I have written an E-book with the above title that may be of interest to readers of this blog.
It's not expensive and can be purchased from Amazon here.
11 February 2014
The Protocol - Past, Present and Future
Trade mark professionals in the UK – and many in other countries – work with the Madrid Protocol on a daily basis. How different it once was.
Early expansion
US issues
The Madrid Protocol, with the UK among its first members, came into play on 1 April 1996. For most, this date is better known as the first day Community Trade Marks (CTMs) could be filed (or, more precisely, the earliest filing date CTM applications could be accorded). CTMs got filed by the bucket-load and have been popular from the start.
For the Madrid Protocol it was different, as many countries were slow on the uptake. This included those that were already members of the Madrid Agreement, which, until they were in the Protocol, were out of bounds for UK businesses.
Only a handful of Madrid Protocol applications were filed by UK companies in the early days. With the European Union (EU) easily covered by the new CTM, the majority were filed to designate China as most of the other members of commercial importance at this time were other EU member states. I can recall speaking to the UK Trade Marks Registry to check on the progress of an early application and being told: “We’ve only had three applications so far.” A recent check of ROMARIN shows a mere 11 active registrations originating from the UK registered between April and September 1996.
Over time some key countries have come aboard such as Australia, Japan, Korea, Russia, Singapore and the US as well as the EU itself. And, if it was not immediately popular, the advent of the Protocol proved a watershed moment in the Madrid system and the global registration of trade marks.
Early expansion
The Madrid Agreement had been operational since 1892, but primarily as a European continental club. Prior to 1948, the only non-European member was Morocco. The arrival of Vietnam, in 1949, marked the Agreement's expansion to Asia, although it would take another 40 years before it touched the Americas with the accession of Cuba.
With little prospect of further expansion in the same guise, particularly to common-law countries, the inflexibilities of the Madrid Agreement were ironed out in the Madrid Protocol and allowed the UK, US and others to come aboard. It has grown rapidly since.
This decade has seen a diverse expansion, both geographical and economical. There has been the accession of Colombia, India, Israel, Mexico, New Zealand, the Philippines, Rwanda and Tunisia. And Kazakhstan, Sudan and Tajikistan added the Protocol to their Agreement membership. Furthermore, the dissolution of the Netherlands Antilles in 2010 created three new Madrid jurisdictions: Curaçao, Sint Maarten and Bonaire, Sint Eustatius and Saba. Meanwhile, far removed from the sunny climes of the Caribbean, Denmark extended its Madrid Protocol membership to include Greenland.
Challenges, of course, remain. Is the requirement to have a home registration really needed these days? Direct filings with WIPO would make them operationally less cumbersome. The removal of the threat of “central attack” would bring less uncertainty to the table when using Madrid, and this is a concept less easily understood by owners of smaller trade mark portfolios.
WIPO suffers processing delays at the moment. Statements of grant were made mandatory, as many users were forthright on the importance of these. WIPO listened, but the increased numbers of these documents put them under pressure.
They should have little problem in coaxing civil servants from Member States to a tax-free salary in Switzerland should it need more staff. Although my criticism of WIPO’s recruitment would be that Government experience seems to be a prerequisite for employment, when professionals from industry or private practice could add a different perspective.
I must give praise where it is due, though, and the set-up of three dedicated teams of examiners at WIPO has left the organisation less faceless. Incidentally, Madrid Team 1 (madrid.team1@wipo.int (+41) 22 338 750 1) looks after applications originating through OHIM, and Madrid Team 3 (madrid.team3@wipo.int (+41) 22 338 750 3) is responsible when the UK is the Office of origin.
The development of on-line tools should also be welcomed and will improve operations.
US issues
The onerous maintenance requirements for US designations still present a problem. In the first term of registration there are likely to be three maintenance events, namely two Affidavits due (to the US Patent and Trademark Office) and one renewal due (to WIPO). The high number of Provisional Refusals in the US may have meant there were no cost savings in the original Madrid filing, but even if there were (for there being no need to engage US Counsel), the maintenance requirements for US Madrid Protocol designations are, at best, no cheaper than they would be for a national registration. It’s easy to see why some argue that the US has taken all the benefits of the Madrid Protocol for its own businesses, but is barely extending this back to other users of Madrid. A similar situation arises for designations of the Philippines.
Common-law countries, mostly in Africa, pose another problem when they have not amended their local legislation to reflect their Madrid membership. WIPO can seem oblivious to this, thinking once they have a member signed up, it is “job done”, but ultimately if you could not enforce an International Registration in, for example, Zambia, isn’t that country's membership worthless?
As for the future, it is easiest to speculate on the new joiners. Remaining in Africa, Zimbabwe has made legislative steps to ready itself for membership, but, as we saw with India, this does not necessarily mean they will be depositing their instrument of accession immediately. Being the home of the African Regional Intellectual Property Organization (ARIPO), Zimbabwe could play an important role on the continent and help in finding a way of linking ARIPO’s Banjul Protocol with the Madrid Protocol.
Malta, currently the only EU member not to have Madrid membership, could complete the EU jigsaw. We may also anticipate Algeria – the sole remaining member of the Madrid Agreement only – to accede to the Protocol, too. This may put to bed the Madrid Agreement and abolish Article 9sexies. This provision allows applications from member states of both the Madrid Agreement and Madrid Protocol to pay complementary and supplementary fees (rather than individual fees) when designating members that are also party to the Madrid Agreement and Madrid Protocol. They also get the advantage of a 12-month examination period. Those from Madrid Protocol-only countries, including the UK, can claim this is unfair.
The ASEAN states are scheduled to join the Madrid Protocol by 2015. Thailand is expected to come aboard soon, joining the existing members in ASEAN: the Philippines, Singapore and Vietnam. Malaysia has made legislative amendments to prepare for Madrid. For the other ASEAN states (Brunei, Cambodia, Indonesia, Laos and Myanmar) this timetable may be less realistic, although we may expect Brunei or Indonesia to make strides in this time, and new legislation is imminently anticipated in Myanmar.
The same is true with CAFTA-DR countries whose free trade agreement with the US stipulates Madrid Protocol membership. Costa Rica, the Dominican Republic, El Salvador, Guatemala, Honduras and Nicaragua are the members, with Costa Rica and the Dominican Republic considered the most likely to join up first.
Pockets of resistance
Pockets of resistance
Of some of the major markets currently outside of the Madrid family, resistance is strong in Canada, where local practitioners have lobbied their Government hard not to join.
Brazil and South Africa present some more positive vibes, although both realise they need to reduce examination backlogs to be able to cope with an influx of Madrid applications. They are making inroads into these backlogs, although not at the same rate as India.
Brazil faces another challenge because the local law stipulates Portuguese as the official language for all correspondence. This could be amended, but a change could present a linguistic burden on the local trade mark office. It is possible that Portuguese could become an official Madrid language – WIPO already provides some information in this language. However, there may be a reluctance to do this unless some dispensation can be reached that keeps a handle on translation costs (for example, only International Registrations designating Brazil are translated into Portuguese).
WIPO may also be wary. In 2004, Spanish was made an official language, but it has not been until the last year that Colombia and Mexico joined the Madrid club (Spanish-speaking Cuba and Spain were already members before 2004).
Making Portuguese an official language would be almost purely to lure in Brazil. Other Lusophone nations, such as Angola, Cape Verde and Timor-Leste, are not of commercial interest to as many businesses as Brazil (and Mozambique, Portugal and São Tomé and Príncipe are already a part of Madrid). Further, to digress somewhat, Portuguese could only be currently available as a first language for designations of the European Community and not (as is the case with English, French and Spanish) as a second language.
Some of the quirky mechanisms of the Madrid Protocol will continue to baffle some people and there are skills required to work with it, but it is clear that the Madrid Protocol is here to stay and will become increasingly prominent in the field of trade marks in years to come. It may get replaced with a new system in due course, but political wranglings may mean it is easier to amend the existing system than to start from scratch.
This article originally appeared in Issue 406 December 2013/January 2014 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.
This article originally appeared in Issue 406 December 2013/January 2014 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.
30 January 2014
Certified Copies
I admit that this might not be the most interesting or high brow of topics. However, it might help provide some useful information.
I've had the need to order some Certified Copies recently to support a priority claim in one instance, and to substantiate applications based on United Kingdom registrations. I was wondering how quickly other jurisdictions were able to issue these documents (and how expensive they are).
A Certified Copy ordered through OHIM on 27 November took a month to be received. To be fair, the document was sealed by OHIM on 18 December and it got caught in the Christmas mail backlog although I believe "three-to-four weeks" would be typical for OHIM to issue Certified Copies. Such documents cost €30 each in Official fees.
I've had the need to order some Certified Copies recently to support a priority claim in one instance, and to substantiate applications based on United Kingdom registrations. I was wondering how quickly other jurisdictions were able to issue these documents (and how expensive they are).
A Certified Copy ordered through OHIM on 27 November took a month to be received. To be fair, the document was sealed by OHIM on 18 December and it got caught in the Christmas mail backlog although I believe "three-to-four weeks" would be typical for OHIM to issue Certified Copies. Such documents cost €30 each in Official fees.
Certified Copies ordered through the UK IPO on 23 December were issued in early January. UK Certified Copies cost £20 each in Official fees for trade marks (£22 each for designs). I believe "one-to-two weeks" would be the typical time period for the UK IPO to issue Certified Copies. In my case, the original documents went astray in the post - a service which doesn't have 100% reliability and, from time-to-time, may need factoring in - and, therefore, it ended up being more than two weeks when my replacements arrived.
In Switzerland, Certified Copies can be ordered by e-mail at no charge and are issued in about a week. However, I believe the length of time for WIPO to issue a Certified Copy (Extract) is a lot longer. In fairness, I should mention that I have not ordered such a document from WIPO for some time (obviously they cannot be used as priority documents) but WIPO suffers from some delays in their other Madrid Protocol operations. The costs involved in obtaining a Certified Extract from WIPO are variable as the link shows.
It's been a longer time since I've ordered a US Certified Copy direct from the USPTO. Usefully, they now have an on-line ordering service. A Certified Copy to serve as a priority document would cost $15 in Official fees making them cheaper than both OHIM and the UK IPO.
It's been a longer time since I've ordered a US Certified Copy direct from the USPTO. Usefully, they now have an on-line ordering service. A Certified Copy to serve as a priority document would cost $15 in Official fees making them cheaper than both OHIM and the UK IPO.
If readers would like to share knowledge of their jurisdictions timelines and costs for obtaining Certified Copies then perhaps this would be of use to other readers. Particularly if they have a priority claim to substantiate and are wondering when their client is likely to be able to provide this document to them.
The good news is that many countries no longer require Certified Copies to support priority claims. They will typically say that it is at an Examiner's discretion to request a priority document though.
One of the benefits of the International system is that priority claims can be made without substantiation (i.e. needing to provide a Certified Copy or other proof).
Other Offices will take the view that if they can check the on-line Register of the priority claim country then they'll do this pro-actively to verify the priority claim. OHIM's new on-line filing tool is designed so this 'link' can be made by the applicant in the application.
OHIM also provide for the self-downloading of CTM Certified Copies from the on-line record of a specific case. A third party, such as a foreign Trade Marks Office, can then verify the authenticity of the document through OHIM's website by entering an 'Identification code'. I have learned recently that the Trade Marks Office in Saudi Arabia, a country where formalities are known to be complicated, accepts these documents from OHIM to support priority claims.
One of the benefits of the International system is that priority claims can be made without substantiation (i.e. needing to provide a Certified Copy or other proof).
Other Offices will take the view that if they can check the on-line Register of the priority claim country then they'll do this pro-actively to verify the priority claim. OHIM's new on-line filing tool is designed so this 'link' can be made by the applicant in the application.
OHIM also provide for the self-downloading of CTM Certified Copies from the on-line record of a specific case. A third party, such as a foreign Trade Marks Office, can then verify the authenticity of the document through OHIM's website by entering an 'Identification code'. I have learned recently that the Trade Marks Office in Saudi Arabia, a country where formalities are known to be complicated, accepts these documents from OHIM to support priority claims.
Needless to say, bureaucracy is still rife in some countries and original physical documents will be required. When they require legalisation this creates another headache. OHIM provide a useful service where they will undertake the legalisation up to the European Commission Representation (for this purpose this is the equivalent of a Ministry of Foreign Affairs). Nevertheless, if such a document (i.e. originating from OHIM) requires consular legalisation then this will need to be done in Spain. If you're not in Spain then you will likely want to get an agent in Madrid to assist. Dealing with foreign Consulates is not always an easy task even when you're based in the same country, let alone when you're not.
When making priority claims or applications requiring Certified Copies, it is sensible to be prepared for the hassle and costs that can be involved.
UPDATE: In Jordan, it takes 2-3 days for a Certified Copy to be issued.
UPDATE: In Jordan, it takes 2-3 days for a Certified Copy to be issued.
16 January 2014
Cautionary Notices - not worth the paper they're printed on? II
I posted on this topic back almost exactly two years ago in January 2012 and the blog continues to be popular.
In the subsequent two years though some things have changed so it was time for an update.
While it has decreased in recent years - including in the last two years - there are still a few countries around the world without trade mark legislation. It has become established practice to publish Cautionary Notices in the local press of these jurisdictions that alert third parties to a proprietor's trade mark rights.
But how valuable are these publications? Yes, they warn the local public of a proprietor's rights but could they unhelpfully attract the attention of the bad guys like counterfeiters?
The obvious problem in countries without trade mark legislation is there is no IP law per se to back up the trade mark "registrations" obtained by publishing Cautionary Notices.
Ethiopia was probably the most high profile of the Cautionary Notice countries but they adopted a trade mark law in 2013.
I speculated two years ago that the Comoros could join OAPI and this is exactly what it did from 25 May 2013.
In the absence of a UK National Registration it was also possible to publish a Cautionary Notice in Grenada under its archaic Merchandise Marks Act. New legislation has removed the requirement for a UK National Registration.
So another three countries dropped off the "Cautionary Notice list" and this leaves:
Myanmar (or Burma as the country is still referred to by some Governments) has a somewhat formalised system in place where a Trade Mark Declaration is lodged with a Registration Office prior to the publication of a Cautionary Notice. According to my research, case law exists that includes the throwing out of a trade mark infringement action on the basis that there was no provision for the same in Myanmar's law. However, the court was willing to entertain cases relating to passing off; Myanmar following a Common Law doctrine. However, WATCH THIS SPACE, Myanmar has trade mark legislation drafted and it is hoped this will come into force during 2014.
Until 1993, Eritrea was a part of Ethiopia, but upon independence did not introduce a trade mark law or even replicate the (old) Ethiopian registration procedures. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. The publication of Cautionary Notices in Eritrea has an unpredictable nature as it is not clear if there is any case law. It is also worth mentioning that the government - Eritrea is a single-party state - restricts the publication of Cautionary Notices from time-to-time. If the separation of government and judiciary is not what we might expect, it could be expected that the value of any Cautionary Notice, when it is allowed to be published, is unpredictable.
The Maldives have a similar situation. There is no codified IP law. However, locally incorporated companies can register their trademarks under the name of the company. Monthly fees must be paid to maintain a registration (albeit these are small).
In the absence of a locally incorporated company - and this seems common even for large international businesses - it is possible to publish a Cautionary Notice in a local newspaper. As a Muslim country, publications should be avoided for "alcoholic beverages".
Somaliland is recognised by the international community as a part of Somalia, but in practice enjoys de facto independence. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trade mark legislation but in the absence of a Trade Marks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”. As another Muslim country, publications should be avoided for "alcoholic beverages".
Gibraltar represents an optional Cautionary Notice jurisdictions based on its Merchandise Marks Act 1888. This British overseas territory has a dependent registration status for its more formal Trade Mark laws. The local Trade Marks Registry accepts applications with a UK (including International designations) and a Community Trade Mark basis. It is questionable how easy to enforce the latter would be though in the absence of specific legislation to recognise them. As a part of the European Union, Gibraltar should be covered by a Community Trade Mark automatically but there are doubts to this. I have blogged in more detail regarding Gibraltar previously.
The remainder of the world's Cautionary Notice countries consist of a number of island countries in or near Oceania, namely, the Cook Islands, the Marshall Islands, the Federated States of Micronesia, Nauru, Niue, Palau, the Pitcairn Islands and Timor-Leste.
The latter is the exceptional case in this small list as it has a Civil law system based on that of Indonesia, which includes some remedies against trade mark misuse. While the penalties are not considered a sufficient deterrent, Cautionary Notices are nevertheless considered of some use.
The other islands derive their legislation from Common Law countries: Australia, New Zealand, the United Kingdom and the United States. Cautionary Notices for non-used marks could have limited value.
I am not aware of publications having ever taken place in the Pitcairn Islands but this is no surprise given the population is estimated at less than 50 (although there is a dedicated publication for the islands).
The Cook Islands and Niue provide an unusual situation due to their evolved relationship with New Zealand. Registrations granted under New Zealand Trade Marks Act of 1953 cover the Cook Islands and Niue whereas those granted under New Zealand Trade Marks Act of 2002 do not. This Act does not extend to the Cook Islands and Niue due to their increased levels of self government. As an alternative to introducing their own trade mark legislation, I imagine they could recognise the 2002 Act (or ask the New Zealand Government to extend the Act, if this is more appropriate) but that this would only be done on their specific action. Incidentally, Tokelau remains an unincorporated territory of New Zealand - and therefore directly covered by New Zealand trade marks - despite two UN supported referenda encouraging it to move to a self-governing state in free association with New Zealand like the Cook Islands and Niue.
Some firms can publish a single Cautionary Notice for multiple jurisdictions through a pan-Oceania publication. (We can do this too.) However, this does not have the same circulation figures as a national newspaper. I am therefore wary of doing this because of the unclear value Cautionary Notices provide in the first place and feel publication in local newspapers per jurisdiction may prove to provide improved protection.
One issue with Cautionary Notices is their cost. They don't really come cheap. This is not to say they are usually excessively more expensive than a standard trade mark application in many countries, but take into account that regular re-publication is expected in order to make them worthwhile. The term for republication can vary but if you took it at an average of every three years then you can do the maths and work out that this will work out more expensive than your regular trade mark renewals. With an estimated population of 60 million people, Myanmar represents a potential market of significance. Political developments seem likely to see its pariah state status improve and being situated between India and China it has obvious high growth potential.
However, note that most of the Pacific island nations support tiny populations. This does explain why some brand owners may opt for a single pan-Oceania Cautionary Notice publication for these jurisdictions. It could be considered a "better-than-nothing" approach that will not cost as much.
I would be reluctant to come to firm conclusions, but I like to provide an opinion that might be helpful. For Timor-Leste it seems that Cautionary Notices do provide some value even if it is somewhat limited. Eritrea represents particular ambiguity and I would endeavour to explore the registration of a trade name first of all, if possible.
Gibraltar is a special case. Ideally have a UK registration to extend to the territory, but in the absence of this it is possible there will be a CTM in place which can form the basis of an application. Because of a CTM's questionable enforceability, it could be worthwhile supplementing it with the publication of a Cautionary Notice. Publication costs for Cautionary Notices in Gibraltar are not too expensive.
For the other countries, Common Law rights would seem to provide for protection and I would consider the publication of Cautionary Notices to be a supplement to these rights rather than an alternative. The expense of Cautionary Notices would also be a notable disadvantage to "defensive" publications.
I am lucky enough to have the contacts that can arrange for the publication of Cautionary Notices around the world if ever a reader needs assistance.
In the subsequent two years though some things have changed so it was time for an update.
While it has decreased in recent years - including in the last two years - there are still a few countries around the world without trade mark legislation. It has become established practice to publish Cautionary Notices in the local press of these jurisdictions that alert third parties to a proprietor's trade mark rights.
But how valuable are these publications? Yes, they warn the local public of a proprietor's rights but could they unhelpfully attract the attention of the bad guys like counterfeiters?
The obvious problem in countries without trade mark legislation is there is no IP law per se to back up the trade mark "registrations" obtained by publishing Cautionary Notices.
Ethiopia was probably the most high profile of the Cautionary Notice countries but they adopted a trade mark law in 2013.
I speculated two years ago that the Comoros could join OAPI and this is exactly what it did from 25 May 2013.
In the absence of a UK National Registration it was also possible to publish a Cautionary Notice in Grenada under its archaic Merchandise Marks Act. New legislation has removed the requirement for a UK National Registration.
So another three countries dropped off the "Cautionary Notice list" and this leaves:
Myanmar (or Burma as the country is still referred to by some Governments) has a somewhat formalised system in place where a Trade Mark Declaration is lodged with a Registration Office prior to the publication of a Cautionary Notice. According to my research, case law exists that includes the throwing out of a trade mark infringement action on the basis that there was no provision for the same in Myanmar's law. However, the court was willing to entertain cases relating to passing off; Myanmar following a Common Law doctrine. However, WATCH THIS SPACE, Myanmar has trade mark legislation drafted and it is hoped this will come into force during 2014.
Until 1993, Eritrea was a part of Ethiopia, but upon independence did not introduce a trade mark law or even replicate the (old) Ethiopian registration procedures. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. The publication of Cautionary Notices in Eritrea has an unpredictable nature as it is not clear if there is any case law. It is also worth mentioning that the government - Eritrea is a single-party state - restricts the publication of Cautionary Notices from time-to-time. If the separation of government and judiciary is not what we might expect, it could be expected that the value of any Cautionary Notice, when it is allowed to be published, is unpredictable.
The Maldives have a similar situation. There is no codified IP law. However, locally incorporated companies can register their trademarks under the name of the company. Monthly fees must be paid to maintain a registration (albeit these are small).
In the absence of a locally incorporated company - and this seems common even for large international businesses - it is possible to publish a Cautionary Notice in a local newspaper. As a Muslim country, publications should be avoided for "alcoholic beverages".
Somaliland is recognised by the international community as a part of Somalia, but in practice enjoys de facto independence. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trade mark legislation but in the absence of a Trade Marks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”. As another Muslim country, publications should be avoided for "alcoholic beverages".
Gibraltar represents an optional Cautionary Notice jurisdictions based on its Merchandise Marks Act 1888. This British overseas territory has a dependent registration status for its more formal Trade Mark laws. The local Trade Marks Registry accepts applications with a UK (including International designations) and a Community Trade Mark basis. It is questionable how easy to enforce the latter would be though in the absence of specific legislation to recognise them. As a part of the European Union, Gibraltar should be covered by a Community Trade Mark automatically but there are doubts to this. I have blogged in more detail regarding Gibraltar previously.
The remainder of the world's Cautionary Notice countries consist of a number of island countries in or near Oceania, namely, the Cook Islands, the Marshall Islands, the Federated States of Micronesia, Nauru, Niue, Palau, the Pitcairn Islands and Timor-Leste.
The latter is the exceptional case in this small list as it has a Civil law system based on that of Indonesia, which includes some remedies against trade mark misuse. While the penalties are not considered a sufficient deterrent, Cautionary Notices are nevertheless considered of some use.
The other islands derive their legislation from Common Law countries: Australia, New Zealand, the United Kingdom and the United States. Cautionary Notices for non-used marks could have limited value.
I am not aware of publications having ever taken place in the Pitcairn Islands but this is no surprise given the population is estimated at less than 50 (although there is a dedicated publication for the islands).
The Cook Islands and Niue provide an unusual situation due to their evolved relationship with New Zealand. Registrations granted under New Zealand Trade Marks Act of 1953 cover the Cook Islands and Niue whereas those granted under New Zealand Trade Marks Act of 2002 do not. This Act does not extend to the Cook Islands and Niue due to their increased levels of self government. As an alternative to introducing their own trade mark legislation, I imagine they could recognise the 2002 Act (or ask the New Zealand Government to extend the Act, if this is more appropriate) but that this would only be done on their specific action. Incidentally, Tokelau remains an unincorporated territory of New Zealand - and therefore directly covered by New Zealand trade marks - despite two UN supported referenda encouraging it to move to a self-governing state in free association with New Zealand like the Cook Islands and Niue.
Some firms can publish a single Cautionary Notice for multiple jurisdictions through a pan-Oceania publication. (We can do this too.) However, this does not have the same circulation figures as a national newspaper. I am therefore wary of doing this because of the unclear value Cautionary Notices provide in the first place and feel publication in local newspapers per jurisdiction may prove to provide improved protection.
One issue with Cautionary Notices is their cost. They don't really come cheap. This is not to say they are usually excessively more expensive than a standard trade mark application in many countries, but take into account that regular re-publication is expected in order to make them worthwhile. The term for republication can vary but if you took it at an average of every three years then you can do the maths and work out that this will work out more expensive than your regular trade mark renewals. With an estimated population of 60 million people, Myanmar represents a potential market of significance. Political developments seem likely to see its pariah state status improve and being situated between India and China it has obvious high growth potential.
However, note that most of the Pacific island nations support tiny populations. This does explain why some brand owners may opt for a single pan-Oceania Cautionary Notice publication for these jurisdictions. It could be considered a "better-than-nothing" approach that will not cost as much.
I would be reluctant to come to firm conclusions, but I like to provide an opinion that might be helpful. For Timor-Leste it seems that Cautionary Notices do provide some value even if it is somewhat limited. Eritrea represents particular ambiguity and I would endeavour to explore the registration of a trade name first of all, if possible.
Gibraltar is a special case. Ideally have a UK registration to extend to the territory, but in the absence of this it is possible there will be a CTM in place which can form the basis of an application. Because of a CTM's questionable enforceability, it could be worthwhile supplementing it with the publication of a Cautionary Notice. Publication costs for Cautionary Notices in Gibraltar are not too expensive.
For the other countries, Common Law rights would seem to provide for protection and I would consider the publication of Cautionary Notices to be a supplement to these rights rather than an alternative. The expense of Cautionary Notices would also be a notable disadvantage to "defensive" publications.
I am lucky enough to have the contacts that can arrange for the publication of Cautionary Notices around the world if ever a reader needs assistance.
18 December 2013
Season's Greetings
On behalf of COLMAN+SMART, I'd like to wish all our customers, associates, blog readers and supporters an enjoyable festive season and a fantastic start to 2014.
To be honest, we're not ones to send Christmas cards - all that paper and transport isn't great for the environment if this not a bit too neo-modern.
This year we have made two small donations to Macmillan, who provide cancer care and support, and Dementia Care as my late grandparents (representing the 'Colman' in our company name) suffered from these diseases.
Merry Christmas everyone!
To be honest, we're not ones to send Christmas cards - all that paper and transport isn't great for the environment if this not a bit too neo-modern.
This year we have made two small donations to Macmillan, who provide cancer care and support, and Dementia Care as my late grandparents (representing the 'Colman' in our company name) suffered from these diseases.
Merry Christmas everyone!
6 December 2013
OHIM's new website
So OHIM has a new website (but this link might not load!) which launched on Monday.
It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?
For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.
E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.
There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.
Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.
Hopefully their techies will get the systems up and running as intended soon.
You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.
It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?
For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.
E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.
There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.
Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.
Hopefully their techies will get the systems up and running as intended soon.
You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.
1 November 2013
Trade Marks "tactics": Iraq and Kurdistan Region
Many readers of this blog will be aware that the autonomous Kurdistan Region of Iraq has its own Trade Marks Office. This operates from the regional capital of Erbil.
This is in addition to the Federal Iraqi Trade Marks Office in Baghdad.
Registration for the Kurdistan Region can be obtained in two ways: purely local filing or an extension of a registered Federal Iraqi registration. The Kurdistan Region operates a trade mark law which is the same as that operated from the Federal Office in Baghdad.
Federal registration in Iraq should cover the whole country including the Kurdistan Region. Many brand owners may not therefore register locally in Iraq. An analogy to this would be that brand owners would not tend to register a Federal trademark in the USA and then separately a State registration in, say, Florida.
However, there are advantages of registering in the Kurdistan Region. This could be in addition to a Federal Iraqi application or not - if the Kurdistan Region is the only part of Iraq that is commercially attractive to a brand owner then they could concentrate on registering a trade mark there only.
There are two main advantages to registering in the Kurdistan Region. Firstly, there is the opportunity that the local authorities may watch locally registered marks at the Customs they are responsible for.
Secondly, registration is far quicker in Kurdistan Region than at the Office in Baghdad. The latter has an historic Register and one where many files have gone missing. Delays here can be long.
The Office in Erbil runs far more smoothly. They have recently announced plans to speed up their procedures by publishing applications received up to the 25th of each month by the end of the same month. Judging by the latest Bulletin they are certainly moving things forward quickly.
If they are not already, brand owners should consider the direct filing route in Kurdistan Region for optimum protection of their trademarks in Iraq.
Lastly, I should mention that Kurdistan, "the Land of the Kurds", is a loosely defined region covering parts of Iran, Iraq, Syria and Turkey. It is only in Iraq where the Kurds have autonomy and a separate Trade Marks Office. Protection of trade marks to the other areas of Kurdistan must be made through applications at the central Trade Marks Offices of Iran, Syria and Turkey, or through Madrid Protocol designations of the same.
This is in addition to the Federal Iraqi Trade Marks Office in Baghdad.
Registration for the Kurdistan Region can be obtained in two ways: purely local filing or an extension of a registered Federal Iraqi registration. The Kurdistan Region operates a trade mark law which is the same as that operated from the Federal Office in Baghdad.
Federal registration in Iraq should cover the whole country including the Kurdistan Region. Many brand owners may not therefore register locally in Iraq. An analogy to this would be that brand owners would not tend to register a Federal trademark in the USA and then separately a State registration in, say, Florida.
However, there are advantages of registering in the Kurdistan Region. This could be in addition to a Federal Iraqi application or not - if the Kurdistan Region is the only part of Iraq that is commercially attractive to a brand owner then they could concentrate on registering a trade mark there only.
There are two main advantages to registering in the Kurdistan Region. Firstly, there is the opportunity that the local authorities may watch locally registered marks at the Customs they are responsible for.
Secondly, registration is far quicker in Kurdistan Region than at the Office in Baghdad. The latter has an historic Register and one where many files have gone missing. Delays here can be long.
The Office in Erbil runs far more smoothly. They have recently announced plans to speed up their procedures by publishing applications received up to the 25th of each month by the end of the same month. Judging by the latest Bulletin they are certainly moving things forward quickly.
If they are not already, brand owners should consider the direct filing route in Kurdistan Region for optimum protection of their trademarks in Iraq.
Lastly, I should mention that Kurdistan, "the Land of the Kurds", is a loosely defined region covering parts of Iran, Iraq, Syria and Turkey. It is only in Iraq where the Kurds have autonomy and a separate Trade Marks Office. Protection of trade marks to the other areas of Kurdistan must be made through applications at the central Trade Marks Offices of Iran, Syria and Turkey, or through Madrid Protocol designations of the same.
17 October 2013
A little piece on Bosnia-Herzegovina
Being a football fan, I like to take inspiration from my favourite sport (e.g. here) and this week is no different. It's been World Cup 2014 qualification week and whilst I am delighted that England have qualified, I also like to see new teams qualify for the big stage too.
Brazil 2014 will see the first appearance of Bosnia-Herzegovina.
To be accurate, Bosnian players could have appeared for Yugoslavia in 1930, 1950, 1954, 1958, 1962, 1974, 1982 and 1990. There are also three other possible first-timers still in the hunt for qualification, although I feel their participation is unlikely.
Enough football and allow me to take a look at the IP landscape in Bosnia-Herzegovina.
The Institute of Intellectual Property manages intellectual property in the country. Delays are known to be encountered with the processing of trade mark applications filed locally although these have lessened of late.
International routes for trade mark protection and industrial design protection through the Madrid and Hague Systems are available. I was therefore quite surprised to see a large number of national design and trade mark applications from foreigners in the latest Gazette published on their website.
Bosnia-Herzegovina adopted a new trade mark law at the beginning of 2011. This introduced an opposition procedure. Previously, it relied on its relative and absolute grounds examination - this made a large contribution to the delays that were experienced. It also formalised procedures for making registration with Customs for IP rights.
EU accession would appear to be a goal for Bosnia-Herzegovina, but it is far behind other countries in the region. Croatia and Slovenia are already in the EU and Macedonia, Montenegro and Serbia are official candidate countries. Even Albania is ahead in the queue having submitted an application.
Croatia's recent accession to the EU means Bosnia-Herzegovina borders the European Union. To the naked eye, Bosnia-Herzegovina can appear to be landlocked on a map, but it actually has a small coastline on the Adriatic Sea around the town of Neum, which juts into Croatia. This makes the territory around the city of Dubrovnik an isolated exclave of Croatia and of the EU. Travelling to this part of the EU from another part of the EU by road therefore means traversing some territory of Bosnia-Herzegovina.
The horrific Bosnian War of the 1990s ended with the signing of the Dayton Peace Accord which set up Bosnia-Herzegovina as a federal state. There are two entities, the Federation of Bosnia and Herzegovina (mostly inhabited by Bosniaks and Bosnian Croats) and the Republika Srpska (mostly inhabited by ethnic Serbs). It's a jigsaw of a country where the internal borders have been meticulously drawn. On the ground, political conflicts between the two entities are common though.
So much so that it would cause little surprise if Republika Srpska were to declare independence. This would fracture the region even more and, selfishly speaking, we would have another IP jurisdiction on our hands. One that might not be entirely welcome in the international arena (see also Kosovo).
Perhaps if they can have a successful 2014 World Cup, this will be a unifying experience for Bosnia-Herzegovina.
Brazil 2014 will see the first appearance of Bosnia-Herzegovina.
To be accurate, Bosnian players could have appeared for Yugoslavia in 1930, 1950, 1954, 1958, 1962, 1974, 1982 and 1990. There are also three other possible first-timers still in the hunt for qualification, although I feel their participation is unlikely.
Enough football and allow me to take a look at the IP landscape in Bosnia-Herzegovina.
The Institute of Intellectual Property manages intellectual property in the country. Delays are known to be encountered with the processing of trade mark applications filed locally although these have lessened of late.
International routes for trade mark protection and industrial design protection through the Madrid and Hague Systems are available. I was therefore quite surprised to see a large number of national design and trade mark applications from foreigners in the latest Gazette published on their website.
Bosnia-Herzegovina adopted a new trade mark law at the beginning of 2011. This introduced an opposition procedure. Previously, it relied on its relative and absolute grounds examination - this made a large contribution to the delays that were experienced. It also formalised procedures for making registration with Customs for IP rights.
EU accession would appear to be a goal for Bosnia-Herzegovina, but it is far behind other countries in the region. Croatia and Slovenia are already in the EU and Macedonia, Montenegro and Serbia are official candidate countries. Even Albania is ahead in the queue having submitted an application.
Croatia's recent accession to the EU means Bosnia-Herzegovina borders the European Union. To the naked eye, Bosnia-Herzegovina can appear to be landlocked on a map, but it actually has a small coastline on the Adriatic Sea around the town of Neum, which juts into Croatia. This makes the territory around the city of Dubrovnik an isolated exclave of Croatia and of the EU. Travelling to this part of the EU from another part of the EU by road therefore means traversing some territory of Bosnia-Herzegovina.
The horrific Bosnian War of the 1990s ended with the signing of the Dayton Peace Accord which set up Bosnia-Herzegovina as a federal state. There are two entities, the Federation of Bosnia and Herzegovina (mostly inhabited by Bosniaks and Bosnian Croats) and the Republika Srpska (mostly inhabited by ethnic Serbs). It's a jigsaw of a country where the internal borders have been meticulously drawn. On the ground, political conflicts between the two entities are common though.
So much so that it would cause little surprise if Republika Srpska were to declare independence. This would fracture the region even more and, selfishly speaking, we would have another IP jurisdiction on our hands. One that might not be entirely welcome in the international arena (see also Kosovo).
Perhaps if they can have a successful 2014 World Cup, this will be a unifying experience for Bosnia-Herzegovina.
7 October 2013
Hague movements, Brunei joins
After a quiet 2013 in the international world of designs comes some news from WIPO of the accession of Brunei to the Hague System for the International Registration of Industrial Designs.
It will be possible to designate Brunei in a Hague application from 24 December 2013.
As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.
Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.
For now though, welcome aboard to Brunei.
It will be possible to designate Brunei in a Hague application from 24 December 2013.
As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.
Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.
For now though, welcome aboard to Brunei.
4 October 2013
Another separate IP jurisdiction: French Polynesia
This blog likes to explore exciting and exotic places that the writer has, unfortunately, little chance of visiting in person!
This week is no difference as it heads to Tahiti, the main island of French Polynesia.
Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.
The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.
3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.
Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").
This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.
That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.
The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.
The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.
Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.
It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.
It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.
It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).
What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.
The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.
This week is no difference as it heads to Tahiti, the main island of French Polynesia.
Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.
The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.
3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.
Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").
This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.
That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.
The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.
The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.
Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.
It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.
It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.
It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).
What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.
The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.
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