OHIM's new website

So OHIM has a new website (but this link might not load!) which launched on Monday.

It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?

For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.

E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.

There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.

Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.

Hopefully their techies will get the systems up and running as intended soon.

You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.

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.

Croatia: Welcome to the EU!

Croatia joined the EU today (1 July 2013). From an intellectual property perspective Croatia will now be covered by Community Trade Marks and Registered Community Designs.

A page on the Irish Patents Office website does a good job of explaining the impact of Croatian accession on existing EU trade mark and design applications and registrations.

It also provides a useful reminder for trade mark owners to be vigilant to avoid the spammers who may take this opportunity to solicit for trade mark "services".

Ahead of accession, Croatia has already aligned its specification terms for trade marks - it being a harmonised Office on TMClass. It has yet to be integrated in the search facility of TMView but as it is possible to conduct on-line trade mark searches through the State Intellectual Property Office website we can anticipate that they will come aboard TMView quite soon. However, it is not yet possible to file on-line Community Trade Mark or Registered Community Design applications in the Croatian language through the OHIM website. I expect OHIM to offer a Croatian filing option soon.

Croatia becomes the 28th member state of the European Union joining:

Austria
Belgium*
Bulgaria
Cyprus
Czech Republic
Denmark
Estonia
Finland
France
Germany
Greece
Hungary
Ireland
Italy
Latvia
Lithuania
Luxembourg*
Malta
Netherlands*
Poland
Portugal
Romania
Slovakia
Slovenia
Spain
Sweden
United Kingdom

* part of Benelux for trade mark and design registration purposes

On-line Design applications

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

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

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

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

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

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

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

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

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.

Got a Registered Community Design, got Europe?

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Serbia obtains EU candidate status

The European Union has now put Serbia on the path to EU membership by granting the country candidate status.

The Serbian Parliament (March 2011)

From the former Yugoslavia, Slovenia has been a member since 1 May 2004 and will be joined by Croatia on 1 July next year. Serbia joins Macedonia and Montenegro as candidate countries; or as we should say, the Former Yugoslav Republic of Macedonia due to a naming dispute with Greece. Evidence of the political fragility of the Balkans.

Serbia has a degree of anti-EU feeling within it. It is just shy of 13 years ago when NATO bombed the country during the Kosovo War and I've seen at first hand that Belgrade and Novi Sad still contain the scars. Bear in mind this involved EU members Belgium, Denmark, France, Germany, Italy, the Netherlands, Spain and the United Kingdom.

My experience of Serbian people is positive. A friendly group that looks forward and tries to show their country in a good light, some with the belief that the disintegration of Yugoslavia happened due to manipulative nationalist politicians.

I believe obtaining EU candidate status will be welcomed by most Serbians. Politically there is still some way to go. Kosovo is an obvious issue. Another possible stumbling block is in neighbouring Bosnia-Herzegovina. Bosnia is a federal country made up of one Serb entity and one Bosniak-Croat entity and political mistrust and uncertainty between them persists. The Serb part, the Repubika Srpska, may try for succession and if Serbia supports this, tacitly or officially, it may have a bearing on its own EU bid, particularly as Croatia will be a member by this time.

For these reasons, I anticipate the Serbian path to EU membership will not be one travelled quickly but, with some patience, we will welcome Serbia to the fold in good time.

It will create an interesting language situation for the EU. The Serbian language is the only European language with active digraphia (that means it uses more than one alphabet; a new word I have learnt today). It uses both the Latin and Cyrillic alphabets. Whilst Cyrillic is already catered for as Bulgarian is an official language, would the likes of OHIM use both alphabets for Serbian? (Latin script Serbian is almost identical to Croatian.) The Intellectual Property Office of Serbia only provides its national trade mark application form in Cyrillic. I understand this is considered a more formal alphabet, but you can correspond with them in Latin script.

With EU membership some time away for Serbia, OHIM will not be panicking on how they will be managing the Serbian language just yet.

UK Registered Designs - how far do they go?

I sometimes describe registered designs to clients as suffering from middle child syndrome when it comes to intellectual property rights stuck between big brother patents and younger sibling trade marks, with copyright being a close cousin and spoilt only child. Design law gets less attention and suffers from a lack of harmonisation worldwide; it's law being made up of bits of the other three. It's tagged on to a dominating patent regime of some countries, part of copyright and/or, as in the case of the EU, being controlled by its Trade Marks Office.

It does not always get completely disregarded and, for example, the UK is looking to improve its registered design system at the moment.

Some countries do not have design legislation and in some it is often assumed that a UK registration covers some countries automatically. Some of these assumptions come from the UK IPO website - or from private firms who advise based on this information. Therefore, I have explored how up-to-date the IPO's information is and provide my findings here. Independently, I have passed these on to the IPO so, if they agree, they can update their own website pages.

Of note is that Registered Community Designs ("RCDs") will not, except in a few cases, have the same effect as a United Kingdom Registered Design in these jurisdictions. This is a similar situation as with respect to UK Trade Marks and their Community Trade Mark counterparts.

Many of the countries that have introduced local design legislation provided for 12-month transitional periods for owners of UK Registered Designs to apply locally. I believe these periods have now concluded, where applicable.

Legislation introduced in 2002 brought design registration to Anguilla. Unfortunately, the law is is not available on-line without paying a fee.

Antigua and Barbuda now has independent design legislation.

Bermuda has a design law that allows for automatic protection of UK registrations but also allowing for purely local applications.

It is believed UK registrations will be automatically protected in the British Indian Ocean Territory.

The Falkland Islands also provide for automatic protection. Note the UK IPO's advice, "The Supreme Court of the Falkland Islands is empowered to declare that rights in a UK design have not been acquired in the Falkland Islands on any grounds for cancellation existing under UK law, including publication of the design in the Falkland Islands prior to the UK registration." This provision tends to be replicated in other jurisdictions providing automatic protection.

Fiji also provides for automatic protection. However, it is possible, and would indeed seem recommendable if this country is of commercial interest, to advertise the design rights already obtained in the UK in a Fijian newspaper.

Gambia now has its own law after implementing regulations were brought in during 2010.

Both Gibraltar and Grenada have laws providing for automatic protection.

With respect to Gibraltar, its status with the EU under Article 299(4) of the Treaty of Rome should allow for automatic protection of RCDs. However, there have not been amendments to Gibraltar's local Designs Act to reflect this and, as such, I believe it would be unwise to rely on RCDs being enforceable in Gibraltar.

Guernsey is a 'secondary' design jurisdiction and re-registers designs including those from the United Kingdom and Registered Community Designs.

Guyana also provides for automatic protection although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana (e.g. in the UK only), a registered design owner would be prevented from taking action. This could be a fair defence in many of the other jurisdictions too.

UK Design legislation is extended to the Isle of Man (by the British Government not the Manx Government) to provide automatic protection. Obviously, this has been amended to reflect a Registered Community Design covering the UK. Therefore, I am confused by the IPO's statement that RCDs do not cover the Isle of Man as my interpretation is that they would.

Jersey is a re-registration jurisdiction. Only a UK National Registered Design can be registered locally; no provision is made for RCDs.

UK Registered Designs are automatically protected in Kiribati.

Malta now has independent design legislation and being part of the European Union is also protected through a RCD.

United Kingdom Designs (Protection) Act No. 181 of 1887 is not available on-line but is understood to be the local legislation providing for automatic protection of UK Registered Designs in Montserrat.

St Helena is another with the fairly standard "recognise UK Registered Designs automatically" law.

I cannot see that St Kitts and Nevis has a design law to allow for either automatic protection of UK Registered Designs or for independent local applications.

St Lucia and St Vincent and the Grenadines now allow for independent design registration and UK Registered Designs will not have effect.

I cannot see that there is any design legislation in the Seychelles at all, let alone any that would give provision to automatic protection of a UK Registered Design. However, it is possible to register copyrights.

Sierra Leone offers an unclear situation through my on-line enquiries (I've not bothered my associate in Freetown at this stage). I cannot locate a design law which would allow for automatic protection of a UK Registered Design. It is possible to designate Sierra Leone in an ARIPO design application but in the absence of any design legislation, questions should be asked of its enforceability. Sierra Leone had plans for a new IP law in late 2008 but I do not believe this came into force.

UK Registered Designs extend automatically to the Solomon Islands.

Swaziland operates its own national design registration system now.

Tanzania is made up of two separate IP jurisdictions, Tanganyika (the mainland) and the island of Zanzibar. The mainland seems to lack design legislation but provisions within its Patent Act provide for automatic protection of UK Registered Designs. When it comes to Zanzibar, local independent legislation is in place.

My interpretation of the Tuvalu Chapter 62: United Kingdom Designs Protection would be that it provides for automatic protection of UK Registered Designs but I make this statement with a disclaimer. The UK IPO seems to think a local re-registration application is necessary.

In his over six years in power, Idi Amin CBE ("Conqueror of the British Empire") obviously forgot to repeal Uganda's United Kingdom Designs Protection Act. This remains in force to this day and provides for automatic protection of UK Registered Designs.

Vanuatu's design law is in a state of limbo - and for the same reason as its trade mark counterpart i.e. an absence of implementing regulations - is not yet in operation and it is therefore not possible to file for designs at this time.

The situation with the British Virgin Islands as described by the UK IPO would appear to be the same situation as exists in Bermuda (above).

After all this, I will provide a concluding table which I must stress is based on my interpretations and the taking of some information at face value.

Jurisdiction	UK	RCD
Anguilla	No	No
Antigua and Barbuda	No	No
Bermuda	Automatic	No
British Indian Ocean Territory	Automatic	No
British Virgin Islands	Automatic	No
Cayman Islands	No	No
Falkland Islands	Automatic	No
Fiji	Automatic	No
Gambia	No	No
Gibraltar	Automatic	Automatic but questions remain
Grenada	Automatic	No
Guernsey	Extendable	Extendable
Guyana	Automatic	No
Isle of Man	Automatic	Automatic
Jersey	Extendable	No
Kiribati	Automatic	No
Malta	No	Automatic
Montserrat	Automatic	No
St Helena	Automatic	No
St Kitts and Nevis	No	No
St Lucia	No	No
St Vincent and the Grenadines	No	No
Seychelles	No	No
Sierra Leone	No	No
Solomon Islands	Automatic	No
South Georgia and the South Sandwich Islands	No	No
Swaziland	No	No
Tanzania (Tanganyika)	Automatic	No
Tuvalu	Automatic	No
Uganda	Automatic	No
Vanuatu	No	No
Zanzibar	No	No

Many readers will be aware of the excellent value of the RCD system - 27 countries protected for a basic official fee of €350. The UK itself also provides for cost-effective design registration with the basic official fee being only £60 (about €70). Global owners of design rights may wish to ensure they obtain protection at not only the European Community level but also at the UK level, particularly if protection is required in parts of the Americas, Africa or the Pacific. RCDs and UK Registered Designs are both obtained very quickly.

As always, any comments or questions are welcomed.

Croatia to join the EU

Croatia will join the EU on 1 July 2013.

From this date, Community Trade Marks and Registered Community Designs will be automatically extended to Croatia. No action will be required by the proprietors.

It will then become possible to file Community Trade Marks and applications for Registered Community Designs in the Croatian language.

Croatia becomes the second former Yugoslav republic to join the EU after Slovenia and will be the EU's 28th member in total.

It will be an added country to consider searching when filing a Community Trade Mark. Thankfully, it is not too expensive. Identical searches can be performed on the Croatian IPO's website.