Watch it!

I began what would turn out to be my career in the field of trade marks when I was a teenager. I'd like to claim this was only a few years ago, but my mother taught me never to lie.

One of my tasks in these early days was to reproduce the marks advertised for opposition purposes in the UK Trade Marks Journal into a more concise publication, the "Trade Mark Record". My employers had permission from the Crown to do this although I don't think Her Majesty would have been too impressed with the scissors and glue method to its production!

This was then sent out to a number of subscribers to flick through. For most it was to find marks they may wish to oppose although it did also go to, for example, a Trade Marks Registry in the Caribbean so they could keep themselves abreast of what the UK Trade Marks Registry was accepting at the time. It coincided with a huge effort to clear a backlog of UK applications, helped by the recent introduction of new legislation, that meant many Trade Mark Journals were double volumes.

If my memory serves me correctly, a yearly subscription was not expensive but it would have been roughly the same as a standard UK watch (with the usual commercial watch providers) at today's prices.

In those days, watching (in today's sense of the word) was not done with the same regularity. The UK still issued citations of prior rights and whilst the CTM was on the horizon, it was going to be a little while before in came into force and then the first CTM Bulletin was published. (However, it would be the CTM that would help consign the Trade Mark Record to the history books.)

Watching services did exist. The UK's most well known provider had existed since just after the Second World War driven by the Scotch Whisky Association's need to spot imitation marks around the globe, something that would have met with my late grandfather's approval (the Colman in my company's name). However, technology has moved on significantly not just from the 1940s but from the 1990s too and back then watching would have been a laborious (and thus expensive) task.

It still is to a certain extent. Languages are complex and understanding their subtleties is still something more suited to qualified human brains. It is arguably at its most notable with the Chinese languages. I previously worked next door to a watching team and watching, if you'll excuse the pun, a trade mark watcher at work really brought home their unusual skills.

I hope this trip down Memory Lane provides some entertainment to those with a sentiment for trade mark history, but I will try to bring us up-to-date and make some points of modern interest.

Watching is now dominated by a few global players that have built up the infrastructure and resources (and with this I also mean, as I grin slightly cynically, their sales and marketing teams) to offer these services in a consistent and relatively cost effective manner. As more Gazettes move to being published on-line, the increased automation of watching should help make it even more affordable.

However, what I have found is that large trade mark owners can find themselves watching too many trade marks. Aligning watching with renewal strategy can be overlooked particularly where the two fall to different responsible people or teams. Reviewing portfolios in their entirety and monitoring non-use dates is also something beyond the capacity of many departments. Personally, I would like to see watching companies work more closely with their clients to strip out the "deadwood" being watched. This may prove unlikely as it could result in a loss of revenue but I do not think they should underestimate the goodwill it could provide and what may come of that.

Large corporates have a lot of bargaining power, and you could say more so in the current economic climate, but I am not aware of any that have placed demands on their agent network with respect to trade mark watching. Requesting that agents watch trade marks (for free, we will come to this) could result in savings of not only money, but also time. A local specialist will ignore irrelevant watch notices that computers and trade mark watchers may not - the simple reason is they are more in tune with local practice and may also be better aligned with a client's strategies - so the client receives a lot less watch notices to review. It could not only save money on initial watching fees, but in the general management of watches (e.g. watch renewals and cancellations).

Could law firms organise this for free? This is debatable. The theory behind it is that they would receive any contentious work and the related $$$ (or €€€ or whatever) that even if they need to organise the watching externally they could absorb the costs. Offering for free and really doing it for free are two different things though. In Spain and other countries where publication happens before examination, complimentary internal watching services have been provided for a long time. Some Spanish firms still provide this whereas others - who I imagine question the value if they've filed a CTM and then cannot watch all national EU publications - no longer provide this service. Firms that do provide this service are often more expensive than those that do not. I'll allow you to draw your own conclusions. It might be something that you can live with.

This blog is merely food for thought. I am not supporting one way over others as different circumstances may prefer one over another. Is quality control and risk best managed internally or externally? Receiving watch notices, even irrelevant ones, helps you monitor industry trends and competition so if someone else does this how are you keeping informed? (Of course, applicant watches can be set up for specific competitors.)

This blog talks about watching in isolation - and only trade mark watching at that, no domain names, no company names, no internet, etc. In practice, how watching fits in with other parts of your practice will be very important. It may sit side-by-side with filings/prosecution and renewals but analytically speaking is the sister of trade mark searching.

Increase in International trade mark and design filings

WIPO has announced an increase of International filings for both trade marks and designs during 2011.

Trade mark filings have risen by 6.5% compared to 2010.

That looks good on the face of things, but we will analyse further. OHIM's figure, when the figures for International designations are removed, is an increase of 6.9% year-on-year but compare this to an increase of EU designations in Madrid applications of 11.9%.

I have found some US graph statistics for their filings which are far from specific with the figures so I've used very rough amounts. Nevertheless, removing the Madrid figures from the total sees US filings increase from 2010 to 2011 by approximately 9.5%. This compares to an increase in the Madrid figures of US designations of 11.5%.

Can we draw conclusions from these figures? Firstly, are we comparing a like-for-like Madrid system from 2010 to 2011? The answer is, broadly, yes we are. Israel was a notable joiner to Madrid on 1 September 2010 but this is it really. Kazakhstan (8 December 2010) and Tajikistan (30 June 2011) also came on board but they were already Madrid Agreement members. Denmark's extension of the Madrid Protocol to Greenland - with a population of little over 50,000 - on 11 January 2011 is, I feel, unlikely to have made much inroad into the statistics.

Given this, perhaps the figures show some increased confidence in the global economy but one in which trade mark owners are being more careful with their money. The EU and US have often been filed separately from an International application - there can be some differences and practical advantages by keeping the US and the EU away from an International registration - but costs constraints may appear to have pushed many to consider these acceptable.

When it comes to designs the situation is similar. We have to go on rough graph statistics from OHIM this time. Registered Community Design filings increased by 4% from 2010 to 2011 whereas designations of the EU in a Hague International application rose by 6.6% in the same period.

Again, is this a like-for-like comparison? Yes, largely it is with neither Azerbaijan (joined on 8 December 2010) nor Rwanda (31 August 2011) troubling the statisticians from 2010 to 2011.

A difference in the Hague system compared to Madrid is that you do not require a base application in your home country and can include your home country within an application. This could also demonstrate a stronger global economy as EU applicants go via Hague because they have interest in protecting their designs not just in the EU but outside it too.

The Hague system will welcome Tajikistan on 21 March 2012 as it already has done with Montenegro on 4 March 2012. The Madrid system (which may see its Madrid Agreement part become extinct) is also hoping to increase its members this year. Both will continue to offer great value ways of obtaining broad trade mark and industrial design protection.

Just be aware of the issues in Common Law countries that do not enshrine their obligations to Madrid or Hague in their national laws. As I've touched on before, I have some doubts regarding the enforceability of Madrid International Registrations in Bhutan and some African countries.

Down Under Trade Marks

Finally, we reach 'Down Under' in our continental journey across the world as we look at trade mark protection in the continent of Australia and within its wider Oceania definition.

The obvious big gun in this region - in terms of population and area - is Australia. This is the only member of the Madrid Protocol in the region although this could change soon with New Zealand getting closer to membership. (Ignore the misleading headline in the link; also New Zealand would not be the first country to allow on-line International applications.)

For now, New Zealand is covered by national filings and it boasts an extremely efficient and organised Trade Marks Office. Registrations in New Zealand cover its dependent territory of Tokelau, but not the Cook Islands or Niue when granted under the Trade Marks Act 2002. Cautionary Notices form the only rudimentary way of protecting trade marks in the Cook Islands and Niue.

Cautionary Notices are also available in the Marshall Islands, the Federated States of Micronesia, Nauru and Palau.

The situation for the Pitcairn Islands is unknown. There is a local publication for the island (only one is inhabited) but the population is estimated at less than 50. The nearest it gets to a trade mark legislation is a Registration of Business Names Ordinance.

Norfolk Island, culturally related to the Pitcairn Islands, is automatically covered by an Australian trade mark.

Britain's colonial legacy is ubiquitous in this region and a United Kingdom National trade mark registration is a pre-requisite for protection in Kiribati, the Solomon Islands and Tuvalu, all now independent from the UK. Incidentally, there are no agents in Kiribati or Tuvalu. A UK basis is an option in Fiji where it can greatly reduce the registration timeline compared to a local substantive application. Note that Fiji does not have provision for service marks.

Samoa allows purely local applications or applications based on an overseas registration provided they are filed within two years of the overseas registration being obtained. Papua New Guinea and Tonga represent jurisdictions where only local applications can be filed. Tonga previously operated on the basis of requiring a UK National trade mark registration but introduced its own law to get away from this colonial stranglehold.

This is also the intention in Vanuatu which has introduced a new Trade Marks law repealing the old dependent legislation. The previous legislation was introduced in 2008 to allow for protection of other EU registrations but the Office then interpreted this to be registrations in EU member states only but not Community Trade Marks. The "new" legislation derives from 2003 but no regulations have been issued and no fees set and so it is not operational. It is believed registration cannot be obtained in the meantime based on the old legislation. Wait and see...

The French territories within the Pacific are covered by French registrations (including International registrations designating France) but not Community Trade Marks. New Caledonia could represent a case to keep an eye on as it is due to have a referendum on independence from France in the next few years. Paris, as well as London, with some separatist issues.

US Federal registrations cover the whole of the USA. However, both American Samoa and Guam have their own registration systems. American Samoa's trade mark law is somewhat 'light'; there is not even any renewal provisions (making re-filing the only possibility) and, in my experience, seems to operate as a deposit registry. Guam has a local system of registration, which requires use, and an alternative USPTO deposit system where proof of a US Federal registration is required. Because the USPTO allocates separate registration numbers to Madrid Protocol registrations and it should be possible to obtain certified copies of these, I believe it would be possible to deposit one of these in Guam under the latter system.

If a business only has interests in the Pacific they could forego US Federal registration in favour of a State registration in Hawaii. Non-American trade mark owners are presumed to conduct business inter-state - although this is easier in the congruent 48 states - but a registration in Hawaii is very cheap. The Department of Commerce and Consumer Affairs has halved the official fee (to just $25) for this calendar year, like it did last year.

The Northern Mariana Islands are not known to have a trade mark law of their own meaning a US Federal registration should provide protection automatically. In fact, there are provisions within an anti-counterfeiting law to protect not just trade marks registered with the USPTO, but also trade marks registered in any State or Territory of the US, or foreign trade mark or those protected by Common Law.

(The provinces of Indonesia and special territories of Chile would be covered by national registrations in Indonesia and Chile respectively and are excluded here.)

To conclude, this sparsely populated continent would require 11 applications:

1. Madrid Protocol application designating Australia, France and United States of America

2. National applications in American Samoa, Guam, Kiribati, New Zealand, Papua New Guinea, Samoa, Solomon Islands, Tonga, Tuvalu and United Kingdom

(Vanuatu currently not possible.)

Then six Cautionary Notices in Cook Islands, Marshall Islands, Federated States of Micronesia, Nauru, Niue and Palau.

Australia and New Zealand represent respected developed markets. The other jurisdictions are usually only on the radar of owners of large trade mark portfolios.

Journey to the East

My blog now takes a look at trade mark protection across Asia, the world's largest continent that contains 60% of the world's population.

There is much cross over between Europe and Asia and so there will be some duplication from a previous blog on Europe.

The Madrid Protocol is not as extensive at protecting trade marks in Europe as it is in Asia, but it is nevertheless a useful tool and is more extensive than in Africa or the Americas.

India is hopefully not far away from joining as the Trademarks Amendment Bill, 2009 has been passed by both Houses of Parliament. It is now down to the Indian Government to accede to the Protocol.

Armenia, Azerbaijan, Bahrain, Bhutan, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam make up the current Madrid Protocol members in Asia.

Of these countries, Bhutan is a Common Law country but I cannot see any reflection of its Madrid Protocol membership within its Industrial Property Act of 2001. This puts the enforceability of a Bhutanese designation into question. Readers might be aware of similar issues faced in Africa.

Oman introduced legislation in 2008 to allow for the recognition of International Registrations.

The Democratic People's Republic of Korea ("DPRK") - or North Korea to most of us - is currently under UN sanctions and that of national governments. Banks in the UK, and I believe in the US and elsewhere, refuse to transfer funds to the DPRK. With respect to Madrid applications the official fees would be passed to the DPRK Government direct and I have enquired with WIPO whether they have put a stop to this (especially as it is a UN agency). Ironically, given WIPO is currently undertaking a survey on things such as customer service, a response to my query is still awaited! If you have any need to register in the DPRK - nationally or via Madrid - do be careful not to breach any sanctions that are in place. Provisional Refusals to Madrid designations can be issued willy-nilly which will require the appointment of a local agent.

The Cooperation Council for the Arab States of the Gulf has its own Patent Office, but this does not manage trade mark rights which continue to be handled nationally in the member states: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. (Bahrain and Oman can be included in a Madrid Protocol filing, however.)

The Association of Southeast Asian ("ASEAN") nations have commitments towards intellectual property rights but there is no regional registration possible. Therefore, separate applications are required in Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam. (Singapore and Vietnam can be included in a Madrid Protocol filing, however.)

Commitments towards IP harmonisation in the ASEAN are not exactly moving at a rapid pace and there are large differences between the developed law of Singapore with that of Laos, for example. Myanmar still operates a Cautionary Notice system.

The Maldives and Timor-Leste also represent Cautionary Notice jurisdictions within Asia.

National filings are the course of action in the remainder of the continent: Afghanistan, Bangladesh, India, Iraq, Jordan, Lebanon, Nepal, Pakistan, Sri Lanka and Yemen.

In Iraq, the autonomous Kurdistan Region operates its own Trade Marks Office and it is possible to "confirm" Federal registrations in the local Kurdistan Register. This seems desirable particularly whilst the Kurdistan Region enjoys greater stability than the rest of Iraq and the Trade Marks Office in Baghdad is not known for its excellent record keeping.

There are also a handful of partially recognised states within Asia. Abkhazia began operating its own Trade Marks Office quite recently. Also within the Caucasus region lie the de facto independent states of Nagorno-Karabakh Republic ("NKR") and South Ossetia. I am advised by the Ministry of Economy in NKR that they recognise Armenian registrations. Kindly note that de jure this territory is a part of Azerbaijan; even Armenia does not recognise it officially. As for South Ossetia, there is a "Committee for Patent and Trademark" which I believe is exploring the opening of an Intellectual Property Office as in Abkhazia, but the situation is unclear at the moment. With a small population and undoubtedly higher priorities, I would not anticipate any developments in this regard soon unless they are supported by Russia. Note that western governments, as is the case with Abkhazia, consider South Ossetia de jure a part of Georgia.

The northern third of the island of Cyprus is declared as the Turkish Republic of Northern Cyprus, recognised only by Turkey. It has its own Trade Marks Office. The island of Cyprus also contains two military bases of the United Kingdom, the Sovereign Base Areas of Akrotiri and Dhekelia. (Greek) Cypriot trade mark law is mirrored and, with respect to this article being specific to Asia, a Madrid Protocol designation of Cyprus should provide protection.

Palestine has two separate systems for registering trade marks reflecting its non-congruent territory, one being in the West Bank and the other in the Gaza Strip.

Taiwan is not recognised by many countries in official diplomatic circles, but "cultural offices" nurture bilateral relationships, for example, the British Trade & Cultural Office. Taiwan operates its own separate trade mark system from mainland China. The same is true for the two Special Administrative Regions of China, Hong Kong and Macao. Under the "One country, two systems" principle, Hong Kong and Macao maintained their separate Trade Marks Offices following their return to China by the United Kingdom and Portugal respectively.

Last but not least, there are some small territories in the Indian Ocean that constitute a part of Asia. Christmas Island and Cocos (Keeling) Islands form territories of Australia and Australian trade marks cover all Australian territories; there is specific mention of Christmas Island and Cocos (Keeling) Islands in the Australian Trade Marks Act 1995. It is possible to designate Australia in a Madrid Protocol application.

The British Indian Ocean Territory ("BIOT") provides protection automatically for UK trade marks in accordance with BIOT Ordinance No. 9 of 1984. I cannot locate this legislation on-line and so cannot see if it is anticipatory enough that it could be interpreted as allowing for protection of Community or International Trade Mark registrations. For the avoidance of doubt, a United Kingdom National registration would be required. This territory, despite being British, would be more of interest to American brand holders popular with US service personnel as the only inhabited island, Diego Garcia, is a military base. The islands have a controversial recent history in that the native inhabitants were involuntarily removed and there have been a number of court cases involving them in recent years.

The number of trade mark applications required to cover Asia is therefore 32 (plus some Cautionary Notices):

1. A Madrid Protocol application designating Armenia, Australia, Azerbaijan, Bahrain, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam

2. National trade mark applications: Abkhazia, Afghanistan, Bangladesh, Bhutan, Brunei, Cambodia, Gaza Strip, Hong Kong, India, Indonesia, Iraq, Jordan, Kurdistan Region, Kuwait, Laos, Lebanon, Macao, Malaysia, Nepal, Pakistan, Philippines, Qatar, Saudi Arabia, Sri Lanka, Taiwan, Thailand, Turkish Republic of Northern Cyprus, United Arab Emirates, United Kingdom (to cover British Indian Ocean Territory), West Bank and Yemen

3. Cautionary Notice publications in Maldives, Myanmar and Timor-Leste

Whilst considerable more than is required in Europe, it is the half the amount of Africa and North America combined, two continents which collectively have only 40% of Asia's population.

It's time for Africa‏

This week we move to the world's second largest continent, Africa, and explore ways of obtaining trade mark protection here.

In Africa there are 16 countries that are members of the Madrid Protocol. However, this is not as simple as it should be. Botswana, Ghana, Kenya, Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia are usually considered Common Law countries and would require specific legislation to be passed locally in order to recognise Madrid Protocol registrations. This appears to have happened for Botswana and Kenya.

Sudan follows Sharia Law, which is based on legal precedent and analogy and is therefore considered similar to Common Law; it was also previously governed by Britain. For years it piled up Madrid designations but now processes them (and it could be said usually a lot quicker than national filings) and gives at least tacit recognition of them. However, it cannot be ruled out that in the absence of specific legislation amendments that any positive Trade Marks Office and court judgements in favour of Madrid holders could be annulled on appeal.

The Liberian Trade Marks Office has taken it upon itself to follow trade mark legislation that makes reference to Madrid registrations. However, this drafted legislation has not been passed by the Liberian Parliament and so this country represents another case of "proceed with caution". The same can be said of Namibia, which constitutionally should recognise the international treaties it has become a party to, but has yet to implement specific legislation catering for Madrid marks; it has a mixed Civil Law and Common Law legacy from being governed by South Africa.

The other (Civil Law) countries that are members should recognise Madrid marks in the same way as national registrations. These are Algeria, Egypt, Madagascar, Morocco, Mozambique and São Tomé and Príncipe. If you can add Botswana and Kenya to this list and you have eight African countries which could be designated in a Madrid Protocol application. Others could be included depending on how you evaluate the risk.

You could definitely argue that an International Registration that is ultimately not enforceable is worthless. However, I'd suggest it could have some value and this is when it comes to searching. The International Register is easily searchable and global companies regularly perform knock-out searches including this Register. They may or may not know if an IR designating, for example, Lesotho, Swaziland and Zambia has doubtful enforceability in these countries but at the earliest stage of their searches they are looking to quickly eliminate a large number of trade mark candidates and this may enable them to do this. I do feel this benefit is not substantial but take into account that the costs of including most countries in a Madrid Protocol application are fairly incremental.

If there is an ability to file through Madrid then this effectively makes the ARIPO route redundant. Those that read a previous blog may recall that only Botswana and Zimbabwe can be safely designated in an ARIPO application so if Botswana is included in a Madrid filing then it's easier to file in Zimbabwe separately.

A single application at OAPI will cover 16 countries of Africa.

There are still a handful of countries where the only trade mark protection available is through the publication of Cautionary Notices. Comoros, Ethiopia, Eritrea and Somaliland fall within this group; Eritrea when such Cautionary Notice publications are allowed.

With the exception of the aforementioned Somaliland region, the situation in Somalia remains perilous and finding out information on the ground is a difficult task. It is believed the Trade Marks Office no longer functions as it has probably been destroyed. Furthermore, the press is fragmented - it is considered very dangerous to be a journalist in Somalia - making the publication of Cautionary Notices nigh on impossible.

The region of Puntland has declared autonomy within Somalia (as opposed to independence like Somaliland). It enjoys a level of stability higher than the rest of Somalia but again it is difficult to arrange publication of Cautionary Notices. According to the monitoring team at the BBC, the region has no local press.

South Sudan, considered the world's newest country, is in a trade mark limbo at the moment whilst it organises the various arms of its government and administration. The authority that will handle trade mark registrations is apparently "reserving" trade marks on behalf of interested parties for the time being. I am not aware of how this works in practice and I was under the impression that it will adopt trade mark legislation comparable to that of (northern) Sudan. This remains unknown along with any possibilities for revalidation and/or obligations to sign up to Madrid, although doubts in enforceability of the latter will persist if the legislation proves to be a simple duplication.

Western Sahara is a disputed territory largely under the administration of Morocco and Moroccan trade mark laws are applied directly. In Morocco it is possible to lodge trade mark applications at a number of cities around the country including some in the territory of Western Sahara.

According to the United Nations, Western Sahara remains a decolonised territory (despite Spanish withdrawal), but in the remainder of the territory – a small slither of land known as the Free Zone – it is thought unlikely that Spanish registrations would provide any protection, even those granted before the Spanish left in 1975. Can Cautionary Notices be published in this area? It is not clear that there is a local press in circulation. Perhaps it is interesting to note that Western Sahara - as the Sahrawi Arab Democratic Republic - is a member of the African Union whereas Morocco is the only African country that is not.

Other quirks on the continent of Africa include Tanzania which operates two Trade Marks Offices. One is on the mainland or the former Tanganyika and the other is on the island of Zanzibar. When Tanganyika and Zanzibar merged to form Tanzania they maintained their separate trade mark systems.

Sierra Leone is now unique on the continent in using the former British classification system. In isolated St Helena - an island where the British exiled Napoleon - it is still a prerequisite to have a UK registration before local registration can be sought. In the absence of any amendments to the regulations this is seen to be a United Kingdom National Registration or, in other words, you cannot use a Community or International Registration designating the UK.

The French, Portuguese and Spanish territories located in Africa (e.g. Réunion in the Indian Ocean, Madeira and the Canary Islands in the Atlantic Ocean) are covered by Community Trade Marks (and national registrations in France, Portugal or Spain). An International Registration designating the European Union or France, Portugal and Spain would provide the same protection, although see my previous blog on why designating the EU in an International can be undesirable.

So the grand total for complete trade mark protection in Africa requires 32 or 33 applications (and a couple of Cautionary Notice publications). This may sound a lot, but it is a similar amount as required in North America of which it has nearly double the population. Madrid and OAPI filing routes also represent good value for this continent. You can lower this amount if you are willing to take calculated risks and designate additional countries such as Sudan in a Madrid Protocol application.

1. Madrid Protocol application designating Algeria, Botswana, Egypt, Kenya, Madagascar, Morocco, Mozambique and São Tomé and Príncipe

2. Community Trade Mark application to cover French, Portuguese and Spanish territories around Africa (can be included in Madrid application if need be)

3. OAPI application covering 16 countries of west Africa

4. 30 national applications in: Angola, Burundi, Cape Verde, Democratic Republic of the Congo, Djibouti, Ethiopia, Gambia, Ghana, Lesotho, Liberia, Libya, Malawi, Mauritius, Namibia, Nigeria, Rwanda, St Helena, Seychelles, Sierra Leone, South Africa, South Sudan*, Sudan, Swaziland, Tanzania (Tanganyika), Tunisia, Uganda, United Kingdom (as basis for application in St Helena), Zambia, Zanzibar and Zimbabwe
5. Cautionary Notice publications in Comoros, Eritrea (when allowed by the Goverment) and Somaliland. (Ethiopia indicated as a national application.) 
* when it becomes possible to lodge applications
(Lists exclude Somalia and Western Sahara.)

Journey south

The blog journeys south this week as we leave Panama and enter Colombia and South America.

Colombia represents the strongest chance that the Madrid Protocol will advance into Latin America (aside from the existing membership of Cuba). However, for the time being a national filing is required.

National filings are required for the other countries of South America too. Brazil's growing stature on the international stage may make it next in line to join the Madrid Protocol, but this is a guessing game in this region. Every time there seems to be a new member on the horizon, nothing materialises. Brazil has problems with the backlog of its applications which it would need to address (and appears to be doing so albeit slowly) if they were not to operate a two-tiered "slow national system" and "faster Madrid system".

I would commentate that Madrid membership may have hit a bit of a standstill. I think Colombia will join the fray (although let's see), but South America has generally moved to the left politically and the influence the US has in the region has arguably waned. Lawyers in Latin America can also be close to the politicians and with a general fear of the Madrid Protocol diminishing their case loads, they will naturally use any influence they may have in this respect.

The most notable country being as far away from Madrid Protocol membership as possible is surely Venezuela. Having reverted back to an old Trade Mark Law from 1955 it is easy to see their local classification system and 15-year registration terms being incompatible with Madrid.

So national filings are required in the Spanish-speaking countries of the continent: Argentina, Bolivia, Chile, Colombia, Ecuador, Paraguay, Peru, Uruguay and Venezuela. The regional powerhouse, Portuguese-speaking, Brazil also requires a national application as does Dutch-speaking Suriname. English-speaking Guyana requires a local application although the option exists to base an application on a United Kingdom registration which can simplify registration and is the only way to register a service mark.

A UK registration is required for automatic protection to the Falkland Islands, based on local legislation from 1996, and to South Georgia and the South Sandwich Islands, based on an Ordinance from 2001. It is believed that as this covers trade marks "having effect in the United Kingdom" this would include Community Trade Marks.

A French or a CTM registration will provide protection to the overseas department of French Guiana.

The minimum number of filings for South American protection is therefore 13 including a Community Trade Mark. Strangely enough this is a larger number than is required for Europe.

This week is one of January sales so you will get two continents for the price of one as we continue southwards to Antarctica!

The continent of Antarctica has no trade mark legislation of its own per se. It can be expected that Argentinian, Australian, Chilean, French, New Zealand and Norwegian registrations should provide protection in the relevant claimed areas, although note the Argentinian and Chilean claims overlap with British claims. Theoretically, common law rights could exist in the British claimed section, but UK registrations have no effect in the British Antarctic Territory as far as we are aware as it would need specific legislation to be passed.

The various claims to Antarctica are not recognised by a number of countries, although Australia, France, New Zealand, Norway and the United Kingdom recognise each other claims. According to the Antarctic Treaty System, "Article 4 – The treaty does not recognize, dispute, nor establish territorial sovereignty claims; no new claims shall be asserted while the treaty is in force."

Antarctica normally hosts a non-permanent population of roughly 1000 people who we must imagine bring extremely warm clothing and non-perishable foodstuffs from their home countries. On the IP radar it is not.

Got a CTM, got Europe?

I am sure you know the answer to this question but forgive me for sucking you in with a sensationalist headline!

This blog will explore obtaining trade mark protection across the whole continent. It will travel (although not literally) to every corner of this diverse but compact continent.

The first thing is to define Europe itself. This isn't particularly easy, but let's take Wikipedia as our guide.

It's absolutely clear that most trade mark owners do not need to cover the whole of Europe. We will leave it to the commercial priorities of each trade mark owner/adviser to determine where protection is and is not required.

My inner geek means I can visualise a map of Europe (and other continents) in my head but those of you without this "skill" can see a country's location on the Wikipedia article.

We will approach this from the angle of a non-European. In our usual attempts to be cost effective, we will look at it from the perspective of a Madrid Protocol compliant applicant.

The European Union is the key jurisdiction here, although there's also the significant emerging growth market of Russia which we will come to.

The European Community can be designated in a Madrid Protocol application. Speed is a practical disadvantage to taking the Madrid route and you may consider it money well spent filing through the "traditional" Community Trade Mark route. Nevertheless, through Madrid is possible.

The next countries are those that are a part of the European Economic Area ("EEA") but not part of the European Union. In basic terms, these countries benefit from the EU's free trade but do not have a direct say in how it functions. Norway is the biggest member and it does come as a surprise to some people that this is not part of the EU; referenda on joining in 1972 and 1994 resulted in "no" votes. Iceland (which has applied to join the EU) and Liechtenstein are the other members of the EEA. All three can be designated in a Madrid Protocol application.

Switzerland can also be designated in a Madrid Protocol application. Whilst not technically part of the EEA, bilateral agreements between the Swiss and the EU make the relationship very close. There is no physical border. When I lived in the north west of Switzerland, I could take a walk to both France and Germany with no fuss, quite a surreal experience for someone from an island nation.

The EU will welcome its 28th member on 1 July 2013 with the accession of Croatia. In the meantime, Croatia can also be included in a Madrid filing.

The EU candidate countries can also be designated within Madrid: Macedonia, Montenegro and Turkey. Applications have also been submitted by Albania and Serbia and likewise these countries can be designated in a Madrid filing. Further, Bosnia-Herzegovina, identified by the EU as a possible future member, can also be included in a Madrid filing.

Likewise, two of the microstates of Europe with economies closely linked to EU members can be included in a Madrid filing, namely, Monaco and San Marino. Jersey and the Isle of Man, crown dependencies of the UK, are automatically covered by a Community Trade Mark.

Russia can be included within a Madrid application as can other former Soviet republics. As far as Europe is concerned this can also include: Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Moldova and Ukraine.

That's nice and easy! Around 99.9% of Europe covered by a single Madrid filing (or by two filings, a CTM and Madrid). That leaves 0.1% that could be potentially left behind. They may not be commercially important to everyone, but incorrect assumptions that they are already covered are easily made.

The UK's third crown dependency is the Bailiwick of Guernsey. As the UK is largely responsible for foreign affairs it cannot sign up to international agreements like the Madrid Protocol itself. Its legislation for trade marks is independent and a local application can be filed. However, it is possible to claim priority on the application form.

Gibraltar is arguably covered by a CTM registration but as the territory has not amended local legislation to reflect this, relying on this would be considered risky. The surest form of protection is obtained by extending a United Kingdom registration to Gibraltar.

Andorra is situated in the Pyrenees mountains between Spain and France. For obvious reasons it has adopted the Euro currency. It maintains a purely independent trade mark registration system, which despite being relatively new, contains no provisions for international agreements like the Madrid Protocol although it is possible to claim priority based on reciprocal arrangements.

The Faroe Islands, a constituent country of the Kingdom of Denmark, are not a part of the European Union and therefore not covered by a Community Trade Mark. They do not operate a separate Trade Marks Office and instead protection is provided by a Danish national registration. However, note the same protection is not accorded to an International Registration designating Denmark as Denmark's membership of the Madrid Protocol specifically excludes the Faroe Islands.

It is more straightforward with other Nordic possessions within Europe. Svalbard, whilst not a part of the EEA, is subject to Norwegian laws including those related to trade marks. The Åland Islands are covered by Finnish laws, inclusive of protection of Community Trade Marks.

The situation with the Vatican City State is somewhat ambiguous. The Lateran treaties between Italy and the Vatican provided for automatic protection of Italian trade marks. However, this was under the Italian Trade Mark Law of 1929 which has since been superseded. As the Vatican is not within the EU, it could be unwise to rely on a Community Trade Mark, but Italy was already a member of the Madrid Agreement in 1929 so I would anticipate International Registrations designating Italy would be held in the same regard as Italian national registrations. Covering Italy would mean that San Marino does not require separate protection; each country recognises trade mark rights from the other. However, the additional fees for including San Marino are relatively incremental and it seems sensible to include separately.

Europe contains a handful of partially unrecognised states. Kosovo is the most high profile. It is yet to join the UN under threat that any application will be vetoed by Russia or China and, as such, cannot join the Madrid Protocol. A national application is therefore required. Priority claims are accepted.

Turkish or Northern Cyprus - formally the Turkish Republic of Northern Cyprus - is recognised only by Turkey. Despite Cypriot accession to the EU there is at least tacit recognition that it does not cover the Turkish controlled northern third of the island. An independent Trade Marks Office exists and due to Cyprus's history as a colony of the UK, the law is British influenced. British influence is also maintained on the island of Cyprus with the holding of two military bases, the Sovereign Base Areas of Akrotiri and Dhekelia ("SBA"). (Greek) Cypriot trade mark law is mirrored in these meaning a Community Trade Mark should provide protection and I understand this to be the case based on the SBA's Trade Mark Ordinance 21/02.

In the former Soviet Union, the Pridnestrovian Moldavian Republic ("PMR") (often Transnistria for short) has operated its own Trade Marks Office for some time. The international community recognises the PMR as de jure a part of Moldova. Abkhazia - see my previous blog - opened an Office fairly recently. That leaves Nagorno Karabakh Republic ("NKR") and South Ossetia. I am advised by the Ministry of Economy in NKR that they recognise Armenian registrations. Kindly note that de jure this territory is a part of Azerbaijan; even Armenia does not recognise it officially. As for South Ossetia, there is a "Committee for Patent and Trademark" which I believe is exploring the opening of an Intellectual Property Office as in Abkhazia, but the situation is unclear at the moment. With a small population and undoubtedly higher priorities, I would not anticipate any developments in this regard soon unless they are supported by Russia. Note that western governments, as is the case with Abkhazia, consider South Ossetia de jure a part of Georgia.

An applicant should consider any negative implications of registering trade marks and trading in countries unrecognised by their own country's government.

I should add that there are overseas territories of some European countries that lie outside of Europe not discussed in this blog.

The conclusion and how many filings would "Europe" require at most? 10 or 11.

• European Community filing (if budget allows otherwise jump to 2 and include there)
• Madrid Protocol filing designating: Albania, Armenia, Azerbaijan, Belarus, Bosnia-Herzegovina, Croatia, Georgia, Iceland, Italy (to cover Vatican City State), Kazakhstan, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Russia, San Marino, Serbia, Switzerland, Turkey, Ukraine
• 9 x local filings: Abkhazia, Andorra, Denmark (to cover the Faroe Islands), Gibraltar, Guernsey, Kosovo, Pridnestrovian Moldavian Republic, Turkish Republic of Northern Cyprus, United Kingdom (as basis for application in Gibraltar)

How much would all this cost? Perhaps not as much as you may imagine. Official fees for a one class Madrid Protocol application would amount to CHF4978 or roughly US$5420, or including the European Community and it's CHF6089 or roughly US$6630. You will have your local IPO's handling fee on charge of this. If you're stuck then we can help you out.

For the other filings you will need to work with associates and, of course, my firm - and I am sure other firms including existing contacts that you have - would be pleased to quote you on fees for any of these.

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.

Shortcutting across the Atlantic

Onwards to the US and how can we search here? Particularly with pragmatism and with an eye on the costs.

Full searches for the US should not only include searches of the Federal Register (including International Registrations covering the US) but also the individual State Registers and a Common Law search for any unregistered rights.

I think we would all agree that not undertaking any checks would be a bad idea. Beside the USPTO's TESS database, which is great for identical searches, I would refer you again to the Markify database which can provide a more intelligent search and catch many killers. Remember it does not claim it will find every similar mark, but then who can do that anyway?

Many of the State Registers are on-line and searchable but there's 50 of them and it would take you a while to conduct identical searches across them separately. Commercial databases are often better for this and with one tick of "US State" you can search all 50 of them in one go, including the ones that are not available to search through their Secretary of State's website. Some check Puerto Rico too meaning it's actually 51 databases being searched. You will probably have to pay on a per-hit basis unless you have a subscription and this covers the US State database.

You could omit the individual States because most - although I don't believe it is all - States operate a registration system that confirms any common law rights in existence i.e. use is a prerequisite for registration. This leads us nicely on to Common Law searches.

The cheapest Common Law search out there is an internet search. Whether you restrict to the most popular search engine, Google, or extend it to others like Yahoo and Bing would be up to you. There are obvious limitations to this approach and it is absolutely far from a catch all. It is generally restricted to identical matches although Google sometimes makes alternative spelling suggestions. You could also rely on market intelligence you/your client may have or can leverage e.g. through a local distributor who may know about similar marks already on the market.

For foreigners filing in the US particularly via the Madrid Protocol, where time is on our side and penetration of the US market is not expected imminently, we could take a relaxed view and just file from here. It would be a "suck it and see" approach to see what issues are raised, if any, by the USPTO. It would be important to file for an acceptable specification, which you may or may not be skilled at drafting, and not a "Europeanised" broad specification, but this is another discussion. It's also important to realise that any Common Law rights will not be revealed by an Examining Attorney.

In an ideal world, a full search (Federal, State and Common Law) with legal opinion would still be requested through a US trade mark lawyer. They would be able to advise on negotiating around possible problems, for example, by carefully crafting a specification of goods or providing an opinion on a 50/50 mark where you really need a detailed knowledge of local practice and case law. There is a lot of value a US trade mark lawyer could add to a matter. However, you may be able to knock out trade mark candidates far more cheaply before you go to them for a final (hopefully) green light to file or use. Adopting this approach could mean you knock out candidates that could possibly be available, but you may evaluate that risk as acceptable.

Overall, don't underestimate the number of free tools available to you. This is not an ideal economic environment and you have budgetary constraints. You have to weigh up costs versus risk. When it comes to the crunch, rely on a US lawyer to be absolutely sure.

Cutting the corners of a trade mark search?

As the global economic woes continue to hit the IP budgets of companies around the world would foregoing (some) trade mark searches provide savings or would it prove a false economy?

Like many questions, the answer to this is not black and white. There will always be limitations with trade mark searching - even when there can be perfect and instant record keeping and indexing, the Paris Convention and priority will always see to this. Nevertheless, practitioners would recommend a trade mark search in nearly all scenarios.

In the European Union, in addition to the Community Register there are 24 member states with a National Trade Marks Register plus the Benelux Trade Marks Register, covering Belgium, the Netherlands and Luxembourg, and the International Register. In total, 27 Registers. This is a considerable amount and it is hardly surprising that searching all of these Registers is costly. On top of this, unregistered trade mark rights could also exist from common law countries like the United Kingdom.

Taking a look at some of the costs available on websites of specialist companies shows the following figures for a word mark search in one class in all 27 Registers:

• Belgian search company €5850 8 hour turnaround, no legal opinion
• Belgian search company €3900 5 day turnaround, no legal opinion
• Dutch search company €8805 10 day turnaround, with overall legal opinion
• German search company €4950 6 day turnaround, no legal opinion
• Luxembourg search company €4278 5 day turnaround, no legal opinion
• Luxembourg search company €8007 5 day turnaround, with overall legal opinion
• My firm (please forgive the self marketing) €3650 no legal opinion

These are meant as a comparison and you may not be comparing exactly apples with apples with the search packages available. The thing is to demonstrate that it's an expensive business, although it could easily be more expensive - contact your agents in 25 individual countries for searches and then see what the collective fees would be!

It makes the official fee of €900 to file an application (in 1-3 classes) at OHIM seem a drop in the ocean, although you may have associate's fees on top of that.

There are times when it is important to clear a mark thoroughly across all 27 Registers e.g. ahead of a big launch across the whole of the EU and it could be useful for a trade mark professional, whether in private practice or in-house, to entrust the searching with a single provider.

At other times, the costs are going to be prohibitive. Pragmatic - if not entirely risk-free - solutions need to be provided.

This blog will now take a bottom up approach. Risk evaluation would need to be handled on a case-by-case basis.

Firstly, to not bother searching. But this is inadvisable when the tools out there for basic searching are readily available, most notably TMView. This currently includes 14 of the 27 Registers (including 6 of the "Big 7", which I'll come to later). I had the privilege to travel to Spain to test this on behalf of project leaders OHIM and it is a simple tool with the "*" being used as a wildcard. It gives the opportunity to at least undertake identical and rudimentary searches of 14 Registers. Some countries not on TMView, most notably Germany, can be searched through their national Office's website if need be.

The good thing is this is all for free and available to anyone not just from Europe, but from Canada to New Zealand, Chile to Japan too.

Commercial platforms also exist for conducting these searches often with more Registers available through one search query on a single platform and with a more intelligent ability to find similar marks. The disadvantage is they cost money whether this is on a subscription or a pay-per-hit basis.

Identical and near identical searching is not going to catch everything but it will catch absolute killers and it's cheap. I say cheap instead of free as you must take into account your time involved.

Also cheap and easy to use is the tool provided by Markify, a commercial company based in Sweden. Whilst this only covers the CTM and US Federal Registers (you can disable the latter if need be), it is more intelligent than any identical/near identical search most of us can conduct ourselves and produces more extensive results. It doesn't claim it will find every similar mark, but it's another freebie available to anyone worldwide and a useful way of locating any possible problems. People are sceptical of free things. Their website states that they make money from their premium services (trade mark watching) and referrals to law firms. For the record, I do not have a commercial relationship with Markify.

After a Community Trade Mark application is filed, OHIM will automatically search its own Register and advise you of the results. If you've undertaken the previous steps, you may not learn of anything new.

Upon filing a Community Trade Mark application it is also possible to request "National Search Reports". These cost an additional €132 and prior to your CTM's publication you will receive search reports from the 11 participating Offices: Austria, Czech Republic, Denmark, Finland, Greece, Hungary, Lithuania, Poland, Romania, Slovakia and Spain. In practice, these are irregularly requested as you have already committed yourself to filing an application and incurred the main application fee. If these searches were available on a standalone, pre-filing basis they would represent outstanding value for money.

"EU5" is a common package of interest to CTM applicants. This search concentrates on the British, French, German, Italian and Spanish Registers in addition to the Community and International Registers (the "Big 7" I mentioned before). The simple reason is that 80% of oppositions are said to be based on rights originating from one of these Registers and these searches tend to be around 70-80% cheaper than the full "EU27" searches above.

"EU15" is a package focussed on the first 15 members of the EU - as opposed to "EU12", the countries that have joined the Union in the last two waves of enlargement. As Portugal has already slipped behind accession countries such as Slovenia, I feel this is an outdated way to determine a searching strategy. As the Registers across the whole Union are now mostly well tuned, a pick-and-mix approach (perhaps supplemented by identical searches of the remaining Registers) depending on a client's budget and industry is probably going to be more appropriate. The Cypriot, Greek and Maltese Registers are still in need of some modernisation, but Cyprus and Malta are often omitted as they have two smallest populations in the EU (Luxembourg being taken as part of the larger Benelux for this statement).

If your interests are only in a portion of the European Union you can concentrate your searches on these core countries. It is usually said that as soon as you have three or more EU countries of interest then it becomes cheaper to file a CTM over separate applications. Take this example, you only have a real interest in Austria, Benelux and Germany so your searches of these three Registers are comprehensive, but you are less thorough with searching the other Registers. Your CTM application is then opposed on the basis of a Greek registration, but you can convert your CTM application into applications in Austria, Benelux and Germany. Conversion is a bit of an insurance policy; you do not lose your original CTM filing date. It doesn't come particularly cheap, national applications must be filed at the usual rates and there are no discounts available just because there was a prior CTM and you will not get your CTM filing fees back. However, in this example, would the additional cost of filing nationally in three countries be cheaper than having searched completely across "EU27"?  This would probably be marginal, depending on the circumstances. But if you had, taking this example, searched "EU27" and found the killer Greek mark and then realised you would have to file separately in Austria, Benelux and Germany then you would only have saved the CTM filing fees. This would have worked out more expensive than omitting the full "EU27" search in the first place, filing the CTM and then converting the CTM.

It is a juggling act. Trade mark professionals are tuned to believe that if you don't search properly then don't go crying to them if it goes wrong. However, in this day evaluated cost versus risk is critical. In the conversion example where you don't search comprehensively, "justice" is served on your "laxness" as you face an opposition. But you still end up getting trade mark protection where needed - cheating the system? Or being creative?

There are no hard and fast rules to searching but as clients squeeze their attorneys for costs and in-house teams feel the pinch, whether you are in our outside of the EU, take a look at some of the free tools available. If you can familiarise yourself with them so it's not an inefficient and ineffective burden on you then the time and costs savings could prove very useful. Then when it comes to the searches that cost money, be creative - or seek creative advice.

I'll take a (shorter) look at US searching soon.