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.
Showing posts with label Registered Community Design. Show all posts
Showing posts with label Registered Community Design. Show all posts
21 October 2015
6 December 2013
OHIM's new website
So OHIM has a new website (but this link might not load!) which launched on Monday.
It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?
For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.
E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.
There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.
Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.
Hopefully their techies will get the systems up and running as intended soon.
You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.
It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?
For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.
E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.
There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.
Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.
Hopefully their techies will get the systems up and running as intended soon.
You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.
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
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.
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.
 |
| Liverpool's historic Anfield home but for how long? Designs for a new stadium are registered with OHIM |
Perhaps interestingly given the tribal nature of football, a very cursory check has 12 of the 33 featured clubs using a representative based in another city. Furthermore, two sets of city rivals use the same representative, although the likelihood of disputes in the trade mark arena are far less than on the football field. Two of the 33 represented themselves directly before the OHIM. Is this a surprisingly low number given the in-house legal expertise these clubs often have?
The statistics would put Chelsea top of the European league - perhaps apt given they are the current champions of Europe. As a non-Chelsea fan, I have to admit to hoping a team with a smaller IP portfolio has a successful season ahead!
 |
| Volksparkstadion: Home of Hamburger SV and 4 CTMs |
Trade
Mark Owner
|
City,
country
|
No.
of CTMs
|
No.
of RCDs
|
No.
of IRs
|
Total
|
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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