Trademark Clearinghouse

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

For those unfamiliar with the Trademark Clearinghouse:

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

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

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

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

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

Pragmatic help from the Syrian Trade Marks Office

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

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

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

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

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

Ethiopia introduces trade mark law

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

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

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

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

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

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

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

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

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

Caribbean IP

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

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

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

Anguilla

Antigua and Barbuda

Aruba

Bahamas

Barbados

Belize

Bermuda

Bonaire, Sint Eustatius and Saba

British Virgin Islands

Cayman Islands

Cuba

Curaçao

Dominica

Dominican Republic

Grenada

Guyana

Haiti

Jamaica

Montserrat

Puerto Rico

St Kitts and Nevis

St Lucia

St Vincent and the Grenadines

Sint Maarten

Suriname

Trinidad and Tobago

Turks and Caicos Islands

US Virgin Islands

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

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

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

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

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