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 merger. Show all posts
Showing posts with label merger. Show all posts
5 September 2018
From single class to multi-class...
I was asked by an old colleague recently, "Do you know what countries have gone from a single class system to a multi-class one in the last 10 years?" - a question which followed with a hint to put it into a blog piece, notwithstanding its somewhat niche interest. Not that I ever give in to peer pressure...
The scenario is: you have inherited a mature trade mark portfolio with many single class registrations. Is it possible to consolidate matters by re-filing multi-class applications with a view to allowing the single class registrations to lapse in the future? The administration in managing the trade mark portfolio would reduce and, although it would not be realised straightaway, renewal costs should be reduced in the future. (If any marks are not in use then re-filing could be a way of resetting the non-use period if a mark is of continued interest.)
The risks are perhaps obvious. Allow an old registrations to lapse to rely on a newer registration could result in a third party having earlier rights. This can be mitigated by undertaking searches for any intervening marks. There may also be possible prior co-existence and acquiescence. The appetite for risk differs with each business, and it's certainly possible to take a different approach for different countries depending on their commercial importance.
You must also watch out for countries that do not allow for duplicate registrations. In these countries it will be necessary to voluntarily surrender an existing registration to overcome a refusal. In the best case with these, there will be a lag when you do not have registered rights while the application is pending registration. At worst, another issue raises its head after voluntarily surrendering the old registration.
Anyway, if you are thinking of undertaking such an exercise, here is a list of countries that may have gone from single classes to multi-class in 'recent' times, perhaps in the last 10 years, perhaps more than that. This is done from my memory so there's no guarantee this is right! It's not meant to be exhaustive. It's a pointer - you'd need to research, double-check and apply it to a specific portfolio.
Bahrain *
Brunei #
Cambodia #
China #
Colombia #
Costa Rica
Dominican Republic
Egypt *
El Salvador
The Gambia #
Ghana *
India #
Indonesia #
Kenya #
Laos #
Mexico * (in practice the IMPI will examine each class in an IR as though it is a separate application)
Mozambique *
Namibia #
Nicaragua
Oman * (multi-class applications expected to be allowed locally soon)
Panama
Peru
Spain # (this change happened back in the early 2000s when they also abolished quinquennial taxes if you remember them)
Syria *
Thailand #
United Kingdom # (definitely more than 10 years ago, more later)
The countries marked with * are single class when filing nationally, but they can be designated in a multi-class International Registration. Those marked # are now multi-class nationally and/or can be designated in a multi-class International Registration.
This leads nicely on to Replacement. Techinically, this happens automatically, but to get it noted on Trade Marks Registers it needs to be requested formally. In simple terms, replacement is to International trade marks what seniority is to EU trade marks. (Seniority is also a useful tool in consolidating rights but as readers of this blog may be very familiar with this, I will not touch on it here.)
If you have old single (or multi-) class national registrations and you now have International Registrations designating these countries then replacement may be a useful exercise to consolidate things and make a note of the older rights. You may need to obtain local advice on how each national Office will look at this; you'll typically need the help of a local associate to request replacement at each national Office anyway. It may be for this reason that replacement is hardly utilised, or perhaps it's ignorance, or because it could be a fiddly (and thus expensive) job involving liaising with multiple countries (cf. seniority which is centrally handled with the EUIPO).
Another tool more often used in the consolidation of trade marks is the merger of trade marks. The United Kingdom became a multi-class jurisdiction with the introduction of its 1994 Act - quite scarily - nearly 24 years ago.
They introduced a provision to merge single class registrations for the same trade mark in the same ownership into a single registration so that savings on renewal fees could be made. They have changed the criteria set down at various times and currently the registrations must also share the same filing date.
Ireland, which went multi-class around 1996, has a merger procedure as do Hong Kong and New Zealand. It's also possible to merge trade mark registrations in Guernsey. Just south of Guernsey is Jersey, where trade marks have to be based on UK registrations. The Jersey Registry is able to reflect in its own records where merger has taken place, but be aware for other UK dependent jurisdictions because the local laws are often rather short and may be silent with respect to mergers.
So if you're looking to consolidate a number of single-class registrations into multi-class registrations then, if the risks are acceptable, make sure to take into account International Registrations, replacement and mergers as well as the what might be more obvious re-filings and seniority.
The scenario is: you have inherited a mature trade mark portfolio with many single class registrations. Is it possible to consolidate matters by re-filing multi-class applications with a view to allowing the single class registrations to lapse in the future? The administration in managing the trade mark portfolio would reduce and, although it would not be realised straightaway, renewal costs should be reduced in the future. (If any marks are not in use then re-filing could be a way of resetting the non-use period if a mark is of continued interest.)
The risks are perhaps obvious. Allow an old registrations to lapse to rely on a newer registration could result in a third party having earlier rights. This can be mitigated by undertaking searches for any intervening marks. There may also be possible prior co-existence and acquiescence. The appetite for risk differs with each business, and it's certainly possible to take a different approach for different countries depending on their commercial importance.
You must also watch out for countries that do not allow for duplicate registrations. In these countries it will be necessary to voluntarily surrender an existing registration to overcome a refusal. In the best case with these, there will be a lag when you do not have registered rights while the application is pending registration. At worst, another issue raises its head after voluntarily surrendering the old registration.
Anyway, if you are thinking of undertaking such an exercise, here is a list of countries that may have gone from single classes to multi-class in 'recent' times, perhaps in the last 10 years, perhaps more than that. This is done from my memory so there's no guarantee this is right! It's not meant to be exhaustive. It's a pointer - you'd need to research, double-check and apply it to a specific portfolio.
Bahrain *
Brunei #
Cambodia #
China #
Colombia #
Costa Rica
Dominican Republic
Egypt *
El Salvador
The Gambia #
Ghana *
India #
Indonesia #
Kenya #
Laos #
Mexico * (in practice the IMPI will examine each class in an IR as though it is a separate application)
Mozambique *
Namibia #
Nicaragua
Oman * (multi-class applications expected to be allowed locally soon)
Panama
Peru
Spain # (this change happened back in the early 2000s when they also abolished quinquennial taxes if you remember them)
Syria *
Thailand #
United Kingdom # (definitely more than 10 years ago, more later)
The countries marked with * are single class when filing nationally, but they can be designated in a multi-class International Registration. Those marked # are now multi-class nationally and/or can be designated in a multi-class International Registration.
This leads nicely on to Replacement. Techinically, this happens automatically, but to get it noted on Trade Marks Registers it needs to be requested formally. In simple terms, replacement is to International trade marks what seniority is to EU trade marks. (Seniority is also a useful tool in consolidating rights but as readers of this blog may be very familiar with this, I will not touch on it here.)
If you have old single (or multi-) class national registrations and you now have International Registrations designating these countries then replacement may be a useful exercise to consolidate things and make a note of the older rights. You may need to obtain local advice on how each national Office will look at this; you'll typically need the help of a local associate to request replacement at each national Office anyway. It may be for this reason that replacement is hardly utilised, or perhaps it's ignorance, or because it could be a fiddly (and thus expensive) job involving liaising with multiple countries (cf. seniority which is centrally handled with the EUIPO).
Another tool more often used in the consolidation of trade marks is the merger of trade marks. The United Kingdom became a multi-class jurisdiction with the introduction of its 1994 Act - quite scarily - nearly 24 years ago.
They introduced a provision to merge single class registrations for the same trade mark in the same ownership into a single registration so that savings on renewal fees could be made. They have changed the criteria set down at various times and currently the registrations must also share the same filing date.
Ireland, which went multi-class around 1996, has a merger procedure as do Hong Kong and New Zealand. It's also possible to merge trade mark registrations in Guernsey. Just south of Guernsey is Jersey, where trade marks have to be based on UK registrations. The Jersey Registry is able to reflect in its own records where merger has taken place, but be aware for other UK dependent jurisdictions because the local laws are often rather short and may be silent with respect to mergers.
So if you're looking to consolidate a number of single-class registrations into multi-class registrations then, if the risks are acceptable, make sure to take into account International Registrations, replacement and mergers as well as the what might be more obvious re-filings and seniority.
12 July 2012
WIPO Madrid Highlights - Issue 2
WIPO have issued their second edition of their e-zine Madrid Highlights following on from their first edition in March.
Most of the publication is, of course, self-explanatory but as lots of it uses "WIPO speak", which is not a criticism as they are obliged to use this language, I will comment in simpler English.
In the first Madrid Working Group section, point 1 refers to the deletion of a section which has become obsolete. This needs to be agreed but would appear a formality.
The second point refers to Article 9sexies of the Madrid Protocol. It is not often anyone would regard the Madrid Protocol as sexy! What this currently means is that if contracting parties are both members of the Madrid Agreement and Madrid Protocol when it comes to examination and fees they follow the Madrid Agreement. For example, if you happened to be a Swiss applicant (basing your International application on a Swiss registration) designating China then the Chinese Office would have to examine the mark within 12 months and a complementary fee (not an individual fee) would be charged for China. Switzerland and China are members of the Madrid Agreement and Madrid Protocol.
This does put applicants from countries that are parties to both the Madrid Agreement and Madrid Protocol at an advantage in terms of being able to obtain quicker protection and cheaper protection for some countries. Applicants from the likes of the United States, the UK, Australia and Japan (i.e. Madrid Protocol only members) may consider this unfair.
On the flip side, Trade Marks Offices in the likes of China are under more pressure to examine quickly and they are losing out on official fees. China lost out on nearly 10 million Swiss francs last year. That may represent a relative drop in the ocean to an economy the size of China's but it could pay for a few examiners. The Office of Belarus, as another example, lost out on over 4 million Swiss francs last year. With processing delays of 3-4 years on national applications think of the number of examiners and support staff they could recruit to reduce their backlog.
Of course, our Swiss applicant as per the example above, is happy - a cheap trade mark within 12 months. The WIPO document is merely asking the Working Group to consider Article9sexies but, reading between the lines from how the information has been presented, it is encouraging them to close this "loophole".
For now, applicants from EU countries that are Agreement and Protocol members (e.g. France, Germany) would find it advantageous to file International applications based on national applications/registrations rather than Community Trade Marks.
The third point relates to a suggestion from the Association romande de propriété intellectuelle (a professional IP association for French-speaking Switzerland) to introduce division in International Registrations. This was back in 2008 so you can see it takes a while for things to progress in the corridors of power at WIPO.
It basically provides for a designation of an International application (i.e. not the entire application for all countries) to be divided specifically when, during examination, some goods/services have been accepted but others are subject to objections. It would allow the accepted goods/services to move forward to obtain a Statement of Grant and the objections raised can be argued against separately.
The merger provisions will allow divided designations to be merged back together, assuming the objections are overcome.
This has not been agreed yet but I can anticipate it coming into force. It will only be applicable to member states that have division provisions within their national laws. For example, division is possible for Community Trade Marks. Their current guidelines do not allow it through the Madrid Protocol: "The division is not available for an international application under the Madrid Protocol designating the EC: Their Register is exclusively kept at WIPO. The OHIM does not have the authority to divide an international designation."
Point 4 relates to translations between the three official languages (English, French, Spanish) and, in my opinion, will not impact users too much. It is more to manage WIPO workloads and not to translate for translation's sake.
The Madrid System Legal Forum is set up "to facilitate the free exchange of ideas concerning the present and future of the Madrid system". Well, not quite. Disappointingly, this is restricted (as you can see) to staff from member state Trade Mark Offices. I can appreciate WIPO not wishing all and sundry making comments and suggestions but they could at least give access to professional bodies such as INTA, ECTA, ITMA, etc. It is my usual criticism of WIPO that it is a "closed shop" or like an old state monopoly that does not seek the opinions and feedback from its customers (trade mark owners and representatives) enough.
Most of us will already be aware that the Philippines and Colombia have joined the Madrid Protocol. I have heard that, like with national applications, Affidavits of Use will be required for IRs designating the Philippines to be filed with the Intellectual Property Office of the Philippines, not WIPO.
The rest of the document requires little explanation. I was keen on the 'Madrid Tips' section on Second Part Individual Fees. However, because they must keep to their "WIPO speak" they cannot use everyday IP language to most of us: these are basically registration fees. I would also recommend using WIPO's excellent E-Payment facility to pay these which gives you an immediate e-mail confirmation.
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