WIPO have recently issued Information Notice No. 29/2013 explaining how to pay official fees to them for registrations under the Madrid Protocol.
Those of you that deal with WIPO will know they can be a bit of bureaucratic organisation and the language of their Information Notice may be testament to this.
If you do not have a deposit account with WIPO - and many firms don't - then you will probably be required to transfer payment of official fees by bank transfer and this is why the Information Notice has issued. WIPO are regularly being short changed as users do not instruct their bank that they are to incur all the bank charges. This causes a headache and delay with WIPO and the user when it is necessary to request a second payment, which is usually fairly incremental.
If you have a deposit account with the UK Intellectual Property Office and you are filing a Madrid application through them as Office of origin then you can ask them to make the official fee payment (in Swiss francs) on your behalf and debit your deposit account. However, not many Offices of origin offer this service.
If you're based in Switzerland or Liechtenstein (or even in the Italian exclave of Campione d'Italia) then making payments in Swiss francs is not difficult. But most of us will not have a Swiss bank account.
Payment by credit card is not available at the time of filing Madrid Protocol applications because these are filed through an appropriate Office of origin and not WIPO directly. Nevertheless, I understand it is possible to wait for an Irregularity Notice to issue and then make payment by credit card through WIPO's E-payment tool. This is not exactly ideal as again it results in a delay.
WIPO also released their latest magazine 'Madrid Highlights' this week and this contained two fees related features.
Firstly, they will soon be launching a new on-line tool for filing Subsequent Designations with a credit card payment facility. This will not help with the initial filing of a Madrid application but I anticipate it making adding countries to an existing International Registration substantially easier - and hopefully quicker.
Their Madrid Tips section also explains some scenarios regarding the official fees payable for renewals. These can seem ridiculously complicated at times although if you can use WIPO's E-Renewal tool this should auto-calculate the correct fees for you.
25 September 2013
13 September 2013
The Catalan Way (and IP)
Wednesday (11 September 2013) marked an impressive show of support for the independence of Catalonia, currently an autonomous part of Spain, when a human chain, the Catalan Way, spread for 400km/250 miles.
Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.
Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)
With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)
The Catalan language is also more widely spoken than some other national languages within the EU.
I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.
1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.
Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.
As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.
However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.
This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.
Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.
Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)
With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)
The Catalan language is also more widely spoken than some other national languages within the EU.
I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.
1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.
Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.
As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.
However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.
This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.
11 September 2013
Holiday season
August is Europe's traditional holiday season and is reflected with blogs where news to blog about dries up somewhat. Aside from some short jaunts to Germany, Switzerland, Yorkshire and God's own county of Hertfordshire, I have not been on a proper holiday (sun, sea and sangria-style).
I appreciate this is a bit of a 'filler' but I decided to check if any of our IP Offices around the world made a planned shut down. It would appear not.
Unsurprisingly, employees at the USPTO are only granted leave for Federal holidays, which for 2014 will look like this. This has been this way since the mid-late 1980s.
In the UK, where we complain about our lack of public holidays compared to our European cousins, the UK IPO is closed on one day less than the USPTO. Of course, staff will receive more annual leave than their American counterparts and our public sector is known for being generous with this.
In Geneva, home of WIPO, their public holidays are more extensive including many typical European and Christian holidays as well as the Muslim festival of Eid al-Adha and a purely local Geneva holiday.
There is an established Public Holiday Law in Japan which the Japan Patent Office follows. I was also interested to learn of Japan's 'Happy Monday System' whereby some holidays have been moved to a Monday to create a longer weekend. We have something similar in the UK, albeit without such a cool name, whereas in continental Europe if a holiday falls on a weekend it's tough, it won't be rolled over to the following Monday.
It will come as little shock to many that OHIM closes for the longest period of time - 18 days, with seven of these coming at Christmas and New Year. Being in Alicante on Spain's Costa Blanca, the weather isn't too bad either. For jobs at OHIM go here!
I hope readers of this blog enjoyed their holiday season. I hope I have more substantial things to blog about in the coming months.
I appreciate this is a bit of a 'filler' but I decided to check if any of our IP Offices around the world made a planned shut down. It would appear not.
Unsurprisingly, employees at the USPTO are only granted leave for Federal holidays, which for 2014 will look like this. This has been this way since the mid-late 1980s.
In the UK, where we complain about our lack of public holidays compared to our European cousins, the UK IPO is closed on one day less than the USPTO. Of course, staff will receive more annual leave than their American counterparts and our public sector is known for being generous with this.
In Geneva, home of WIPO, their public holidays are more extensive including many typical European and Christian holidays as well as the Muslim festival of Eid al-Adha and a purely local Geneva holiday.
There is an established Public Holiday Law in Japan which the Japan Patent Office follows. I was also interested to learn of Japan's 'Happy Monday System' whereby some holidays have been moved to a Monday to create a longer weekend. We have something similar in the UK, albeit without such a cool name, whereas in continental Europe if a holiday falls on a weekend it's tough, it won't be rolled over to the following Monday.
It will come as little shock to many that OHIM closes for the longest period of time - 18 days, with seven of these coming at Christmas and New Year. Being in Alicante on Spain's Costa Blanca, the weather isn't too bad either. For jobs at OHIM go here!
I hope readers of this blog enjoyed their holiday season. I hope I have more substantial things to blog about in the coming months.
9 August 2013
Closed Trade Marks Registers still existing
There are a handful of former Trade Marks Registers that have since merged into other Registers but for many intents and purposes are still in existence.
Having an unhealthy collection of modern atlases as a child (in the days before the internet), I was aghast when I began working in this field and first came across a trade mark in Sabah. What? Where? I thought I'd heard of every country...
Sabah, formerly the British Crown Colony of North Borneo, had its own Trade Marks Registry operating from the capital Jesselton (now known as Kota Kinabalu). The same is true of neighbouring Sarawak.
Sabah and Sarawak joined with Malaya to form Malaysia. The region of Malaya, with connotations of its British colonial past, is now more properly referred to as Peninsular Malaysia.
The separate Trade Marks Registers remained in place although no new applications were possible; filing a Malaysian application was now required. For a stage, I understand it was possible to merge identical registrations in Malaya, Sabah and Sarawak into a single Malaysian registration but this is no longer possible. This is why there are still registrations in Malaya, Sabah and Sarawak being renewed (and assigned, etc.). However, they are all maintained and renewed at the Intellectual Property Corporation of Malaysia with headquarters in Kuala Lumpur but branch offices in Sabah and Sarawak.
These registrations provide protection in their relevant geographic area and there is a possibility that the owners of identical or highly similar marks may not be the same in different parts of Malaysia.
It is perhaps worth noting that Malaysia now contains three federal territories. Two of these are in Peninsula Malaysia (Malaya) but the other, the wealthy island of Labuan, was ceded by Sabah to the federal Malaysian government in 1984. As such it is possible that an owner of identical Malaya/Sabah/Sarawak registrations would not have coverage for the whole modern day country of Malaysia. (In this event it would, of course, be possible to make a new application in Malaysia.)
Of more notorious note are the three trade mark jurisdictions derived from former bantustans in South Africa. Four of these achieved independence, albeit unrecognised by the international community, the so-called "TBVC States" of Transkei, Bophuthatswana, Venda and Ciskei. The latter introduced intellectual property legislation in respect of copyright only so it was just the first three that had Trade Marks Registers.
Following the end of apartheid, these Registers were generally incorporated into the South African Register unless there were overlapping rights in which case they continued to cover the applicable geographic area (with provisions to cover the whole of South Africa if the overlapping rights lapsed or were cancelled). I have no idea how many Transkei/Bophuthatswana/Venda registrations now exist - I imagine they would be mostly held by local companies and they are relatively few in number. They have a special numbering in place. They are managed by the Companies and Intellectual Property Commission in Pretoria.
Bophuthatswana was arguably the most well known of the bantustans as it contained Sun City (casinos being illegal in apartheid South Africa) and was the setting of an infamous coup in 1994 that saw the bantustan's last leader, Lucas Mangope, trying to cling to power and an invasion by Eugène Terre'Blanche's Afrikaner Resistance Movement.
Elsewhere in Africa, OAPI has grown at various junctures. Mali joined up in 1984 and was followed in 1990 by Guinea. Other countries have followed suit, but in the case of Guinea and Mali they had Trade Marks Registers of their own prior to OAPI accession (the others were Cautionary Notice countries).
Mali's Register has now ceased to exist, but Guinea's is still - somewhat questionably - operational for renewals, assignments, etc.
Finally, at the tip of Africa is Tangier (sometimes Tangiers). Prior to independence, Morocco was largely governed by France and Spain, except the city of Tangier which was under the administration of various countries as the Tangier International Zone. The city enjoyed libertarianism unlike the rest of Morocco and even much of Europe and became the home for a number of escapist residents. It also had its own trade mark law which remained when it was integrated into Morocco upon independence in 1956.
Parallel to this was a trade mark regime in "Morocco (Casablanca)"; the Casablanca often being added as this was the location of the Trade Marks Office and to distinguish it from Tangier. Registrations in Morocco (Casablanca) covered the whole of Morocco except Tangier.
In late 2004, a new trade mark law was introduced in Morocco to cover the entire country. Existing Morocco (Casablanca) and Tangier registrations would remain in force, each covering the whole country. Many trade mark owners would register in both. Upon renewal they will now only have to renew one of the registrations. This could be as late as 2024 in view of the 20-year registrations terms governed by the old laws in Morocco and Tangier.
These registrations can all be marked as covering Morocco, but many records may not have been amended to show this so you may still come across registrations in Tangier and/or Morocco (Casablanca).
Be careful with respect to country codes as codes used for these jurisdictions are often created internally or by database companies and then may come into use for other countries internationally. SS was commonly used for Sabah, but this is now the country code for South Sudan, independent since 2011. I have seen TK used for Transkei, but Tokelau is assigned this country code. Tokelau does not have a trade mark law (New Zealand registrations currently cover the territory) but it does possess a Domain Name Registry using this as its ccTLD.
We can come across many obscure countries when managing trade marks around the world. When it comes to post-registration matters like renewals then it is apparent that we have a few more jurisdictions to take into account.
 |
| Some old Registers may not add new cases but their old registrations remain on record |
Sabah, formerly the British Crown Colony of North Borneo, had its own Trade Marks Registry operating from the capital Jesselton (now known as Kota Kinabalu). The same is true of neighbouring Sarawak.
Sabah and Sarawak joined with Malaya to form Malaysia. The region of Malaya, with connotations of its British colonial past, is now more properly referred to as Peninsular Malaysia.
The separate Trade Marks Registers remained in place although no new applications were possible; filing a Malaysian application was now required. For a stage, I understand it was possible to merge identical registrations in Malaya, Sabah and Sarawak into a single Malaysian registration but this is no longer possible. This is why there are still registrations in Malaya, Sabah and Sarawak being renewed (and assigned, etc.). However, they are all maintained and renewed at the Intellectual Property Corporation of Malaysia with headquarters in Kuala Lumpur but branch offices in Sabah and Sarawak.
These registrations provide protection in their relevant geographic area and there is a possibility that the owners of identical or highly similar marks may not be the same in different parts of Malaysia.
It is perhaps worth noting that Malaysia now contains three federal territories. Two of these are in Peninsula Malaysia (Malaya) but the other, the wealthy island of Labuan, was ceded by Sabah to the federal Malaysian government in 1984. As such it is possible that an owner of identical Malaya/Sabah/Sarawak registrations would not have coverage for the whole modern day country of Malaysia. (In this event it would, of course, be possible to make a new application in Malaysia.)
 |
| Flag of Transkei, one of three bantustans that had their own trade marks law |
 |
| Flag of Venda |
 |
| The flag of Bophuthatswana |
Elsewhere in Africa, OAPI has grown at various junctures. Mali joined up in 1984 and was followed in 1990 by Guinea. Other countries have followed suit, but in the case of Guinea and Mali they had Trade Marks Registers of their own prior to OAPI accession (the others were Cautionary Notice countries).
 |
| Flag of Guinea |
Finally, at the tip of Africa is Tangier (sometimes Tangiers). Prior to independence, Morocco was largely governed by France and Spain, except the city of Tangier which was under the administration of various countries as the Tangier International Zone. The city enjoyed libertarianism unlike the rest of Morocco and even much of Europe and became the home for a number of escapist residents. It also had its own trade mark law which remained when it was integrated into Morocco upon independence in 1956.
 |
| Flag of Tangier International Zone |
In late 2004, a new trade mark law was introduced in Morocco to cover the entire country. Existing Morocco (Casablanca) and Tangier registrations would remain in force, each covering the whole country. Many trade mark owners would register in both. Upon renewal they will now only have to renew one of the registrations. This could be as late as 2024 in view of the 20-year registrations terms governed by the old laws in Morocco and Tangier.
These registrations can all be marked as covering Morocco, but many records may not have been amended to show this so you may still come across registrations in Tangier and/or Morocco (Casablanca).
 |
| Pay attention with country codes |
We can come across many obscure countries when managing trade marks around the world. When it comes to post-registration matters like renewals then it is apparent that we have a few more jurisdictions to take into account.
2 August 2013
'Fast track' opposition procedure
The UK is planning on introducing a 'fast track' opposition procedure for trade marks.
It is designed specifically with SMEs in mind and is evidence of the UK IPO's proactive efforts to help these businesses. Their outreach programme sees them regularly at business conferences and seminars as speakers and/or exhibitors. They are also approachable (with restrictions on the advice they can give) when it comes to "DIY" applicants and a large number of UK trade mark applications are self-filed.
SMEs tend to like (in all areas of their business) - and I speak from my own experiences as a business owner here - fixed indications of costs as much as possible. I believe most can handle a scale, e.g. from £x to £y. Transparency of costs is important to them. The IPO identified that the current opposition process can be unwieldy with uncertain cost outcomes and less than predictable timelines. The 'fast track' procedure will be designed to bring more certainty to the table.
OHIM (and WIPO) also have sections for SME's (here and here), but perhaps a more extensive role in engaging with SMEs will/should/must fall more within the duties of national IPOs. It is possible to envisage a future where national applications are predominantly filed by local SMEs/start-ups with the Community Trade Mark being the preferred vehicle for larger businesses; the ONEL case may also have a bearing on this. Of course, trade mark needs are determined by the nature of the products, services and markets so this is a bit of a simplistic view meant as food for thought. Larger companies will continue to use national routes when there is a purely local trade mark need or to form a less risky basis to a Madrid application, as examples, and SMEs will have reasons for filing Community Trade Marks as they do for filing in other foreign jurisdictions.
Trade Mark Watching
A challenge faced by some SMEs - particularly those that represent themselves but includes others that show reluctance to spend the additional money - is with trade mark watching. Many of these SMEs will not have set up a watching service. Owners of UK national trade marks will receive notifications from the IPO when they search subsequent applications. These may not be as extensive as a commercial watching service, but it should catch identical and near identical marks. With an SME on a limited budget in mind, it's free. Trade mark professionals can argue that the IPO's notifications are not sufficient, but the free aspect can represent value to many SMEs and we tend to have different personal definitions of "value".
What this does overlook though is Community Trade Marks. An owner of a UK national registration - or any other national registration in an EU member state (including Ireland, Sweden and those others still with relative grounds examination) - will not get notified of any Community Trade Marks even if for an identical mark with identical goods or services. If they have no watching service set up how will they find out about such a mark? If you've ever tried downloading the CTM Bulletin, published on-line every working day, then you'll know that conducting your own checks is not particularly realistic. Identical searches can be conducted periodically but you would have to remember to do them.
Nevertheless, OHIM do conduct searches - much like the UK IPO - of their own Community Trade Mark Register only and they too send notifications to the owners of these earlier marks. I understand they are looking to abolish these (this is perhaps evidence of this), but arguably it could be better to extend them. How?
Extend them by allowing owners of national registrations to notify OHIM of their rights. There could be a mechanism within TMView for doing this (so sorry owners of Greek national registrations until your country is on board you'd be ruled out). It would not need to cost anything as it would all be done on-line. It would be just as easy for OHIM to do their checks through TMView (which I imagine could easily be specially adapted for this purpose) as it is to do them on just their own Register.
Representatives could add their clients marks to this system pro-actively, particularly when they have been unable to convince a client of the merits of a watching service. This may then still give them access to avenues of possible opposition work.
OHIM may consider this as a way of helping SMEs, start-ups and those with cost constraints. It is not something national Offices can set up so while they may take the lead in meeting and educating many SMEs in their respective countries, this sort of initiative would need to be led by OHIM.
I do not believe the searches conducted are as comprehensive as a trade mark watch performed by commercial companies and I am not suggesting they are an alternative to having a proper watch in place. However, aside from cost pressures for SMEs, IPOs are not in a position to refer trade mark owners to specialist watching companies and SMEs may be reluctant to go to companies they do not know.
I should mention that the Danish Patent and Trademark Office provides a trade mark watching service as do their Swedish counterparts (neither of which are particularly cheap, I may add) but most offices do not; the UK Office has moved away from providing non-statutory, commercial services.
In conclusion, improvements to processes that make them quicker should be welcomed (when quality does not go down), but with national and Community Trade Marks working in parallel more could be done to ensure awareness if not alignment. It could be in the remit of the Convergence programme and Cooperation Fund to undertake some work in this area. National offices should bring such agenda items to the table. It's all well and good that SME owners of UK registrations can cost-effectively and quickly oppose conflicting UK applications but helping them ensure conflicting Community Trade Mark applications do not escape their radars is something that could be better addressed by the authorities.
It is designed specifically with SMEs in mind and is evidence of the UK IPO's proactive efforts to help these businesses. Their outreach programme sees them regularly at business conferences and seminars as speakers and/or exhibitors. They are also approachable (with restrictions on the advice they can give) when it comes to "DIY" applicants and a large number of UK trade mark applications are self-filed.
SMEs tend to like (in all areas of their business) - and I speak from my own experiences as a business owner here - fixed indications of costs as much as possible. I believe most can handle a scale, e.g. from £x to £y. Transparency of costs is important to them. The IPO identified that the current opposition process can be unwieldy with uncertain cost outcomes and less than predictable timelines. The 'fast track' procedure will be designed to bring more certainty to the table.
OHIM (and WIPO) also have sections for SME's (here and here), but perhaps a more extensive role in engaging with SMEs will/should/must fall more within the duties of national IPOs. It is possible to envisage a future where national applications are predominantly filed by local SMEs/start-ups with the Community Trade Mark being the preferred vehicle for larger businesses; the ONEL case may also have a bearing on this. Of course, trade mark needs are determined by the nature of the products, services and markets so this is a bit of a simplistic view meant as food for thought. Larger companies will continue to use national routes when there is a purely local trade mark need or to form a less risky basis to a Madrid application, as examples, and SMEs will have reasons for filing Community Trade Marks as they do for filing in other foreign jurisdictions.
Trade Mark Watching
A challenge faced by some SMEs - particularly those that represent themselves but includes others that show reluctance to spend the additional money - is with trade mark watching. Many of these SMEs will not have set up a watching service. Owners of UK national trade marks will receive notifications from the IPO when they search subsequent applications. These may not be as extensive as a commercial watching service, but it should catch identical and near identical marks. With an SME on a limited budget in mind, it's free. Trade mark professionals can argue that the IPO's notifications are not sufficient, but the free aspect can represent value to many SMEs and we tend to have different personal definitions of "value".
What this does overlook though is Community Trade Marks. An owner of a UK national registration - or any other national registration in an EU member state (including Ireland, Sweden and those others still with relative grounds examination) - will not get notified of any Community Trade Marks even if for an identical mark with identical goods or services. If they have no watching service set up how will they find out about such a mark? If you've ever tried downloading the CTM Bulletin, published on-line every working day, then you'll know that conducting your own checks is not particularly realistic. Identical searches can be conducted periodically but you would have to remember to do them.
Nevertheless, OHIM do conduct searches - much like the UK IPO - of their own Community Trade Mark Register only and they too send notifications to the owners of these earlier marks. I understand they are looking to abolish these (this is perhaps evidence of this), but arguably it could be better to extend them. How?
Extend them by allowing owners of national registrations to notify OHIM of their rights. There could be a mechanism within TMView for doing this (so sorry owners of Greek national registrations until your country is on board you'd be ruled out). It would not need to cost anything as it would all be done on-line. It would be just as easy for OHIM to do their checks through TMView (which I imagine could easily be specially adapted for this purpose) as it is to do them on just their own Register.
Representatives could add their clients marks to this system pro-actively, particularly when they have been unable to convince a client of the merits of a watching service. This may then still give them access to avenues of possible opposition work.
OHIM may consider this as a way of helping SMEs, start-ups and those with cost constraints. It is not something national Offices can set up so while they may take the lead in meeting and educating many SMEs in their respective countries, this sort of initiative would need to be led by OHIM.
I do not believe the searches conducted are as comprehensive as a trade mark watch performed by commercial companies and I am not suggesting they are an alternative to having a proper watch in place. However, aside from cost pressures for SMEs, IPOs are not in a position to refer trade mark owners to specialist watching companies and SMEs may be reluctant to go to companies they do not know.
I should mention that the Danish Patent and Trademark Office provides a trade mark watching service as do their Swedish counterparts (neither of which are particularly cheap, I may add) but most offices do not; the UK Office has moved away from providing non-statutory, commercial services.
In conclusion, improvements to processes that make them quicker should be welcomed (when quality does not go down), but with national and Community Trade Marks working in parallel more could be done to ensure awareness if not alignment. It could be in the remit of the Convergence programme and Cooperation Fund to undertake some work in this area. National offices should bring such agenda items to the table. It's all well and good that SME owners of UK registrations can cost-effectively and quickly oppose conflicting UK applications but helping them ensure conflicting Community Trade Mark applications do not escape their radars is something that could be better addressed by the authorities.
24 July 2013
Guam set to create "Trademark Commission"
Information from the Pacific News Center suggests Guam will look to refresh its trademark legislation shortly and help better protect its own cultural brand.
US Federal registrations automatically protect all US states and territories, the Act stating, "The United States includes and embraces all territory which is under its jurisdiction and control."
In Guam, which is an organized, unincorporated territory of the United States, a local registration system is also in place. There are two routes to protection under this. Firstly, a purely local route which requires evidence of use to be filed in order to obtain a Certificate of Registration and is akin to individual State trademark laws.
Secondly, it is also possible to re-register a US Federal registration in Guam, notwithstanding that such a Federal registration should already cover Guam.
It is not clear how the law will change things. It cannot overrule any Federal law. However, Puerto Rico is often considered a separate trademark jurisdiction from the "mainland" USA.
Tourism and the provision of retail services of designer goods are big business in the Guam economy and, in particular, businesses involved in these fields may wish to keep an eye on the situation in Guam with a view to securing local trademark registrations.
Furthermore, new legislation is planned to increase protection of the island's local culture, traditional knowledge and brand.
US Federal registrations automatically protect all US states and territories, the Act stating, "The United States includes and embraces all territory which is under its jurisdiction and control."
In Guam, which is an organized, unincorporated territory of the United States, a local registration system is also in place. There are two routes to protection under this. Firstly, a purely local route which requires evidence of use to be filed in order to obtain a Certificate of Registration and is akin to individual State trademark laws.
Secondly, it is also possible to re-register a US Federal registration in Guam, notwithstanding that such a Federal registration should already cover Guam.
It is not clear how the law will change things. It cannot overrule any Federal law. However, Puerto Rico is often considered a separate trademark jurisdiction from the "mainland" USA.
Tourism and the provision of retail services of designer goods are big business in the Guam economy and, in particular, businesses involved in these fields may wish to keep an eye on the situation in Guam with a view to securing local trademark registrations.
Furthermore, new legislation is planned to increase protection of the island's local culture, traditional knowledge and brand.
18 July 2013
TMView gets stronger and stronger
Earlier this month the TMView grew with the addition of over 1.1 million new trade marks when the Registers of Croatia, Cyprus, Mexico and Norway were added to the system.
This follows the earlier announcement that Morocco was to be integrated with TMView.
Croatia joined the EU at the beginning of the month.
Cyprus - an EU member since 2004 - has a relatively small Trade Marks Register but it was known for needing manual searches so this is a very welcome addition.
Norway is outside of the European Union, but its membership of the European Economic Area means it is very closely linked to the EU economically.
Mexico becomes the first non-European country to "go live" in TMView and represents excellent news for global rights holders.
It leaves Greece as the only EU member state without its Trade Marks Register available on TMView. Neighbouring Turkey is slated to join the TMView project at some point in the future.
TMView is positioning itself well as a free go-to database for initial knock-out searches not just for the European Union but further afield too.
This follows the earlier announcement that Morocco was to be integrated with TMView.
Croatia joined the EU at the beginning of the month.
Cyprus - an EU member since 2004 - has a relatively small Trade Marks Register but it was known for needing manual searches so this is a very welcome addition.
Norway is outside of the European Union, but its membership of the European Economic Area means it is very closely linked to the EU economically.
Mexico becomes the first non-European country to "go live" in TMView and represents excellent news for global rights holders.
It leaves Greece as the only EU member state without its Trade Marks Register available on TMView. Neighbouring Turkey is slated to join the TMView project at some point in the future.
TMView is positioning itself well as a free go-to database for initial knock-out searches not just for the European Union but further afield too.
5 July 2013
Isle of Man Trade Marks
I have had some queries recently regarding trade marks in the Isle of Man, and as I made a weekend visit to the island recently, I thought some explanations on trade marks could be worthwhile.
The Isle of Man does not have its own trade mark law or Trade Marks Registry. It is covered by a United Kingdom trade mark including designations within International Registrations.
The Isle of Man Government make reference to trade marks in some guidance they provide in relation to choosing a company name.
The UK Trade Marks Act 1994 makes reference to the Isle of Man:
"This Act also extends to the Isle of Man, subject to such exceptions and modifications as Her Majesty may specify by Order in Council; and subject to any such Order references in this Act to the United Kingdom shall be construed as including the Isle of Man."
This makes the Isle of Man unique among the UK's overseas territories and Crown dependencies because the UK's legislation is applied directly - or, in other words, there is not (and there is no need for) a local trade mark law enacted by the Isle of Man Government. It is normal for the overseas territories/Crown dependencies to enact local legislation themselves, which can either provide a local registration system, or provide for automatic protection of UK registrations (as has happened in the Falkland Islands, for example).
Furthermore, I understand Orders in Council have been made to ensure European Community Trade Marks cover the Isle of Man.
It should also be mentioned that the United Kingdom's ratification of the Madrid Protocol is "in respect of the United Kingdom and the Isle of Man."
The Isle of Man is one of three Crown dependencies, the others being the Bailiwicks of Jersey and Guernsey (aka the Channel Islands). They are known as offshore financial centres and each has their own versions of the pound, e.g. the Manx pound (although British currency is also accepted). Tourism is another important part of their economies.
The Manx people are patriotic judging from the significant flying of the island's flag, although the Manx language is sparsely spoken nowadays and the local (English) accent - after years of immigration from the mainland - is not easily distinguishable from that of parts of the North West of England.
Culturally they are similar to mainland Brits and a popular brand in the UK is likely to be a popular brand in the Isle of Man. However, the cost of living in the Isle of Man tends to be higher than that of the UK mainland.
Their relationship with the EU is not exactly straightforward but freedom of goods is allowed between the Isle of Man and the European Union. A Common Purse Agreement with the UK means the Isle of Man is effectively in customs union with the rest of the EU.
In the case of local infringement of a registered trade mark then enforcement would need to be taken through the Isle of Man courts.
Although there is no Trade Marks Registry, there is a local Domain Registry. This manages .im domain names which have proved popular with providers of instant messaging software.
The Crown dependencies are culturally and economically closely linked to the United Kingdom and the fact that the Isle of Man is covered by UK trade marks is helpful to British, Manx and overseas businesses. Nevertheless, trade mark owners may wish to secure registration of a local domain name as a way of engaging with Manx consumers; it is inexpensive.
The other Crown dependencies, Jersey and Guernsey, have independent trade mark laws so do not overlook them if your business expands and spills over into the Channel Islands. (I've not covered Jersey or Guernsey here but please do not hesitate to get in touch if you have any questions regarding protecting trade marks in these jurisdictions.)
With a Scottish independence referendum scheduled for next year, there has even been speculation that Na h-Eileanan Siar (the Western Isles), Orkney and Shetland may request Crown dependency status, perhaps creating more considerations for trade mark owners across these numerous islands in north western Europe.
 |
| Douglas, the capital of the Isle of Man |
 |
| But there is not a Trade Marks Registry |
The UK Trade Marks Act 1994 makes reference to the Isle of Man:
"This Act also extends to the Isle of Man, subject to such exceptions and modifications as Her Majesty may specify by Order in Council; and subject to any such Order references in this Act to the United Kingdom shall be construed as including the Isle of Man."
This makes the Isle of Man unique among the UK's overseas territories and Crown dependencies because the UK's legislation is applied directly - or, in other words, there is not (and there is no need for) a local trade mark law enacted by the Isle of Man Government. It is normal for the overseas territories/Crown dependencies to enact local legislation themselves, which can either provide a local registration system, or provide for automatic protection of UK registrations (as has happened in the Falkland Islands, for example).
 |
| Despite claims to being the oldest continuous parliament in the world, the Tynwald has not introduced its own trade marks law |
It should also be mentioned that the United Kingdom's ratification of the Madrid Protocol is "in respect of the United Kingdom and the Isle of Man."
The Isle of Man is one of three Crown dependencies, the others being the Bailiwicks of Jersey and Guernsey (aka the Channel Islands). They are known as offshore financial centres and each has their own versions of the pound, e.g. the Manx pound (although British currency is also accepted). Tourism is another important part of their economies.
The Manx people are patriotic judging from the significant flying of the island's flag, although the Manx language is sparsely spoken nowadays and the local (English) accent - after years of immigration from the mainland - is not easily distinguishable from that of parts of the North West of England.
 |
| This windy island is perfect for flag flying |
 |
| This store is equivalent to a UK version where every item is £1 whereas in the Isle of Man most of their prices seemed to be £1.20 |
In the case of local infringement of a registered trade mark then enforcement would need to be taken through the Isle of Man courts.
Although there is no Trade Marks Registry, there is a local Domain Registry. This manages .im domain names which have proved popular with providers of instant messaging software.
The Crown dependencies are culturally and economically closely linked to the United Kingdom and the fact that the Isle of Man is covered by UK trade marks is helpful to British, Manx and overseas businesses. Nevertheless, trade mark owners may wish to secure registration of a local domain name as a way of engaging with Manx consumers; it is inexpensive.
The other Crown dependencies, Jersey and Guernsey, have independent trade mark laws so do not overlook them if your business expands and spills over into the Channel Islands. (I've not covered Jersey or Guernsey here but please do not hesitate to get in touch if you have any questions regarding protecting trade marks in these jurisdictions.)
With a Scottish independence referendum scheduled for next year, there has even been speculation that Na h-Eileanan Siar (the Western Isles), Orkney and Shetland may request Crown dependency status, perhaps creating more considerations for trade mark owners across these numerous islands in north western Europe.
1 July 2013
Croatia: Welcome to the EU!
Croatia joined the EU today (1 July 2013). From an intellectual property perspective Croatia will now be covered by Community Trade Marks and Registered Community Designs.
A page on the Irish Patents Office website does a good job of explaining the impact of Croatian accession on existing EU trade mark and design applications and registrations.
It also provides a useful reminder for trade mark owners to be vigilant to avoid the spammers who may take this opportunity to solicit for trade mark "services".
Ahead of accession, Croatia has already aligned its specification terms for trade marks - it being a harmonised Office on TMClass. It has yet to be integrated in the search facility of TMView but as it is possible to conduct on-line trade mark searches through the State Intellectual Property Office website we can anticipate that they will come aboard TMView quite soon. However, it is not yet possible to file on-line Community Trade Mark or Registered Community Design applications in the Croatian language through the OHIM website. I expect OHIM to offer a Croatian filing option soon.
Croatia becomes the 28th member state of the European Union joining:
Austria
Belgium*
Bulgaria
Cyprus
Czech Republic
Denmark
Estonia
Finland
France
Germany
Greece
Hungary
Ireland
Italy
Latvia
Lithuania
Luxembourg*
Malta
Netherlands*
Poland
Portugal
Romania
Slovakia
Slovenia
Spain
Sweden
United Kingdom
* part of Benelux for trade mark and design registration purposes
A page on the Irish Patents Office website does a good job of explaining the impact of Croatian accession on existing EU trade mark and design applications and registrations.
It also provides a useful reminder for trade mark owners to be vigilant to avoid the spammers who may take this opportunity to solicit for trade mark "services".
Ahead of accession, Croatia has already aligned its specification terms for trade marks - it being a harmonised Office on TMClass. It has yet to be integrated in the search facility of TMView but as it is possible to conduct on-line trade mark searches through the State Intellectual Property Office website we can anticipate that they will come aboard TMView quite soon. However, it is not yet possible to file on-line Community Trade Mark or Registered Community Design applications in the Croatian language through the OHIM website. I expect OHIM to offer a Croatian filing option soon.
Croatia becomes the 28th member state of the European Union joining:
Austria
Belgium*
Bulgaria
Cyprus
Czech Republic
Denmark
Estonia
Finland
France
Germany
Greece
Hungary
Ireland
Italy
Latvia
Lithuania
Luxembourg*
Malta
Netherlands*
Poland
Portugal
Romania
Slovakia
Slovenia
Spain
Sweden
United Kingdom
* part of Benelux for trade mark and design registration purposes
20 June 2013
Maintenance of designations of the Philippines in International Registrations
A recent Information Notice from WIPO has, somewhat belatedly, clarified the maintenance requirements for designations of the Philippines in International Registrations.
Some of you may already be aware of these, some may have anticipated they would have been in place and some of you may have been unaware of these maintenance requirements. When news emerged in May last year that the Philippines were joining the Madrid Protocol there was a complete lack of information concerning their (additional) maintenance requirements and the filing of Declarations of Actual Use (DAUs).
It is effectively the same as national applications filed in the Philippines although take note of the timings.
These DAUs are due at three junctures:
1. Within three years of filing the International Registration (application and registration dates being the same)
or
If the Philippines is subject of a Subsequent Designation within three years of the Subsequent Designation recording date by WIPO.
These DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO), usually for foreigners through a law firm in the Philippines although the WIPO notification also indicates that this can be filed through "the holder’s authorized representative with a local address".
A single six-month Extension of Time can be sought, but likewise these must be requested at the Intellectual Property Office of the Philippines (not WIPO) through a Filipino lawyer (or authorized representative). Please note that an Extension of Time must be explicitly requested; it is not an automatically existing grace period.
2. Between the 5th and 6th anniversary of registration (i.e. local Statement of Grant date) in the Philippines.
Again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).
3. Between the 5th and 6th anniversaries of each renewal of an International Registration. Remember that renewals are filed centrally at WIPO, but, again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).
Let's take a (fictitious) example:
International Registration No. 123098 filed and registered 19 January 2013
Philippines: Subject of Subsequent Designation on 9 May 2013
Intellectual Property Office of the Philippines issues Statement of Grant on 27 February 2014
Some of you may already be aware of these, some may have anticipated they would have been in place and some of you may have been unaware of these maintenance requirements. When news emerged in May last year that the Philippines were joining the Madrid Protocol there was a complete lack of information concerning their (additional) maintenance requirements and the filing of Declarations of Actual Use (DAUs).
It is effectively the same as national applications filed in the Philippines although take note of the timings.
These DAUs are due at three junctures:
1. Within three years of filing the International Registration (application and registration dates being the same)
or
If the Philippines is subject of a Subsequent Designation within three years of the Subsequent Designation recording date by WIPO.
These DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO), usually for foreigners through a law firm in the Philippines although the WIPO notification also indicates that this can be filed through "the holder’s authorized representative with a local address".
A single six-month Extension of Time can be sought, but likewise these must be requested at the Intellectual Property Office of the Philippines (not WIPO) through a Filipino lawyer (or authorized representative). Please note that an Extension of Time must be explicitly requested; it is not an automatically existing grace period.
2. Between the 5th and 6th anniversary of registration (i.e. local Statement of Grant date) in the Philippines.
Again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).
3. Between the 5th and 6th anniversaries of each renewal of an International Registration. Remember that renewals are filed centrally at WIPO, but, again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).
Let's take a (fictitious) example:
International Registration No. 123098 filed and registered 19 January 2013
Philippines: Subject of Subsequent Designation on 9 May 2013
Intellectual Property Office of the Philippines issues Statement of Grant on 27 February 2014
- First DAU due 9 May 2016 (three years from "date of filing" in the Philippines; six-month extension possible till 9 November 2016)
- Second DAU due 27 February 2019-27 February 2020 (5-6 years following local "registration" in the Philippines)
- Third DAU due 19 January 2028-19 January 2029 (5-6 years following renewal (i.e. on 19 January 2023) of the International Registration)
These onerous maintenance requirements may lead many to consider avoiding designating the Philippines within Madrid applications (and file national applications instead). It is a similar consideration when designating the United States, whereby at the outset Madrid applications can be more cost-effective but in the longer term it can represent a false economy when it is not possible, as with national registrations, to combine Use Declarations/Affidavits with renewals because the technical renewal is handled through WIPO.
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