Madrid Protocol
I'll start my musings on Madrid (the Madrid Protocol) where Hong Kong is beginning steps to become available for International trademarks, although this is not likely until 2019 at the earliest.
Under Article 3bis of the Madrid Protocol, "The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration. However, no such request can be made with respect to the Contracting Party whose Office is the Office of origin."
This is interpreted so that Hong Kong applicants will not be able to designate (mainland) China and vice-versa. As many will know, Hong Kong is not a sovereign state and is a Special Administrative Region of China. As such, any Madrid membership will be made by China on its behalf.
Notwithstanding this, the Netherlands has membership of the Madrid Protocol and has extended this to Bonaire, Sint Eustatius and Saba (sometimes referred to as the BES Islands or the Caribbean Netherlands). Bonaire, Sint Eustatius and Saba are special municipalities of the Netherlands. There are 817 live International Registrations which designate Bonaire, Sint Eustatius and Saba and where Benelux is the Office of origin (that's not to say all applicants are from the Netherlands, some are from Belgium or Luxembourg).
From the above, it seems a Contracting Party can have different Office of origins and is not necessarily caught by an Article 3bis restriction.
Anyway, it seems Hong Kong and (mainland) China will look to come to another arrangement outside of the Madrid Protocol.
Eurasian Trademark
Another IP system we may need to become aware of is through the Eurasian Trademark system. This may be with us in 2018. It will cover Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
It seems it will be a mix between how the International and EU trademark systems work. There will be no need for a base application/registration, but applications can be filed with anyone of the five national IP Offices. Although it will be a unitary right across all countries, it will be examined by each national IP Office separately. In the event of refusal, this can be argued nationally. A final refusal in any country will result in refusal of the Eurasian trademark, but conversion/transformation into national applications in the non-refused countries appears to be possible.
It's not clear if this system will look to link to the International trademark system. I'm not sure I can envisage it being used much by Western trademark owners when all member countries are members of the Madrid Protocol anyway (Russia and Kazakhstan being particularly cheap under Madrid). However, it may be useful for local portfolios (think, in particular, marks in Cyrillic script) as there is no requirement to get an unnecessary base registration (with the 'Central Attack' fears that can pose). Any attractiveness to Western trademark owners may come down to costs.
Hague
Remaining in the Eurasian region and Russia will be joining the Hague System for Designs. They will join other regional countries as members: Armenia, Azerbaijan, Georgia, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan and Ukraine. Accession is anticipated for later this year and will be for the Geneva Act only.
The UK is also likely to accede to the Geneva Act of the Hague System in early 2018. This will be welcomed, particularly if UK applicants shall no longer have easy direct access to the Registered Community Design system when 'Brexit' happens.
Representation at the EUIPO
Whether UK practitioners will still be able to work directly with the EUIPO is something that is very much on the radar of British IP professionals that undertake a lot of EU work. There has been talk of Brits opting into "EU citizenship" and this may present an opportunity, although a) anyone remaining in the UK would still not be resident in the EU/EEA and b) this is an idea that might not get any further than being just an idea. Nonetheless, it could be an interesting angle that may not currently be being looked at for British professionals looking to retain representation rights.
Series marks
Remaining in the UK and the UKIPO has recently issued guidance on series marks. Although not exclusively available in the UK, they are a bit of an alien concept to some trademark professionals in other countries. A Series of trademarks is a number of marks with very small differences. Any differences between the marks must not substantially change how they look, sound or alter their meanings. As a common example, a black and white version of a trademark and a colour version of a trademark can often be included in the same application (and at no extra cost).
The IPO's guidance reflects a strict approach for marks to form a series.
Enjoy your weekends readers!
Showing posts with label Design. Show all posts
Showing posts with label Design. Show all posts
21 October 2015
UK Registered Designs - online filing for all filing routes - and other bits
The Intellectual Property Office in the United Kingdom recently introduced an online tool for the filing of UK national registered design applications.
I blogged over two years ago on the online filings of designs when the UK was certainly not alone in not offering an online service. The UK system is new and not yet as developed as I imagine it will become e.g. it does not support priority filings which must still be made by post.
Ignoring any unregistered rights that can persist, this now means design applicants have three (online) routes to protect their designs to the United Kingdom:
1. National UK application
2. Registered Community Design application covering the 28 member states of the European Union including the UK
3. International Design application through the Hague System designating the European Union
What route is preferable will depend on whether a business has interest in protecting their design nationally, across the EU, or in other states that are also a part of the Hague System, or to a handful of jurisdictions with a link (historical or current) to the UK.
There has been much fanfare that Japan, Korea and the US have joined the Hague System relatively recently. These are countries with different design regimes than Europe. I have had to temper clients' enthusiasm that they could now get easy and cost-effective design protection in such countries. It's not going to be quite as straightforward as some circles have made it out to be. For example, the Marques Class 99 blog has explained how the task of claiming priority (which should be a simple formality) is complex and expensive, meaning designating these countries in an International application may be a false economy; i.e. you may as well just file nationally from the start (see 'Priority problems - parts 1 and 2 from 13 October).
Incidentally, the UK is likely to accede to the Hague System in its own right in due course. As I've commented on the SOLO IP blog, I'm not convinced this brings much to the table. However, it would be beneficial if the UK decides to leave the European Union.
The International Design system is useful for obtaining protection to mostly other European countries if protection beyond the EU is required. Iceland, Liechtenstein and Norway - which along with the EU members make up the European Economic Area - can be covered, as can Switzerland.
I've blogged before on the usefulness of a UK National Registered Design to foreign shores. These benefits are highly unlikely to be extended to designations of the UK in a Hague International registration (when it becomes possible to designate the UK).
This is because protection in the overseas jurisdictions arises from legislation enacted locally (and usually a long time ago). To provide protection of a Hague designation of the UK will likely require local legislation to be amended and, to be frank, if this were to happen it more likely independent design legislation would be enacted and a 'link' to the UK ended.
Whether National, Community or International (or a combination thereof) is preferable, official fees for all three filing routes are not expensive.
I blogged over two years ago on the online filings of designs when the UK was certainly not alone in not offering an online service. The UK system is new and not yet as developed as I imagine it will become e.g. it does not support priority filings which must still be made by post.
Ignoring any unregistered rights that can persist, this now means design applicants have three (online) routes to protect their designs to the United Kingdom:
1. National UK application
2. Registered Community Design application covering the 28 member states of the European Union including the UK
3. International Design application through the Hague System designating the European Union
What route is preferable will depend on whether a business has interest in protecting their design nationally, across the EU, or in other states that are also a part of the Hague System, or to a handful of jurisdictions with a link (historical or current) to the UK.
There has been much fanfare that Japan, Korea and the US have joined the Hague System relatively recently. These are countries with different design regimes than Europe. I have had to temper clients' enthusiasm that they could now get easy and cost-effective design protection in such countries. It's not going to be quite as straightforward as some circles have made it out to be. For example, the Marques Class 99 blog has explained how the task of claiming priority (which should be a simple formality) is complex and expensive, meaning designating these countries in an International application may be a false economy; i.e. you may as well just file nationally from the start (see 'Priority problems - parts 1 and 2 from 13 October).
Incidentally, the UK is likely to accede to the Hague System in its own right in due course. As I've commented on the SOLO IP blog, I'm not convinced this brings much to the table. However, it would be beneficial if the UK decides to leave the European Union.
The International Design system is useful for obtaining protection to mostly other European countries if protection beyond the EU is required. Iceland, Liechtenstein and Norway - which along with the EU members make up the European Economic Area - can be covered, as can Switzerland.
I've blogged before on the usefulness of a UK National Registered Design to foreign shores. These benefits are highly unlikely to be extended to designations of the UK in a Hague International registration (when it becomes possible to designate the UK).
This is because protection in the overseas jurisdictions arises from legislation enacted locally (and usually a long time ago). To provide protection of a Hague designation of the UK will likely require local legislation to be amended and, to be frank, if this were to happen it more likely independent design legislation would be enacted and a 'link' to the UK ended.
Whether National, Community or International (or a combination thereof) is preferable, official fees for all three filing routes are not expensive.
10 June 2015
Trademark Annuities...
In case the title of this blog left you with a quizzical look, no, the title is correct. Those of you that work across intellectual property rights (e.g. in both patents and trademarks) will be familiar with the payment of patent annuities.
However, there's a select group of jurisdictions where annual fees are payable to maintain trademark registrations.
Annual fees make the Cayman Islands one of the most expensive jurisdictions in which to maintain trademark registrations (although recent hikes in the official fees in the UAE and Venezuela means it's not the only place where maintaining a trademark registration can cost a fortune).
The Cayman Islands Registry used to allow representatives from anywhere to attend to matters before them. This changed in 2012 so that a local representative was required. I've previously worked with the local Registry but this change prevented me from doing so directly and therefore being able to maintain trademarks most cost-effectively for clients. Local agents in the Cayman Islands tend to be expensive reflecting the high cost of living there. It is worth considering paying all the annual fees (up to a registration's renewal date) in bulk to reduce the level of professional fees.
It's also worth being 'tactical' and avoiding registering trademarks in December. Annual fees fall due on 1 January each year so if you register in December you'll find yourself with an immediate payment to be made to keep the registration you have only just got in force.
The Cayman Islands are now looking to introduce a fresh trademark law (that removes its dependency on UK or Community registrations). It will be interesting to see how they set their official fees. Annual fees may be abolished but they will need to bring in examiners to handle applications filed under a new substantive trademark law so an increase in initial filing fees and, possibly, renewal fees could be anticipated.
Like the Cayman Islands, the Turks and Caicos Islands are a British Overseas Territory. They also share a need for annual fees to be paid to maintain trademark registrations. With a population roughly half that of the Cayman Islands and an economy that is not as developed, the number of trademarks registered in the Turks and Caicos Islands is a lot less.
Remaining firmly in the Western Hemisphere, Honduras is another country where annual fees are due. Again, I think it's worthwhile considering paying them in bulk up to a registration's renewal date as it can make the management of the registration easier.
Don't confuse these annual fees for Honduras with rehabilitation taxes. These taxes, which are unique to Honduras, are an optional payment. When paid they will protect a registration from being cancelled for non-use. Therefore, you only need to pay them if you're not using a trademark.
Rehabilitation taxes can easily be forgotten about and this is understandable when they are optional and not a mandatory maintenance requirement. They can be paid retrospectively. Therefore, if you have a registration that is vulnerable to cancellation on the grounds of non-use but you wish to file an opposition based on this registration, you would just need to back-pay any rehabilitation taxes prior to filing an opposition to help avoid a counter cancellation action on the grounds of non-use.
So annual maintenance payments to maintain trademark registrations may not be common, but if you help manage trademark renewals or maintenance then be aware that they can crop up from time-to-time. Even if you don't have patents under your responsibilities, you may also come across annual fees/annuities when maintaining design registrations (particularly in countries where the design law is a subset of the patent law) or domain names.
However, there's a select group of jurisdictions where annual fees are payable to maintain trademark registrations.
Annual fees make the Cayman Islands one of the most expensive jurisdictions in which to maintain trademark registrations (although recent hikes in the official fees in the UAE and Venezuela means it's not the only place where maintaining a trademark registration can cost a fortune).
The Cayman Islands Registry used to allow representatives from anywhere to attend to matters before them. This changed in 2012 so that a local representative was required. I've previously worked with the local Registry but this change prevented me from doing so directly and therefore being able to maintain trademarks most cost-effectively for clients. Local agents in the Cayman Islands tend to be expensive reflecting the high cost of living there. It is worth considering paying all the annual fees (up to a registration's renewal date) in bulk to reduce the level of professional fees.
It's also worth being 'tactical' and avoiding registering trademarks in December. Annual fees fall due on 1 January each year so if you register in December you'll find yourself with an immediate payment to be made to keep the registration you have only just got in force.
The Cayman Islands are now looking to introduce a fresh trademark law (that removes its dependency on UK or Community registrations). It will be interesting to see how they set their official fees. Annual fees may be abolished but they will need to bring in examiners to handle applications filed under a new substantive trademark law so an increase in initial filing fees and, possibly, renewal fees could be anticipated.
Like the Cayman Islands, the Turks and Caicos Islands are a British Overseas Territory. They also share a need for annual fees to be paid to maintain trademark registrations. With a population roughly half that of the Cayman Islands and an economy that is not as developed, the number of trademarks registered in the Turks and Caicos Islands is a lot less.
Remaining firmly in the Western Hemisphere, Honduras is another country where annual fees are due. Again, I think it's worthwhile considering paying them in bulk up to a registration's renewal date as it can make the management of the registration easier.
Don't confuse these annual fees for Honduras with rehabilitation taxes. These taxes, which are unique to Honduras, are an optional payment. When paid they will protect a registration from being cancelled for non-use. Therefore, you only need to pay them if you're not using a trademark.
Rehabilitation taxes can easily be forgotten about and this is understandable when they are optional and not a mandatory maintenance requirement. They can be paid retrospectively. Therefore, if you have a registration that is vulnerable to cancellation on the grounds of non-use but you wish to file an opposition based on this registration, you would just need to back-pay any rehabilitation taxes prior to filing an opposition to help avoid a counter cancellation action on the grounds of non-use.
So annual maintenance payments to maintain trademark registrations may not be common, but if you help manage trademark renewals or maintenance then be aware that they can crop up from time-to-time. Even if you don't have patents under your responsibilities, you may also come across annual fees/annuities when maintaining design registrations (particularly in countries where the design law is a subset of the patent law) or domain names.
22 March 2015
Hong Kong: expected official fee changes
Hong Kong is expected to make changes to their official fees from 30 March 2015.
Trademark filing fees will go up, whereby renewal fees will go down. Renewal fees for design registrations will also decrease.
What to do?
If you have any new trademark filings, you are advised to get them instructed as soon as possible so you can avail yourselves of the current (lower) official fee.
If you have any trademarks or designs falling due for renewal imminently but from 31 March 2015 onwards, these can be renewed after 30 March to ensure a lower official fee is paid.
For any renewals due from 31 March onwards entrusted to us, we will make conscious efforts to pay the new lower fees. Of course, it might be that the introduction of the fee changes is delayed.
Trademark filing fees will go up, whereby renewal fees will go down. Renewal fees for design registrations will also decrease.
What to do?
If you have any new trademark filings, you are advised to get them instructed as soon as possible so you can avail yourselves of the current (lower) official fee.
If you have any trademarks or designs falling due for renewal imminently but from 31 March 2015 onwards, these can be renewed after 30 March to ensure a lower official fee is paid.
For any renewals due from 31 March onwards entrusted to us, we will make conscious efforts to pay the new lower fees. Of course, it might be that the introduction of the fee changes is delayed.
7 October 2013
Hague movements, Brunei joins
After a quiet 2013 in the international world of designs comes some news from WIPO of the accession of Brunei to the Hague System for the International Registration of Industrial Designs.
It will be possible to designate Brunei in a Hague application from 24 December 2013.
As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.
Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.
For now though, welcome aboard to Brunei.
It will be possible to designate Brunei in a Hague application from 24 December 2013.
As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.
Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.
For now though, welcome aboard to Brunei.
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
11 June 2013
On-line Design applications
Following last week's announcement from WIPO on their improved on-line filing facility for Hague International Design applications, this week I will look at the on-line filing abilities of some other Offices.
OHIM provides a platform for filing Registered Community Design applications on-line. This is well used and the ease of uploading representations makes the applications significantly easier.
Compare this to the United Kingdom where paper forms are still required and it can be a bit fiddly collating all the representations into order. The same is the case in Germany, Benelux and Portugal, as examples.
OHIM's Cooperation Fund should help all countries within the EU introduce on-line facilities for filing design applications in the future. Among its initiatives, many national trade mark applications in EU member states can be filed on-line. These are scheduled to be extended to design applications in due course.
Outside the European Union, Switzerland has not yet developed an on-line process although it does accept applications via e-mail. However, Switzerland can be included within a Hague application.
Further afield, Canada and Australia offer on-line tools for which they should be commended.
It is understandable that systems for on-line design applications need to be robust in order to cope with a large number of representations as attachments. This makes them less easy to implement.
In the UK at least, most national designs are filed by local, often individual, designers directly (bigger firms and those professionally represented tend to take the European or International route). Their voice is perhaps less heard than professional IP organisations. This factor may also contribute towards why the UK IPO may not have considered it a priority to implement an on-line filing system for designs. As the UK looks to revamp its design legislation, the practical improvement of developing an on-line tool may also be carried out ahead of any support from OHIM's Cooperation Fund..
OHIM provides a platform for filing Registered Community Design applications on-line. This is well used and the ease of uploading representations makes the applications significantly easier.
Compare this to the United Kingdom where paper forms are still required and it can be a bit fiddly collating all the representations into order. The same is the case in Germany, Benelux and Portugal, as examples.
OHIM's Cooperation Fund should help all countries within the EU introduce on-line facilities for filing design applications in the future. Among its initiatives, many national trade mark applications in EU member states can be filed on-line. These are scheduled to be extended to design applications in due course.
Outside the European Union, Switzerland has not yet developed an on-line process although it does accept applications via e-mail. However, Switzerland can be included within a Hague application.
Further afield, Canada and Australia offer on-line tools for which they should be commended.
It is understandable that systems for on-line design applications need to be robust in order to cope with a large number of representations as attachments. This makes them less easy to implement.
In the UK at least, most national designs are filed by local, often individual, designers directly (bigger firms and those professionally represented tend to take the European or International route). Their voice is perhaps less heard than professional IP organisations. This factor may also contribute towards why the UK IPO may not have considered it a priority to implement an on-line filing system for designs. As the UK looks to revamp its design legislation, the practical improvement of developing an on-line tool may also be carried out ahead of any support from OHIM's Cooperation Fund..
6 June 2013
New on-line filing tool for Hague Design applications
WIPO have announced the introduction for a new on-line filing system for Hague International Design applications.
It will now be possible to upload multiple design representations at the same time, which may speed up the preparation of applications. A fee calculator will be built into the tool to help with the accurate calculation of fees due (which can be complicated under Hague). Furthermore, it will be possible to pay for applications using a credit card. This will be very useful for filers that do not hold a deposit account with WIPO; previously if you wanted to make payment by credit card then you needed to wait for a WIPO irregularity notice and then make payment through their E-Payment tool.
WIPO have prepared some step-by-step tutorials for the filing of Hague applications including the creation of a user account that is necessary.
With the accession of the United States and the powerhouse economies of the Far East to Hague expected in the not-too-distant future, WIPO are preparing themselves well to be more efficient ready for an increase in the number of filings.
It will now be possible to upload multiple design representations at the same time, which may speed up the preparation of applications. A fee calculator will be built into the tool to help with the accurate calculation of fees due (which can be complicated under Hague). Furthermore, it will be possible to pay for applications using a credit card. This will be very useful for filers that do not hold a deposit account with WIPO; previously if you wanted to make payment by credit card then you needed to wait for a WIPO irregularity notice and then make payment through their E-Payment tool.
WIPO have prepared some step-by-step tutorials for the filing of Hague applications including the creation of a user account that is necessary.
With the accession of the United States and the powerhouse economies of the Far East to Hague expected in the not-too-distant future, WIPO are preparing themselves well to be more efficient ready for an increase in the number of filings.
30 May 2013
Rwanda to become latest Madrid member
Following on from the eagerly anticipated accession of India to the Madrid Protocol, now it is the turn of Rwanda to join up. We will be able to designate Rwanda in a Madrid Protocol application from 17 August 2013.
Rwanda will become the 91st member of the Madrid family. Having joined the Hague Agreement Concerning the International Registration of Industrial Designs in August 2011, Rwanda is proving to be keen on international arrangements in intellectual property.
Formerly a German colony and then under Belgian administration, Rwanda has a Civil law system (although nowadays Rwanda is also now a member of the Commonwealth).
This Civil law history should mean its Madrid Protocol membership is automatic and requires no legislative amendments locally (although, of course, the Office of the Registrar General may need to make some operational changes). This does mean that the enforceability of International Registrations designating Rwanda is not in question, which is not the case for many African Madrid members with a Common Law legal system.
Rwanda joins Kenya as the only other member of the East African Community to also be a member of the Madrid Protocol. Rwanda will become the 16th member of the Madrid Union in Africa (although again note the questionable enforceability of International Registrations to some African countries).
Welcome aboard Rwanda!
Rwanda will become the 91st member of the Madrid family. Having joined the Hague Agreement Concerning the International Registration of Industrial Designs in August 2011, Rwanda is proving to be keen on international arrangements in intellectual property.
Formerly a German colony and then under Belgian administration, Rwanda has a Civil law system (although nowadays Rwanda is also now a member of the Commonwealth).
This Civil law history should mean its Madrid Protocol membership is automatic and requires no legislative amendments locally (although, of course, the Office of the Registrar General may need to make some operational changes). This does mean that the enforceability of International Registrations designating Rwanda is not in question, which is not the case for many African Madrid members with a Common Law legal system.
Rwanda joins Kenya as the only other member of the East African Community to also be a member of the Madrid Protocol. Rwanda will become the 16th member of the Madrid Union in Africa (although again note the questionable enforceability of International Registrations to some African countries).
Welcome aboard Rwanda!
16 May 2013
Comoros joins OAPI
News from Africa sees the island nation of the Comoros ratify the Bangui Accord to become the 17th member state of OAPI.
I understand the hard copies of the Comoros' accession documents are yet to reach OAPI. It is believed these will arrive soon but there is a little uncertainty pending their arrival.
The Union of the Comoros is due to become a member on 25 May 2013. From this date, applications filed in OAPI will cover the Comoros. Furthermore, renewals filed after this date will then extend the relevant registrations to cover the Comoros.
In the meantime, if renewals are some time away and you wish to protect your trade mark rights in this country, it is possible to file Extension Applications to cover the Comoros. (This is very much different from the CTM system where new members (such as Croatia) will be automatically covered upon their joining.)
Prior to its accession to OAPI, the Comoros was one of the Cautionary Notice countries of the world. If you have published a Cautionary Notice in the islands then you should now look to register these rights at OAPI either by making an application or, if existing OAPI rights already exist, by making Extension Applications (although if these rights are close to renewal you may be able to save some money by just waiting until renewal can be filed).
I have previously speculated that the Comoros may join OAPI because as a small, francophone country it would represent a quick-win to join this organisation. However, it is located between Mozambique and Madagascar in the south west of Africa and will form a geographic outpost of OAPI - they will need to enlarge the map appearing on their homepage. Saying this, Madagascar was a member of a precursor to OAPI, OAMPI.
The Comoros represents the 17th member of the OHADA - Treaty on the Harmonisation of Business Law in Africa to mirror this with membership of OAPI. The Democratic Republic of Congo (for those of you of a certain age, this might still be Zaire to you) is also due to adhere to OHADA. This country already has its own trade mark legislation and has less need to join up to OAPI too (although this did not prevent Mali and Guinea becoming OAPI members in the 1980s and 1990s respectively).
As one of the world's poorest countries, the Comoran government will be hoping that its accession to OAPI will encourage investment to the islands.
Incidentally, the Comoros disputes the status of Mayotte, part of the Comoros islands archipelago but administered by France (at the wishes of its local population it may be said). Mayotte is covered by French registrations (including International Registrations designating France) and, from 1 January 2014, when it will become an Outermost region of the European Union, Community Trade Marks too.
I understand the hard copies of the Comoros' accession documents are yet to reach OAPI. It is believed these will arrive soon but there is a little uncertainty pending their arrival.
The Union of the Comoros is due to become a member on 25 May 2013. From this date, applications filed in OAPI will cover the Comoros. Furthermore, renewals filed after this date will then extend the relevant registrations to cover the Comoros.
In the meantime, if renewals are some time away and you wish to protect your trade mark rights in this country, it is possible to file Extension Applications to cover the Comoros. (This is very much different from the CTM system where new members (such as Croatia) will be automatically covered upon their joining.)
Prior to its accession to OAPI, the Comoros was one of the Cautionary Notice countries of the world. If you have published a Cautionary Notice in the islands then you should now look to register these rights at OAPI either by making an application or, if existing OAPI rights already exist, by making Extension Applications (although if these rights are close to renewal you may be able to save some money by just waiting until renewal can be filed).
I have previously speculated that the Comoros may join OAPI because as a small, francophone country it would represent a quick-win to join this organisation. However, it is located between Mozambique and Madagascar in the south west of Africa and will form a geographic outpost of OAPI - they will need to enlarge the map appearing on their homepage. Saying this, Madagascar was a member of a precursor to OAPI, OAMPI.
The Comoros represents the 17th member of the OHADA - Treaty on the Harmonisation of Business Law in Africa to mirror this with membership of OAPI. The Democratic Republic of Congo (for those of you of a certain age, this might still be Zaire to you) is also due to adhere to OHADA. This country already has its own trade mark legislation and has less need to join up to OAPI too (although this did not prevent Mali and Guinea becoming OAPI members in the 1980s and 1990s respectively).
As one of the world's poorest countries, the Comoran government will be hoping that its accession to OAPI will encourage investment to the islands.
Incidentally, the Comoros disputes the status of Mayotte, part of the Comoros islands archipelago but administered by France (at the wishes of its local population it may be said). Mayotte is covered by French registrations (including International Registrations designating France) and, from 1 January 2014, when it will become an Outermost region of the European Union, Community Trade Marks too.
1 March 2013
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:
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.
21 February 2013
Caribbean IP Part 28: Bermuda
ISO 3166 country code: BM.
Bermuda is the oldest colony of the United Kingdom being a colony of England prior to its unification with Scotland. It is now the most populous of all the British Overseas Territories, with around 65,000 people.
Despite its proximity to the United States and Canada, it remains fairly pro-British and its last independence referendum was easily defeated. However, if the referendum was repeated today the result may not be so clear cut.
The relative isolation of Bermuda means it is not strictly a part of the Caribbean although it is an associate member of the Caribbean Community (CARICOM). It is a high income island driven by the finance and tourism sectors.
As the island is non-sovereign and not independent it is not in a position to accede to International arrangements such as the Madrid Protocol without the United Kingdom legislating for them in this respect.
However, it has a local trade mark system in place. It is not a prerequisite to have a United Kingdom trade mark registration in order to register a trade mark in Bermuda, although it does have persuasive value before the local Registrar under section 18(4) of the local Trade Marks Act.
When it comes to registered designs, Bermuda also allows for local registration. With respect to UK Registered Design rights these provide for automatic protection to Bermuda. There could be a defence for infringers if they could not know of the design in Bermuda which suggests that if there is no use or disclosure of such a design in Bermuda (for example, in the UK only), then the owner of the UK design may be prevented from taking action locally in Bermuda. As the law has not been amended accordingly, it is unlikely the same protection and provisions are given for Registered Community Designs.
The Registry General administers IP rights on the island. Their website provides some general information on intellectual property specifically on how to file applications. Examination of trade mark applications is not lax and objections will be raised according to the law if the Examiner feels it is justified, yet the processing of trade mark applications is organised and timely.
As a high income society, Bermuda is a potentially lucrative market to many trade mark owners. It is important that its location means it is not inadvertently omitted from any filing programmes for the Caribbean and/or North America.
Bermuda is the oldest colony of the United Kingdom being a colony of England prior to its unification with Scotland. It is now the most populous of all the British Overseas Territories, with around 65,000 people.
Despite its proximity to the United States and Canada, it remains fairly pro-British and its last independence referendum was easily defeated. However, if the referendum was repeated today the result may not be so clear cut.
The relative isolation of Bermuda means it is not strictly a part of the Caribbean although it is an associate member of the Caribbean Community (CARICOM). It is a high income island driven by the finance and tourism sectors.
As the island is non-sovereign and not independent it is not in a position to accede to International arrangements such as the Madrid Protocol without the United Kingdom legislating for them in this respect.
However, it has a local trade mark system in place. It is not a prerequisite to have a United Kingdom trade mark registration in order to register a trade mark in Bermuda, although it does have persuasive value before the local Registrar under section 18(4) of the local Trade Marks Act.
When it comes to registered designs, Bermuda also allows for local registration. With respect to UK Registered Design rights these provide for automatic protection to Bermuda. There could be a defence for infringers if they could not know of the design in Bermuda which suggests that if there is no use or disclosure of such a design in Bermuda (for example, in the UK only), then the owner of the UK design may be prevented from taking action locally in Bermuda. As the law has not been amended accordingly, it is unlikely the same protection and provisions are given for Registered Community Designs.
The Registry General administers IP rights on the island. Their website provides some general information on intellectual property specifically on how to file applications. Examination of trade mark applications is not lax and objections will be raised according to the law if the Examiner feels it is justified, yet the processing of trade mark applications is organised and timely.
As a high income society, Bermuda is a potentially lucrative market to many trade mark owners. It is important that its location means it is not inadvertently omitted from any filing programmes for the Caribbean and/or North America.
13 February 2013
Caribbean IP Part 27: US Virgin Islands
ISO 3166 country code: VI.
The Federal trade mark law of the United States, the Lanham Act, applies to not only all 50 states but also to any territory under the jurisdiction of the United States. Therefore, US Federal registrations automatically cover the US Virgin Islands.
Nevertheless, a local registration system is also available.
The Division of Corporations and Trademarks at the Office of the Lieutenant Governor administers locally registered rights. It is necessary to support an application with a Federal registration by providing a certified copy of the same. Because US designations of Madrid Protocol registrations are given a local Registration number it is believed these could also form the basis for applications in the US Virgin Islands.
There is no separate register for design patents.
It is not too often that separate trade mark registration is required for the US Virgin Islands although it could be useful in some cases. Registration is inexpensive (incidentally, we can file directly in the US Virgin Islands) if filing is ever considered.
The Federal trade mark law of the United States, the Lanham Act, applies to not only all 50 states but also to any territory under the jurisdiction of the United States. Therefore, US Federal registrations automatically cover the US Virgin Islands.
Nevertheless, a local registration system is also available.
The Division of Corporations and Trademarks at the Office of the Lieutenant Governor administers locally registered rights. It is necessary to support an application with a Federal registration by providing a certified copy of the same. Because US designations of Madrid Protocol registrations are given a local Registration number it is believed these could also form the basis for applications in the US Virgin Islands.
There is no separate register for design patents.
It is not too often that separate trade mark registration is required for the US Virgin Islands although it could be useful in some cases. Registration is inexpensive (incidentally, we can file directly in the US Virgin Islands) if filing is ever considered.
7 February 2013
Caribbean IP Part 26: Turks and Caicos Islands
ISO 3166 country code: TC.
The Turks and Caicos Islands are a non-sovereign nation, a British Overseas Territory. As such they are not able to sign up to international agreements. However, they can make reference to them in their own IP legislation and in this connection, reference is made to the UK Trade Marks Act and Community Trade Mark within its trade marks legislation.
Trade mark legislation is modern with the latest Trade Marks (Amendment) Rules dating from 2011. The Turks and Caicos Islands allow for local applications and they are well up-to-date in using the International Classification and allowing service marks.
It is also possible to extend UK trade marks to the islands and this provision is now also available to Community Trade Marks and International Registrations.
The Turks & Caicos Islands Financial Services Commission administers the Trade Marks (and Patents) Registry. Their web presence provides a fairly decent brief overview on trade marks.
Like with other British territories, Madrid Protocol membership is not on the horizon. In 2009, the UK Government imposed direct rule on the islands following a corruption scandal (home rule being restored recently) but unilaterally imposing the Madrid Protocol on any territory would not be made.
As for designs, there does not appear to be any legislation catering for these.
The Turks and Caicos Islands operate an organised trade marks system. The main gripe trade mark proprietors have is that annual maintenance fees are due against trade marks. As with the Cayman Islands, these put a large financial burden on maintaining trade marks in a jurisdiction with a tiny population; the population is estimated at under 50,000.
The Turks and Caicos Islands are a non-sovereign nation, a British Overseas Territory. As such they are not able to sign up to international agreements. However, they can make reference to them in their own IP legislation and in this connection, reference is made to the UK Trade Marks Act and Community Trade Mark within its trade marks legislation.
Trade mark legislation is modern with the latest Trade Marks (Amendment) Rules dating from 2011. The Turks and Caicos Islands allow for local applications and they are well up-to-date in using the International Classification and allowing service marks.
It is also possible to extend UK trade marks to the islands and this provision is now also available to Community Trade Marks and International Registrations.
The Turks & Caicos Islands Financial Services Commission administers the Trade Marks (and Patents) Registry. Their web presence provides a fairly decent brief overview on trade marks.
Like with other British territories, Madrid Protocol membership is not on the horizon. In 2009, the UK Government imposed direct rule on the islands following a corruption scandal (home rule being restored recently) but unilaterally imposing the Madrid Protocol on any territory would not be made.
As for designs, there does not appear to be any legislation catering for these.
The Turks and Caicos Islands operate an organised trade marks system. The main gripe trade mark proprietors have is that annual maintenance fees are due against trade marks. As with the Cayman Islands, these put a large financial burden on maintaining trade marks in a jurisdiction with a tiny population; the population is estimated at under 50,000.
22 January 2013
Caribbean IP Part 25: Trinidad and Tobago
ISO 3166 country code: TT.
As 96% of the population live on
Trinidad - Tobago has a population of just over 50,000 - the country is often
referred to as just Trinidad (much like Antigua and Barbuda is referred to as
Antigua). Nevertheless, I'll refer to it in its more proper longer form.
The country has modern laws in place, an Office
that operates with reasonable speed and has joined various International
Agreements. It is felt that - with some amendments to the local trade mark
legislation - that the country would be well equipped to join the Madrid
Protocol. As a significant market in the English-speaking Caribbean they would
be a welcome addition to the Madrid family.
Trinidad and Tobago is party to a number of International
Agreements on intellectual property and plays a particularly
active role compared to its regional neighbours. Membership includes the Berne
Convention, Locarno Agreement, Nice Agreement, Paris Convention, Patent
Cooperation Treaty, Trademark Law Treaty, UPOV Convention, Vienna Agreement and
WIPO Convention.
It has yet to join the Madrid Protocol for trade marks
or the Hague System for industrial designs.
The trade mark law in Trinidad is modern and the
Intellectual Property Office works reasonably efficiently. The forms are straightforward
to understand, with some similarities with those in the UK.
The Trinidadian and Tobagonian Government operates a
portal which provides the general public on information on intellectual property,
most notably on registering a trade mark.
Trinidad and Tobago has recent legislation for the
protection of industrial designs dating from 2007 and it is necessary to file
locally - or, in other words, a UK registration provides no protection.
15 January 2013
Caribbean IP Part 24: Suriname
ISO 3166 country code: SR.
Suriname, or Surinam, is the smallest independent nation in South America but with a Dutch-colonial history it is often categorised with the Caribbean (see also neighbouring English-speaking Guyana). It is an ethnically diverse nation yet Dutch remains the official language, although there are dialectal differences from the Dutch dialects spoken in Europe.
Suriname is a member of the Berne Convention, Hague Agreement, Nice Agreement, Paris Convention, Strasbourg Agreement and WIPO Convention. Most of these memberships were continuations of the Netherlands' memberships following Suriname's independence in 1975.
Notably, this includes the Hague Agreement for the International Registration of Industrial Designs. However, this membership only extends to the Hague Act and not the Geneva Act. Applicants from Geneva Act only members will not be able to use the Hague System for protecting designs in Suriname. This would include an EU applicant who can rely only on the EU's Geneva Act membership e.g. the likes of British, Danish, Finnish, Irish, Spanish and Swedish applicants.
It is not apparent that independent industrial design registration is available for Suriname. For trade marks, Suriname does not have membership of the Madrid Protocol but national applications can be filed locally. There are backlogs with applications but it isn't a complete black hole and applications do eventually mature to registration.
Service marks are not yet registrable - the trade mark legislation dates from colonial times - and patent protection is unavailable in Suriname. Little mention appears to being made to updating legislation in relation to intellectual property which leaves an impression that Suriname has little interest in intellectual property rights.
8 January 2013
Caribbean IP Part 23: Sint Maarten
ISO 3166 country code: SX.
Sint Maarten was a part of the Netherlands Antilles up until its dissolution on 10 October 2010. Much of what was written about Curaçao applies to Sint Maarten.
For a transitional period of one year the Sint Maarten Bureau of Intellectual Property was to be managed in Curaçao (by what was the former Bureau of Intellectual Property of the Netherlands Antilles). Effectively, the laws for Sint Maarten and Curaçao were to remain the same and the Registers would have operated in parallel. Owners of existing Netherlands Antilles registrations were automatically considered to cover both Sint Maarten and Curaçao. Of course, from 10 October 2010 it has been possible to file or renew in Curaçao only, or in Sint Maarten only.
The one-year transitional period in which Sint Maarten should have began operations of its own IP Office has now passed and I am not aware that this Office has been established in the St Maartener capital of Philipsburg or elsewhere in the country. Once this happens then we may see a divergence in practice and timelines compared to the Office in Curaçao.
20 December 2012
Caribbean IP Part 22: St Vincent and the Grenadines
ISO 3166 country code: VC.
St Vincent and the Grenadines is a member of the Berne Convention, Paris Convention, Patent Cooperation Treaty and WIPO Convention.
The Commerce and Intellectual Property Office administers IP rights in the islands. The Office boasts an excellent and easy to navigate website and is a real stand out country in the region particularly when it is far from the wealthiest and has an estimated population of only 120,000.
When it comes to trade marks, St Vincent and the Grenadines has a modern law dating from 2003. It is modelled on the UK Trade Marks Act 1994 and those of you familiar with filing UK applications using a Form TM3 will spot instantly the similarities with the local form.
St Vincent and the Grenadines has an efficient trade mark system. It also operates an independent registered designs system, although there is little information regarding this on their website - probably because there are very few applications made.
The islands have shown a commitment to an effective and efficient intellectual property system and this may make them the next potential members of the Madrid Protocol. This could bring increased investment into the islands which are somewhat dependent on agriculture, especially bananas.
11 December 2012
Caribbean IP Part 21: St Lucia
ISO 3166 country code: LC.
St Lucia is a member of the main IP treaties, namely, the Berne Convention, Nice Agreement, Paris Convention, Patent Cooperation Treaty, Vienna Agreement, WIPO Convention and more. It boasts record participation amongst the member countries of the Organisation of Eastern Caribbean States.
The Registry of Companies and Intellectual Property ("ROCIP") administers IP rights in St Lucia. However, from an internet perspective they could just be the 'Registry of Companies' as no mention is made of their intellectual property responsibilities.
Automation of IP records is a desire of the ROCIP to greatly improve efficiency of what is largely a manual, paper-based system at present.
Of a more modern note, St Lucia no longer allows for UK trade marks to be extended to the country and operates a purely local system. Likewise, for designs, UK registered designs no longer extend to St Lucia automatically; the island now has a purely independent filing system in place.
St Lucia is not a rapid registration country. However, it also does not usually suffer from large backlogs of applications. Its membership of various international treaties is noteworthy. An obvious exception is the Madrid Protocol. This should not be ruled out in the future as St Lucia has demonstrated a commitment to international IP treaties. However, it would require legislative amendments so it would be preferable that it did not rush to join up until these are in place for fear of making any possible Madrid Protocol designations unenforceable.
4 December 2012
Caribbean IP Part 20: St Kitts and Nevis
ISO 3166 country code: KN.
St Kitts and Nevis, sometimes referred to as St Christopher and Nevis (both are referred to in the Constitution), is a federal country consisting of two islands. It is the smallest independent country in the Americas both in terms of population and area. Anguilla was formerly a part of the federation before being separated in the 1980s.
St Kitts and Nevis is a member of the Berne Convention, Nice Agreement, Paris Convention, Patent Cooperation Treaty and WIPO Convention.
The Registry of the Supreme Court administers IP rights in St Kitts and Nevis. They have no website.
St Kitts and Nevis has a modern trade mark law dating from 2002. However, it retains some bureaucratic features from previous regulations, namely, the need to submit Declarations and Statements with each trade mark application. It does allow for purely local protection - a UK registration not being a prerequisite for filing - which makes obtaining a trade mark accessible for locals and foreigners alike.
I cannot see that the country has a law for the registration of registered designs but Common Law protection may exist.
The country is very dependent on tourism although the island of Nevis has developed an offshore financial industry in recent years. Madrid Protocol membership does not seem to be on the cards although accession of other countries in the region could have a persuasive impact on the Government of St Kitts and Nevis.
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