Guam set to create "Trademark Commission"

Information from the Pacific News Center suggests Guam will look to refresh its trademark legislation shortly and help better protect its own cultural brand.

US Federal registrations automatically protect all US states and territories, the Act stating, "The United States includes and embraces all territory which is under its jurisdiction and control."

In Guam, which is an organized, unincorporated territory of the United States, a local registration system is also in place. There are two routes to protection under this. Firstly, a purely local route which requires evidence of use to be filed in order to obtain a Certificate of Registration and is akin to individual State trademark laws.

Secondly, it is also possible to re-register a US Federal registration in Guam, notwithstanding that such a Federal registration should already cover Guam.

It is not clear how the law will change things. It cannot overrule any Federal law. However, Puerto Rico is often considered a separate trademark jurisdiction from the "mainland" USA.

Tourism and the provision of retail services of designer goods are big business in the Guam economy and, in particular, businesses involved in these fields may wish to keep an eye on the situation in Guam with a view to securing local trademark registrations.

Furthermore, new legislation is planned to increase protection of the island's local culture, traditional knowledge and brand.

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 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.

Fighting counterfeits through Customs registration of IP rights

Counterfeiting represents an ever increasing percentage of world trade and is likely to continue being a major problem facing IP rights owners in the coming years. Education of the general public that counterfeiting is not victimless and causes significant damage will still be offset by consumer demand for 'branded' (counterfeit) products.

In some countries it is possible to record trade marks and other IP rights with the Customs Authorities. This can be an effective step to catch counterfeits. It is also inexpensive and the costs involved can contribute towards financing increased IP training of border personnel. 

Registering with Customs can be useful in developed economies such as the European Union and United States, in particular, to help prevent the importation of counterfeit products. If you are only in possession of a national right in an EU member state then your Customs recordal application can be limited to a 'National Intellectual Property Rights Application' as opposed to a 'Community Intellectual Property Rights Application'.

China represents a manufacturing hub for counterfeit products and usefully the Chinese Customs authorities examine not just imports but exports too. A recordal of an IP right at Customs will enable them to detain a potentially infringing shipment coming into the country but also such a shipment leaving China.

It is also possible to register IP rights in other key jurisdictions such as India, Mexico (since January 2012), Taiwan and Turkey and many more. I have been advised that Brazil is looking to introduce similar provisions.

There are a couple of quirks to watch out for if you are looking to register your trade marks/IP rights with Customs authorities globally (where it is possible). Jordan is slightly unaligned with their trade mark regime as customs registration must be made with the central Jordanian authorities but also separately with the Aqaba Special Economic Zone Authority (ASEZA) to cover the whole country. Aqaba is Jordan's only seaport.

When it comes to the United Arab Emirates, the Customs authorities are not managed federally (unlike the Trade Marks Office) but remain under the responsibility of the seven emirates. Of these seven, Dubai, Ras al-Khaimah and Sharjah have implemented a registration of IP rights service. Sharjah is often regarded as an extension of Dubai these days. Ras al-Khaimah (or RAK for short) is more remote but the UAE is not a big country.

So you may now look to register your company's or your client's trade marks and IP rights with the local Customs authorities from the United States to Albania (where there is also a recordal facility). Some countries do not provide for the possibility to record trade marks or other IP rights with their Customs authorities. However, it can be possible to make informal requests to the Customs authorities and these can result in your successful notification when infringing products enter the country.

This is just a snapshot of the possibilities but if you have any more specific requests please do not hesitate to get in touch, or liaise with your usual agents.