Trademark Annuities...

In case the title of this blog left you with a quizzical look, no, the title is correct. Those of you that work across intellectual property rights (e.g. in both patents and trademarks) will be familiar with the payment of patent annuities.

However, there's a select group of jurisdictions where annual fees are payable to maintain trademark registrations.

Annual fees make the Cayman Islands one of the most expensive jurisdictions in which to maintain trademark registrations (although recent hikes in the official fees in the UAE and Venezuela means it's not the only place where maintaining a trademark registration can cost a fortune).

The Cayman Islands Registry used to allow representatives from anywhere to attend to matters before them. This changed in 2012 so that a local representative was required. I've previously worked with the local Registry but this change prevented me from doing so directly and therefore being able to maintain trademarks most cost-effectively for clients. Local agents in the Cayman Islands tend to be expensive reflecting the high cost of living there. It is worth considering paying all the annual fees (up to a registration's renewal date) in bulk to reduce the level of professional fees.

It's also worth being 'tactical' and avoiding registering trademarks in December. Annual fees fall due on 1 January each year so if you register in December you'll find yourself with an immediate payment to be made to keep the registration you have only just got in force.

The Cayman Islands are now looking to introduce a fresh trademark law (that removes its dependency on UK or Community registrations). It will be interesting to see how they set their official fees. Annual fees may be abolished but they will need to bring in examiners to handle applications filed under a new substantive trademark law so an increase in initial filing fees and, possibly, renewal fees could be anticipated.

Like the Cayman Islands, the Turks and Caicos Islands are a British Overseas Territory. They also share a need for annual fees to be paid to maintain trademark registrations. With a population roughly half that of the Cayman Islands and an economy that is not as developed, the number of trademarks registered in the Turks and Caicos Islands is a lot less.

Remaining firmly in the Western Hemisphere, Honduras is another country where annual fees are due. Again, I think it's worthwhile considering paying them in bulk up to a registration's renewal date as it can make the management of the registration easier.

Don't confuse these annual fees for Honduras with rehabilitation taxes. These taxes, which are unique to Honduras, are an optional payment. When paid they will protect a registration from being cancelled for non-use. Therefore, you only need to pay them if you're not using a trademark.

Rehabilitation taxes can easily be forgotten about and this is understandable when they are optional and not a mandatory maintenance requirement. They can be paid retrospectively. Therefore, if you have a registration that is vulnerable to cancellation on the grounds of non-use but you wish to file an opposition based on this registration, you would just need to back-pay any rehabilitation taxes prior to filing an opposition to help avoid a counter cancellation action on the grounds of non-use.

So annual maintenance payments to maintain trademark registrations may not be common, but if you help manage trademark renewals or maintenance then be aware that they can crop up from time-to-time. Even if you don't have patents under your responsibilities, you may also come across annual fees/annuities when maintaining design registrations (particularly in countries where the design law is a subset of the patent law) or domain names.

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.

All is revealed: the newly applied for gTLDs

So yesterday was 'Reveal Day' when ICANN provided a list of new gTLDs applied for, sometimes referred to as .BRAND although they are not exclusively for trade marks.

There will be some of interest to legal entities with the applications for .INC, .LLP, .LTD, .GMBH, etc. which could enable them to register domain names beyond .COM.

Applications have been made for obviously desirable gTLDs: .APP, .GAME, .HOTEL, .MOVIE, .MUSIC, .TICKETS, the optimistic .LOVE and something I appear to order on the internet far too regularly: .PIZZA.

There are also geographic applications in which domain names will presumably be issued to applicants with a connection or residence. Such examples include from France, .ALSACE and .CORSICA and from South Africa, .CAPETOWN, .DURBAN, and a more familiar and easy to spell, .JOBURG. These applications seem to have been made on behalf of regional organisations and governments, although I spotted .CYMRU (this meaning Wales in Welsh) was applied for by Nominet, who administer the ccTLD for the United Kingdom.

When it comes to trade marks, it is no surprise that some of the world's biggest brand owners have applied so we see the likes of .MICROSOFT, but it is perhaps more interesting to see who has not applied.

Using Interbrand's top 25 brands (2011), there is no .GE or .HP as it appears two-letter gTLDs are not allowed but then there are no applications for .GENERALELECTRIC or .HEWLETTPACKARD either. H&M would have needed to spell out their ampersand (.HANDM) and there is no application here. There are also no applications for .DISNEY, .MERCEDES, .GILLETTE or .LOUISVUITTON and, arguably most suprisingly, for .COCACOLA or .COKE; .PEPSI is also not subject of an application. 

It is interesting how different brand owners have considered an application necessary or not. They were very expensive, but to massive brands still surely not out of their reach.

There could be a battle for .GUARDIAN which has been applied for by a British newspaper and American life insurance company.

L'Oréal have filed a number of applications. A number of these are for their brands but they have also decided to go for some generic words too: .BEAUTY, .HAIR, .MAKEUP, .SALON, .SKIN plus one in non-Latin characters.

In fact, generally speaking there have been many applications for gTLDs in non-Latin characters.

Finally, there is also an application for .WTF (used as a euphemism in English) and .SUCKS, which one can only anticipate would be highly controversial.

There are now seven months in which objections on various grounds can be filed with an appropriate Dispute Resolution Service Provider. For brand owners, the 'Legal Rights' avenue is likely to be of most interest and objections for these will be handled by our colleagues at WIPO. I wonder how many are going to be filed...

.pt relaxes domain name requirements

On 1 May 2012, .pt domain names will become available on a "free-for-all" first-come, first-served basis (.com.pt domains are already available in this way).

Until now, .pt domain names have been made available to Portuguese nationals, companies and holders of registered trade marks (Portuguese national, Community Trade Marks and International Registrations designating Portugal or the European Community).

The National Foundation for Scientific Computing ("FCCN") explain the change:

"International practice in registering top-level domain names, the maturity reached in registering domain names in Portugal, the adjustment to the simplification programmes carried out by the Portuguese State and the guarantee of quick and effective dispute resolution, have lead FCCN to liberalise .PT domain registration."

The FCCN will operate a sunrise period, which started on 1 March 2012 and will last until 30 April 2012. This will provide inter alia trade mark owners with the opportunity to register their brands as .pt domain names. The sunrise period has already seen a partial relaxation of the rules. Owners of trade marks containing figurative elements can apply (not just owners of word mark registrations) and it appears an application can be based on a trade mark registration having effect in Portugal or another country.

I am loathe to recommend the building up of large defensive portfolios of domain names for the reason that this could be a limitless exercise and nobody has a limitless budget. However, if you are yet to have a .pt domain name and Portugal represents a good-sized market for you then securing a .pt domain name to prevent cybersquatting would seem sensible. Official fees at FCCN are inexpensive.

Ironic branding

The beginning of this month saw the publication of a UK trade mark application Primarni in Classes 24 and 25 in the name of an individual from Merseyside.

Unlike non-UK readers, most of us in the UK will probably think of the budget fashion store, Primark. The term Primarni is itself derived from Armani, to make Primark "sound more posh". Slang permeates British society so much so that it becomes second nature for much of the population.

I find this term a sign of typical Britishness: wanting to make something sound high class by displaying an ironic humour. It has been created by the public and, as far as I am aware, is not used directly by Primark.

On another note, it seems the domain name primarni.co.uk was registered by a furniture company back in 2007.

Primark are a heavily branded company - comparable to Lidl's own multi-branded products for food - and they own a significant number of (used) trade marks.

The multi-branded approach does not include Primarni

Registering trade marks and domain names on a defensive basis can be an endless task but should consideration be given to securing "cult brands" created by your customers to help deter opportunistic registration? Clearly, derivations from other (third party) brands creates a complex situation, you would not want to dilute your own brand and a non-used trade mark would ultimately be vulnerable to cancellation if it's never used. I do wonder how much marketing departments are happy to passively encourage their use though; there are a number of fan pages on Facebook for Primarni, for example.

Incidentally, on 7 December, just five days following publication, a Notice of Threatened Opposition was filed against the application. The IPO records do not indicate the Threatening Opponent.