Pragmatic help from the Syrian Trade Marks Office

I regularly present on 'Notarisation & Legalisation' for the Institute of Trade Mark Attorney's Trade Mark Administrators' Course and I think it would be almost an understatement to say that we consider legalisation to be a real headache in the West.

Nevertheless, appreciation of other legal cultures is important especially in the globalised world of trade marks and we need to comply with these requirements.

Therefore, we are very grateful when notices are issued by Trade Marks Offices requiring legalised documents that recognise the difficulties - particularly with respect to turnaround times - in providing legalised documents. One such notice has just been issued by the Trade Marks Office in Syria in relation to Madrid Protocol designations of their country.

The Syrian Office works well with the Madrid Protocol system regularly sending out acceptance notices and Statements of Grants to holders via WIPO. Examination is also robust and Provisional Refusals are not uncommon.

With the Syrian Civil War ongoing for over two years now it is perhaps remarkable that the Office continues to function relatively efficiently. Of course, this may change if the situation escalates nearer to the Office, which according to my maps is located in a part of Damascus not so far away from Douma, a major flashpoint city of the War to date.

Ethiopia introduces trade mark law

The Federal Democratic Republic of Ethiopia has recently introduced trade mark legislation to replace its quirky Cautionary Notice system.

This is positive news for Africa's second most populous country - it's ahead of Egypt and only behind Nigeria in this respect - and one of the world's fastest growing economies.

The country's coffee industry has made significant efforts around its brands - with the support of their IP Office - so it was important their own trade mark law was brought up-to-date.

During the Scramble for Africa in the late 19th Century, Ethiopia was one of only two African nations not to have been controlled by one of the European powers of the time. It retains pride with this fact and perhaps this explains why the new law, which is modern in the main, contains some quirks. A seven-year term of registration stands out. Perhaps they are conscious on losing out on renewal fees bearing in mind the old system established six-year terms, with short-form Cautionary Notices to be published in intervening two-year periods. It has also shown no enthusiasm for joining the Madrid Protocol club.

Certain bureaucratic elements are retained, namely, the need to submit a legalised Power of Attorney and a legalised "home" registration certificate. At least the latter requirement has been relaxed and a legalised Extract of the Commercial Register can be submitted as an alternative.

Well-known marks are recognised, priority can be claimed and registrations will be vulnerable to cancellation on the grounds of non-use if they are not used for a continuous period of three years.

There is an 18-month "sunrise" period in which owners of existing rights filed before 7 July 2006 can re-register their trade marks under the new law. The deadline in which to file these - and claim the filing dates of the existing rights - is informally set at 24 June 2014.

Applications filed after 7 July 2006 will be prosecuted under the new law. If they are already registered then it is possible to request fresh, updated Certificates of Registration and indeed it seems advisable to do this.

As is typical when a country introduces a new trade mark law there remain practical details that are unknown. Waiting to see how things will operate is not a bad idea, but I would recommend that trade mark owners with interests in Ethiopia should look to make their re-registration decisions shortly. This will give them plenty of time to collate all the necessary supporting documentation and file it with their applications. This will help avoid late filing expenses and also, perhaps more importantly, help the Ethiopian Intellectual Property Office remain organised and speed up registration times.

Caribbean IP

Back in September I began a regular feature reviewing Intellectual Property in the Caribbean region.

This journey of island hopping, which also took me to Central America and the top of South America, has now ended.

The full list of the jurisdictions and their reviews is now provided:

Anguilla

Antigua and Barbuda

Aruba

Bahamas

Barbados

Belize

Bermuda

Bonaire, Sint Eustatius and Saba

British Virgin Islands

Cayman Islands

Cuba

Curaçao

Dominica

Dominican Republic

Grenada

Guyana

Haiti

Jamaica

Montserrat

Puerto Rico

St Kitts and Nevis

St Lucia

St Vincent and the Grenadines

Sint Maarten

Suriname

Trinidad and Tobago

Turks and Caicos Islands

US Virgin Islands

Furthermore, Guadeloupe, Martinique, St Martin and French Guiana are covered by French and Community Trade Marks (including International designations) whereas St Barthélemy is covered by French national registrations and International Registrations designating France only.

This is a region that for many years was stagnant on the IP front but there are now changes happening with many of the jurisdictions introducing new legislation over the last decade. With the dissolution of the Netherlands Antilles in 2010 there was also the creation of three new trade mark jurisdictions: Bonaire, Sint Eustatius and Saba (also known as the Caribbean Netherlands or the BES Islands), Curaçao and Sint Maarten.

Things will continue to change with the Bahamas and the British Virgin Islands - both using the very archaic former British classification system for trade marks - expected to introduce new trade mark legislation in the next couple of years.

I did not cover St Helena in my series. This is located in the middle of the Atlantic Ocean but is sometimes erroneously included with the other Saints (Kitts, Lucia, Vincent) and assumed to be in the Caribbean. Given its remoteness it is a very low volume trade mark jurisdiction but if you need any support here then do not hesitate to reach out to me.

I hope this series has been of interest and welcome comments, suggestions or questions.

Caribbean IP Part 28: Bermuda

ISO 3166 country code: BM.

Bermuda is the oldest colony of the United Kingdom being a colony of England prior to its unification with Scotland. It is now the most populous of all the British Overseas Territories, with around 65,000 people.

Despite its proximity to the United States and Canada, it remains fairly pro-British and its last independence referendum was easily defeated. However, if the referendum was repeated today the result may not be so clear cut.

The relative isolation of Bermuda means it is not strictly a part of the Caribbean although it is an associate member of the Caribbean Community (CARICOM). It is a high income island driven by the finance and tourism sectors.

As the island is non-sovereign and not independent it is not in a position to accede to International arrangements such as the Madrid Protocol without the United Kingdom legislating for them in this respect.

However, it has a local trade mark system in place. It is not a prerequisite to have a United Kingdom trade mark registration in order to register a trade mark in Bermuda, although it does have persuasive value before the local Registrar under section 18(4) of the local Trade Marks Act.

When it comes to registered designs, Bermuda also allows for local registration. With respect to UK Registered Design rights these provide for automatic protection to Bermuda. There could be a defence for infringers if they could not know of the design in Bermuda which suggests that if there is no use or disclosure of such a design in Bermuda (for example, in the UK only), then the owner of the UK design may be prevented from taking action locally in Bermuda. As the law has not been amended accordingly, it is unlikely the same protection and provisions are given for Registered Community Designs.

The Registry General administers IP rights on the island. Their website provides some general information on intellectual property specifically on how to file applications. Examination of trade mark applications is not lax and objections will be raised according to the law if the Examiner feels it is justified, yet the processing of trade mark applications is organised and timely.

As a high income society, Bermuda is a potentially lucrative market to many trade mark owners. It is important that its location means it is not inadvertently omitted from any filing programmes for the Caribbean and/or North America.

Caribbean IP Part 27: US Virgin Islands

ISO 3166 country code: VI.

The Federal trade mark law of the United States, the Lanham Act, applies to not only all 50 states but also to any territory under the jurisdiction of the United States. Therefore, US Federal registrations automatically cover the US Virgin Islands.

Nevertheless, a local registration system is also available.

The Division of Corporations and Trademarks at the Office of the Lieutenant Governor administers locally registered rights. It is necessary to support an application with a Federal registration by providing a certified copy of the same. Because US designations of Madrid Protocol registrations are given a local Registration number it is believed these could also form the basis for applications in the US Virgin Islands.

There is no separate register for design patents.

It is not too often that separate trade mark registration is required for the US Virgin Islands although it could be useful in some cases. Registration is inexpensive (incidentally, we can file directly in the US Virgin Islands) if filing is ever considered.

Caribbean IP Part 26: Turks and Caicos Islands

ISO 3166 country code: TC.

The Turks and Caicos Islands are a non-sovereign nation, a British Overseas Territory. As such they are not able to sign up to international agreements. However, they can make reference to them in their own IP legislation and in this connection, reference is made to the UK Trade Marks Act and Community Trade Mark within its trade marks legislation.

Trade mark legislation is modern with the latest Trade Marks (Amendment) Rules dating from 2011. The Turks and Caicos Islands allow for local applications and they are well up-to-date in using the International Classification and allowing service marks.

It is also possible to extend UK trade marks to the islands and this provision is now also available to Community Trade Marks and International Registrations. 

The Turks & Caicos Islands Financial Services Commission administers the Trade Marks (and Patents) Registry. Their web presence provides  a fairly decent brief overview on trade marks.

Like with other British territories, Madrid Protocol membership is not on the horizon. In 2009, the UK Government imposed direct rule on the islands following a corruption scandal (home rule being restored recently) but unilaterally imposing the Madrid Protocol on any territory would not be made.

As for designs, there does not appear to be any legislation catering for these.

The Turks and Caicos Islands operate an organised trade marks system. The main gripe trade mark proprietors have is that annual maintenance fees are due against trade marks. As with the Cayman Islands, these put a large financial burden on maintaining trade marks in a jurisdiction with a tiny population; the population is estimated at under 50,000.

Caribbean IP Part 25: Trinidad and Tobago

ISO 3166 country code: TT.

As 96% of the population live on Trinidad - Tobago has a population of just over 50,000 - the country is often referred to as just Trinidad (much like Antigua and Barbuda is referred to as Antigua). Nevertheless, I'll refer to it in its more proper longer form.

Trinidad and Tobago is party to a number of International Agreements on intellectual property and plays a particularly active role compared to its regional neighbours. Membership includes the Berne Convention, Locarno Agreement, Nice Agreement, Paris Convention, Patent Cooperation Treaty, Trademark Law Treaty, UPOV Convention, Vienna Agreement and WIPO Convention.

It has yet to join the Madrid Protocol for trade marks or the Hague System for industrial designs.

The trade mark law in Trinidad is modern and the Intellectual Property Office works reasonably efficiently. The forms are straightforward to understand, with some similarities with those in the UK.

The Trinidadian and Tobagonian Government operates a portal which provides the general public on information on intellectual property, most notably on registering a trade mark.

Unfortunately, the actual IPO's website never seems to load for me.

Trinidad and Tobago has recent legislation for the protection of industrial designs dating from 2007 and it is necessary to file locally - or, in other words, a UK registration provides no protection.

The country has modern laws in place, an Office that operates with reasonable speed and has joined various International Agreements. It is felt that - with some amendments to the local trade mark legislation - that the country would be well equipped to join the Madrid Protocol. As a significant market in the English-speaking Caribbean they would be a welcome addition to the Madrid family.

Article 9sexies of the Madrid Protocol - clearly explained

I've commented on WIPO's Madrid Highlights a couple of times (here and here).

Their fourth issue has recently been published on their website and I shall not comment on its "usual" contents. Some of you may have subscribed to this anyway.

I must say though that I particularly liked WIPO's way of explaining Article 9sexies of the Madrid Protocol. For those of us from countries that are members of the Madrid Protocol only this is, largely speaking, not relevant in day-to-day work. However, from time-to-time you may end up representing a proprietor from a member state of both the Madrid Agreement and Madrid Protocol, perhaps it has tax benefits being established in such a member state, for example. It is then that you may find WIPO's explanations appearing on pages 6 and 7 useful.

I commend WIPO for putting this information in such an easy to digest way and, I hope, also in the new language versions of Madrid Highlights in Arabic, Chinese, French, Russian and Spanish (the five other official UN languages) when these are released in due course.

Of a more picky note - me being keen on geographic accuracy - the map on page 5 is slightly inaccurate in that the large island of Greenland is not coloured in turquoise. Yes, my name is contained in the word "pedant", possibly by no coincidence!

Caribbean IP Part 24: Suriname

ISO 3166 country code: SR.

Suriname, or Surinam, is the smallest independent nation in South America but with a Dutch-colonial history it is often categorised with the Caribbean (see also neighbouring English-speaking Guyana). It is an ethnically diverse nation yet Dutch remains the official language, although there are dialectal differences from the Dutch dialects spoken in Europe.

Suriname is a member of the Berne Convention, Hague Agreement, Nice Agreement, Paris Convention, Strasbourg Agreement and WIPO Convention. Most of these memberships were continuations of the Netherlands' memberships following Suriname's independence in 1975.

Notably, this includes the Hague Agreement for the International Registration of Industrial Designs. However, this membership only extends to the Hague Act and not the Geneva Act. Applicants from Geneva Act only members will not be able to use the Hague System for protecting designs in Suriname. This would include an EU applicant who can rely only on the EU's Geneva Act membership e.g. the likes of British, Danish, Finnish, Irish, Spanish and Swedish applicants.

It is not apparent that independent industrial design registration is available for Suriname. For trade marks, Suriname does not have membership of the Madrid Protocol but national applications can be filed locally. There are backlogs with applications but it isn't a complete black hole and applications do eventually mature to registration.

Service marks are not yet registrable - the trade mark legislation dates from colonial times - and patent protection is unavailable in Suriname. Little mention appears to being made to updating legislation in relation to intellectual property which leaves an impression that Suriname has little interest in intellectual property rights.

Caribbean IP Part 23: Sint Maarten

ISO 3166 country code: SX.

Sint Maarten was a part of the Netherlands Antilles up until its dissolution on 10 October 2010. Much of what was written about Curaçao applies to Sint Maarten.

For a transitional period of one year the Sint Maarten Bureau of Intellectual Property was to be managed in Curaçao (by what was the former Bureau of Intellectual Property of the Netherlands Antilles). Effectively, the laws for Sint Maarten and Curaçao were to remain the same and the Registers would have operated in parallel. Owners of existing Netherlands Antilles registrations were automatically considered to cover both Sint Maarten and Curaçao. Of course, from 10 October 2010 it has been possible to file or renew in Curaçao only, or in Sint Maarten only.

The one-year transitional period in which Sint Maarten should have began operations of its own IP Office has now passed and I am not aware that this Office has been established in the St Maartener capital of Philipsburg or elsewhere in the country. Once this happens then we may see a divergence in practice and timelines compared to the Office in Curaçao.