Journey to the East

My blog now takes a look at trade mark protection across Asia, the world's largest continent that contains 60% of the world's population.

There is much cross over between Europe and Asia and so there will be some duplication from a previous blog on Europe.

The Madrid Protocol is not as extensive at protecting trade marks in Europe as it is in Asia, but it is nevertheless a useful tool and is more extensive than in Africa or the Americas.

India is hopefully not far away from joining as the Trademarks Amendment Bill, 2009 has been passed by both Houses of Parliament. It is now down to the Indian Government to accede to the Protocol.

Armenia, Azerbaijan, Bahrain, Bhutan, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam make up the current Madrid Protocol members in Asia.

Of these countries, Bhutan is a Common Law country but I cannot see any reflection of its Madrid Protocol membership within its Industrial Property Act of 2001. This puts the enforceability of a Bhutanese designation into question. Readers might be aware of similar issues faced in Africa.

Oman introduced legislation in 2008 to allow for the recognition of International Registrations.

The Democratic People's Republic of Korea ("DPRK") - or North Korea to most of us - is currently under UN sanctions and that of national governments. Banks in the UK, and I believe in the US and elsewhere, refuse to transfer funds to the DPRK. With respect to Madrid applications the official fees would be passed to the DPRK Government direct and I have enquired with WIPO whether they have put a stop to this (especially as it is a UN agency). Ironically, given WIPO is currently undertaking a survey on things such as customer service, a response to my query is still awaited! If you have any need to register in the DPRK - nationally or via Madrid - do be careful not to breach any sanctions that are in place. Provisional Refusals to Madrid designations can be issued willy-nilly which will require the appointment of a local agent.

The Cooperation Council for the Arab States of the Gulf has its own Patent Office, but this does not manage trade mark rights which continue to be handled nationally in the member states: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. (Bahrain and Oman can be included in a Madrid Protocol filing, however.)

The Association of Southeast Asian ("ASEAN") nations have commitments towards intellectual property rights but there is no regional registration possible. Therefore, separate applications are required in Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam. (Singapore and Vietnam can be included in a Madrid Protocol filing, however.)

Commitments towards IP harmonisation in the ASEAN are not exactly moving at a rapid pace and there are large differences between the developed law of Singapore with that of Laos, for example. Myanmar still operates a Cautionary Notice system.

The Maldives and Timor-Leste also represent Cautionary Notice jurisdictions within Asia.

National filings are the course of action in the remainder of the continent: Afghanistan, Bangladesh, India, Iraq, Jordan, Lebanon, Nepal, Pakistan, Sri Lanka and Yemen.

In Iraq, the autonomous Kurdistan Region operates its own Trade Marks Office and it is possible to "confirm" Federal registrations in the local Kurdistan Register. This seems desirable particularly whilst the Kurdistan Region enjoys greater stability than the rest of Iraq and the Trade Marks Office in Baghdad is not known for its excellent record keeping.

There are also a handful of partially recognised states within Asia. Abkhazia began operating its own Trade Marks Office quite recently. Also within the Caucasus region lie the de facto independent states of Nagorno-Karabakh Republic ("NKR") and South Ossetia. I am advised by the Ministry of Economy in NKR that they recognise Armenian registrations. Kindly note that de jure this territory is a part of Azerbaijan; even Armenia does not recognise it officially. As for South Ossetia, there is a "Committee for Patent and Trademark" which I believe is exploring the opening of an Intellectual Property Office as in Abkhazia, but the situation is unclear at the moment. With a small population and undoubtedly higher priorities, I would not anticipate any developments in this regard soon unless they are supported by Russia. Note that western governments, as is the case with Abkhazia, consider South Ossetia de jure a part of Georgia.

The northern third of the island of Cyprus is declared as the Turkish Republic of Northern Cyprus, recognised only by Turkey. It has its own Trade Marks Office. The island of Cyprus also contains two military bases of the United Kingdom, the Sovereign Base Areas of Akrotiri and Dhekelia. (Greek) Cypriot trade mark law is mirrored and, with respect to this article being specific to Asia, a Madrid Protocol designation of Cyprus should provide protection.

Palestine has two separate systems for registering trade marks reflecting its non-congruent territory, one being in the West Bank and the other in the Gaza Strip.

Taiwan is not recognised by many countries in official diplomatic circles, but "cultural offices" nurture bilateral relationships, for example, the British Trade & Cultural Office. Taiwan operates its own separate trade mark system from mainland China. The same is true for the two Special Administrative Regions of China, Hong Kong and Macao. Under the "One country, two systems" principle, Hong Kong and Macao maintained their separate Trade Marks Offices following their return to China by the United Kingdom and Portugal respectively.

Last but not least, there are some small territories in the Indian Ocean that constitute a part of Asia. Christmas Island and Cocos (Keeling) Islands form territories of Australia and Australian trade marks cover all Australian territories; there is specific mention of Christmas Island and Cocos (Keeling) Islands in the Australian Trade Marks Act 1995. It is possible to designate Australia in a Madrid Protocol application.

The British Indian Ocean Territory ("BIOT") provides protection automatically for UK trade marks in accordance with BIOT Ordinance No. 9 of 1984. I cannot locate this legislation on-line and so cannot see if it is anticipatory enough that it could be interpreted as allowing for protection of Community or International Trade Mark registrations. For the avoidance of doubt, a United Kingdom National registration would be required. This territory, despite being British, would be more of interest to American brand holders popular with US service personnel as the only inhabited island, Diego Garcia, is a military base. The islands have a controversial recent history in that the native inhabitants were involuntarily removed and there have been a number of court cases involving them in recent years.

The number of trade mark applications required to cover Asia is therefore 32 (plus some Cautionary Notices):

1. A Madrid Protocol application designating Armenia, Australia, Azerbaijan, Bahrain, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam

2. National trade mark applications: Abkhazia, Afghanistan, Bangladesh, Bhutan, Brunei, Cambodia, Gaza Strip, Hong Kong, India, Indonesia, Iraq, Jordan, Kurdistan Region, Kuwait, Laos, Lebanon, Macao, Malaysia, Nepal, Pakistan, Philippines, Qatar, Saudi Arabia, Sri Lanka, Taiwan, Thailand, Turkish Republic of Northern Cyprus, United Arab Emirates, United Kingdom (to cover British Indian Ocean Territory), West Bank and Yemen

3. Cautionary Notice publications in Maldives, Myanmar and Timor-Leste

Whilst considerable more than is required in Europe, it is the half the amount of Africa and North America combined, two continents which collectively have only 40% of Asia's population.

Got a CTM, got Europe?

I am sure you know the answer to this question but forgive me for sucking you in with a sensationalist headline!

This blog will explore obtaining trade mark protection across the whole continent. It will travel (although not literally) to every corner of this diverse but compact continent.

The first thing is to define Europe itself. This isn't particularly easy, but let's take Wikipedia as our guide.

It's absolutely clear that most trade mark owners do not need to cover the whole of Europe. We will leave it to the commercial priorities of each trade mark owner/adviser to determine where protection is and is not required.

My inner geek means I can visualise a map of Europe (and other continents) in my head but those of you without this "skill" can see a country's location on the Wikipedia article.

We will approach this from the angle of a non-European. In our usual attempts to be cost effective, we will look at it from the perspective of a Madrid Protocol compliant applicant.

The European Union is the key jurisdiction here, although there's also the significant emerging growth market of Russia which we will come to.

The European Community can be designated in a Madrid Protocol application. Speed is a practical disadvantage to taking the Madrid route and you may consider it money well spent filing through the "traditional" Community Trade Mark route. Nevertheless, through Madrid is possible.

The next countries are those that are a part of the European Economic Area ("EEA") but not part of the European Union. In basic terms, these countries benefit from the EU's free trade but do not have a direct say in how it functions. Norway is the biggest member and it does come as a surprise to some people that this is not part of the EU; referenda on joining in 1972 and 1994 resulted in "no" votes. Iceland (which has applied to join the EU) and Liechtenstein are the other members of the EEA. All three can be designated in a Madrid Protocol application.

Switzerland can also be designated in a Madrid Protocol application. Whilst not technically part of the EEA, bilateral agreements between the Swiss and the EU make the relationship very close. There is no physical border. When I lived in the north west of Switzerland, I could take a walk to both France and Germany with no fuss, quite a surreal experience for someone from an island nation.

The EU will welcome its 28th member on 1 July 2013 with the accession of Croatia. In the meantime, Croatia can also be included in a Madrid filing.

The EU candidate countries can also be designated within Madrid: Macedonia, Montenegro and Turkey. Applications have also been submitted by Albania and Serbia and likewise these countries can be designated in a Madrid filing. Further, Bosnia-Herzegovina, identified by the EU as a possible future member, can also be included in a Madrid filing.

Likewise, two of the microstates of Europe with economies closely linked to EU members can be included in a Madrid filing, namely, Monaco and San Marino. Jersey and the Isle of Man, crown dependencies of the UK, are automatically covered by a Community Trade Mark.

Russia can be included within a Madrid application as can other former Soviet republics. As far as Europe is concerned this can also include: Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Moldova and Ukraine.

That's nice and easy! Around 99.9% of Europe covered by a single Madrid filing (or by two filings, a CTM and Madrid). That leaves 0.1% that could be potentially left behind. They may not be commercially important to everyone, but incorrect assumptions that they are already covered are easily made.

The UK's third crown dependency is the Bailiwick of Guernsey. As the UK is largely responsible for foreign affairs it cannot sign up to international agreements like the Madrid Protocol itself. Its legislation for trade marks is independent and a local application can be filed. However, it is possible to claim priority on the application form.

Gibraltar is arguably covered by a CTM registration but as the territory has not amended local legislation to reflect this, relying on this would be considered risky. The surest form of protection is obtained by extending a United Kingdom registration to Gibraltar.

Andorra is situated in the Pyrenees mountains between Spain and France. For obvious reasons it has adopted the Euro currency. It maintains a purely independent trade mark registration system, which despite being relatively new, contains no provisions for international agreements like the Madrid Protocol although it is possible to claim priority based on reciprocal arrangements.

The Faroe Islands, a constituent country of the Kingdom of Denmark, are not a part of the European Union and therefore not covered by a Community Trade Mark. They do not operate a separate Trade Marks Office and instead protection is provided by a Danish national registration. However, note the same protection is not accorded to an International Registration designating Denmark as Denmark's membership of the Madrid Protocol specifically excludes the Faroe Islands.

It is more straightforward with other Nordic possessions within Europe. Svalbard, whilst not a part of the EEA, is subject to Norwegian laws including those related to trade marks. The Åland Islands are covered by Finnish laws, inclusive of protection of Community Trade Marks.

The situation with the Vatican City State is somewhat ambiguous. The Lateran treaties between Italy and the Vatican provided for automatic protection of Italian trade marks. However, this was under the Italian Trade Mark Law of 1929 which has since been superseded. As the Vatican is not within the EU, it could be unwise to rely on a Community Trade Mark, but Italy was already a member of the Madrid Agreement in 1929 so I would anticipate International Registrations designating Italy would be held in the same regard as Italian national registrations. Covering Italy would mean that San Marino does not require separate protection; each country recognises trade mark rights from the other. However, the additional fees for including San Marino are relatively incremental and it seems sensible to include separately.

Europe contains a handful of partially unrecognised states. Kosovo is the most high profile. It is yet to join the UN under threat that any application will be vetoed by Russia or China and, as such, cannot join the Madrid Protocol. A national application is therefore required. Priority claims are accepted.

Turkish or Northern Cyprus - formally the Turkish Republic of Northern Cyprus - is recognised only by Turkey. Despite Cypriot accession to the EU there is at least tacit recognition that it does not cover the Turkish controlled northern third of the island. An independent Trade Marks Office exists and due to Cyprus's history as a colony of the UK, the law is British influenced. British influence is also maintained on the island of Cyprus with the holding of two military bases, the Sovereign Base Areas of Akrotiri and Dhekelia ("SBA"). (Greek) Cypriot trade mark law is mirrored in these meaning a Community Trade Mark should provide protection and I understand this to be the case based on the SBA's Trade Mark Ordinance 21/02.

In the former Soviet Union, the Pridnestrovian Moldavian Republic ("PMR") (often Transnistria for short) has operated its own Trade Marks Office for some time. The international community recognises the PMR as de jure a part of Moldova. Abkhazia - see my previous blog - opened an Office fairly recently. That leaves Nagorno Karabakh Republic ("NKR") and South Ossetia. I am advised by the Ministry of Economy in NKR that they recognise Armenian registrations. Kindly note that de jure this territory is a part of Azerbaijan; even Armenia does not recognise it officially. As for South Ossetia, there is a "Committee for Patent and Trademark" which I believe is exploring the opening of an Intellectual Property Office as in Abkhazia, but the situation is unclear at the moment. With a small population and undoubtedly higher priorities, I would not anticipate any developments in this regard soon unless they are supported by Russia. Note that western governments, as is the case with Abkhazia, consider South Ossetia de jure a part of Georgia.

An applicant should consider any negative implications of registering trade marks and trading in countries unrecognised by their own country's government.

I should add that there are overseas territories of some European countries that lie outside of Europe not discussed in this blog.

The conclusion and how many filings would "Europe" require at most? 10 or 11.

• European Community filing (if budget allows otherwise jump to 2 and include there)
• Madrid Protocol filing designating: Albania, Armenia, Azerbaijan, Belarus, Bosnia-Herzegovina, Croatia, Georgia, Iceland, Italy (to cover Vatican City State), Kazakhstan, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Russia, San Marino, Serbia, Switzerland, Turkey, Ukraine
• 9 x local filings: Abkhazia, Andorra, Denmark (to cover the Faroe Islands), Gibraltar, Guernsey, Kosovo, Pridnestrovian Moldavian Republic, Turkish Republic of Northern Cyprus, United Kingdom (as basis for application in Gibraltar)

How much would all this cost? Perhaps not as much as you may imagine. Official fees for a one class Madrid Protocol application would amount to CHF4978 or roughly US$5420, or including the European Community and it's CHF6089 or roughly US$6630. You will have your local IPO's handling fee on charge of this. If you're stuck then we can help you out.

For the other filings you will need to work with associates and, of course, my firm - and I am sure other firms including existing contacts that you have - would be pleased to quote you on fees for any of these.