Those managing International trade mark registrations may be pleased to note of new provisions for Division and Merger that are being introduced by WIPO from February 2019.
This will give greater flexibility to International Registrations. Division, in particular, has been a disadvantage of International Registrations over (some) National registrations.
Division
As a recap, division can occur where there are objections to some of the classes in a multi-class application, the classes with objections can be transferred to a divisional application and be dealt with later. This allows the acceptable classes to move forward without delay. It can also be used to divide goods/services within a single class, although this is less common.
Division will now be possible for individual countries designated in an International Registration, provided division exists within the national law. Countries can opt out of accepting requests for division and/or can also notify WIPO of their incompatibility with the national law.
There will be a specific form for requesting division, a Form MM22. Unusually, this form is not to be filed with WIPO but with the National Office of the designated country in which you wish to request division. Currently, all WIPO forms are filed either directly with WIPO and/or through the Office of origin.
There will also be a fee due to WIPO of 177 Swiss francs. This can be paid through a current account held with WIPO or by bank transfer. Presumably, it would also be possible to not pay the fee and wait for an Irregularity Notice and then pay the fee by credit card through the E-Payment Service, although this would add delay.
As WIPO mention, the National Office may examine the request for division of an International Registration to ensure that it meets the requirements in their law before presenting it to WIPO. The Office may also require the payment of a fee, directly to them, different from the fee due to WIPO. It should also be mentioned that division is likely to be happening in foreign countries and therefore you are also likely to incur professional fees of a local agent.
Alternatively, you may be handling a specific designation of an International Registration on behalf of a client. For example, if you are a UK practitioner and have been entrusted with only the UK designation, then you would be making the request for division of an International Registration to the UK Intellectual Property Office ("UKIPO"). The UKIPO currently has a form for requesting division of a national application - a Form TM12 - which carries a fee of £100. I anticipate this fee will also apply to requests for division of an International Registration and perhaps the UKIPO may produce their own Form MM22 with a more similar look and feel to their Form TM12.
It is not clear if, for example, the UKIPO would also, on request, take the WIPO fee from a UKIPO deposit account and pass to WIPO, like they can do with new International applications filed through them as Office of origin.
Once division has taken place, WIPO will create a new International Registration (covering just the one designated country) - I would guess with the same number and a letter suffix.
Central Attack
The divided part of an International Registration will retain the same base mark. If this is lost (e.g. through Central Attack) within the first five years of registration then both the original International Registration and the divided International Registration will be cancelled.
Merger
The new regulations will allow for the merger of International Registrations under two circumstances:
1. Merger of international registrations resulting from the recording of a partial change in ownership; and
2. Merger of international registrations resulting from the recording of division
The second is clear. Presuming you overcome the issues with the divided part then you can merge it back into the main International Registration it was divided from. You'll then have just one registration to manage, renew and maintain.
The first is not entirely clear to me. If you record a partial change in ownership of an International Registration, this will create a new International Registration for the part where ownership has been partially changed. It seems therefore that if the two (or more) International Registrations subject to a partial change in ownership then come to all be back in the same ownership at a later date that they can then be merged together. If so, I do not see if this would be used much in practice.
There will be new WIPO form for mergers, a Form MM24, and it will be possible to file them direct with WIPO. No fee will be payable.
Countries can opt out of accepting requests for merger and/or can also notify WIPO of their incompatibility with the national law.
These steps will add flexibility to the International system, in particular division. Nonetheless, the relationship between WIPO, the Office of origin and the National Offices of designated countries is not always well understood and the addition of extra forms may prove to be more beneficial to more experienced users of the International system.
Showing posts with label WIPO. Show all posts
Showing posts with label WIPO. Show all posts
20 May 2016
Delays at WIPO
A few days ago WIPO advised of increased delays following an update to its IT systems.
WIPO is not known for its streamlined operations compared to other offices such as the EUIPO or the UK's Intellectual Property Office, but it now seems there will be further delays with International trademark applications and transactions.
Madrid Real-Time Status is a handy tool provided by WIPO, but there's been little movement on incoming procedures on some of the cases I have been monitoring for a month or more now.
WIPO tries to reassures that,
It would appear the upgrade in IT systems will be beneficial in the long run and hopefully see an increase in the timeliness of action by WIPO.
WIPO, if desired by member states, may also look to implement a 'Performance Framework'. This could involve information on the performance of WIPO being published on a regular basis and would include information on pendency rates of all Madrid transactions. This would be another welcomed step with users who are currently left frustrated by slow movement at WIPO and not what many have come to expect of a modern Intellectual Property Office in 2016.
Things will hopefully be improving.
WIPO is not known for its streamlined operations compared to other offices such as the EUIPO or the UK's Intellectual Property Office, but it now seems there will be further delays with International trademark applications and transactions.
Madrid Real-Time Status is a handy tool provided by WIPO, but there's been little movement on incoming procedures on some of the cases I have been monitoring for a month or more now.
WIPO tries to reassures that,
Deadlines for responding to irregularity letters are calculated as of the date of communication of the letters in question. Their late communication therefore has no bearing on the time available to respond.
It would appear the upgrade in IT systems will be beneficial in the long run and hopefully see an increase in the timeliness of action by WIPO.
WIPO, if desired by member states, may also look to implement a 'Performance Framework'. This could involve information on the performance of WIPO being published on a regular basis and would include information on pendency rates of all Madrid transactions. This would be another welcomed step with users who are currently left frustrated by slow movement at WIPO and not what many have come to expect of a modern Intellectual Property Office in 2016.
Things will hopefully be improving.
12 November 2015
Misleading invoices - a small win for the UK Intellectual Property Office
The UK Intellectual Property Office was pleased to announce this week, "IP scammers face record financial liability".
Those involved in the business of maintaining intellectual property rights will be familiar with the unsolicited letters that are sent to proprietors with exorbitant fees for maintaining these rights, or for putting these rights into a "directory". Furthermore, many of these requests look like they come from official Intellectual Property Offices, at least to many IP owners who are not familiar with dealing with Intellectual Property Offices on a regular basis.
Various Offices around the world have made it an important task to educate their customers about these organisations, for example, see the warnings from the UK, OHIM, the USA, Norway and New Zealand, and also some examples of the actual letters from WIPO.
The judgement handed down by the Intellectual Property Enterprise Court (and found here) orders the defendant, Intellectual Property Agency Limited and its sole director, Harri Mattias Jonasson, to pay £500,000. This is maximum this court can impose.
Bearing in mind the defendants made a profit of over £1.1 million, this is really only a small win for the Intellectual Property Office, and probably an even smaller one for those that have been duped into paying such inflated fees.
There is a lack of sympathy in some quarters for IP owners who go ahead and pay "silly" money. This is a little unfair in my view. These legal steps, added to continued awareness by Intellectual Property Offices and IP professionals alike, will hopefully go some way to making these businesses less lucrative.
However, it's flabbergasting that a firm can make such significant profits on the basis of UK rights alone, and I dread to think how much money this "industry" makes worldwide.
My own firm is very reasonably priced when it comes to UK and worldwide renewals. Perhaps we are missing trick (I say in jest). Those that have been duped, or could be in the future, will be pleased to know there are many firms out there who will provide a service tantamount to its value and who can also act as a barrier to the scammers.
Those involved in the business of maintaining intellectual property rights will be familiar with the unsolicited letters that are sent to proprietors with exorbitant fees for maintaining these rights, or for putting these rights into a "directory". Furthermore, many of these requests look like they come from official Intellectual Property Offices, at least to many IP owners who are not familiar with dealing with Intellectual Property Offices on a regular basis.
Various Offices around the world have made it an important task to educate their customers about these organisations, for example, see the warnings from the UK, OHIM, the USA, Norway and New Zealand, and also some examples of the actual letters from WIPO.
The judgement handed down by the Intellectual Property Enterprise Court (and found here) orders the defendant, Intellectual Property Agency Limited and its sole director, Harri Mattias Jonasson, to pay £500,000. This is maximum this court can impose.
Bearing in mind the defendants made a profit of over £1.1 million, this is really only a small win for the Intellectual Property Office, and probably an even smaller one for those that have been duped into paying such inflated fees.
There is a lack of sympathy in some quarters for IP owners who go ahead and pay "silly" money. This is a little unfair in my view. These legal steps, added to continued awareness by Intellectual Property Offices and IP professionals alike, will hopefully go some way to making these businesses less lucrative.
However, it's flabbergasting that a firm can make such significant profits on the basis of UK rights alone, and I dread to think how much money this "industry" makes worldwide.
My own firm is very reasonably priced when it comes to UK and worldwide renewals. Perhaps we are missing trick (I say in jest). Those that have been duped, or could be in the future, will be pleased to know there are many firms out there who will provide a service tantamount to its value and who can also act as a barrier to the scammers.
11 February 2014
The Protocol - Past, Present and Future
Trade mark professionals in the UK – and many in other countries – work with the Madrid Protocol on a daily basis. How different it once was.
Early expansion
US issues
The Madrid Protocol, with the UK among its first members, came into play on 1 April 1996. For most, this date is better known as the first day Community Trade Marks (CTMs) could be filed (or, more precisely, the earliest filing date CTM applications could be accorded). CTMs got filed by the bucket-load and have been popular from the start.
For the Madrid Protocol it was different, as many countries were slow on the uptake. This included those that were already members of the Madrid Agreement, which, until they were in the Protocol, were out of bounds for UK businesses.
Only a handful of Madrid Protocol applications were filed by UK companies in the early days. With the European Union (EU) easily covered by the new CTM, the majority were filed to designate China as most of the other members of commercial importance at this time were other EU member states. I can recall speaking to the UK Trade Marks Registry to check on the progress of an early application and being told: “We’ve only had three applications so far.” A recent check of ROMARIN shows a mere 11 active registrations originating from the UK registered between April and September 1996.
Over time some key countries have come aboard such as Australia, Japan, Korea, Russia, Singapore and the US as well as the EU itself. And, if it was not immediately popular, the advent of the Protocol proved a watershed moment in the Madrid system and the global registration of trade marks.
Early expansion
The Madrid Agreement had been operational since 1892, but primarily as a European continental club. Prior to 1948, the only non-European member was Morocco. The arrival of Vietnam, in 1949, marked the Agreement's expansion to Asia, although it would take another 40 years before it touched the Americas with the accession of Cuba.
With little prospect of further expansion in the same guise, particularly to common-law countries, the inflexibilities of the Madrid Agreement were ironed out in the Madrid Protocol and allowed the UK, US and others to come aboard. It has grown rapidly since.
This decade has seen a diverse expansion, both geographical and economical. There has been the accession of Colombia, India, Israel, Mexico, New Zealand, the Philippines, Rwanda and Tunisia. And Kazakhstan, Sudan and Tajikistan added the Protocol to their Agreement membership. Furthermore, the dissolution of the Netherlands Antilles in 2010 created three new Madrid jurisdictions: Curaçao, Sint Maarten and Bonaire, Sint Eustatius and Saba. Meanwhile, far removed from the sunny climes of the Caribbean, Denmark extended its Madrid Protocol membership to include Greenland.
Challenges, of course, remain. Is the requirement to have a home registration really needed these days? Direct filings with WIPO would make them operationally less cumbersome. The removal of the threat of “central attack” would bring less uncertainty to the table when using Madrid, and this is a concept less easily understood by owners of smaller trade mark portfolios.
WIPO suffers processing delays at the moment. Statements of grant were made mandatory, as many users were forthright on the importance of these. WIPO listened, but the increased numbers of these documents put them under pressure.
They should have little problem in coaxing civil servants from Member States to a tax-free salary in Switzerland should it need more staff. Although my criticism of WIPO’s recruitment would be that Government experience seems to be a prerequisite for employment, when professionals from industry or private practice could add a different perspective.
I must give praise where it is due, though, and the set-up of three dedicated teams of examiners at WIPO has left the organisation less faceless. Incidentally, Madrid Team 1 (madrid.team1@wipo.int (+41) 22 338 750 1) looks after applications originating through OHIM, and Madrid Team 3 (madrid.team3@wipo.int (+41) 22 338 750 3) is responsible when the UK is the Office of origin.
The development of on-line tools should also be welcomed and will improve operations.
US issues
The onerous maintenance requirements for US designations still present a problem. In the first term of registration there are likely to be three maintenance events, namely two Affidavits due (to the US Patent and Trademark Office) and one renewal due (to WIPO). The high number of Provisional Refusals in the US may have meant there were no cost savings in the original Madrid filing, but even if there were (for there being no need to engage US Counsel), the maintenance requirements for US Madrid Protocol designations are, at best, no cheaper than they would be for a national registration. It’s easy to see why some argue that the US has taken all the benefits of the Madrid Protocol for its own businesses, but is barely extending this back to other users of Madrid. A similar situation arises for designations of the Philippines.
Common-law countries, mostly in Africa, pose another problem when they have not amended their local legislation to reflect their Madrid membership. WIPO can seem oblivious to this, thinking once they have a member signed up, it is “job done”, but ultimately if you could not enforce an International Registration in, for example, Zambia, isn’t that country's membership worthless?
As for the future, it is easiest to speculate on the new joiners. Remaining in Africa, Zimbabwe has made legislative steps to ready itself for membership, but, as we saw with India, this does not necessarily mean they will be depositing their instrument of accession immediately. Being the home of the African Regional Intellectual Property Organization (ARIPO), Zimbabwe could play an important role on the continent and help in finding a way of linking ARIPO’s Banjul Protocol with the Madrid Protocol.
Malta, currently the only EU member not to have Madrid membership, could complete the EU jigsaw. We may also anticipate Algeria – the sole remaining member of the Madrid Agreement only – to accede to the Protocol, too. This may put to bed the Madrid Agreement and abolish Article 9sexies. This provision allows applications from member states of both the Madrid Agreement and Madrid Protocol to pay complementary and supplementary fees (rather than individual fees) when designating members that are also party to the Madrid Agreement and Madrid Protocol. They also get the advantage of a 12-month examination period. Those from Madrid Protocol-only countries, including the UK, can claim this is unfair.
The ASEAN states are scheduled to join the Madrid Protocol by 2015. Thailand is expected to come aboard soon, joining the existing members in ASEAN: the Philippines, Singapore and Vietnam. Malaysia has made legislative amendments to prepare for Madrid. For the other ASEAN states (Brunei, Cambodia, Indonesia, Laos and Myanmar) this timetable may be less realistic, although we may expect Brunei or Indonesia to make strides in this time, and new legislation is imminently anticipated in Myanmar.
The same is true with CAFTA-DR countries whose free trade agreement with the US stipulates Madrid Protocol membership. Costa Rica, the Dominican Republic, El Salvador, Guatemala, Honduras and Nicaragua are the members, with Costa Rica and the Dominican Republic considered the most likely to join up first.
Pockets of resistance
Pockets of resistance
Of some of the major markets currently outside of the Madrid family, resistance is strong in Canada, where local practitioners have lobbied their Government hard not to join.
Brazil and South Africa present some more positive vibes, although both realise they need to reduce examination backlogs to be able to cope with an influx of Madrid applications. They are making inroads into these backlogs, although not at the same rate as India.
Brazil faces another challenge because the local law stipulates Portuguese as the official language for all correspondence. This could be amended, but a change could present a linguistic burden on the local trade mark office. It is possible that Portuguese could become an official Madrid language – WIPO already provides some information in this language. However, there may be a reluctance to do this unless some dispensation can be reached that keeps a handle on translation costs (for example, only International Registrations designating Brazil are translated into Portuguese).
WIPO may also be wary. In 2004, Spanish was made an official language, but it has not been until the last year that Colombia and Mexico joined the Madrid club (Spanish-speaking Cuba and Spain were already members before 2004).
Making Portuguese an official language would be almost purely to lure in Brazil. Other Lusophone nations, such as Angola, Cape Verde and Timor-Leste, are not of commercial interest to as many businesses as Brazil (and Mozambique, Portugal and São Tomé and Príncipe are already a part of Madrid). Further, to digress somewhat, Portuguese could only be currently available as a first language for designations of the European Community and not (as is the case with English, French and Spanish) as a second language.
Some of the quirky mechanisms of the Madrid Protocol will continue to baffle some people and there are skills required to work with it, but it is clear that the Madrid Protocol is here to stay and will become increasingly prominent in the field of trade marks in years to come. It may get replaced with a new system in due course, but political wranglings may mean it is easier to amend the existing system than to start from scratch.
This article originally appeared in Issue 406 December 2013/January 2014 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.
This article originally appeared in Issue 406 December 2013/January 2014 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.
30 January 2014
Certified Copies
I admit that this might not be the most interesting or high brow of topics. However, it might help provide some useful information.
I've had the need to order some Certified Copies recently to support a priority claim in one instance, and to substantiate applications based on United Kingdom registrations. I was wondering how quickly other jurisdictions were able to issue these documents (and how expensive they are).
A Certified Copy ordered through OHIM on 27 November took a month to be received. To be fair, the document was sealed by OHIM on 18 December and it got caught in the Christmas mail backlog although I believe "three-to-four weeks" would be typical for OHIM to issue Certified Copies. Such documents cost €30 each in Official fees.
I've had the need to order some Certified Copies recently to support a priority claim in one instance, and to substantiate applications based on United Kingdom registrations. I was wondering how quickly other jurisdictions were able to issue these documents (and how expensive they are).
A Certified Copy ordered through OHIM on 27 November took a month to be received. To be fair, the document was sealed by OHIM on 18 December and it got caught in the Christmas mail backlog although I believe "three-to-four weeks" would be typical for OHIM to issue Certified Copies. Such documents cost €30 each in Official fees.
Certified Copies ordered through the UK IPO on 23 December were issued in early January. UK Certified Copies cost £20 each in Official fees for trade marks (£22 each for designs). I believe "one-to-two weeks" would be the typical time period for the UK IPO to issue Certified Copies. In my case, the original documents went astray in the post - a service which doesn't have 100% reliability and, from time-to-time, may need factoring in - and, therefore, it ended up being more than two weeks when my replacements arrived.
In Switzerland, Certified Copies can be ordered by e-mail at no charge and are issued in about a week. However, I believe the length of time for WIPO to issue a Certified Copy (Extract) is a lot longer. In fairness, I should mention that I have not ordered such a document from WIPO for some time (obviously they cannot be used as priority documents) but WIPO suffers from some delays in their other Madrid Protocol operations. The costs involved in obtaining a Certified Extract from WIPO are variable as the link shows.
It's been a longer time since I've ordered a US Certified Copy direct from the USPTO. Usefully, they now have an on-line ordering service. A Certified Copy to serve as a priority document would cost $15 in Official fees making them cheaper than both OHIM and the UK IPO.
It's been a longer time since I've ordered a US Certified Copy direct from the USPTO. Usefully, they now have an on-line ordering service. A Certified Copy to serve as a priority document would cost $15 in Official fees making them cheaper than both OHIM and the UK IPO.
If readers would like to share knowledge of their jurisdictions timelines and costs for obtaining Certified Copies then perhaps this would be of use to other readers. Particularly if they have a priority claim to substantiate and are wondering when their client is likely to be able to provide this document to them.
The good news is that many countries no longer require Certified Copies to support priority claims. They will typically say that it is at an Examiner's discretion to request a priority document though.
One of the benefits of the International system is that priority claims can be made without substantiation (i.e. needing to provide a Certified Copy or other proof).
Other Offices will take the view that if they can check the on-line Register of the priority claim country then they'll do this pro-actively to verify the priority claim. OHIM's new on-line filing tool is designed so this 'link' can be made by the applicant in the application.
OHIM also provide for the self-downloading of CTM Certified Copies from the on-line record of a specific case. A third party, such as a foreign Trade Marks Office, can then verify the authenticity of the document through OHIM's website by entering an 'Identification code'. I have learned recently that the Trade Marks Office in Saudi Arabia, a country where formalities are known to be complicated, accepts these documents from OHIM to support priority claims.
One of the benefits of the International system is that priority claims can be made without substantiation (i.e. needing to provide a Certified Copy or other proof).
Other Offices will take the view that if they can check the on-line Register of the priority claim country then they'll do this pro-actively to verify the priority claim. OHIM's new on-line filing tool is designed so this 'link' can be made by the applicant in the application.
OHIM also provide for the self-downloading of CTM Certified Copies from the on-line record of a specific case. A third party, such as a foreign Trade Marks Office, can then verify the authenticity of the document through OHIM's website by entering an 'Identification code'. I have learned recently that the Trade Marks Office in Saudi Arabia, a country where formalities are known to be complicated, accepts these documents from OHIM to support priority claims.
Needless to say, bureaucracy is still rife in some countries and original physical documents will be required. When they require legalisation this creates another headache. OHIM provide a useful service where they will undertake the legalisation up to the European Commission Representation (for this purpose this is the equivalent of a Ministry of Foreign Affairs). Nevertheless, if such a document (i.e. originating from OHIM) requires consular legalisation then this will need to be done in Spain. If you're not in Spain then you will likely want to get an agent in Madrid to assist. Dealing with foreign Consulates is not always an easy task even when you're based in the same country, let alone when you're not.
When making priority claims or applications requiring Certified Copies, it is sensible to be prepared for the hassle and costs that can be involved.
UPDATE: In Jordan, it takes 2-3 days for a Certified Copy to be issued.
UPDATE: In Jordan, it takes 2-3 days for a Certified Copy to be issued.
7 October 2013
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.
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.
25 September 2013
WIPO - Official fees
WIPO have recently issued Information Notice No. 29/2013 explaining how to pay official fees to them for registrations under the Madrid Protocol.
Those of you that deal with WIPO will know they can be a bit of bureaucratic organisation and the language of their Information Notice may be testament to this.
If you do not have a deposit account with WIPO - and many firms don't - then you will probably be required to transfer payment of official fees by bank transfer and this is why the Information Notice has issued. WIPO are regularly being short changed as users do not instruct their bank that they are to incur all the bank charges. This causes a headache and delay with WIPO and the user when it is necessary to request a second payment, which is usually fairly incremental.
If you have a deposit account with the UK Intellectual Property Office and you are filing a Madrid application through them as Office of origin then you can ask them to make the official fee payment (in Swiss francs) on your behalf and debit your deposit account. However, not many Offices of origin offer this service.
If you're based in Switzerland or Liechtenstein (or even in the Italian exclave of Campione d'Italia) then making payments in Swiss francs is not difficult. But most of us will not have a Swiss bank account.
Payment by credit card is not available at the time of filing Madrid Protocol applications because these are filed through an appropriate Office of origin and not WIPO directly. Nevertheless, I understand it is possible to wait for an Irregularity Notice to issue and then make payment by credit card through WIPO's E-payment tool. This is not exactly ideal as again it results in a delay.
WIPO also released their latest magazine 'Madrid Highlights' this week and this contained two fees related features.
Firstly, they will soon be launching a new on-line tool for filing Subsequent Designations with a credit card payment facility. This will not help with the initial filing of a Madrid application but I anticipate it making adding countries to an existing International Registration substantially easier - and hopefully quicker.
Their Madrid Tips section also explains some scenarios regarding the official fees payable for renewals. These can seem ridiculously complicated at times although if you can use WIPO's E-Renewal tool this should auto-calculate the correct fees for you.
Those of you that deal with WIPO will know they can be a bit of bureaucratic organisation and the language of their Information Notice may be testament to this.
If you do not have a deposit account with WIPO - and many firms don't - then you will probably be required to transfer payment of official fees by bank transfer and this is why the Information Notice has issued. WIPO are regularly being short changed as users do not instruct their bank that they are to incur all the bank charges. This causes a headache and delay with WIPO and the user when it is necessary to request a second payment, which is usually fairly incremental.
If you have a deposit account with the UK Intellectual Property Office and you are filing a Madrid application through them as Office of origin then you can ask them to make the official fee payment (in Swiss francs) on your behalf and debit your deposit account. However, not many Offices of origin offer this service.
If you're based in Switzerland or Liechtenstein (or even in the Italian exclave of Campione d'Italia) then making payments in Swiss francs is not difficult. But most of us will not have a Swiss bank account.
Payment by credit card is not available at the time of filing Madrid Protocol applications because these are filed through an appropriate Office of origin and not WIPO directly. Nevertheless, I understand it is possible to wait for an Irregularity Notice to issue and then make payment by credit card through WIPO's E-payment tool. This is not exactly ideal as again it results in a delay.
WIPO also released their latest magazine 'Madrid Highlights' this week and this contained two fees related features.
Firstly, they will soon be launching a new on-line tool for filing Subsequent Designations with a credit card payment facility. This will not help with the initial filing of a Madrid application but I anticipate it making adding countries to an existing International Registration substantially easier - and hopefully quicker.
Their Madrid Tips section also explains some scenarios regarding the official fees payable for renewals. These can seem ridiculously complicated at times although if you can use WIPO's E-Renewal tool this should auto-calculate the correct fees for you.
11 September 2013
Holiday season
August is Europe's traditional holiday season and is reflected with blogs where news to blog about dries up somewhat. Aside from some short jaunts to Germany, Switzerland, Yorkshire and God's own county of Hertfordshire, I have not been on a proper holiday (sun, sea and sangria-style).
I appreciate this is a bit of a 'filler' but I decided to check if any of our IP Offices around the world made a planned shut down. It would appear not.
Unsurprisingly, employees at the USPTO are only granted leave for Federal holidays, which for 2014 will look like this. This has been this way since the mid-late 1980s.
In the UK, where we complain about our lack of public holidays compared to our European cousins, the UK IPO is closed on one day less than the USPTO. Of course, staff will receive more annual leave than their American counterparts and our public sector is known for being generous with this.
In Geneva, home of WIPO, their public holidays are more extensive including many typical European and Christian holidays as well as the Muslim festival of Eid al-Adha and a purely local Geneva holiday.
There is an established Public Holiday Law in Japan which the Japan Patent Office follows. I was also interested to learn of Japan's 'Happy Monday System' whereby some holidays have been moved to a Monday to create a longer weekend. We have something similar in the UK, albeit without such a cool name, whereas in continental Europe if a holiday falls on a weekend it's tough, it won't be rolled over to the following Monday.
It will come as little shock to many that OHIM closes for the longest period of time - 18 days, with seven of these coming at Christmas and New Year. Being in Alicante on Spain's Costa Blanca, the weather isn't too bad either. For jobs at OHIM go here!
I hope readers of this blog enjoyed their holiday season. I hope I have more substantial things to blog about in the coming months.
I appreciate this is a bit of a 'filler' but I decided to check if any of our IP Offices around the world made a planned shut down. It would appear not.
Unsurprisingly, employees at the USPTO are only granted leave for Federal holidays, which for 2014 will look like this. This has been this way since the mid-late 1980s.
In the UK, where we complain about our lack of public holidays compared to our European cousins, the UK IPO is closed on one day less than the USPTO. Of course, staff will receive more annual leave than their American counterparts and our public sector is known for being generous with this.
In Geneva, home of WIPO, their public holidays are more extensive including many typical European and Christian holidays as well as the Muslim festival of Eid al-Adha and a purely local Geneva holiday.
There is an established Public Holiday Law in Japan which the Japan Patent Office follows. I was also interested to learn of Japan's 'Happy Monday System' whereby some holidays have been moved to a Monday to create a longer weekend. We have something similar in the UK, albeit without such a cool name, whereas in continental Europe if a holiday falls on a weekend it's tough, it won't be rolled over to the following Monday.
It will come as little shock to many that OHIM closes for the longest period of time - 18 days, with seven of these coming at Christmas and New Year. Being in Alicante on Spain's Costa Blanca, the weather isn't too bad either. For jobs at OHIM go here!
I hope readers of this blog enjoyed their holiday season. I hope I have more substantial things to blog about in the coming months.
18 July 2013
TMView gets stronger and stronger
Earlier this month the TMView grew with the addition of over 1.1 million new trade marks when the Registers of Croatia, Cyprus, Mexico and Norway were added to the system.
This follows the earlier announcement that Morocco was to be integrated with TMView.
Croatia joined the EU at the beginning of the month.
Cyprus - an EU member since 2004 - has a relatively small Trade Marks Register but it was known for needing manual searches so this is a very welcome addition.
Norway is outside of the European Union, but its membership of the European Economic Area means it is very closely linked to the EU economically.
Mexico becomes the first non-European country to "go live" in TMView and represents excellent news for global rights holders.
It leaves Greece as the only EU member state without its Trade Marks Register available on TMView. Neighbouring Turkey is slated to join the TMView project at some point in the future.
TMView is positioning itself well as a free go-to database for initial knock-out searches not just for the European Union but further afield too.
This follows the earlier announcement that Morocco was to be integrated with TMView.
Croatia joined the EU at the beginning of the month.
Cyprus - an EU member since 2004 - has a relatively small Trade Marks Register but it was known for needing manual searches so this is a very welcome addition.
Norway is outside of the European Union, but its membership of the European Economic Area means it is very closely linked to the EU economically.
Mexico becomes the first non-European country to "go live" in TMView and represents excellent news for global rights holders.
It leaves Greece as the only EU member state without its Trade Marks Register available on TMView. Neighbouring Turkey is slated to join the TMView project at some point in the future.
TMView is positioning itself well as a free go-to database for initial knock-out searches not just for the European Union but further afield too.
9 May 2013
Morocco to join "TMView" project
The TMView system has been a notable achievement driven by OHIM, as I have opined before.
OHIM have recently announced that Morocco will integrate with TMView. While the International Register is already incorporated within TMView and there are plans are to link this with WIPO's Global Brand Database, this does represent the first time that a non-EU country is to join the TMView project.
Over 106,000 Moroccan trade marks are already contained on the Global Brand Database and these should soon be available through TMView, which is arguably an easier to use tool.
Morocco did apply to join (what is now) the EU way back in 1987 but their application was rejected as membership is only open to "European states". Nevertheless, Moroccan-EU relations are strong and this small step is some evidence of this. Morocco often looks north to Europe; it is the only all-African state not in the African Union.
This development paves the way for other non-EU countries to come aboard TMView. Switzerland is probably at the front of the queue given it is already a part of another OHIM-led project, TMclass (recently rebranded from Euroclass) and already has an excellent on-line database available.
OHIM have recently announced that Morocco will integrate with TMView. While the International Register is already incorporated within TMView and there are plans are to link this with WIPO's Global Brand Database, this does represent the first time that a non-EU country is to join the TMView project.
Over 106,000 Moroccan trade marks are already contained on the Global Brand Database and these should soon be available through TMView, which is arguably an easier to use tool.
Morocco did apply to join (what is now) the EU way back in 1987 but their application was rejected as membership is only open to "European states". Nevertheless, Moroccan-EU relations are strong and this small step is some evidence of this. Morocco often looks north to Europe; it is the only all-African state not in the African Union.
This development paves the way for other non-EU countries to come aboard TMView. Switzerland is probably at the front of the queue given it is already a part of another OHIM-led project, TMclass (recently rebranded from Euroclass) and already has an excellent on-line database available.
22 April 2013
Irregularity Notices from WIPO - International Applications
I have sung the praises of WIPO's Madrid Highlights publication in the past (for example, see here).
Their latest issue and their first of 2013 has recently issued. It contains information collated over the previous three months, such as the notification issued by the Syrian Trade Marks Office.
I would like to bring attention to readers of this blog to the 'Madrid Tips - Practical Examples on the Implementation of the Madrid System' section. In this issue WIPO explore Rule 13 of the Common Regulations.
This relates to the WIPO Irregularity Notices they can issue regarding the classification of goods or services. These are somewhat unusual so if you do not have much experience of the system, or tend to file standard specifications (that are always acceptable) then WIPO's questions and answers could be quite useful for you in case you receive such an Irregularity Notice.
I copy WIPO's questions but have adapted the language of the answers to be (possibly) more user-friendly and less "WIPO-speak" in case this could be helpful. Of course, the original WIPO text can be found in the Madrid Highlights publication.
Whenever WIPO considers that the classification of goods and services in an International application is incorrect, it will notify the Office of origin (your Trade Marks Office, where you filed the International application) and inform the applicant (or representative).
However, the responsibility for remedying this irregularity lies with your Trade Marks Office, which may, within three months from the notification, make a proposal for remedying the irregularity.
Q1. I am the applicant of an international application. I have received an irregularity letter indicating that a term of the list of goods and services is too vague for the purposes of classification. The letter also states that the irregularity is to be remedied by the Office of Origin. What does it mean?
R1. This means that WIPO considers that a term used in the list of goods and services is not
sufficiently clear for the purposes of classification. When this happens, WIPO notifies your Trade Marks Office and informs you, the applicant (or representative). WIPO may suggest either a substitute term or the deletion of the term. Your Trade Marks Office may, within three months of the notification, make a proposal to remedy the irregularity.
Q2. Is any action required on my part as the applicant (or representative) of the international application concerned?
R2. There is no action required from you in this case. However, you, as the applicant (or representative), may communicate your views regarding the irregularity to your Trade Marks Office, or your Trade Marks Office may seek your views.
Q3. What options has the Office of origin to reply to the irregularity?
R3. Your Trade Marks Office may respond to the irregularity as follows:
If the new proposal is unacceptable to WIPO within the three-month time limit, there are two
possibilities:
R4. If your Trade Marks Office does not reply to the irregularity, there are two options:
R5. No! You may communicate your views regarding the irregularity letter to your Trade Marks Office, but you cannot respond to the irregularity directly to WIPO. The reply to the irregularity must be sent to WIPO through your Trade Marks Office within the prescribed time limit.
Q6. Will I be informed of the outcome of this procedure?
R6. Yes, where the irregularity is resolved and the international application conforms to the
applicable requirements, the mark is registered in the International Register and a certificate is
issued. Furthermore, the international registration is published in the Gazette and, for
information purposes, in the ROMARIN database. You will also be informed when a non-classified term is deleted due to a non-acceptable proposal or in the absence of a reply from your Trade Marks Office.
It should be clear that the responsibility of responding to these Irregularity Notices lies with your Trade Marks Office but it is important that these are not overlooked by applicants or their representatives.
As the gatekeeper of the Nice International Classification, WIPO take a strict view to where products and services are classified.
If an Irregularity Notice is issued, do not merely docket the deadline provided by WIPO for your Trade Marks Office to respond to them. It is suggested that you docket an earlier date so you can give input to your Trade Marks Office and they can take it into account when responding to WIPO.
You will also be familiar with how your Trade Marks Office operates. Are they organised? Are they pro-active? This will help you determine if you need to get in contact with them upon receipt of an Irregularity Notice to ensure your views are heard and so they respond in good time.
This is a quirk of the Madrid system. It can leave you scratching your head if you find yourself in the strange situation where you receive an Irregularity Notice (aka Office Action) yet you cannot respond to it. Hopefully this scenario is now more clearly explained.
Their latest issue and their first of 2013 has recently issued. It contains information collated over the previous three months, such as the notification issued by the Syrian Trade Marks Office.
I would like to bring attention to readers of this blog to the 'Madrid Tips - Practical Examples on the Implementation of the Madrid System' section. In this issue WIPO explore Rule 13 of the Common Regulations.
This relates to the WIPO Irregularity Notices they can issue regarding the classification of goods or services. These are somewhat unusual so if you do not have much experience of the system, or tend to file standard specifications (that are always acceptable) then WIPO's questions and answers could be quite useful for you in case you receive such an Irregularity Notice.
I copy WIPO's questions but have adapted the language of the answers to be (possibly) more user-friendly and less "WIPO-speak" in case this could be helpful. Of course, the original WIPO text can be found in the Madrid Highlights publication.
Whenever WIPO considers that the classification of goods and services in an International application is incorrect, it will notify the Office of origin (your Trade Marks Office, where you filed the International application) and inform the applicant (or representative).
However, the responsibility for remedying this irregularity lies with your Trade Marks Office, which may, within three months from the notification, make a proposal for remedying the irregularity.
Q1. I am the applicant of an international application. I have received an irregularity letter indicating that a term of the list of goods and services is too vague for the purposes of classification. The letter also states that the irregularity is to be remedied by the Office of Origin. What does it mean?
R1. This means that WIPO considers that a term used in the list of goods and services is not
sufficiently clear for the purposes of classification. When this happens, WIPO notifies your Trade Marks Office and informs you, the applicant (or representative). WIPO may suggest either a substitute term or the deletion of the term. Your Trade Marks Office may, within three months of the notification, make a proposal to remedy the irregularity.
Q2. Is any action required on my part as the applicant (or representative) of the international application concerned?
R2. There is no action required from you in this case. However, you, as the applicant (or representative), may communicate your views regarding the irregularity to your Trade Marks Office, or your Trade Marks Office may seek your views.
Q3. What options has the Office of origin to reply to the irregularity?
R3. Your Trade Marks Office may respond to the irregularity as follows:
- Agree to accept any suggestion which WIPO may have made, then the term will be changed accordingly.
- Disagree with any suggestions. Then, your Trade Marks Office may respond to the irregularity by submitting a new proposal.
If the new proposal is unacceptable to WIPO within the three-month time limit, there are two
possibilities:
- If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
- If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.
R4. If your Trade Marks Office does not reply to the irregularity, there are two options:
- If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
- If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.
R5. No! You may communicate your views regarding the irregularity letter to your Trade Marks Office, but you cannot respond to the irregularity directly to WIPO. The reply to the irregularity must be sent to WIPO through your Trade Marks Office within the prescribed time limit.
Q6. Will I be informed of the outcome of this procedure?
R6. Yes, where the irregularity is resolved and the international application conforms to the
applicable requirements, the mark is registered in the International Register and a certificate is
issued. Furthermore, the international registration is published in the Gazette and, for
information purposes, in the ROMARIN database. You will also be informed when a non-classified term is deleted due to a non-acceptable proposal or in the absence of a reply from your Trade Marks Office.
It should be clear that the responsibility of responding to these Irregularity Notices lies with your Trade Marks Office but it is important that these are not overlooked by applicants or their representatives.
As the gatekeeper of the Nice International Classification, WIPO take a strict view to where products and services are classified.
If an Irregularity Notice is issued, do not merely docket the deadline provided by WIPO for your Trade Marks Office to respond to them. It is suggested that you docket an earlier date so you can give input to your Trade Marks Office and they can take it into account when responding to WIPO.
You will also be familiar with how your Trade Marks Office operates. Are they organised? Are they pro-active? This will help you determine if you need to get in contact with them upon receipt of an Irregularity Notice to ensure your views are heard and so they respond in good time.
This is a quirk of the Madrid system. It can leave you scratching your head if you find yourself in the strange situation where you receive an Irregularity Notice (aka Office Action) yet you cannot respond to it. Hopefully this scenario is now more clearly explained.
18 January 2013
Article 9sexies of the Madrid Protocol - clearly explained
I've commented on WIPO's Madrid Highlights a couple of times (here and here).
Their fourth issue has recently been published on their website and I shall not comment on its "usual" contents. Some of you may have subscribed to this anyway.
I must say though that I particularly liked WIPO's way of explaining Article 9sexies of the Madrid Protocol. For those of us from countries that are members of the Madrid Protocol only this is, largely speaking, not relevant in day-to-day work. However, from time-to-time you may end up representing a proprietor from a member state of both the Madrid Agreement and Madrid Protocol, perhaps it has tax benefits being established in such a member state, for example. It is then that you may find WIPO's explanations appearing on pages 6 and 7 useful.
I commend WIPO for putting this information in such an easy to digest way and, I hope, also in the new language versions of Madrid Highlights in Arabic, Chinese, French, Russian and Spanish (the five other official UN languages) when these are released in due course.
Of a more picky note - me being keen on geographic accuracy - the map on page 5 is slightly inaccurate in that the large island of Greenland is not coloured in turquoise. Yes, my name is contained in the word "pedant", possibly by no coincidence!
Their fourth issue has recently been published on their website and I shall not comment on its "usual" contents. Some of you may have subscribed to this anyway.
I must say though that I particularly liked WIPO's way of explaining Article 9sexies of the Madrid Protocol. For those of us from countries that are members of the Madrid Protocol only this is, largely speaking, not relevant in day-to-day work. However, from time-to-time you may end up representing a proprietor from a member state of both the Madrid Agreement and Madrid Protocol, perhaps it has tax benefits being established in such a member state, for example. It is then that you may find WIPO's explanations appearing on pages 6 and 7 useful.
I commend WIPO for putting this information in such an easy to digest way and, I hope, also in the new language versions of Madrid Highlights in Arabic, Chinese, French, Russian and Spanish (the five other official UN languages) when these are released in due course.
Of a more picky note - me being keen on geographic accuracy - the map on page 5 is slightly inaccurate in that the large island of Greenland is not coloured in turquoise. Yes, my name is contained in the word "pedant", possibly by no coincidence!
31 December 2012
A look back at 2012
OHIM has recently declared "a year of achievement".
The Cooperation Fund which uses the vast surplus built up by OHIM to improve systems and processes in trade marks across the EU has been well utilised.
TMView has been an extraordinary success. When I first blogged in December 2011, just 14 out of 27 Registers were available on TMView. Now 25 out of 27 are available including the major EU Registers.
Cyprus and Greece are the only countries not on board yet and they may not be joining up any time soon. My Cypriot associate has a more accurate reflection of the local Register on its own database than the local Office does, and Greece's well documented economic woes may mean it considers bringing its Trade Marks Register on board to be a low priority but the Cooperation Fund could help here.
Croatia should join the EU in July 2013. Its Register is already available on-line and I can anticipate that it should not be too much trouble in adding it to TMView's capabilities.
With full clearance searches in the EU costing a small fortune and therefore often being impractical, TMView is a very useful tool in conducting preliminary searches for trade mark proprietors with costs constraints on them. It is also challenging the commercial search companies to become more innovative in their search solutions; if you're going to pay for something then it needs to offer more than what you can get for free elsewhere.
Further international cooperation has been announced by OHIM and WIPO to link TMView with WIPO's Global Brand Database. The latter is very much more "work-in-progress" in that it currently contains only International Registers and those from Canada, Algeria and Morocco. Nevertheless, it is going to be a welcome link. In particular, US trade mark proprietors may like the ability to conduct initial screening for two key markets, Canada and the EU, through the same (free to use) platform.
Moving on to the EuroClass tool, which has also been praised by me in the past. While only one additional country has reached the final goal of harmonisation with OHIM, the EuroClass project now has all EU members on board with the exception of Latvia. WIPO is also on board, as is the USPTO and the Swiss Federal Institute of Intellectual Property. They have now been joined by the Japan Patent Office. Japan can represent a mysterious Far Eastern jurisdiction at times but now we have available to us all acceptable terms to enable us to draft specifications for filing in Japan (either nationally or through the Madrid Protocol).
Croatia is also on board with EuroClass in good time for its accession to the EU in mid-2013.
The IP Translator decision also made a significant impact on specifications in the EU.
OHIM's Seniority Tool is also making progress. Back in May when I first blogged on this project, it seemed to be making a slow start. However, if I go back to one of my examples from then, namely Irish Registration No. 94544 - which was not showing any seniority information at the time - we now see that seniority is reflected in its 'Status' and in a separate 'Seniority' field which links to the relevant Community Trade Mark record.
OHIM are also in a mood to celebrate 10 years of the Registered Community Design during 2013.
There has also been a lot going on down in Geneva this year at WIPO. Early in the year they introduced their 'Highlights' newsletter to better publicise themselves. This launched a number of new online services including Madrid Portfolio Manager. These should continue to improve users dealings with WIPO and to make WIPO more efficient too.
The Madrid Protocol has seen some notable increases in its membership during 2012 with the Philippines, Colombia and New Zealand all coming on board with Mexico joining them in February. Who will accede to the Madrid Protocol in 2013? Will it see the waiting game with India come to an end? We may see one or more of the large ASEAN economies - Indonesia, Malaysia and/or Thailand - join up.
As for the Hague Union for designs, progress has been slower. Tajikistan and Tunisia became available during 2012. South Korea is expected to join up and the United States is getting closer. These will be significant countries to accede to Hague.
2012 has been a good year in the administration of IP rights, particularly trade marks. It is not just big players like OHIM and WIPO that are showing innovation and improvements. Closer to (my) home and the UK Intellectual Property Office has announced major enhancements to its services. Of course, as a fairly large developed country these should perhaps not be unexpected. However, with OHIM's Cooperation Fund and WIPO's support for systems for IP Offices in the developing world, 2013 could be a year of enhancements worldwide too.
Happy New Year!
The Cooperation Fund which uses the vast surplus built up by OHIM to improve systems and processes in trade marks across the EU has been well utilised.
TMView has been an extraordinary success. When I first blogged in December 2011, just 14 out of 27 Registers were available on TMView. Now 25 out of 27 are available including the major EU Registers.
Cyprus and Greece are the only countries not on board yet and they may not be joining up any time soon. My Cypriot associate has a more accurate reflection of the local Register on its own database than the local Office does, and Greece's well documented economic woes may mean it considers bringing its Trade Marks Register on board to be a low priority but the Cooperation Fund could help here.
Croatia should join the EU in July 2013. Its Register is already available on-line and I can anticipate that it should not be too much trouble in adding it to TMView's capabilities.
With full clearance searches in the EU costing a small fortune and therefore often being impractical, TMView is a very useful tool in conducting preliminary searches for trade mark proprietors with costs constraints on them. It is also challenging the commercial search companies to become more innovative in their search solutions; if you're going to pay for something then it needs to offer more than what you can get for free elsewhere.
Further international cooperation has been announced by OHIM and WIPO to link TMView with WIPO's Global Brand Database. The latter is very much more "work-in-progress" in that it currently contains only International Registers and those from Canada, Algeria and Morocco. Nevertheless, it is going to be a welcome link. In particular, US trade mark proprietors may like the ability to conduct initial screening for two key markets, Canada and the EU, through the same (free to use) platform.
Moving on to the EuroClass tool, which has also been praised by me in the past. While only one additional country has reached the final goal of harmonisation with OHIM, the EuroClass project now has all EU members on board with the exception of Latvia. WIPO is also on board, as is the USPTO and the Swiss Federal Institute of Intellectual Property. They have now been joined by the Japan Patent Office. Japan can represent a mysterious Far Eastern jurisdiction at times but now we have available to us all acceptable terms to enable us to draft specifications for filing in Japan (either nationally or through the Madrid Protocol).
Croatia is also on board with EuroClass in good time for its accession to the EU in mid-2013.
The IP Translator decision also made a significant impact on specifications in the EU.
OHIM's Seniority Tool is also making progress. Back in May when I first blogged on this project, it seemed to be making a slow start. However, if I go back to one of my examples from then, namely Irish Registration No. 94544 - which was not showing any seniority information at the time - we now see that seniority is reflected in its 'Status' and in a separate 'Seniority' field which links to the relevant Community Trade Mark record.
OHIM are also in a mood to celebrate 10 years of the Registered Community Design during 2013.
There has also been a lot going on down in Geneva this year at WIPO. Early in the year they introduced their 'Highlights' newsletter to better publicise themselves. This launched a number of new online services including Madrid Portfolio Manager. These should continue to improve users dealings with WIPO and to make WIPO more efficient too.
The Madrid Protocol has seen some notable increases in its membership during 2012 with the Philippines, Colombia and New Zealand all coming on board with Mexico joining them in February. Who will accede to the Madrid Protocol in 2013? Will it see the waiting game with India come to an end? We may see one or more of the large ASEAN economies - Indonesia, Malaysia and/or Thailand - join up.
As for the Hague Union for designs, progress has been slower. Tajikistan and Tunisia became available during 2012. South Korea is expected to join up and the United States is getting closer. These will be significant countries to accede to Hague.
2012 has been a good year in the administration of IP rights, particularly trade marks. It is not just big players like OHIM and WIPO that are showing innovation and improvements. Closer to (my) home and the UK Intellectual Property Office has announced major enhancements to its services. Of course, as a fairly large developed country these should perhaps not be unexpected. However, with OHIM's Cooperation Fund and WIPO's support for systems for IP Offices in the developing world, 2013 could be a year of enhancements worldwide too.
Happy New Year!
29 November 2012
Class headings
The IP Translator case created a judgement in relation to the use of Class headings of the International (Nice) Classification covering ALL the items in its particular class.
Previous OHIM practice was that Class headings included all other goods or services in a particular class. Now specifications must contain clarity and precision meaning this is no longer necessarily the case.
It is now possible to file for Class headings and then indicate that this is to include all the goods/services within that Class when filing Community Trade Marks by simple ticking a box when filing on-line.
This has led a number of International applications to be filed (that contain Class headings) with a statement to claim that the applicant wishes to include all the goods or services in the Class. Some of these statements have been specific to the European Community and some to other countries.
Bringing us more up-to-date, this has led WIPO to issue Information Notice 23/2012 stating firmly that it is the Offices of each designated country that will determine the scope of protection.
As WIPO allude to, this will almost undoubtedly see home applications filed for every single item of goods or services in a desired class and then any corresponding International applications for the same specification. It can also be anticipated that applications in non-Madrid countries, that use the International Classification and accept broad specifications, will be filed for these long specifications too.
In times past when filing instructions were received from foreign associates by fax this would have been unbearable having to re-type up long lists of goods or services. Nowadays with on-line systems and e-mail it is far less burdensome and less error prone to cut-and-paste. However, some countries still require printed forms to be filed - these may not have sufficient space for a long list of goods or services without the need for an awkward annex. We could then expect errors when the details are typed into the Register by an official. There are also countries where the Journal/Gazette is still physically printed - with some Government printers already under a huge strain this will surely add delays to applications. The practical implications could stretch across the globe.
Previous OHIM practice was that Class headings included all other goods or services in a particular class. Now specifications must contain clarity and precision meaning this is no longer necessarily the case.
It is now possible to file for Class headings and then indicate that this is to include all the goods/services within that Class when filing Community Trade Marks by simple ticking a box when filing on-line.
This has led a number of International applications to be filed (that contain Class headings) with a statement to claim that the applicant wishes to include all the goods or services in the Class. Some of these statements have been specific to the European Community and some to other countries.
Bringing us more up-to-date, this has led WIPO to issue Information Notice 23/2012 stating firmly that it is the Offices of each designated country that will determine the scope of protection.
As WIPO allude to, this will almost undoubtedly see home applications filed for every single item of goods or services in a desired class and then any corresponding International applications for the same specification. It can also be anticipated that applications in non-Madrid countries, that use the International Classification and accept broad specifications, will be filed for these long specifications too.
In times past when filing instructions were received from foreign associates by fax this would have been unbearable having to re-type up long lists of goods or services. Nowadays with on-line systems and e-mail it is far less burdensome and less error prone to cut-and-paste. However, some countries still require printed forms to be filed - these may not have sufficient space for a long list of goods or services without the need for an awkward annex. We could then expect errors when the details are typed into the Register by an official. There are also countries where the Journal/Gazette is still physically printed - with some Government printers already under a huge strain this will surely add delays to applications. The practical implications could stretch across the globe.
2 August 2012
Colombia - Individual fees under the Madrid Protocol
WIPO have clarified the Individual fees that Colombia wishes to be paid with respect to the Madrid Protocol designations when it becomes possible to designate Colombia in a Madrid Protocol application from 29 August 2012.
Quite strangely, should you wish to file in more than 24 classes then it will be cheaper to file in all 45 classes than it would be to file for 25 to 44 classes. Clearly, this could be a false economy as the more classes there are the higher chances of Provisional Refusals, oppositions, non-use cancellations, etc. but I cannot comprehend the logic behind Colombia's chosen fee structure.
If there has been typographical errors - although the same are quoted on the general Individual fees page - then presumably WIPO will pick up on this shortly.
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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