New EU trademark regulations - some practicalities

23 March 2016 will see some fundamental changes to trademarks in the European Union.

Gone will be Community Trade Marks to be replaced with European Union trade marks.

The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).

The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.

New fee structure

Official fees will change. It's generally good news.

The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.

If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.

For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.

If you do have a three class or more application to file then you may want to consider filing it before 23 March.

Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.

Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!

There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.

Misleading invoices

The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.

It is important that trademark owners and representatives remain vigilant.

In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.

New website

We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.

I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.

Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.

Speaking of which, watch out in case the Office adopts new social media handles.

If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.

Old specifications for class headings

The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.

Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.

• The deadline is 24 September 2016
• The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
• Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class

If the deadline is not acted upon then any specifications for class headings will be interpreted literally (the means what it says approach).

EEA representation

Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.

Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.

International Registrations

A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.

This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.

At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.

There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:

1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.

TRADEMARKS AND BRAND PROTECTION IN 'EUROPEAN OVERSEAS TERRITORIES'

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.

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.

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.

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.

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.

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.

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.

'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.

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.

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.

Douglas, the capital of the Isle of Man

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.

But there is not a Trade Marks Registry

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).

Despite claims to being the oldest continuous parliament in the world, the Tynwald has not introduced its own trade marks law

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.

This windy island is perfect for flag flying

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.

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 

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.

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

Morocco to join "TMView" project

The TMView system has been a notable achievement driven by OHIM, as I have opined before.

OHIM have recently announced that Morocco will integrate with TMView. While the International Register is already incorporated within TMView and there are plans are to link this with WIPO's Global Brand Database, this does represent the first time that a non-EU country is to join the TMView project.

Over 106,000 Moroccan trade marks are already contained on the Global Brand Database and these should soon be available through TMView, which is arguably an easier to use tool.

Morocco did apply to join (what is now) the EU way back in 1987 but their application was rejected as membership is only open to "European states". Nevertheless, Moroccan-EU relations are strong and this small step is some evidence of this. Morocco often looks north to Europe; it is the only all-African state not in the African Union.

This development paves the way for other non-EU countries to come aboard TMView. Switzerland is probably at the front of the queue given it is already a part of another OHIM-led project, TMclass (recently rebranded from Euroclass) and already has an excellent on-line database available.

A look back at 2012

OHIM has recently declared "a year of achievement".

The Cooperation Fund which uses the vast surplus built up by OHIM to improve systems and processes in trade marks across the EU has been well utilised.

TMView has been an extraordinary success. When I first blogged in December 2011, just 14 out of 27 Registers were available on TMView. Now 25 out of 27 are available including the major EU Registers.

Cyprus and Greece are the only countries not on board yet and they may not be joining up any time soon. My Cypriot associate has a more accurate reflection of the local Register on its own database than the local Office does, and Greece's well documented economic woes may mean it considers bringing its Trade Marks Register on board to be a low priority but the Cooperation Fund could help here.

Croatia should join the EU in July 2013. Its Register is already available on-line and I can anticipate that it should not be too much trouble in adding it to TMView's capabilities.

With full clearance searches in the EU costing a small fortune and therefore often being impractical, TMView is a very useful tool in conducting preliminary searches for trade mark proprietors with costs constraints on them. It is also challenging the commercial search companies to become more innovative in their search solutions; if you're going to pay for something then it needs to offer more than what you can get for free elsewhere.

Further international cooperation has been announced by OHIM and WIPO to link TMView with WIPO's Global Brand Database. The latter is very much more "work-in-progress" in that it currently contains only International Registers and those from Canada, Algeria and Morocco. Nevertheless, it is going to be a welcome link. In particular, US trade mark proprietors may like the ability to conduct initial screening for two key markets, Canada and the EU, through the same (free to use) platform.

Moving on to the EuroClass tool, which has also been praised by me in the past. While only one additional country has reached the final goal of harmonisation with OHIM, the EuroClass project now has all EU members on board with the exception of Latvia. WIPO is also on board, as is the USPTO and the Swiss Federal Institute of Intellectual Property. They have now been joined by the Japan Patent Office. Japan can represent a mysterious Far Eastern jurisdiction at times but now we have available to us all acceptable terms to enable us to draft specifications for filing in Japan (either nationally or through the Madrid Protocol).

Croatia is also on board with EuroClass in good time for its accession to the EU in mid-2013.

The IP Translator decision also made a significant impact on specifications in the EU.

OHIM's Seniority Tool is also making progress. Back in May when I first blogged on this project, it seemed to be making a slow start. However, if I go back to one of my examples from then, namely Irish Registration No. 94544 - which was not showing any seniority information at the time - we now see that seniority is reflected in its 'Status' and in a separate 'Seniority' field which links to the relevant Community Trade Mark record.

OHIM are also in a mood to celebrate 10 years of the Registered Community Design during 2013.

There has also been a lot going on down in Geneva this year at WIPO. Early in the year they introduced their 'Highlights' newsletter to better publicise themselves. This launched a number of new online services including Madrid Portfolio Manager. These should continue to improve users dealings with WIPO and to make WIPO more efficient too.

The Madrid Protocol has seen some notable increases in its membership during 2012 with the Philippines,  Colombia and New Zealand all coming on board with Mexico joining them in February. Who will accede to the Madrid Protocol in 2013? Will it see the waiting game with India come to an end? We may see one or more of the large ASEAN economies - Indonesia, Malaysia and/or Thailand - join up.

As for the Hague Union for designs, progress has been slower. Tajikistan and Tunisia became available during 2012. South Korea is expected to join up and the United States is getting closer. These will be significant countries to accede to Hague.

2012 has been a good year in the administration of IP rights, particularly trade marks. It is not just big players like OHIM and WIPO that are showing innovation and improvements. Closer to (my) home and the UK Intellectual Property Office has announced major enhancements to its services. Of course, as a fairly large developed country these should perhaps not be unexpected. However, with OHIM's Cooperation Fund and WIPO's support for systems for IP Offices in the developing world, 2013 could be a year of enhancements worldwide too.

Happy New Year!

Class headings

The IP Translator case created a judgement in relation to the use of Class headings of the International (Nice) Classification covering ALL the items in its particular class.

Previous OHIM practice was that Class headings included all other goods or services in a particular class. Now specifications must contain clarity and precision meaning this is no longer necessarily the case.

It is now possible to file for Class headings and then indicate that this is to include all the goods/services within that Class when filing Community Trade Marks by simple ticking a box when filing on-line.

This has led a number of International applications to be filed (that contain Class headings) with a statement to claim that the applicant wishes to include all the goods or services in the Class. Some of these statements have been specific to the European Community and some to other countries.

Bringing us more up-to-date, this has led WIPO to issue Information Notice 23/2012 stating firmly that it is the Offices of each designated country that will determine the scope of protection.

As WIPO allude to, this will almost undoubtedly see home applications filed for every single item of goods or services in a desired class and then any corresponding International applications for the same specification. It can also be anticipated that applications in non-Madrid countries, that use the International Classification and accept broad specifications, will be filed for these long specifications too.

In times past when filing instructions were received from foreign associates by fax this would have been unbearable having to re-type up long lists of goods or services. Nowadays with on-line systems and e-mail it is far less burdensome and less error prone to cut-and-paste. However, some countries still require printed forms to be filed - these may not have sufficient space for a long list of goods or services without the need for an awkward annex. We could then expect errors when the details are typed into the Register by an official. There are also countries where the Journal/Gazette is still physically printed - with some Government printers already under a huge strain this will surely add delays to applications. The practical implications could stretch across the globe.

Caribbean IP Part 18: Montserrat

ISO 3166 country code: MS.

I have seen Montserrat by boat and I'm not a fan of boats. However, Montserrat holds a place in my heart as I'm a bit of a geography anorak and it's one of the smallest trade mark jurisdictions (by population) in the world. Roughly 5,000 people live on the island.

This was not the case prior to 1995 when it sat above Tuvalu in the population tables and roughly alongside Anguilla. That year the eruption of the Soufrière Hills volcano led to 8,000 people evacuating the island. Over half of the island is now an exclusion zone and most the evacuees have not returned. The destroyed capital, Plymouth, is within this exclusion zone.

Given all this it can be surprising to note that Montserrat operates an efficient trade mark system from the Supreme Court Registry in the de facto capital of Brades. There is a dual filing regime in place. A substantive application could be filed previously using the old fashioned former British classification system (see The Bahamas), but an amendment of the Trade Marks Rules in October has changed this to the International Classification. Alternatively, a UK registration can be extended to Montserrat. Naturally, this will use the Nice Classification. The UK route was the only way to register service marks but the new Trade Marks Rules have now made these available for local (substantive) applications too.

It is also possible for Community Trade Marks and International Registrations (designating the UK or European Community) to be extended in the same way; the local Trade Marks Act was revised on 1 January 2002 to state:

"United Kingdom trade mark means any trade mark registered under the United Kingdom Trade Marks Act and any trade mark which, by virtue of any law in force in the United Kingdom is deemed to be a trade mark registered in the United Kingdom or which could, though not in fact registered in the United Kingdom, be given effect to in the United Kingdom."

When it comes to designs, I understand that UK designs provide automatic protection in Montserrat. However, I cannot locate the United Kingdom Designs (Protection) Act No. 181 of 1887 legislation on-line but I would anticipate it has not been amended to mean Registered Community Designs also have effect in Montserrat.

Patents are by extension of granted UK rights and must be on file within three years of grant in the UK.

Montserrat's IP Office lacks a web presence. Perhaps this will be developed in the future; the island is heavily subsidised by the UK (it being a British overseas territory) and some of this may be invested in a website. However, the local Government may have more pressing priorities - perhaps including improving the fortunes of the island's football team!

Caribbean IP Part 1: Anguilla

ISO 3166 country code: AI.

Anguilla is a British overseas territory. With a population of approximately 13,600 it's certainly one of the tinier trade mark jurisdictions in the world.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom. Despite this, priority is available following amendments to local legislation and protection is accorded to famous marks.

The Registrar of Commercial Activities appears to be responsible for intellectual property on the island. They have a website dedicated to company incorporation; Anguilla being a popular tax haven. This allows for state-of-the-art electronic incorporation of Anguillian companies. Interestingly, this was developed in partnership with Companies House in the UK and the UK Government. This shows a willingness for Anguilla to cooperate although we can maybe conclude that the development of systems relating to IP may not have the same priority level.

Anguilla introduced design legislation in 2002 which provides for independent registration and, contrary to the UK IPO's page, UK registered designs no longer have effect. As for patents, UK and EP (UK) registrations can be extended although independent registration is now also available.

Trade mark registration does not take too long to obtain in Anguilla. In fact, it is particularly rapid if based on a UK registration; Anguilla having a dual system whereby applications can be purely local (substantive applications) or based on a UK registration. The 'based-on' option is also available for Community and International Trade Marks which is useful for global brand owners who prefer not to register in the UK individually.

With little prospect of Madrid Protocol accession, Anguilla should be praised for its efficient trade mark operations, which reflect international aspects as much as it can, to make it straightforward for foreigners yet, through it's substantive applications, remains accessible to locals from the region.

Football clubs and intellectual property rights

I'm a football fan. That's soccer to many people from the likes of the US, Canada, Australia, New Zealand, South Africa and even just across the Irish Sea in Ireland. Readers from these countries may not appreciate the "Beautiful Game" but they should fear not as a great number of my compatriots also do not understand what the appeal is of "watching 22 men run around kicking a ball" either.

Nevertheless, the European football season will rapidly be upon us and the commercial success of the game in Europe is obvious.

How do Europe's leading clubs compare when it comes to their IP protection? I have compiled some statistics using data from CTM-Online, RCD-Online and ROMARIN. As football becomes more and more globalised it made sense to me that research should be concentrated on who has sought protection across the European Union and through the Madrid Protocol or, in other words, outside of their national borders.

I have used Deloitte's report on Europe's 30 biggest clubs supplementing it with the Old Firm and the biggest side in the EU capital of Brussels, Anderlecht.

Rangers may prove to have the best IP portfolio for a club in Scottish League Division Three, that's assuming they are a successor in title to these IP assets. The original Rangers went into administration and will eventually be liquidated; the 'newco' will probably start life again three divisions lower. (You may have seen some additional comment on the Rangers brand on the IPKat recently, which I feel many football fans will disagree with.)

Statistics will never tell the whole story. Some of the more established teams may have obtained protection in other countries prior to the advent of the Community Trade Mark or could have different registration strategies. Some team names, particularly those of a place name, would be difficult to register as word marks. Registered designs will be unavailable for a club crest that has been unchanged for a number of years. A number of the design registrations are for new stadiums (and some for mascots) and many clubs have not moved grounds for many years.

Liverpool's historic Anfield home but for how long?
Designs for a new stadium are registered with OHIM

Perhaps interestingly given the tribal nature of football, a very cursory check has 12 of the 33 featured clubs using a representative based in another city. Furthermore, two sets of city rivals use the same representative, although the likelihood of disputes in the trade mark arena are far less than on the football field. Two of the 33 represented themselves directly before the OHIM. Is this a surprisingly low number given the in-house legal expertise these clubs often have?

The statistics would put Chelsea top of the European league - perhaps apt given they are the current champions of Europe. As a non-Chelsea fan, I have to admit to hoping a team with a smaller IP portfolio has a successful season ahead!

Volksparkstadion: Home of Hamburger SV and 4 CTMs

Trade Mark Owner	City, country	No. of CTMs	No. of RCDs	No. of IRs	Total
REAL MADRID CLUB DE FUTBOL	Madrid, Spain	22	0	2	24
FUTBOL CLUB BARCELONA	Barcelona, Spain	21	0	14	35
MANCHESTER UNITED LIMITED	Manchester, England, UK	28	0	8	36
FC Bayern München AG	Munich, Germany	7	5	6	18
The Arsenal Football Club Public Limited Company	London, England, UK	18	0	4	22
CHELSEA FOOTBALL CLUB LIMITED	London, England, UK	38	1	11	50
A.C. Milan S.p.A.	Milan, Italy	20	0	14	34
INTER BRAND S.r.l.	Milan, Italy	12	0	5	17
The Liverpool Football Club and Athletic Grounds Limited	Liverpool, England, UK	8	4	4	16
Fußballclub Gelsenkirchen-Schalke 04 e.V.	Gelsenkirchen, Germany	3	0	0	3
Tottenham Hotspur Limited	London, England, UK	22	5	3	30
Manchester City Football Club Limited	Manchester, England, UK	3	1	0	4
Juventus F.C. spa	Turin, Italy	11	0	5	16
Olympique de Marseille SASP	Marseille, France	6	0	1	7
Soccer Società in Accomandita Semplice di Brand Management S.r.l.	Rome, Italy	6	0	5	11
BVB Merchandising GmbH	Dortmund, Germany	7	0	1	8
OLYMPIQUE LYONNAIS (société anonyme sportive professionnelle)	Lyon, France	5	0	3	8
Hamburger Sport-Verein e.V.	Hamburg, Germany	4	1	5	10
VALENCIA CLUB DE FUTBOL, S.A.D.	Valencia, Spain	22	3	9	34
S.S.C. NAPOLI S.p.A.	Naples, Italy	1	0	1	2
CLUB ATLETICO DE MADRID, S.A.D.	Madrid, Spain	2	0	1	3
Verein für Bewegungsspiele Stuttgart 1893 e.V.	Stuttgart, Germany	3	0	0	3
Aston Villa Limited	Birmingham, England, UK	7	1	0	8
SPORT LISBOA E BENFICA	Lisbon, Portugal	2	0	3	5
Sport-Verein "Werder" V. 1899 e.V.	Bremen, Germany	2	0	4	6
Newcastle United Football Company Limited	Newcastle upon Tyne, England, UK	3	0	0	3
AFC Ajax NV	Amsterdam, Netherlands	1	0	6	7
The Everton Football Club Company Limited	Liverpool, England, UK	1	0	0	1
WEST HAM UNITED FOOTBALL CLUB LIMITED	London, England, UK	3	0	1	4
Sunderland Association Football Club Limited	Sunderland, England, UK	2	0	0	2
Celtic F.C. Limited	Glasgow, Scotland, UK	7	0	3	10
THE RANGERS FOOTBALL CLUB PLC	Glasgow, Scotland, UK	3	1	2	6
Royal Sporting Club Anderlecht	Brussels, Belgium	6	0	0	6

Statistics are provided in good faith but may contain errors. There is some duplication between the figures of CTMs and IRs when the European Community has been designated in an International application. It may contain abandoned and lapsed cases. Representative check was very cursory - only the first CTM listed was checked. This post is really just a bit of fun.