Kuwait to increase trademark fees significantly

It has been reported through various sources that in December 2015, the fees for trademarks in Kuwait will increase significantly.

I understand this will include filing, publication and registration fees. Furthermore, I believe that applications already on file will be subject to the new publication and registration fees (if they're not becoming due imminently). This is not something that would have been anticipated when originally filing applications and applicants are going to need to budget for some substantial additional fees.

Can anything be done to alleviate these fee increases? Yes, applications can be filed now and will be subject to the existing application fees. A legalised Power of Attorney is required for Kuwaiti applications but this can be late filed so it seems advisable not to delay if you want to take advantage of the current application fees.

However, examination does not happen that quickly in Kuwait so you are going to need to budget for the increased publication and registration fees.

Looking ahead

Kuwait is a member of the Cooperation Council for the Arab States of the Gulf, usually known as the Gulf Cooperation Council (GCC). The other members are Bahrain, Oman, Qatar, Saudi Arabia and the United Arab Emirates.

As the states look to implement a unifying trademark law (not a unitary law) this fee increase may be a reflection of this. The official fees of Saudi Arabia and the United Arab Emirates are some of the most expensive in the world. Kuwait's fee increase could be seen as a way of them putting their fee structure in line with the two members that receive the most trademark applications.

Therefore, could we see fee increases in Bahrain, Oman and Qatar too? I feel it is fair to anticipate doing so. It could be sensible to consider filing in these countries sooner rather than later if they're likely to be of commercial interest in the future. Bahrain and Oman are members of the Madrid Protocol and can be designated in International applications. If there are fee increases locally, expect them also to elect to increase the Individual fees payable to them under the Madrid Protocol.

Horn of Africa and Sudan region update

It's been a while since I last blogged, but I am pleased to be back with a piece on the Horn of Africa and the Sudan region.

This is an area of the world that has seen a few developments with respect to trademarks, yet conversely is an area of the world where protecting trademarks can be difficult-to-impossible.

The most populated country of the region - and the most populated landlocked country in the world - Ethiopia introduced a new trademark law in early 2013. This provided a June 2014 deadline in which to re-register rights in the country. This deadline has now been extended to 23 December 2014. The requirements for re-registrations are fairly bureaucratic (e.g. a Power of Attorney must be legalised up to the Ethiopian Consulate) so it's recommended to act now if any rights need re-registering.

Across Ethiopia's western border is Africa's newest nation of South Sudan. This country has decided to use the law of (north) Sudan to which it was a part prior to independence. However, they have adopted some practicalities and don't follow the law to the lettter. For example, the law requires trademark applications to be supported by legalised documents but South Sudan does not have diplomatic missions in many countries so notarisation of documents is proving to be acceptable. That said, South Sudan does have consulates in the United Kingdom and United States, amongst a few others.

The trademark system appears to be more of a deposit system and trademarks are not being published for opposition purposes (as they should be according to the law). It does appear that cancellation can be requested at the court though.

It is hoped that when South Sudan does adopt a law of its own that it will recognise any of the rights it is registering in the meantime.

Elsewhere, in the region, it's not possible to register trademarks in Somalia despite this country having a trademark law. This has been the case for some time now and it is expected that the Trademarks Registry building was destroyed in the fighting of the early 1990s.

In the northern region of Somaliland, which has declared its independence from Somalia, it is possible to publish Cautionary Notices. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trademark legislation but in the absence of a Trademarks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”.

Eritrea is another Cautionary Notice jurisdiction in the region. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. Cautionary Notices are the protection route for brand owners without a local presence. However, the publication of Cautionary Notices in Eritrea is not always possible as the authoritarian government restricts the publication of Cautionary Notices from time-to-time.

A country where it is possible to protect trademarks is Djibouti. With an estimated population of 800,000, it's not high up in commercial importance to many brand owners and trademark filings are not high in volume. However, the Port of Djibouti is very important to Ethiopia's imports and exports and its position as a transit country should not be overlooked.

It is quite expensive to protect trademarks in the country compared to its size. Nevertheless, trademark applications mature to registration fairly quickly. An unusual colonial legacy sees that if you support an application with a certified copy of a French registration then it can smooth the way to registration, although this is not a prerequisite.

Sudan also has a trademark law and is the only country in the region to be a part of the Madrid System. That said, there are some question marks on how enforceable these are. I understand they do not follow the same process as national filings and there are rumours that Madrid designations are piled up in a corner of the Sudanese Office.

Sudan is also a member of ARIPO. However, it has not yet joined the Banjul Protocol that governs ARIPO trademark filings.

As for national applications, once you have satisfied the bureaucratic filing requirements, trademark applications are prosecuted slowly. An eight-month opposition period hardly assists with the fast-tracking of applications.

If the Horn of Africa and the Sudan region is an area of the world where you need to protect your trademarks then it is advisable to begin your efforts as soon as possible.

A little piece on Bosnia-Herzegovina

Being a football fan, I like to take inspiration from my favourite sport (e.g. here) and this week is no different. It's been World Cup 2014 qualification week and whilst I am delighted that England have qualified, I also like to see new teams qualify for the big stage too.

Brazil 2014 will see the first appearance of Bosnia-Herzegovina.

To be accurate, Bosnian players could have appeared for Yugoslavia in 1930, 1950, 1954, 1958, 1962, 1974, 1982 and 1990. There are also three other possible first-timers still in the hunt for qualification, although I feel their participation is unlikely.

Enough football and allow me to take a look at the IP landscape in Bosnia-Herzegovina.

The Institute of Intellectual Property manages intellectual property in the country. Delays are known to be encountered with the processing of trade mark applications filed locally although these have lessened of late.

International routes for trade mark protection and industrial design protection through the Madrid and Hague Systems are available. I was therefore quite surprised to see a large number of national design and trade mark applications from foreigners in the latest Gazette published on their website.

Bosnia-Herzegovina adopted a new trade mark law at the beginning of 2011. This introduced an opposition procedure. Previously, it relied on its relative and absolute grounds examination - this made a large contribution to the delays that were experienced. It also formalised procedures for making registration with Customs for IP rights.

EU accession would appear to be a goal for Bosnia-Herzegovina, but it is far behind other countries in the region. Croatia and Slovenia are already in the EU and Macedonia, Montenegro and Serbia are official candidate countries. Even Albania is ahead in the queue having submitted an application.

Croatia's recent accession to the EU means Bosnia-Herzegovina borders the European Union. To the naked eye, Bosnia-Herzegovina can appear to be landlocked on a map, but it actually has a small coastline on the Adriatic Sea around the town of Neum, which juts into Croatia. This makes the territory around the city of Dubrovnik an isolated exclave of Croatia and of the EU. Travelling to this part of the EU from another part of the EU by road therefore means traversing some territory of Bosnia-Herzegovina.

The horrific Bosnian War of the 1990s ended with the signing of the Dayton Peace Accord which set up Bosnia-Herzegovina as a federal state. There are two entities, the Federation of Bosnia and Herzegovina (mostly inhabited by Bosniaks and Bosnian Croats) and the Republika Srpska (mostly inhabited by ethnic Serbs). It's a jigsaw of a country where the internal borders have been meticulously drawn. On the ground, political conflicts between the two entities are common though.

So much so that it would cause little surprise if Republika Srpska were to declare independence. This would fracture the region even more and, selfishly speaking, we would have another IP jurisdiction on our hands. One that might not be entirely welcome in the international arena (see also Kosovo).

Perhaps if they can have a successful 2014 World Cup, this will be a unifying experience for Bosnia-Herzegovina.

Caribbean IP

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

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

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

Anguilla

Antigua and Barbuda

Aruba

Bahamas

Barbados

Belize

Bermuda

Bonaire, Sint Eustatius and Saba

British Virgin Islands

Cayman Islands

Cuba

Curaçao

Dominica

Dominican Republic

Grenada

Guyana

Haiti

Jamaica

Montserrat

Puerto Rico

St Kitts and Nevis

St Lucia

St Vincent and the Grenadines

Sint Maarten

Suriname

Trinidad and Tobago

Turks and Caicos Islands

US Virgin Islands

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

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

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

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

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

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.

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.

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.

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.

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.

Unfortunately, the actual IPO's website never seems to load for me.

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.

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.

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.

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.

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.

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.

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.

Caribbean IP Part 19: Puerto Rico

ISO 3166 country code: PR.

Puerto Rico is an unincorporated territory of the United States. As such it cannot accede to international agreements being a non-sovereign nation.

The Department of State administers trade marks, commercial names and US deposits. The latter refers to the deposit of a US Federal Registration with the local Office, similar to the UK registration extension provision in a few Commonwealth countries.

Filings for these rights can be made on-line. It is also possible to make on-line trade mark searches although they state that the database is not yet complete and therefore you should corroborate any findings with the physical Trade Marks Register. It is also necessary to search trade marks, commercial names and US deposits through separate databases.

If you have clicked on the links, you will see that they are in Spanish only. Spanish is the language of an estimated 95% of the population, although English also has official status.

I understand that Puerto Rico does not have design legislation of its own and would be covered automatically by a US design patent granted federally by the USPTO.

Puerto Ricans, despite being US citizens, did not have the right to vote in the Federal election of 6 November 2012. However, on the same day, they voted with regard to their territory's status. They voted in favour of statehood, although like in the US, the island is very divided politcally. If statehood happens then it would see it covered by US Federal registrations (including Madrid Protocol designations) and relegate its Trade Marks Office to the same level as the State trade mark systems of Alabama, Alaska, etc. Statehood would have to be accepted by both the US House and Senate - and it's anticipated it could have a rough journey - so do not expect to need to treat Puerto Rico as a separate trade mark jurisdiction for some time yet.

Caribbean IP Part 18: Montserrat

ISO 3166 country code: MS.

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

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

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

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

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

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

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

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

Caribbean IP Part 17: Jamaica

ISO 3166 country code: JM.

Jamaica is the largest English-speaking country in the Caribbean and celebrated 50 years of independence in August. 

The Commonwealth of Jamaica is a member of, among others, the Berne Convention, Nairobi Treaty, Nice Agreement, Paris Convention, Vienna Agreement and WIPO Convention.

The Jamaican Intellectual Property Office (JIPO) adminsters intellectual property rights in Jamaica. They have a colourful and informative website containing the forms required for protection. It is necessary to have an Address for Service in Jamaica in order to act before the JIPO.

The Trade Marks Act, 1999 was modelled on UK trade mark legislation (from 1994) and is therefore a modern law. However, Jamaica would need to make amendments to its regulations in order to accede to the Madrid Protocol (and ensure International Registrations would be enforceable there). With the addition of such regulations, Jamaica would be ready to manage Madrid Protocol designations although they would need to ensure they can always meet the 18-month examination deadline.

There is a provision for registering design copyright. The legislation is much older than its trade mark counterpart and protection is available on a national basis only; it seems unlikely that Jamaica has any short-term intentions to join the Hague System. Unlike many other Commonwealth jurisdictions in the region, it does not appear protection is accorded for UK Registered Designs (automatically or by extension).

WIPO's statistics, for trade marks at least, look more accurate than many of the others I have discovered.

A successful tale of branding is also told on WIPO's website in relation to Jamaica Blue Mountain® coffee. If Jamaican brands can become popular around the world - coupled with any pressure from the likes of the US and EU - then this may compel Jamaica to join the Madrid Protocol.

Caribbean IP Part 16: Haiti

ISO 3166 country code: HT.

Occupying the western third of the island of Hispaniola, Haiti is the only independent country of the Caribbean region where French is an official language (along with Haitian Creole). Haiti was the first independent nation in Latin America and the Caribbean following a successful slave revolt in 1804.

Haiti is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Service de la propriété intellectuelle (Service of intellectual property) is the responsible office in Haiti. Unfortunately, they do not appear to have a web presence of yet. The Haitian Copyright Office, Bureau haitien du droit d’auteur (BHDA), is able to boast a website, however. This is available in French only; there is no English version nor are pages available in Haitian Creole. This is a reflection generally where French appears to maintain prestige in legal matters in Haiti. Haitian Creole is based largely on French but it possesses standard orthography (it is a language available on the translation tool of the Google search engine) and has been official since the 1960s.

IP legislation in Haiti goes back many years - trade mark legislation was last amended in 1956 and that for designs in 1924. Independent registration is necessary for both trade marks and designs and accession to the Madrid Protocol or Hague System would appear to be far off for Haiti.

A trade mark registration is in force for 10 years but has an additional maintenance requirement - the due date being three months into the sixth year of registration - in which the trade mark owner must file evidence of use of their mark in Haiti, or, an executed Affidavit of Non-Use.

Haiti has sought full associate membership of the African Union and shares many IP characteristics with some African states: old laws, communication difficulties and agents that are not always as responsive as we may like. However, it does function in the IP arena and let's be realistic. With Haiti's economic state still suffering from the devastating earthquake of 2010 it is not surprising that the Government has more pressing priorities than modernising its trade mark law, for example.

Caribbean IP Part 15: Guyana

ISO 3166 country code: GY.

Guyana is located on the South American continent but is widely considered a part of the Anglophone Caribbean and sometimes referred to as 'Mainland Caribbean'. As a part of the West Indies it has a unique love of cricket in South America (although Argentina has long played the game too) and is a part of the CONCACAF (Central America and Caribbean) football federation. The Guyanese capital, Georgetown, is also the seat of the Secretariat of CARICOM, the Caribbean Community.

The Co-operative Republic of Guyana is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Deeds Registry looks after the administration of patents, trade marks and designs. Their website contains only basic information.

The Trade Mark Register is split into three parts: Part A, Part B and Part C. Part A and Part B are typical in much Commonwealth trade mark legislation; for example, they were parts of the UK Trade Marks Act 1938. For those of you in the US, they have similarities with the Principal and Supplemental Registers.

Part C of the Register is for marks based on UK registrations. This part of the Register is the only way multi-class applications and service marks can be registered in Guyana at the minute. Community Trade Marks cannot be used to form this basis and neither can International Registrations even if they designate the United Kingdom.

Designs are available locally in addition to UK designs automatically covering Guyana although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana after registration (e.g. in the UK only), a registered design owner would be prevented from taking action. A Registered Community Design would not provide the same protection.

Patents are available locally although it is also possible to base an application on a UK patent provided it is filed within three years of grant.

The Deeds Registry suffers from delays in the processing of applications. Having a UK IP registration in place can greatly speed up the processes, although at least there are independent routes to protection available when you do not have - or it is undesirable to seek to obtain - a UK registration.

Madrid Protocol membership seems some way off, although it could form a part of future updating of local IP laws.

Caribbean IP Part 14: Grenada

ISO 3166 country code: GD.

Grenada is a member of the Berne Convention, Paris Convention, Patent Cooperation Treaty and the WIPO Convention.

As previously reported on this blog, Grenada introduced new trade mark legislation on 1 August 2012. The new law replaced a need to have a UK registration before being able to register in Grenada. The law and regulations are not on the internet (WIPO Lex is yet to be updated in this respect) but having seen these I can confirm they are modern and like you would expect in 2012. The prescribed forms are highly similar to those in use in Trinidad and Tobago, to the south of Grenada. However, I would anticipate Grenadian examination being less strict than in Trinidad and Tobago.

The new trade mark law does not extend to joining the Madrid Protocol. At least with the UK dependency dispensed with it makes it easier for many brand owners to register in Grenada.

On the patents side, UK and EP(UK) registrations can be extended to Grenada (in addition to substantive or PCT applications). For designs, the United Kingdom Designs Protection Act (Cap. 331) allows United Kingdom design registration to cover Grenada automatically, and there is no provision for local registration. Such automatic protection is not accorded to Registered Community Designs.

In conclusion, Grenada, the Spice Island, has made welcome steps to modernise its trade mark system.

Caribbean IP Part 13: Dominican Republic

ISO 3166 country code: DO.

The Dominican Republic is the second largest country (in terms of both population and area) in the Caribbean after Cuba. It is an economic power in the Caribbean region.

In IP it is a member of important international treaties such as the Berne Convention, Paris Convention, Patent Cooperation Treaty and WIPO Convention.

It is also a member of the UPOV Convention, the International Union for the protection of new varieties of plants. This was a mandatory requirement for the Dominican Republic when it became party to the 'Dominican Republic - Central America Free Trade Agreement' ("CAFTA-DR"), a free trade agreement which includes the United States.

There are a number of other intellectual property provisions within this agreement including that members "shall make all reasonable efforts to ratify or accede to" inter alia the Hague System for designs and the Madrid Protocol for trade marks. With such unassertive language it may come as little surprise that none of the member states have joined the Hague System and just one (the United States) has joined the Madrid Protocol.

The National Office of Intellectual Property (its Spanish acronym ONAPI) administers IP rights in the Dominican Republic, their website being available in Spanish only. I can, however, establish that it is possible to undertake identical trade mark searches on-line. There also appear to be on-line filing facilities (and there is a resolution in relation to electronic filings), although the web pages were not working for me when I tried.

The Dominican Republic used to be one of the quirkier trade mark jurisdictions around. I remember when it used to have its own classification system and you could choose your registration term (between 5 and 20 years) which caused record-keeping headaches, particularly for databases that liked to auto-calculate renewal dates. In recent times, things have become far more straightforward and the Office works effectively, a short opposition period helping trade mark applications, in smooth cases, mature to registration quickly.

The CAFTA-DR agreement will continue to see pressure from the United States for the Dominican Republic to join the Madrid Protocol. Costa Rica is anticipated to be the first (other than the US, of course) to come on board the Protocol and once they join perhaps there will be a domino effect with the other member countries.