Season's greetings!

To our Readers, Clients, Colleagues, Friends and Associates,

As we approach the holiday season, I’d like to wish you all a Merry Christmas and a happy and healthy New Year.

Instead of sending Christmas cards, we are making a small donation to Oxfam this Christmas to help with their continuing efforts in fighting poverty worldwide.

Please do not hesitate to get in touch in 2016 should you require any support with trademarks or registered designs.

Happy holidays!

UK Registered Designs - online filing for all filing routes - and other bits

The Intellectual Property Office in the United Kingdom recently introduced an online tool for the filing of UK national registered design applications.

I blogged over two years ago on the online filings of designs when the UK was certainly not alone in not offering an online service. The UK system is new and not yet as developed as I imagine it will become e.g. it does not support priority filings which must still be made by post.

Ignoring any unregistered rights that can persist, this now means design applicants have three (online) routes to protect their designs to the United Kingdom:

1. National UK application
2. Registered Community Design application covering the 28 member states of the European Union including the UK
3. International Design application through the Hague System designating the European Union

What route is preferable will depend on whether a business has interest in protecting their design nationally, across the EU, or in other states that are also a part of the Hague System, or to a handful of jurisdictions with a link (historical or current) to the UK.

There has been much fanfare that Japan, Korea and the US have joined the Hague System relatively recently. These are countries with different design regimes than Europe. I have had to temper clients' enthusiasm that they could now get easy and cost-effective design protection in such countries. It's not going to be quite as straightforward as some circles have made it out to be. For example, the Marques Class 99 blog has explained how the task of claiming priority (which should be a simple formality) is complex and expensive, meaning designating these countries in an International application may be a false economy; i.e. you may as well just file nationally from the start (see 'Priority problems - parts 1 and 2 from 13 October).

Incidentally, the UK is likely to accede to the Hague System in its own right in due course. As I've commented on the SOLO IP blog, I'm not convinced this brings much to the table. However, it would be beneficial if the UK decides to leave the European Union.

The International Design system is useful for obtaining protection to mostly other European countries if protection beyond the EU is required. Iceland, Liechtenstein and Norway - which along with the EU members make up the European Economic Area - can be covered, as can Switzerland.

I've blogged before on the usefulness of a UK National Registered Design to foreign shores. These benefits are highly unlikely to be extended to designations of the UK in a Hague International registration (when it becomes possible to designate the UK).

This is because protection in the overseas jurisdictions arises from legislation enacted locally (and usually a long time ago). To provide protection of a Hague designation of the UK will likely require local legislation to be amended and, to be frank, if this were to happen it more likely independent design legislation would be enacted and a 'link' to the UK ended.

Whether National, Community or International (or a combination thereof) is preferable, official fees for all three filing routes are not expensive.

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.

Hague movements, Brunei joins

After a quiet 2013 in the international world of designs comes some news from WIPO of the accession of Brunei to the Hague System for the International Registration of Industrial Designs.

It will be possible to designate Brunei in a Hague application from 24 December 2013.

As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.

Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.

For now though, welcome aboard to Brunei.

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

I'll now start a regular feature on intellectual property in the Caribbean. I'll use the definition of the Caribbean provided by Wikipedia and supplement it with Belize, Guyana and Suriname. As these three countries are not officially Spanish-speaking they are more often associated with the Caribbean than they are with Central America or South America.

View Larger Map

It is easy to think of the Caribbean as paradise holiday islands in the sun, which can be true, but it is a diverse region containing high income territories such as the Cayman Islands and the British Virgin Islands to Haiti, often considered the "poorest country in the Western Hemisphere", and communist Cuba.

This is a region where lots of IP legislation has been modelled on that of the United Kingdom, and many British firms have good contacts in this part of the world. 12 of the independent Caribbean jurisdictions have a British colonial past, and five remain British overseas territories. However, do not rely solely on the UK Intellectual Property Office's advice contained on their website. I have found that this contains errors, particularly with respect to designs. I brought these to their attention when I wrote that blog post but it seems as though they are not in a rush to amend these pages.

The Caribbean contains three independent nations that can also be put into a Latin America bracket: Cuba, the Dominican Republic and Haiti.

I will not include the French overseas departments of Guadeloupe and Martinique or the overseas collectivities of St Barthélemy and St Martin as these (except St Barthélemy) are covered by French and Community Trade Marks (including International designations). Inhabited Caribbean islands belonging to Colombia, Honduras, Mexico, Nicaragua and Venezuela will also be excluded.

This will leave two insular areas of the United States: Puerto Rico and the US Virgin Islands, and finally the Dutch Verwantschapslanden (kindred countries): Aruba, Bonaire, Sint Eustatius and Saba, Curaçao and Sint Maarten.

To avoid any bias which I could have - and I have been lucky enough to visit three of the region's beautiful islands - I will approach this in alphabetical order:

• Anguilla
• Antigua and Barbuda
• Aruba
• Bahamas
• Barbados
• Belize
• 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

Bermuda is omitted here as it is not a Caribbean country; it is actually located closer to Canada. However, it is an associated member of the economic group the Caribbean Community (CARICOM). Furthermore, Britain's second oldest remaining colony (after Bemuda), St Helena is often wrongly assumed to be with the other "Saint" islands in the Caribbean. It is very remote being located in the South Atlantic Ocean; Africa is the usual continent it is assigned to.

Nevertheless, if there is time I will also take a look at Bermuda and St Helena. In the meantime, stay tuned for 'Episode 1: Anguilla' next week.

As my practice concentrates on trade marks and designs I will focus on these IP rights in the main, but being able to handle extension of UK patent rights where this is a purely administrative task, I may touch on these too.

Hague happenings

The Hague System for the International Registration of Industrial Designs does not compete with its trademark counterpart under the Madrid System.

There are some fairly obvious reasons for this:

1. In the "hierarchy of intellectual property" designs do not sit as high up as patents or trademarks.

2. The country scope of the Hague System is not as comprehensive as the Madrid System.

3. The confusion with - and to a certain extent non-compatibility - of the Hague and Geneva Acts of the Hague System.

The value of designs is expanding, as I have previously blogged, and the number of registered designs is increasing.

The country scope of the Hague System is far from comparable to the Madrid System for trade marks.

Europe is widely covered by Hague - the EU being a member making a notable contribution here. Africa is a patchwork of members and non-members (as it is also with respect to Madrid) with OAPI membership noteworthy. However, the membership barely touches Asia or the Americas let alone Australia at all.

Hague membership sits at 60 members. However, this is a bit misleading as 15 are a party to the Hague Act only and 45 are a party to the Geneva Act. For those of you with more exposure to trade marks, you can align this with the Madrid Agreement and the Madrid Protocol. Similar to how the Madrid Agreement is being phased out (with just Algeria being a member of the Madrid Agreement but not the Madrid Protocol), it seems the aim of WIPO to replace the Hague Act with the Geneva Act; a previous Act, the London Act is already "frozen".

It is complicated a bit further in that some of the members of the Hague Act only are member states of the European Union or of OAPI; with the EU and OAPI being members of the Geneva Act. Applicants from these countries can take advantage of both the Hague Act and the Geneva Act (using different entitlements).

Expansion of the Hague System is arguably less of a priority for IPR owners. Designs are often protected in a home jurisdiction only, as WIPO's statistics for 2010 seem to evidence. 77% of direct applications for Registered Community Designs were by EU applicants in a total of 76,865 filings. In the same period the EU was designated in an International Hague Application on only 3,512 occasions.

When the UK Government examined the EU's plan to accede to the Hague System it came out in support but against a simultaneous application to join it at a national level. It was asserted that the majority of IPR holders that sought design registration outside of the UK would need it in the EU anyway.

The figure for Hague designations of Switzerland is similar to that of the EU. Conversely, this figure is higher than the number of applications filed directly to the Swiss Federal Institute of Intellectual Property. This does suggest more regular use of the Hague System by Swiss applicants to protect in their home country and the EU.

New joiners tend to join the Geneva Act. Of the 15 Hague Act only countries, only four (Belize, North Korea, Morocco and Suriname) do not also have effective Geneva Act membership through being a part of the EU or OAPI.

Of these, Belize, as a Common Law country, should amend local legislation to reflect their membership but I cannot see anything in their Industrial Designs Act - Cap. 254 regarding this and would therefore have doubts concerning the enforceability of an International Registration in Belize.

North Korea faces stringent UN sanctions and most banks in the West will refuse to transfer funds there. Use of the Hague System circumnavigates this somewhat (as official fees are transmitted to WIPO) but potential applicants should be cautious and I would consider avoiding designating North Korea, even if it is possible to do so.

For Geneva Act qualifying only applicants, Suriname at the top of South America also cannot be included. The same applies for Morocco for the time being at least, but according to my sources at WIPO this country is moving towards Geneva Act accession.

The Republic of Korea - for the avoidance of doubt, that's South Korea - is expected to provide notable Asian presence with its expected accession to the Hague System. Over 57,000 design applications were filed in South Korea in 2010 which makes it a considerably large design filings country. Internal politics - an election is scheduled for later this year - have slowed the accession proceedings for the time being.

China and Japan have also been mooted as future members but this could be over enthusiasm from WIPO officials. During 2010, a humongous 421,273 design applications were filed in China (and it's not often I get to use the word 'humongous' in an IP blog!).

The United States have also been suggested as future members; I'm certainly aware that they have an upcoming election but more in the dark about any possible Hague membership application.

Of the current members, do be careful in designating Ghana for the same reason as Belize above. I cannot see amendments to Ghana's local law to allow for the enforceability of Hague International Designs. Incidentally, this is the same situation with respect to the Madrid Protocol and Ghana.

The situation in Namibia is ambiguous. Constitutionally Namibia should recognise the international treaties it has become a party to, but it has yet to implement specific legislation catering for Hague designs. With its history tied to neighbouring South Africa, it has a mixed Civil Law and Common Law system.

The other member countries are Civil law countries, which take into account international obligations. This includes Rwanda, which has a legal system derived from Belgian Civil law, although is now a part of the Commonwealth of Nations.

The Hague System languishes behind the Madrid System but it provides a very cost effective way to obtain design protection across Europe (beyond the EU). The addition of manufacturing powerhouses such as China and South Korea can only see its stature grow as a major commercial player could add momentum to a membership increase.

WIPO's own 2012 report on the Hague System, containing statistics and pretty graphs, was issued in May.

Football clubs and intellectual property rights

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

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

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

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

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

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

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

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

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

Volksparkstadion: Home of Hamburger SV and 4 CTMs

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

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