The United Kingdom has decided in yesterday's referendum that it will leave the European Union.
Personally, I'm gutted. Having lived and worked on the continent, I regard myself as a Europhile. It may be a great shame that our younger people may not have so many opportunities to live and work in Europe.
There will be an impact on trademarks. What exactly needs to be determined? For now we do not need to worry.
The Prime Minister has indicated that he will stand down and it is his replacement who will submit the Article 50 request to the European Union that begins the formal withdrawal process. Indications are that this will take place in October and the withdrawal process will have a two-year negotiating period once submitted.
I think there's a chance of another General Election in the intervening period. This means we could be looking at between two-two and a half years before EU trademarks will no longer cover the UK.
Furthermore, I understand this negotiating period is extendable if agreed by both parties - a "cooling-off" period in trademark terms, I suppose.
Automatic re-registration?
What will happen to EU trademark (and design) registrations once the UK does leave the EU?
My hunch is that they will automatically continue to cover the UK. My reasons are:
1. There are so many of them that having a formal revalidation process would be a burden on UK IPO resources.
2. EU trademarks are searchable on the UK IPO's systems so it should be a fairly straightforward task to convert/duplicate them to become UK national registrations.
3. As for EU designations in International registrations, it should be possible, working with WIPO, to organise automatic 'Continuation of Effects' to the UK.
4. They would not want to discriminate UK businesses by making them pay to revalidate EU trademarks which they legitimately obtained thinking they had the UK covered.
5. It's certainly arguable that the UK IPO could lose out on a windfall that could be generated by a formal revalidation process, but I would argue that this would be a temporary spike (and the Office would need temporary staff for this) whereas they can bring in extra fees in a more managed way as registrations fall due for renewal and get assigned.
Reverse seniority?
I wonder if there is a need to allow seniority claims to be reversed so where an EU registration has claimed seniority from a UK registration then this UK registration can be reinstated (presuming it has since lapsed).
This may be beneficial in the case of very old prior rights where the corresponding EU registration does not date back as far. This could carry official fees for the UKIPO as I believe they would require examination. Whether such requests can restore the specification of the original UK registration or can only comprise that which is included in the EU registration (where they are different) would be a question to be answered in this eventuality.
From a practical point of view, an automatic revalidation process would negate the need to request "reverse seniority" in the vast majority of cases.
EEA and representatives
We wait to see if the UK's withdrawal from the EU will also be a withdrawal from the European Economic Area. If it remains in the EEA then the impacts on the management of trademarks will be less.
If it decides to leave the EEA then things may change more. Currently, only an Address for Service in the EEA is required for trademark matters before the UK IPO. Leave the EEA and the rules may change so that an Address for Service is in the UK only. In practice this would not be a big deal as the vast majority of Addresses for Service for UK national registrations are in the UK already, as opposed to other EEA countries. (Disclaimer: this is based on my regular scouring of the Trade Marks Journal and Register, and not on a detailed analysis of Addresses for Service.)
However, this could scupper any plans to automatically duplicate the EU Register to the UK as a large number of EU trademarks have IP representatives in other EEA countries. Perhaps these could be left be, with a UK Address for Service only needing to be appointed when there's subsequent dealings with the UK IPO.
UK Professional Representatives
Leave the EEA and the ability of UK Professional Representatives to act before the EUIPO (and other EU Offices) could be impacted. The Institute of Trade Mark Attorneys has indicated that they will "be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office."
If UK Professional Representatives can no longer act before the EUIPO then this lucrative strand of work will go elsewhere, firms in Germany, Ireland and the big IP units near Alicante likely destinations in my view.
If they can continue representing though then they will be well placed to continue the UK's strong level of representation before the EUIPO. Such work could also be supplemented by corresponding UK filings too.
However, we may see a change in filing strategy. If the UK is an added country to consider in filing programmes then the attractiveness of an International trademark may increase. The rationale being the more countries to be covered, the more attractive it is to use.
Scotland
In Scotland the people were in favour of remaining in the European Union. This may now lead to another Scottish referendum and further implications to trademarks. I've blogged previously on what could happen in this event.
Gibraltar and Northern Ireland
Gibraltar (overwhelmingly) and Northern Ireland (much more narrowly) also voted to remain in the European Union - the out votes of England, in particular, and Wales tipping the balance towards leave.
Politically I cannot see Northern Ireland looking to go it alone or look to instead form a part of a united Ireland and so will find itself alongside England and Wales (with or without Scotland).
Gibraltar is unlikely to make a bid for independence or accept co-hegemony from Spain (as the Spanish Government was keen to offer early on). Its local trademark system currently allows for the re-registration of UK or EU trademarks, but they may close the door on EU trademarks (which have more doubtful enforceability anyway).
Jersey
The Channel Island of Jersey lies outside of the European Union and its citizens were not entitled to vote in the referendum.
However, their trademark legislation allows for the automatic protection of EU trademarks to the island (i.e. without the need to re-register them locally). Conversely, UK national registrations must go through a formal re-registration process and get a local registration.
They would need to change their local law to stop EU trademarks providing protection to Jersey. I understand discussions in recent years saw them happy with the status quo but the UK's withdrawal from the EU may make them revisit this issue and we could perhaps anticipate an entirely revamped trademark law in Jersey (neighbouring Guernsey has taken its own route and runs a very efficient Registry).
Conclusion
Nothing changes overnight. There is no need to take action just yet. I think by "pro-actively" filing in the UK now then you may end up with duplicate UK registrations in the future. Keep your ears and eyes open as things become clearer.
Showing posts with label European Union. Show all posts
Showing posts with label European Union. Show all posts
24 June 2016
29 January 2016
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.
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.
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
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.
13 September 2013
The Catalan Way (and IP)
Wednesday (11 September 2013) marked an impressive show of support for the independence of Catalonia, currently an autonomous part of Spain, when a human chain, the Catalan Way, spread for 400km/250 miles.
Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.
Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)
With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)
The Catalan language is also more widely spoken than some other national languages within the EU.
I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.
1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.
Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.
As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.
However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.
This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.
Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.
Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)
With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)
The Catalan language is also more widely spoken than some other national languages within the EU.
I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.
1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.
Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.
As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.
However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.
This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.
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 September 2012
Fighting counterfeits through Customs registration of IP rights
Counterfeiting represents an ever increasing percentage of world trade and is likely to continue being a major problem facing IP rights owners in the coming years. Education of the general public that counterfeiting is not victimless and causes significant damage will still be offset by consumer demand for 'branded' (counterfeit) products.
In some countries it is possible to record trade marks and other IP rights with the Customs Authorities. This can be an effective step to catch counterfeits. It is also inexpensive and the costs involved can contribute towards financing increased IP training of border personnel.
Registering with Customs can be useful in developed economies such as the European Union and United States, in particular, to help prevent the importation of counterfeit products. If you are only in possession of a national right in an EU member state then your Customs recordal application can be limited to a 'National Intellectual Property Rights Application' as opposed to a 'Community Intellectual Property Rights Application'.
China represents a manufacturing hub for counterfeit products and usefully the Chinese Customs authorities examine not just imports but exports too. A recordal of an IP right at Customs will enable them to detain a potentially infringing shipment coming into the country but also such a shipment leaving China.
It is also possible to register IP rights in other key jurisdictions such as India, Mexico (since January 2012), Taiwan and Turkey and many more. I have been advised that Brazil is looking to introduce similar provisions.
There are a couple of quirks to watch out for if you are looking to register your trade marks/IP rights with Customs authorities globally (where it is possible). Jordan is slightly unaligned with their trade mark regime as customs registration must be made with the central Jordanian authorities but also separately with the Aqaba Special Economic Zone Authority (ASEZA) to cover the whole country. Aqaba is Jordan's only seaport.
When it comes to the United Arab Emirates, the Customs authorities are not managed federally (unlike the Trade Marks Office) but remain under the responsibility of the seven emirates. Of these seven, Dubai, Ras al-Khaimah and Sharjah have implemented a registration of IP rights service. Sharjah is often regarded as an extension of Dubai these days. Ras al-Khaimah (or RAK for short) is more remote but the UAE is not a big country.
So you may now look to register your company's or your client's trade marks and IP rights with the local Customs authorities from the United States to Albania (where there is also a recordal facility). Some countries do not provide for the possibility to record trade marks or other IP rights with their Customs authorities. However, it can be possible to make informal requests to the Customs authorities and these can result in your successful notification when infringing products enter the country.
This is just a snapshot of the possibilities but if you have any more specific requests please do not hesitate to get in touch, or liaise with your usual agents.
26 July 2012
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.)
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.
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| 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!
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| Volksparkstadion: Home of Hamburger SV and 4 CTMs |
Trade
Mark Owner
|
City,
country
|
No.
of CTMs
|
No.
of RCDs
|
No.
of IRs
|
Total
|
Madrid,
Spain
|
22
|
0
|
2
|
24
|
|
Barcelona,
Spain
|
21
|
0
|
14
|
35
|
|
Manchester,
England, UK
|
28
|
0
|
8
|
36
|
|
Munich,
Germany
|
7
|
5
|
6
|
18
|
|
London,
England, UK
|
18
|
0
|
4
|
22
|
|
London,
England, UK
|
38
|
1
|
11
|
50
|
|
Milan,
Italy
|
20
|
0
|
14
|
34
|
|
Milan,
Italy
|
12
|
0
|
5
|
17
|
|
Liverpool,
England, UK
|
8
|
4
|
4
|
16
|
|
Gelsenkirchen,
Germany
|
3
|
0
|
0
|
3
|
|
London,
England, UK
|
22
|
5
|
3
|
30
|
|
Manchester,
England, UK
|
3
|
1
|
0
|
4
|
|
Turin,
Italy
|
11
|
0
|
5
|
16
|
|
Marseille,
France
|
6
|
0
|
1
|
7
|
|
Rome,
Italy
|
6
|
0
|
5
|
11
|
|
Dortmund,
Germany
|
7
|
0
|
1
|
8
|
|
Lyon,
France
|
5
|
0
|
3
|
8
|
|
Hamburg,
Germany
|
4
|
1
|
5
|
10
|
|
Valencia,
Spain
|
22
|
3
|
9
|
34
|
|
Naples,
Italy
|
1
|
0
|
1
|
2
|
|
Madrid,
Spain
|
2
|
0
|
1
|
3
|
|
Stuttgart,
Germany
|
3
|
0
|
0
|
3
|
|
Birmingham,
England, UK
|
7
|
1
|
0
|
8
|
|
Lisbon,
Portugal
|
2
|
0
|
3
|
5
|
|
Bremen,
Germany
|
2
|
0
|
4
|
6
|
|
Newcastle
upon Tyne, England, UK
|
3
|
0
|
0
|
3
|
|
Amsterdam,
Netherlands
|
1
|
0
|
6
|
7
|
|
Liverpool,
England, UK
|
1
|
0
|
0
|
1
|
|
London,
England, UK
|
3
|
0
|
1
|
4
|
|
Sunderland,
England, UK
|
2
|
0
|
0
|
2
|
|
Glasgow,
Scotland, UK
|
7
|
0
|
3
|
10
|
|
Glasgow,
Scotland, UK
|
3
|
1
|
2
|
6
|
|
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.
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