Irregularity Notices from WIPO - International Applications

I have sung the praises of WIPO's Madrid Highlights publication in the past (for example, see here).

Their latest issue and their first of 2013 has recently issued. It contains information collated over the previous three months, such as the notification issued by the Syrian Trade Marks Office.

I would like to bring attention to readers of this blog to the 'Madrid Tips - Practical Examples on the Implementation of the Madrid System' section. In this issue WIPO explore Rule 13 of the Common Regulations.

This relates to the WIPO Irregularity Notices they can issue regarding the classification of goods or services. These are somewhat unusual so if you do not have much experience of the system, or tend to file standard specifications (that are always acceptable) then WIPO's questions and answers could be quite useful for you in case you receive such an Irregularity Notice.

I copy WIPO's questions but have adapted the language of the answers to be (possibly) more user-friendly and less "WIPO-speak" in case this could be helpful. Of course, the original WIPO text can be found in the Madrid Highlights publication.

Whenever WIPO considers that the classification of goods and services in an International application is incorrect, it will notify the Office of origin (your Trade Marks Office, where you filed the International application) and inform the applicant (or representative).

However, the responsibility for remedying this irregularity lies with your Trade Marks Office, which may, within three months from the notification, make a proposal for remedying the irregularity.

Q1. I am the applicant of an international application. I have received an irregularity letter indicating that a term of the list of goods and services is too vague for the purposes of classification. The letter also states that the irregularity is to be remedied by the Office of Origin. What does it mean?
R1. This means that WIPO considers that a term used in the list of goods and services is not
sufficiently clear for the purposes of classification. When this happens, WIPO notifies your Trade Marks Office and informs you, the applicant (or representative). WIPO may suggest either a substitute term or the deletion of the term. Your Trade Marks Office may, within three months of the notification, make a proposal to remedy the irregularity.

Q2. Is any action required on my part as the applicant (or representative) of the international application concerned?
R2. There is no action required from you in this case. However, you, as the applicant (or representative), may communicate your views regarding the irregularity to your Trade Marks Office, or your Trade Marks Office may seek your views.

Q3. What options has the Office of origin to reply to the irregularity?
R3. Your Trade Marks Office may respond to the irregularity as follows:

• Agree to accept any suggestion which WIPO may have made, then the term will be changed accordingly.
• Disagree with any suggestions. Then, your Trade Marks Office may respond to the irregularity by submitting a new proposal. 

If the new proposal is acceptable to WIPO, then the term will be changed accordingly.

If the new proposal is unacceptable to WIPO within the three-month time limit, there are two
possibilities:

• If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
• If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.

Q4. What happens if the Office of origin does not reply to the irregularity?
R4. If your Trade Marks Office does not reply to the irregularity, there are two options:

• If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
• If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.

Q5. If the Office does not reply, can I reply in its place?
R5. No! You may communicate your views regarding the irregularity letter to your Trade Marks Office, but you cannot respond to the irregularity directly to WIPO. The reply to the irregularity must be sent to WIPO through your Trade Marks Office within the prescribed time limit.

Q6. Will I be informed of the outcome of this procedure?
R6. Yes, where the irregularity is resolved and the international application conforms to the
applicable requirements, the mark is registered in the International Register and a certificate is
issued. Furthermore, the international registration is published in the Gazette and, for
information purposes, in the ROMARIN database. You will also be informed when a non-classified term is deleted due to a non-acceptable proposal or in the absence of a reply from your Trade Marks Office.

It should be clear that the responsibility of responding to these Irregularity Notices lies with your Trade Marks Office but it is important that these are not overlooked by applicants or their representatives.

As the gatekeeper of the Nice International Classification, WIPO take a strict view to where products and services are classified.

If an Irregularity Notice is issued, do not merely docket the deadline provided by WIPO for your Trade Marks Office to respond to them. It is suggested that you docket an earlier date so you can give input to your Trade Marks Office and they can take it into account when responding to WIPO.

You will also be familiar with how your Trade Marks Office operates. Are they organised? Are they pro-active? This will help you determine if you need to get in contact with them upon receipt of an Irregularity Notice to ensure your views are heard and so they respond in good time.

This is a quirk of the Madrid system. It can leave you scratching your head if you find yourself in the strange situation where you receive an Irregularity Notice (aka Office Action) yet you cannot respond to it. Hopefully this scenario is now more clearly explained.

Libyan Trade Marks Office resumes operations

It has recently been announced that the Libyan Trade Marks Office has resumed its activities and will recommence receiving the filing of trade mark applications.

This follow the time of unrest following the 2011 Libyan Civil War and the overthrow of Colonel Gaddafi.

Perhaps reflecting its status as a pariah state over the last decades, Libya has been a special case with respect to trade marks for many years.

In the late 1970s the Office basically ceased to operate. However, in this time it was possible to file applications - and the Office quite happily took the fees - but applications then sat in a perpetual state of limbo. The Office was also quite happy to receive renewal fees 10 years down the line.

This changed in the early 2000s when Libya unilaterally cancelled any old registrations and pending applications and required trade mark owners to file fresh applications.

I worked for a Swiss company in 2008 when Switzerland and Libya had a diplomatic row following the arrest of one of Colonel Gaddafi's son in Geneva. This led to repercussions for Swiss companies with business interests in Libya and, with respect to trade mark owners, the issuing of an edict prohibiting Swiss applicants for making applications for trade marks.

The resumption of activities has also seen the restrictions on Swiss applicants removed.

Libya remains a cumbersome and relatively expensive jurisdiction in which to file trade mark applications. Along with a Power of Attorney, filing requirements include a Certificate of Incorporation/Extract of the Commercial Register and a certified copy of the "home" registration. These documents require translation into Arabic and legalisation up to the Libyan Consulate.

Fees are payable at filing, publication and registration. It will remain to be seen how quickly applications can now move forward to registration.

India joins Madrid - finally!

It has been anticipated for some time now, but finally Madrid Protocol membership has increased to 90 members with the accession of India.

It will be possible to designate India in an International application from 8 July 2013.

The Indian Trade Marks Registry has made commendable efforts in recent years to reduce its examination backlog so they would be in a position to meet the 18-month examination period for Madrid Protocol designations.

Whether they remain well equipped to handle an increase of examinations which should follow when it can become designated in an International application may remain to be seen. It will be important that examination of Indian national applications is not delayed because Madrid Protocol designations must take priority. Otherwise the attractiveness of the Madrid Protocol will diminish for Indian trade mark owners as its high number of oppositions would mean Central Attack could be a problem.

The Madrid Protocol already covers most of the West (with the notable exception of Canada) and the emerging markets of Eastern Europe. The joining of India adds another major newly industrialized country to the selection of countries available following on from the accession of Mexico and the Philippines last year. With China and Turkey already on board and Thailand expected to one of the next joiners, the Madrid Protocol continues to grow and grow.

Trademark Clearinghouse

The Internet Corporation for Assigned Names and Numbers ("ICANN") has seen its Trademark Clearinghouse open for business today, 26 March 2013.

For those unfamiliar with the Trademark Clearinghouse:

"The Trademark Clearinghouse (TMCH) is the most important rights protection mechanism built into ICANN’s new gTLD program. Operators of new gTLDs will be responsible for implementing certain rights protection mechanisms, supported by the Trademark Clearinghouse. The Clearinghouse allows brand owners to submit their trademark data into one centralized database, prior to and during the launch of new gTLDs. The Clearinghouse will open on March 26.

• Trademark holders will be able to submit their trademark information to a centralized repository.
• After verification, the trademark holder has fulfilled the basic (most important) condition to be able to register its corresponding domain name during the pre-registration period of multiple TLDs – also known as the "Sunrise period".
• Trademark holders will also have the option to be notified when someone registers a domain name that matches their record in the Clearinghouse."

Owners of famous brands will look to register their trade marks with the Clearinghouse. However, with inexpensive fees, the Clearinghouse is accessible to smaller brand owners - particularly where these brand owners would focus on registering only their house mark with the Clearinghouse.

Fees can be paid annually, which when compared to the duration of trade mark registrations is too often. Thankfully, fees can also be paid for three year or five year terms too with some small discounts available for the longer periods.

The Trademark Clearinghouse is expected to be a useful tool in the continued battle against cybersquatters.

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.