIPO advised of increased delays following an update to its IT systems.

WIPO is not known for its streamlined operations compared to other offices such as the EUIPO or the UK's Intellectual Property Office, but it now seems there will be further delays with International trademark applications and transactions.

Madrid Real-Time Status is a handy tool provided by WIPO, but there's been little movement on incoming procedures on some of the cases I have been monitoring for a month or more now.

WIPO tries to reassures that,

Deadlines for responding to irregularity letters are calculated as of the date of communication of the letters in question.  Their late communication therefore has no bearing on the time available to respond.

It would appear the upgrade in IT systems will be beneficial in the long run and hopefully see an increase in the timeliness of action by WIPO.

WIPO, if desired by member states, may also look to implement a 'Performance Framework'. This could involve information on the performance of WIPO being published on a regular basis and would include information on pendency rates of all Madrid transactions. This would be another welcomed step with users who are currently left frustrated by slow movement at WIPO and not what many have come to expect of a modern Intellectual Property Office in 2016.

Things will hopefully be improving.

The Gambia joins the Madrid Protocol

The Gambia will become the next member of the Madrid Protocol when it joins up on 18 December 2015.

African membership of the Madrid System continues to grow, although being the smallest country on the mainland of Africa, the addition of the Gambia will not make a significant impact on the worldwide Madrid System map.

Furthermore, although a lot of African countries are now members of the Madrid System, not all of these have made local legislative amendments to reflect Madrid membership and the enforceability of International Registrations is highly questionable.

This does not appear to be the case for the Gambia though, which has a relatively modern trademark law.

The Gambia has previously been infamous for its significant delays caused most notably by an enormous backlog in printing Trademark Journals. However, in recent times it has made tremendous efforts to get applications advertised and made significant inroads into its backlog.

Nonetheless, resources are at a premium at the Gambian Registry and an increase in filings caused by Madrid designations may push the Registry's capabilities even more. Of course, if you designate via Madrid and do not get a refusal in the designated time then you have an assumed registration (although this does not necessarily rule out a future challenge). Covering the Gambia through a Madrid designation will be an attractive option to many.

When it comes to Provisional Refusals, the Gambia has made a declaration under Rule 17(5)(e). Such ex officio Provisional Refusals can only be contested "before an authority external to the said Office" e.g. a tribunal or court.

The Gambia joins only China and Madagascar in making such a declaration. In practice, even if the Gambian Registry can cope with examining all its International designations in the required timescale, examination can be sketchy and it's not anticipated that the Registry will be issuing rafts of Provisional Refusals, probably very few.

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.

The Protocol - Past, Present and Future

Trade mark professionals in the UK – and many in other countries – work with the Madrid Protocol on a daily basis. How different it once was.

The Madrid Protocol, with the UK among its first members, came into play on 1 April 1996. For most, this date is better known as the first day Community Trade Marks (CTMs) could be filed (or, more precisely, the earliest filing date CTM applications could be accorded). CTMs got filed by the bucket-load and have been popular from the start.

For the Madrid Protocol it was different, as many countries were slow on the uptake. This included those that were already members of the Madrid Agreement, which, until they were in the Protocol, were out of bounds for UK businesses.

Only a handful of Madrid Protocol applications were filed by UK companies in the early days. With the European Union (EU) easily covered by the new CTM, the majority were filed to designate China as most of the other members of commercial importance at this time were other EU member states. I can recall speaking to the UK Trade Marks Registry to check on the progress of an early application and being told: “We’ve only had three applications so far.” A recent check of ROMARIN shows a mere 11 active registrations originating from the UK registered between April and September 1996.

Over time some key countries have come aboard such as Australia, Japan, Korea, Russia, Singapore and the US as well as the EU itself. And, if it was not immediately popular, the advent of the Protocol proved a watershed moment in the Madrid system and the global registration of trade marks.

Early expansion

The Madrid Agreement had been operational since 1892, but primarily as a European continental club. Prior to 1948, the only non-European member was Morocco. The arrival of Vietnam, in 1949, marked the Agreement's expansion to Asia, although it would take another 40 years before it touched the Americas with the accession of Cuba.

With little prospect of further expansion in the same guise, particularly to common-law countries, the inflexibilities of the Madrid Agreement were ironed out in the Madrid Protocol and allowed the UK, US and others to come aboard. It has grown rapidly since.

This decade has seen a diverse expansion, both geographical and economical. There has been the accession of Colombia, India, Israel, Mexico, New Zealand, the Philippines, Rwanda and Tunisia. And Kazakhstan, Sudan and Tajikistan added the Protocol to their Agreement membership. Furthermore, the dissolution of the Netherlands Antilles in 2010 created three new Madrid jurisdictions: Curaçao, Sint Maarten and Bonaire, Sint Eustatius and Saba. Meanwhile, far removed from the sunny climes of the Caribbean, Denmark extended its Madrid Protocol membership to include Greenland.

Challenges, of course, remain. Is the requirement to have a home registration really needed these days? Direct filings with WIPO would make them operationally less cumbersome. The removal of the threat of “central attack” would bring less uncertainty to the table when using Madrid, and this is a concept less easily understood by owners of smaller trade mark portfolios.

WIPO suffers processing delays at the moment. Statements of grant were made mandatory, as many users were forthright on the importance of these. WIPO listened, but the increased numbers of these documents put them under pressure.

They should have little problem in coaxing civil servants from Member States to a tax-free salary in Switzerland should it need more staff. Although my criticism of WIPO’s recruitment would be that Government experience seems to be a prerequisite for employment, when professionals from industry or private practice could add a different perspective.

I must give praise where it is due, though, and the set-up of three dedicated teams of examiners at WIPO has left the organisation less faceless. Incidentally, Madrid Team 1 (madrid.team1@wipo.int (+41) 22 338 750 1) looks after applications originating through OHIM, and Madrid Team 3 (madrid.team3@wipo.int (+41) 22 338 750 3) is responsible when the UK is the Office of origin.

The development of on-line tools should also be welcomed and will improve operations.

US issues

The onerous maintenance requirements for US designations still present a problem. In the first term of registration there are likely to be three maintenance events, namely two Affidavits due (to the US Patent and Trademark Office) and one renewal due (to WIPO). The high number of Provisional Refusals in the US may have meant there were no cost savings in the original Madrid filing, but even if there were (for there being no need to engage US Counsel), the maintenance requirements for US Madrid Protocol designations are, at best, no cheaper than they would be for a national registration. It’s easy to see why some argue that the US has taken all the benefits of the Madrid Protocol for its own businesses, but is barely extending this back to other users of Madrid. A similar situation arises for designations of the Philippines.

Common-law countries, mostly in Africa, pose another problem when they have not amended their local legislation to reflect their Madrid membership. WIPO can seem oblivious to this, thinking once they have a member signed up, it is “job done”, but ultimately if you could not enforce an International Registration in, for example, Zambia, isn’t that country's membership worthless?

As for the future, it is easiest to speculate on the new joiners. Remaining in Africa, Zimbabwe has made legislative steps to ready itself for membership, but, as we saw with India, this does not necessarily mean they will be depositing their instrument of accession immediately. Being the home of the African Regional Intellectual Property Organization (ARIPO), Zimbabwe could play an important role on the continent and help in finding a way of linking ARIPO’s Banjul Protocol with the Madrid Protocol.

Malta, currently the only EU member not to have Madrid membership, could complete the EU jigsaw. We may also anticipate Algeria – the sole remaining member of the Madrid Agreement only – to accede to the Protocol, too. This may put to bed the Madrid Agreement and abolish Article 9sexies. This provision allows applications from member states of both the Madrid Agreement and Madrid Protocol to pay complementary and supplementary fees (rather than individual fees) when designating members that are also party to the Madrid Agreement and Madrid Protocol. They also get the advantage of a 12-month examination period. Those from Madrid Protocol-only countries, including the UK, can claim this is unfair.

The ASEAN states are scheduled to join the Madrid Protocol by 2015. Thailand is expected to come aboard soon, joining the existing members in ASEAN: the Philippines, Singapore and Vietnam. Malaysia has made legislative amendments to prepare for Madrid. For the other ASEAN states (Brunei, Cambodia, Indonesia, Laos and Myanmar) this timetable may be less realistic, although we may expect Brunei or Indonesia to make strides in this time, and new legislation is imminently anticipated in Myanmar.

The same is true with CAFTA-DR countries whose free trade agreement with the US stipulates Madrid Protocol membership. Costa Rica, the Dominican Republic, El Salvador, Guatemala, Honduras and Nicaragua are the members, with Costa Rica and the Dominican Republic considered the most likely to join up first.

Pockets of resistance

Of some of the major markets currently outside of the Madrid family, resistance is strong in Canada, where local practitioners have lobbied their Government hard not to join.

Brazil and South Africa present some more positive vibes, although both realise they need to reduce examination backlogs to be able to cope with an influx of Madrid applications. They are making inroads into these backlogs, although not at the same rate as India.

Brazil faces another challenge because the local law stipulates Portuguese as the official language for all correspondence. This could be amended, but a change could present a linguistic burden on the local trade mark office. It is possible that Portuguese could become an official Madrid language – WIPO already provides some information in this language. However, there may be a reluctance to do this unless some dispensation can be reached that keeps a handle on translation costs (for example, only International Registrations designating Brazil are translated into Portuguese).

WIPO may also be wary. In 2004, Spanish was made an official language, but it has not been until the last year that Colombia and Mexico joined the Madrid club (Spanish-speaking Cuba and Spain were already members before 2004).

Making Portuguese an official language would be almost purely to lure in Brazil. Other Lusophone nations, such as Angola, Cape Verde and Timor-Leste, are not of commercial interest to as many businesses as Brazil (and Mozambique, Portugal and São Tomé and Príncipe are already a part of Madrid). Further, to digress somewhat, Portuguese could only be currently available as a first language for designations of the European Community and not (as is the case with English, French and Spanish) as a second language.

Some of the quirky mechanisms of the Madrid Protocol will continue to baffle some people and there are skills required to work with it, but it is clear that the Madrid Protocol is here to stay and will become increasingly prominent in the field of trade marks in years to come. It may get replaced with a new system in due course, but political wranglings may mean it is easier to amend the existing system than to start from scratch.

This article originally appeared in Issue 406 December 2013/January 2014 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.

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.

WIPO - Official fees

WIPO have recently issued Information Notice No. 29/2013 explaining how to pay official fees to them for registrations under the Madrid Protocol.

Those of you that deal with WIPO will know they can be a bit of bureaucratic organisation and the language of their Information Notice may be testament to this.

If you do not have a deposit account with WIPO - and many firms don't - then you will probably be required to transfer payment of official fees by bank transfer and this is why the Information Notice has issued. WIPO are regularly being short changed as users do not instruct their bank that they are to incur all the bank charges. This causes a headache and delay with WIPO and the user when it is necessary to request a second payment, which is usually fairly incremental.

If you have a deposit account with the UK Intellectual Property Office and you are filing a Madrid application through them as Office of origin then you can ask them to make the official fee payment (in Swiss francs) on your behalf and debit your deposit account. However, not many Offices of origin offer this service.

If you're based in Switzerland or Liechtenstein (or even in the Italian exclave of Campione d'Italia) then making payments in Swiss francs is not difficult. But most of us will not have a Swiss bank account.

Payment by credit card is not available at the time of filing Madrid Protocol applications because these are filed through an appropriate Office of origin and not WIPO directly. Nevertheless, I understand it is possible to wait for an Irregularity Notice to issue and then make payment by credit card through WIPO's E-payment tool. This is not exactly ideal as again it results in a delay.

WIPO also released their latest magazine 'Madrid Highlights' this week and this contained two fees related features.

Firstly, they will soon be launching a new on-line tool for filing Subsequent Designations with a credit card payment facility. This will not help with the initial filing of a Madrid application but I anticipate it making adding countries to an existing International Registration substantially easier - and hopefully quicker.

Their Madrid Tips section also explains some scenarios regarding the official fees payable for renewals. These can seem ridiculously complicated at times although if you can use WIPO's E-Renewal tool this should auto-calculate the correct fees for you.

Maintenance of designations of the Philippines in International Registrations

A recent Information Notice from WIPO has, somewhat belatedly, clarified the maintenance requirements for designations of the Philippines in International Registrations.

Some of you may already be aware of these, some may have anticipated they would have been in place and some of you may have been unaware of these maintenance requirements. When news emerged in May last year that the Philippines were joining the Madrid Protocol there was a complete lack of information concerning their (additional) maintenance requirements and the filing of Declarations of Actual Use (DAUs).

It is effectively the same as national applications filed in the Philippines although take note of the timings.

These DAUs are due at three junctures:

1. Within three years of filing the International Registration (application and registration dates being the same)
or
If the Philippines is subject of a Subsequent Designation within three years of the Subsequent Designation recording date by WIPO.

These DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO), usually for foreigners through a law firm in the Philippines although the WIPO notification also indicates that this can be filed through "the holder’s authorized representative with a local address".

A single six-month Extension of Time can be sought, but likewise these must be requested at the Intellectual Property Office of the Philippines (not WIPO) through a Filipino lawyer (or authorized representative). Please note that an Extension of Time must be explicitly requested; it is not an automatically existing grace period.

2. Between the 5th and 6th anniversary of registration (i.e. local Statement of Grant date) in the Philippines.

Again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).

3. Between the 5th and 6th anniversaries of each renewal of an International Registration. Remember that renewals are filed centrally at WIPO, but, again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).

Let's take a (fictitious) example:

International Registration No. 123098 filed and registered 19 January 2013
Philippines: Subject of Subsequent Designation on 9 May 2013
Intellectual Property Office of the Philippines issues Statement of Grant on 27 February 2014

• First DAU due 9 May 2016 (three years from "date of filing" in the Philippines; six-month extension possible till 9 November 2016)
• Second DAU due 27 February 2019-27 February 2020 (5-6 years following local "registration" in the Philippines)
• Third DAU due 19 January 2028-19 January 2029 (5-6 years following renewal (i.e. on 19 January 2023) of the International Registration)

Trade mark law files within databases will need to be sophisticated to calculate these correctly and vigilance will be important with any docketing/record keeping.

These onerous maintenance requirements may lead many to consider avoiding designating the Philippines within Madrid applications (and file national applications instead). It is a similar consideration when designating the United States, whereby at the outset Madrid applications can be more cost-effective but in the longer term it can represent a false economy when it is not possible, as with national registrations, to combine Use Declarations/Affidavits with renewals because the technical renewal is handled through WIPO.

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!

Irregularity Notices from WIPO - International Applications

I have sung the praises of WIPO's Madrid Highlights publication in the past (for example, see here).

Their latest issue and their first of 2013 has recently issued. It contains information collated over the previous three months, such as the notification issued by the Syrian Trade Marks Office.

I would like to bring attention to readers of this blog to the 'Madrid Tips - Practical Examples on the Implementation of the Madrid System' section. In this issue WIPO explore Rule 13 of the Common Regulations.

This relates to the WIPO Irregularity Notices they can issue regarding the classification of goods or services. These are somewhat unusual so if you do not have much experience of the system, or tend to file standard specifications (that are always acceptable) then WIPO's questions and answers could be quite useful for you in case you receive such an Irregularity Notice.

I copy WIPO's questions but have adapted the language of the answers to be (possibly) more user-friendly and less "WIPO-speak" in case this could be helpful. Of course, the original WIPO text can be found in the Madrid Highlights publication.

Whenever WIPO considers that the classification of goods and services in an International application is incorrect, it will notify the Office of origin (your Trade Marks Office, where you filed the International application) and inform the applicant (or representative).

However, the responsibility for remedying this irregularity lies with your Trade Marks Office, which may, within three months from the notification, make a proposal for remedying the irregularity.

Q1. I am the applicant of an international application. I have received an irregularity letter indicating that a term of the list of goods and services is too vague for the purposes of classification. The letter also states that the irregularity is to be remedied by the Office of Origin. What does it mean?
R1. This means that WIPO considers that a term used in the list of goods and services is not
sufficiently clear for the purposes of classification. When this happens, WIPO notifies your Trade Marks Office and informs you, the applicant (or representative). WIPO may suggest either a substitute term or the deletion of the term. Your Trade Marks Office may, within three months of the notification, make a proposal to remedy the irregularity.

Q2. Is any action required on my part as the applicant (or representative) of the international application concerned?
R2. There is no action required from you in this case. However, you, as the applicant (or representative), may communicate your views regarding the irregularity to your Trade Marks Office, or your Trade Marks Office may seek your views.

Q3. What options has the Office of origin to reply to the irregularity?
R3. Your Trade Marks Office may respond to the irregularity as follows:

• Agree to accept any suggestion which WIPO may have made, then the term will be changed accordingly.
• Disagree with any suggestions. Then, your Trade Marks Office may respond to the irregularity by submitting a new proposal. 

If the new proposal is acceptable to WIPO, then the term will be changed accordingly.

If the new proposal is unacceptable to WIPO within the three-month time limit, there are two
possibilities:

• If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
• If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.

Q4. What happens if the Office of origin does not reply to the irregularity?
R4. If your Trade Marks Office does not reply to the irregularity, there are two options:

• If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
• If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.

Q5. If the Office does not reply, can I reply in its place?
R5. No! You may communicate your views regarding the irregularity letter to your Trade Marks Office, but you cannot respond to the irregularity directly to WIPO. The reply to the irregularity must be sent to WIPO through your Trade Marks Office within the prescribed time limit.

Q6. Will I be informed of the outcome of this procedure?
R6. Yes, where the irregularity is resolved and the international application conforms to the
applicable requirements, the mark is registered in the International Register and a certificate is
issued. Furthermore, the international registration is published in the Gazette and, for
information purposes, in the ROMARIN database. You will also be informed when a non-classified term is deleted due to a non-acceptable proposal or in the absence of a reply from your Trade Marks Office.

It should be clear that the responsibility of responding to these Irregularity Notices lies with your Trade Marks Office but it is important that these are not overlooked by applicants or their representatives.

As the gatekeeper of the Nice International Classification, WIPO take a strict view to where products and services are classified.

If an Irregularity Notice is issued, do not merely docket the deadline provided by WIPO for your Trade Marks Office to respond to them. It is suggested that you docket an earlier date so you can give input to your Trade Marks Office and they can take it into account when responding to WIPO.

You will also be familiar with how your Trade Marks Office operates. Are they organised? Are they pro-active? This will help you determine if you need to get in contact with them upon receipt of an Irregularity Notice to ensure your views are heard and so they respond in good time.

This is a quirk of the Madrid system. It can leave you scratching your head if you find yourself in the strange situation where you receive an Irregularity Notice (aka Office Action) yet you cannot respond to it. Hopefully this scenario is now more clearly explained.

India joins Madrid - finally!

It has been anticipated for some time now, but finally Madrid Protocol membership has increased to 90 members with the accession of India.

It will be possible to designate India in an International application from 8 July 2013.

The Indian Trade Marks Registry has made commendable efforts in recent years to reduce its examination backlog so they would be in a position to meet the 18-month examination period for Madrid Protocol designations.

Whether they remain well equipped to handle an increase of examinations which should follow when it can become designated in an International application may remain to be seen. It will be important that examination of Indian national applications is not delayed because Madrid Protocol designations must take priority. Otherwise the attractiveness of the Madrid Protocol will diminish for Indian trade mark owners as its high number of oppositions would mean Central Attack could be a problem.

The Madrid Protocol already covers most of the West (with the notable exception of Canada) and the emerging markets of Eastern Europe. The joining of India adds another major newly industrialized country to the selection of countries available following on from the accession of Mexico and the Philippines last year. With China and Turkey already on board and Thailand expected to one of the next joiners, the Madrid Protocol continues to grow and grow.

Caribbean IP Part 28: Bermuda

ISO 3166 country code: BM.

Bermuda is the oldest colony of the United Kingdom being a colony of England prior to its unification with Scotland. It is now the most populous of all the British Overseas Territories, with around 65,000 people.

Despite its proximity to the United States and Canada, it remains fairly pro-British and its last independence referendum was easily defeated. However, if the referendum was repeated today the result may not be so clear cut.

The relative isolation of Bermuda means it is not strictly a part of the Caribbean although it is an associate member of the Caribbean Community (CARICOM). It is a high income island driven by the finance and tourism sectors.

As the island is non-sovereign and not independent it is not in a position to accede to International arrangements such as the Madrid Protocol without the United Kingdom legislating for them in this respect.

However, it has a local trade mark system in place. It is not a prerequisite to have a United Kingdom trade mark registration in order to register a trade mark in Bermuda, although it does have persuasive value before the local Registrar under section 18(4) of the local Trade Marks Act.

When it comes to registered designs, Bermuda also allows for local registration. With respect to UK Registered Design rights these provide for automatic protection to Bermuda. There could be a defence for infringers if they could not know of the design in Bermuda which suggests that if there is no use or disclosure of such a design in Bermuda (for example, in the UK only), then the owner of the UK design may be prevented from taking action locally in Bermuda. As the law has not been amended accordingly, it is unlikely the same protection and provisions are given for Registered Community Designs.

The Registry General administers IP rights on the island. Their website provides some general information on intellectual property specifically on how to file applications. Examination of trade mark applications is not lax and objections will be raised according to the law if the Examiner feels it is justified, yet the processing of trade mark applications is organised and timely.

As a high income society, Bermuda is a potentially lucrative market to many trade mark owners. It is important that its location means it is not inadvertently omitted from any filing programmes for the Caribbean and/or North America.

Caribbean IP Part 27: US Virgin Islands

ISO 3166 country code: VI.

The Federal trade mark law of the United States, the Lanham Act, applies to not only all 50 states but also to any territory under the jurisdiction of the United States. Therefore, US Federal registrations automatically cover the US Virgin Islands.

Nevertheless, a local registration system is also available.

The Division of Corporations and Trademarks at the Office of the Lieutenant Governor administers locally registered rights. It is necessary to support an application with a Federal registration by providing a certified copy of the same. Because US designations of Madrid Protocol registrations are given a local Registration number it is believed these could also form the basis for applications in the US Virgin Islands.

There is no separate register for design patents.

It is not too often that separate trade mark registration is required for the US Virgin Islands although it could be useful in some cases. Registration is inexpensive (incidentally, we can file directly in the US Virgin Islands) if filing is ever considered.

Caribbean IP Part 26: Turks and Caicos Islands

ISO 3166 country code: TC.

The Turks and Caicos Islands are a non-sovereign nation, a British Overseas Territory. As such they are not able to sign up to international agreements. However, they can make reference to them in their own IP legislation and in this connection, reference is made to the UK Trade Marks Act and Community Trade Mark within its trade marks legislation.

Trade mark legislation is modern with the latest Trade Marks (Amendment) Rules dating from 2011. The Turks and Caicos Islands allow for local applications and they are well up-to-date in using the International Classification and allowing service marks.

It is also possible to extend UK trade marks to the islands and this provision is now also available to Community Trade Marks and International Registrations. 

The Turks & Caicos Islands Financial Services Commission administers the Trade Marks (and Patents) Registry. Their web presence provides  a fairly decent brief overview on trade marks.

Like with other British territories, Madrid Protocol membership is not on the horizon. In 2009, the UK Government imposed direct rule on the islands following a corruption scandal (home rule being restored recently) but unilaterally imposing the Madrid Protocol on any territory would not be made.

As for designs, there does not appear to be any legislation catering for these.

The Turks and Caicos Islands operate an organised trade marks system. The main gripe trade mark proprietors have is that annual maintenance fees are due against trade marks. As with the Cayman Islands, these put a large financial burden on maintaining trade marks in a jurisdiction with a tiny population; the population is estimated at under 50,000.

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.