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.

Indonesia makes the Madrid System a '100 Club'

Last week Indonesia deposited its instrument of accession to the Madrid Protocol and brought the number of contracting parties into triple figures.

It follows hot on the heels of Thailand, which will be available for designation in International applications in less than a month.

The ASEAN (Association of Southeast Asian Nations) countries are committed to joining the Madrid Protocol and now eight out of the 10 countries are on board. Brunei, Cambodia and Laos joined up in the last two years leaving Malaysia and Myanmar as the only ASEAN countries not a part of Madrid. Malaysia has undergone consultations and appears to be in the process of taking steps to ready itself to accede.

In Myanmar, the IP world is still waiting for the country to adopt a formal trademark law. Currently, a deposit registration system with a Cautionary Notice publication supports Common Law rights in trademarks. After years of waiting, there are now indications that Myanmar will be opening a new IP Office to operate a formal trademark law. It appears the new law may be a stepping stone towards Madrid membership or, in other words, first of all there will only be a national system for registration but presumably once the Office is up to speed it can look to accede to the Madrid Protocol and have International Registrations designate Myanmar.

There are some concerns on how well Indonesia may manage meeting the strict timelines for examining International applications. It has made a declaration under Article 5(2)(b) of the Protocol to extend the refusal period to 18 months but it could be they still struggle to meet this given an expected increase of applications now it will be easier for foreign parties to simply tick a box to file in Indonesia in an International application. Could this therefore see a backlog in the examination of national applications?

It will be interesting to see how much Indonesian businesses use the Madrid system. Domestic applicants make a lot of trademark applications in their home market. Now they will have easier access to designate most of their ASEAN partners in an International application, Australia, just to the south may also be an attractive market, as well as the powerhouse economies of Asia, Europe and the United States.

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!

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.

Algeria joins Protocol: impacts on trademark portfolios

Recent news from WIPO informs us that Algeria will join the Madrid Protocol from 31 October 2015.

With a population of close to 40 million and being the largest African and Arab country, Algeria's accession will be welcomed in many quarters. American, British and Japanese companies, as examples, will now be able to designate Algeria in International applications.

Previously, as a Madrid Agreement member only, Algeria was only available to entities from other Madrid Agreement countries. This means Chinese companies and those from the majority of continental European countries, for example, have already been able to designate Algeria in International applications for many years.

Algeria was the last remaining bastion of Madrid Agreement only membership.

This development may therefore have practical repercussions. Where a country is a member of the Madrid Agreement and the Madrid Protocol, in simple terms, the Protocol takes precedence. This means the Madrid Agreement is now largely redundant as the system is transformed into "a One Treaty System".

However, Article 9sexies is, at least for the time being, where there are some differences. If the Madrid Agreement is closed down this Article may fall by the wayside.

If you work for or represent companies from the likes of Belgium, China, France, Germany, Italy, Luxembourg, the Netherlands, Russia, Spain and Switzerland (and other Madrid Agreement member countries) then this could have an impact on your budgets.

If you're in the UK or US (or other Madrid Protocol only countries) then you're already paying the higher fees so no need to read on. You might be glad the playing field may soon be levelled.

I've mentioned Article 9sexies a couple of times before (here and here). It basically means that if you come from a Madrid Agreement and Protocol country (let's say France) and designate countries that are members of the Madrid Agreement and Protocol (let's say Benelux and Bulgaria) then you would pay the Complementary fee for each designated state as opposed to the Individual fees Benelux and Bulgaria charge under the Madrid Protocol.

Article 9sexies also impacts examination timelines - designated states only get 12 months through this Article - so this may lengthen procedures if it's abolished. From my viewpoint, this is unlikely to be significant in the majority of cases.

However, I do accept for those countries who can notify oppositions after the expiration of the 18 month period under Article 5(2)(c), - or, in other words, indefinitely - that they bring some uncertainty to applicants. This being more so to applicants who currently rely on Article 9sexies and therefore have more guaranteed timescales. These members are notably China plus Cyprus, Iran, Italy, Kenya and Ukraine; (other countries signed up to Article 5(2)(c) are Protocol only members).

With IP budgets often under scrutiny, it's the fees that some companies may need to be aware of. Let's do some analysis.

The Complementary fee for each designated state is 100 CHF and this includes up to three classes. What happens if you now need to pay Individual fees for three classes:

Armenia: 100 CHF up to 265 CHF
Belarus: 100 CHF up to 600 CHF
Benelux: 100 CHF up to 167 CHF
Bulgaria: 100 CHF up to 327 CHF
China: 100 CHF up to 499 CHF
Cuba: 100 CHF up to 356 CHF (both first and second part Individual fees)
Italy: 100 CHF up to 159 CHF
Kenya: 100 CHF up to 758 CHF
Kyrgyzstan: 100 CHF up to 660 CHF
Moldova: 100 CHF up to 356 CHF
San Marino: 100 CHF up to 178 CHF
Switzerland: 100 CHF up to 450 CHF
Tajikistan: 100 CHF up to 452 CHF
Ukraine: 100 CHF up to 429 CHF
Vietnam: 100 CHF up to 269 CHF

If you can file a word mark application covering those countries using the lower fees now you would pay 2153 CHF (plus your Office of origin's handling charge). Under the higher fees, it works out at 6496 CHF (plus your Office of origin's handling charge) (excluding the second part fee for Cuba of 82 CHF).

If you file in a single class, the lower figure of 2153 CHF (plus your Office of origin's handling charge) remains the same and the higher figure changes to 5068 CHF (plus your Office of origin's handling charge) (excluding the second part fee for Cuba of 82 CHF). Obviously, it's unlikely for anyone to file an International application designating only those countries but you'll get the idea of the costs changes that a trademark holder could be facing. This could be more acutely felt for large international trademark portfolios.

Renewals would also face similar changes in the fees.

We will have to wait and see whether Article 9sexies is something that is abolished - and resistance to this may be strong from those countries who benefit from it. This may mostly be from 'old guard' members from the Madrid Agreement's early days who may find themselves outvoted in any changes as more and more countries become members.

It's perhaps worth mentioning that both Syria and Uzbekistan withdrew from the Madrid Agreement (to rely on the Madrid Protocol only) so they could benefit from increased fees and examination timelines, possibly not prepared to wait for the repeal of Article 9sexies.

When simplification and harmonisation are watch words in IP this may mean the days of Article 9sexies are numbered though and so it might be something that is worthwhile being prepared for.

OAPI to join Madrid

Good news came from Geneva and Yaoundé recently with word that OAPI will join the Madrid Protocol on 5 March 2015.

I understand there are still some regulations to be adopted locally at OAPI HQ but these were under discussion during a recent Council meeting.

A previous blog ensuring OAPI is not confused with ARIPO (or others) still attracts hits and is linked here for reference. It may also be worthwhile reminding readers of the member states - with a total population of an estimated 165 million people:

• Benin
• Burkina Faso
• Cameroon
• Central African Republic
• Chad
• Comoros
• Congo
• Côte d'Ivoire 
• Equatorial Guinea
• Gabon
• Guinea
• Guinea-Bissau
• Mali
• Mauritania
• Niger
• Senegal 
• Togo

Perhaps not surprisingly given the geographic coverage, official fees in OAPI are quite high. Under the Madrid Protocol, although they will be converted into Swiss francs, OAPI plans on individual fees corresponding with the official fees for direct filings.

My firm has handled a number of cases in OAPI and we may experience a decrease in local registrations. However, membership of the Madrid Protocol should see an increase in trademarks being protected across the OAPI members and this should benefit the countries concerned.

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.

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.

The Catalan Way (and IP)

Wednesday (11 September 2013) marked an impressive show of support for the independence of Catalonia, currently an autonomous part of Spain, when a human chain, the Catalan Way, spread for 400km/250 miles.

Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.

Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)

With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)

The Catalan language is also more widely spoken than some other national languages within the EU.

I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.

1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.

Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.

As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.

However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.

This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.

Isle of Man Trade Marks

I have had some queries recently regarding trade marks in the Isle of Man, and as I made a weekend visit to the island recently, I thought some explanations on trade marks could be worthwhile.

Douglas, the capital of the Isle of Man

The Isle of Man does not have its own trade mark law or Trade Marks Registry. It is covered by a United Kingdom trade mark including designations within International Registrations.

But there is not a Trade Marks Registry

The Isle of Man Government make reference to trade marks in some guidance they provide in relation to choosing a company name.

The UK Trade Marks Act 1994 makes reference to the Isle of Man:

"This Act also extends to the Isle of Man, subject to such exceptions and modifications as Her Majesty may specify by Order in Council; and subject to any such Order references in this Act to the United Kingdom shall be construed as including the Isle of Man."

This makes the Isle of Man unique among the UK's overseas territories and Crown dependencies because the UK's legislation is applied directly - or, in other words, there is not (and there is no need for) a local trade mark law enacted by the Isle of Man Government. It is normal for the overseas territories/Crown dependencies to enact local legislation themselves, which can either provide a local registration system, or provide for automatic protection of UK registrations (as has happened in the Falkland Islands, for example).

Despite claims to being the oldest continuous parliament in the world, the Tynwald has not introduced its own trade marks law

Furthermore, I understand Orders in Council have been made to ensure European Community Trade Marks cover the Isle of Man.

It should also be mentioned that the United Kingdom's ratification of the Madrid Protocol is "in respect of the United Kingdom and the Isle of Man."

The Isle of Man is one of three Crown dependencies, the others being the Bailiwicks of Jersey and Guernsey (aka the Channel Islands). They are known as offshore financial centres and each has their own versions of the pound, e.g. the Manx pound (although British currency is also accepted). Tourism is another important part of their economies.

The Manx people are patriotic judging from the significant flying of the island's flag, although the Manx language is sparsely spoken nowadays and the local (English) accent - after years of immigration from the mainland - is not easily distinguishable from that of parts of the North West of England.

This windy island is perfect for flag flying

Culturally they are similar to mainland Brits and a popular brand in the UK is likely to be a popular brand in the Isle of Man. However, the cost of living in the Isle of Man tends to be higher than that of the UK mainland.

This store is equivalent to a UK version where every item is £1 whereas in the Isle of Man most of their prices seemed to be £1.20 

Their relationship with the EU is not exactly straightforward but freedom of goods is allowed between the Isle of Man and the European Union. A Common Purse Agreement with the UK means the Isle of Man is effectively in customs union with the rest of the EU.

In the case of local infringement of a registered trade mark then enforcement would need to be taken through the Isle of Man courts.

Although there is no Trade Marks Registry, there is a local Domain Registry. This manages .im domain names which have proved popular with providers of instant messaging software.

The Crown dependencies are culturally and economically closely linked to the United Kingdom and the fact that the Isle of Man is covered by UK trade marks is helpful to British, Manx and overseas businesses. Nevertheless, trade mark owners may wish to secure registration of a local domain name as a way of engaging with Manx consumers; it is inexpensive.

The other Crown dependencies, Jersey and Guernsey, have independent trade mark laws so do not overlook them if your business expands and spills over into the Channel Islands. (I've not covered Jersey or Guernsey here but please do not hesitate to get in touch if you have any questions regarding protecting trade marks in these jurisdictions.)

With a Scottish independence referendum scheduled for next year, there has even been speculation that Na h-Eileanan Siar (the Western Isles), Orkney and Shetland may request Crown dependency status, perhaps creating more considerations for trade mark owners across these numerous islands in north western Europe.

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.

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.

Pragmatic help from the Syrian Trade Marks Office

I regularly present on 'Notarisation & Legalisation' for the Institute of Trade Mark Attorney's Trade Mark Administrators' Course and I think it would be almost an understatement to say that we consider legalisation to be a real headache in the West.

Nevertheless, appreciation of other legal cultures is important especially in the globalised world of trade marks and we need to comply with these requirements.

Therefore, we are very grateful when notices are issued by Trade Marks Offices requiring legalised documents that recognise the difficulties - particularly with respect to turnaround times - in providing legalised documents. One such notice has just been issued by the Trade Marks Office in Syria in relation to Madrid Protocol designations of their country.

The Syrian Office works well with the Madrid Protocol system regularly sending out acceptance notices and Statements of Grants to holders via WIPO. Examination is also robust and Provisional Refusals are not uncommon.

With the Syrian Civil War ongoing for over two years now it is perhaps remarkable that the Office continues to function relatively efficiently. Of course, this may change if the situation escalates nearer to the Office, which according to my maps is located in a part of Damascus not so far away from Douma, a major flashpoint city of the War to date.

Caribbean IP

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

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

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

Anguilla

Antigua and Barbuda

Aruba

Bahamas

Barbados

Belize

Bermuda

Bonaire, Sint Eustatius and Saba

British Virgin Islands

Cayman Islands

Cuba

Curaçao

Dominica

Dominican Republic

Grenada

Guyana

Haiti

Jamaica

Montserrat

Puerto Rico

St Kitts and Nevis

St Lucia

St Vincent and the Grenadines

Sint Maarten

Suriname

Trinidad and Tobago

Turks and Caicos Islands

US Virgin Islands

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

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

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

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

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

Caribbean IP 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.