Brexit and trademarks

The United Kingdom has decided in yesterday's referendum that it will leave the European Union.

Personally, I'm gutted. Having lived and worked on the continent, I regard myself as a Europhile. It may be a great shame that our younger people may not have so many opportunities to live and work in Europe.

There will be an impact on trademarks. What exactly needs to be determined? For now we do not need to worry.

The Prime Minister has indicated that he will stand down and it is his replacement who will submit the Article 50 request to the European Union that begins the formal withdrawal process. Indications are that this will take place in October and the withdrawal process will have a two-year negotiating period once submitted.

I think there's a chance of another General Election in the intervening period. This means we could be looking at between two-two and a half years before EU trademarks will no longer cover the UK.

Furthermore, I understand this negotiating period is extendable if agreed by both parties - a "cooling-off" period in trademark terms, I suppose.

Automatic re-registration?

What will happen to EU trademark (and design) registrations once the UK does leave the EU?

My hunch is that they will automatically continue to cover the UK. My reasons are:

1. There are so many of them that having a formal revalidation process would be a burden on UK IPO resources.
2. EU trademarks are searchable on the UK IPO's systems so it should be a fairly straightforward task to convert/duplicate them to become UK national registrations.
3. As for EU designations in International registrations, it should be possible, working with WIPO, to organise automatic 'Continuation of Effects' to the UK.
4. They would not want to discriminate UK businesses by making them pay to revalidate EU trademarks which they legitimately obtained thinking they had the UK covered.
5. It's certainly arguable that the UK IPO could lose out on a windfall that could be generated by a formal revalidation process, but I would argue that this would be a temporary spike (and the Office would need temporary staff for this) whereas they can bring in extra fees in a more managed way as registrations fall due for renewal and get assigned.

Reverse seniority?

I wonder if there is a need to allow seniority claims to be reversed so where an EU registration has claimed seniority from a UK registration then this UK registration can be reinstated (presuming it has since lapsed).

This may be beneficial in the case of very old prior rights where the corresponding EU registration does not date back as far. This could carry official fees for the UKIPO as I believe they would require examination. Whether such requests can restore the specification of the original UK registration or can only comprise that which is included in the EU registration (where they are different) would be a question to be answered in this eventuality.

From a practical point of view, an automatic revalidation process would negate the need to request "reverse seniority" in the vast majority of cases.

EEA and representatives

We wait to see if the UK's withdrawal from the EU will also be a withdrawal from the European Economic Area. If it remains in the EEA then the impacts on the management of trademarks will be less.

If it decides to leave the EEA then things may change more. Currently, only an Address for Service in the EEA is required for trademark matters before the UK IPO. Leave the EEA and the rules may change so that an Address for Service is in the UK only. In practice this would not be a big deal as the vast majority of Addresses for Service for UK national registrations are in the UK already, as opposed to other EEA countries. (Disclaimer: this is based on my regular scouring of the Trade Marks Journal and Register, and not on a detailed analysis of Addresses for Service.)

However, this could scupper any plans to automatically duplicate the EU Register to the UK as a large number of EU trademarks have IP representatives in other EEA countries. Perhaps these could be left be, with a UK Address for Service only needing to be appointed when there's subsequent dealings with the UK IPO.

UK Professional Representatives

Leave the EEA and the ability of UK Professional Representatives to act before the EUIPO (and other EU Offices) could be impacted. The Institute of Trade Mark Attorneys has indicated that they will "be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office."

If UK Professional Representatives can no longer act before the EUIPO then this lucrative strand of work will go elsewhere, firms in Germany, Ireland and the big IP units near Alicante likely destinations in my view.

If they can continue representing though then they will be well placed to continue the UK's strong level of representation before the EUIPO. Such work could also be supplemented by corresponding UK filings too.

However, we may see a change in filing strategy. If the UK is an added country to consider in filing programmes then the attractiveness of an International trademark may increase. The rationale being the more countries to be covered, the more attractive it is to use.

Scotland

In Scotland the people were in favour of remaining in the European Union. This may now lead to another Scottish referendum and further implications to trademarks. I've blogged previously on what could happen in this event.

Gibraltar and Northern Ireland

Gibraltar (overwhelmingly) and Northern Ireland (much more narrowly) also voted to remain in the European Union - the out votes of England, in particular, and Wales tipping the balance towards leave.

Politically I cannot see Northern Ireland looking to go it alone or look to instead form a part of a united Ireland and so will find itself alongside England and Wales (with or without Scotland).

Gibraltar is unlikely to make a bid for independence or accept co-hegemony from Spain (as the Spanish Government was keen to offer early on). Its local trademark system currently allows for the re-registration of UK or EU trademarks, but they may close the door on EU trademarks (which have more doubtful enforceability anyway).

Jersey

The Channel Island of Jersey lies outside of the European Union and its citizens were not entitled to vote in the referendum.

However, their trademark legislation allows for the automatic protection of EU trademarks to the island (i.e. without the need to re-register them locally). Conversely, UK national registrations must go through a formal re-registration process and get a local registration.

They would need to change their local law to stop EU trademarks providing protection to Jersey. I understand discussions in recent years saw them happy with the status quo but the UK's withdrawal from the EU may make them revisit this issue and we could perhaps anticipate an entirely revamped trademark law in Jersey (neighbouring Guernsey has taken its own route and runs a very efficient Registry).

Conclusion

Nothing changes overnight. There is no need to take action just yet. I think by "pro-actively" filing in the UK now then you may end up with duplicate UK registrations in the future. Keep your ears and eyes open as things become clearer.

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.

Caribbean IP Part 9: Cayman Islands

ISO 3166 country code: KY.

I have previously blogged on developments in the Cayman Islands so will avoid repeating the same here.

Quite simply, registering patents and trade marks in the Cayman Islands requires a UK registration to be extended. In the case of trade marks, Community and International Registrations (designating the UK) are also acceptable bases to an application.

It would be preferable to many brand owners to have a more substantive law in the Cayman Islands. The proposed law in the British Virgin Islands would also fit the requirements of the Cayman Islands better; there being a lot of similarities between the high income, financial services and tourism charged island groups. However, with a recent change to the procedures in obtaining IP rights in the Cayman Islands, it is difficult to see that there will be additional amendments (improvements) in the immediate future.

Caribbean IP Part 8: British Virgin Islands

ISO 3166 country code: VG.

The Virgin Islands as they are officially known are usually referred to as the British Virgin Islands ("BVI") to distinguish them from the neighbouring US Virgin Islands. You may even have heard of the Spanish Virgin Islands, which far from belonging to Spain form a part of Puerto Rico, and/or the Danish Virgin Islands (more properly, the Danish West Indies). Denmark sold the latter to the United States in 1916 whence they became the US Virgin Islands.

The British part of the (unofficial) name also correctly alludes to the fact that the islands are a British overseas territory. With the naming issues hopefully addressed, we can now look at IP on the islands.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom.

The Registry of Corporate Affairs, a part of the British Virgin Islands Financial Services Commission, oversees the administration of IP rights. Unfortunately, there is a real lack of any IP information on their website.

Substantive (independent) trade mark applications are possible. These must be filed using the former British classification system, which you may recall is still used by The Bahamas. It is also possible to register (extend) trade marks based on UK registrations. These will replicate a UK registration's particulars including the specification and classification. Currently, the UK extension route is the only one available in which to register service marks.

The local Government are planning on introducing new trade mark legislation. You will see that this is a modern law meeting international standards (e.g. provisions for well-known marks, priority, multi-class applications, etc.). It does not contain any provision for the Madrid Protocol. The BVI Government are not in a position to accede to the Madrid Protocol, but the United Kingdom could do so on their behalf if they were specifically requested to do so by the BVI Government. I feel this is a disappointing oversight bearing in mind I believe the BVI Registrar has been a member of INTA and should be aware of international agreements in relation to trade marks.

When it comes to designs I believe UK registrations cover the BVI automatically, although if the jurisdiction is of importance it is recommended to have a local 'confirmatory' Cautionary Notice published too. However, Registered Community Designs should not provide protection. UK patents can be extended to the BVI but this must be done within three years of the UK date of issue (this includes European patents valid in the UK).

A new trade mark law will greatly simplify this area and make it easier for North American applicants, in particular, to register their trade marks. Despite being a British overseas territory the BVI's geographical proximity to the likes of the US is obvious. The islands also use the US dollar as their currency.

Trade Marks and Scottish independence

The debate has been raging for a while now but the next two years should see a referendum on Scottish independence from the United Kingdom. The coalition government in Westminster want this to happen soonish, the devolved Scottish Government want to wait until 2014 - by no coincidence the 800th anniversary of Scottish victory over the English at the Battle of Bannockburn and when Glasgow hosts the Commonwealth Games and, presumably, Scotland is experiencing a feel good factor.

My cynicism aside, I am not a committed unionist although I do have a ticket to "Team GB's" opening match in Manchester at this year's Olympic Games; this team may only be made up of English players, however. I have no problem with Scottish independence or with Scotland remaining a part of the United Kingdom, although independence could lead to greater democracy "south of the border" and some elimination of the West Lothian question.

There would be lots of issues to iron out should Scotland vote for independence. One which does not capture the imagination as much as pandas is trade mark rights - what would happen to them?

The truth is we don't know and there may be no need to even speculate if Scots end up voting for the status quo. However...

Would independence for Scotland come within the European Union? There is some debate on whether Scotland would need to apply for membership, which would require a commitment to join the Euro. (There are even reports the remainder of the UK would need to reapply although these seem far fetched to me.) If Scotland does need to apply there are even reports that Spain would veto such a bid. I think this would end up being a PR disaster for the Spanish government that would only galvanise separatist movements and it is hardly in the spirit of European human rights. In any case, I can see EU membership being automatic - after some negotiations, for example, relating to voting rights - as Scotland is already within the European Union and has compliant laws. It's not exactly a precedent but the old East Germany jumped into the EU following German reunification; 16 million people being allowed into the EU without fuss. I don't see 5 million Scots being an issue especially as they are EU citizens already.

  

I would therefore speculate that Community Trade Marks will continue to cover Scotland as a continuing member of the European Union.

National rights will present a different story. From a legal perspective, the UK is currently three legal jurisdictions anyway: 1. England and Wales, 2. Scotland and 3. Northern Ireland. Scots law is a hybrid law. It is not pure Common Law as used in England and Wales (and Northern Ireland) and which the British Empire exported to other parts of the world. When it comes to trade marks though, UK legislation is "Federal" and unitary in that it covers England, Wales, Scotland and Northern Ireland. It also covers the crown dependency of the Isle of Man which is another distinct legal jurisdiction.

I would speculate that the UK Register will be duplicated into a Scottish Register. This would be easy to do as the UK Register is completely computerised and I'd anticipate Scotland enacting trade mark legislation and setting up a Trade Marks Office essentially identical to that in place now. I would suggest that revalidation of UK rights to Scotland will not be required because whilst it could see a large volume of revalidation applications (and perhaps related official fees) these would tail off quite soon after. It would also discriminate particularly against local Scottish businesses who only use their trade marks in Scotland and who would be forced to pay again.

There should also be no issue with agents (i.e. a need to appoint an agent in Scotland) as the UK currently allows an Address for Service anywhere in the EEA or Channel Islands. EU obligations would see that this is followed so a firm in, say, London could be an agent before the Scottish Trade Marks Office. (The Scots could theoretically close the door on agents from the Channel Islands.)

Replication of the UK Trade Marks Act would make Scotland Madrid Protocol compliant and Continuation of Effects requests would need to be made to WIPO (for United Kingdom designations only - designations of the European Community automatically cover all member states including new ones). This would create an anomaly as the only type of trade mark which would require some form of action on. This would impact on foreign owners, but our last precedent with Montenegro was a Continuation of Effects official fee per registration of 64 Swiss francs (£45 in today's money) so it is hardly going to hit them hard financially.

Prediction time and I don't think the referendum will gain a sufficient enough majority for independence, but if it does I do not anticipate it causing headaches for those in the trade mark community. Actually, trade mark practitioners in England would have more of an issue if Wales were to vote for independence in the future (which there is little appetite for) as the IPO is based in Wales and a new Office would need to be set up in England (or Northern Ireland).

I won't mention Spain again, but an independent Flanders has some possibility. Presumably this would remain a part of (a perhaps renamed) Benelux (and the EU) for trade mark purposes and would represent the most painless succession possible for trade mark professionals - we would not have to do anything!

Manchester wins "counterfeit" capital of the UK

I woke up this morning to read the unfortunate accolade bestowed on the city I am based in as Manchester and neighbouring Salford are declared top of the list for fakes in the UK.

This area is the traditional centre of the nation's textile trade so this news will be partly unsurprising.

It's notable that the article indicates that authorities have reduced their levels of enforcement against counterfeit goods in the last year as part of a wider issue of government cutbacks. IP owners will be aware that they cannot merely rely on the authorities and must make efforts themselves to tackle counterfeiting.

The UK's on the Right Start

The UK is far from perfect. But one thing we do have is an excellent IPO. Following on from my previous blogs on searching, they have an efficient search facility in place.

Request a search from them and if you are happy with the results you can file an application for half price. This is not what happens in practice, but this is effectively what you can do.

The IPO operates a "Right Start" filing option where you file a trade mark application and pay half the regular filing fees. They examine it and notify you of any marks they consider similar - or in other words they inform you of marks that could have been cited in a search. The search covers UK and Community Trade Marks, including appropriate International Registrations. It is no longer in their power to refuse an application on prior rights and the applicant can decide if it wants to pay the balance of the filing fee and the application then proceeds to advertisement (this assumes there were no other objections or they could be resolved).

Official fees for a Right Start application start at £100 for one class. This is in the same ballpark as a UK Register search conducted through a specialist search firm. You then pay £100 again (one class) following examination, presuming you wish your application to proceed. You do lose out on the £30 discount provided for regular e-filings by taking the Right Start route but it is still representing good value.

I believe Right Start was designed for small UK applicants, particularly those that file directly at the IPO without being represented, but there is no reason why the service cannot be taken advantage of by larger trade mark owners including those from abroad. A clear advantage is getting a filing date whilst "searches" are being undertaken, although applications enter the public domain and it might allow competitors to scrutinise your branding strategies. You are also reliant on the Examiner as marks he or she considers dissimilar will not be listed in their examination report but could still form the basis of oppositions.

This does not supersede any (free) identical or near identical searches that can be made prior to filing.

Foreign trade mark owners file less and less in the United Kingdom as the Community Trade Mark route is usually preferred. However, many British people do not regard themselves as European (much to this Europhile's chagrin!) and some businesses from certain industries - most infamously food - may treat the UK as a distinct, important market. They may find particular value in exploring this workaround with respect to searching and filing.