A new trademark law in the British Virgin Islands ("BVI") will enter into force on 1 September 2015. It has been a while coming.
This will completely modernise a law that is archaic. Currently, there are two ways to register a trademark in the BVI:
1. A local, substantive application. This uses the very dated former British classification system. Importantly, this does not provide for service marks.
2. A UK-based application. This requires a base UK registration. As the UK and BVI are many miles apart on different continents, it can be the case for some trademark owners that the UK is not a market of interest whereas the BVI is, or the UK is covered by a Community Trade Mark (and national protection is not obtained in the UK). However, the UK-based method is currently the only way in which to obtain service mark protection.
The new law will abolish the two ways to register trademarks and consolidate it into one. It will bring in provisions for Certification and Collective marks, allow for priority claims to be made, and provide protection for "well known" marks. The registration term will be reduced to 10 years from 14 years (for local, substantive registrations; UK-based registrations were given registration terms matching their base UK registration).
The International Classification will be used as the former British classification system is replaced in yet another jurisdiction. How reclassification will be managed remains to be seen.
However, should any thoughts be made about taking action before the new trademarks law comes into force? Perhaps, yes. The current official fees are low. The BVI is one of the wealthiest of the Caribbean nations (it's where Sir Richard Branson's Necker Island is) and it's anticipated that official fees will rise and, possibly, quite considerably (they are waiting to be announced).
If you have a UK registration and you need corresponding protection in the BVI, consider filing before 1 September 2015. UK-based registrations are not advertised for opposition purposes so if you file on or after 1 September 2015 when the UK option is removed, your application will be advertised for opposition purposes.
If you file now then you can take advantage of the (probable) lower official fees. However, be sure this is not going to be false economy. Local, substantive applications may require some form of reclassification incurring costs. If an application needs to be filed covering modern goods not well envisaged by the former British classification system then it may also be a good idea to wait until the International classification can be used.
For UK-based applications, check the base UK registration's renewal date. The BVI registration will take this renewal date so if the UK registration is due for renewal in the next few years then so will the BVI registration.
As for renewals, although registrations falling due for renewal on or after 1 September 2015 will be renewed for 10 years, their renewals can be filed now and the current official fees can be taken advantage of.
Trademark matters in the BVI must be handled by resident trademark agents duly registered with the Registry of Corporate Affairs. This is the case currently although I understand the new law will allow them to be more stringent on who they will accept as a resident registered trademark agent. Naturally, I work with local registered trademark agents should you not have one of your own and need any support.
Showing posts with label new law. Show all posts
Showing posts with label new law. Show all posts
4 October 2013
Another separate IP jurisdiction: French Polynesia
This blog likes to explore exciting and exotic places that the writer has, unfortunately, little chance of visiting in person!
This week is no difference as it heads to Tahiti, the main island of French Polynesia.
Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.
The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.
3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.
Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").
This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.
That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.
The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.
The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.
Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.
It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.
It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.
It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).
What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.
The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.
This week is no difference as it heads to Tahiti, the main island of French Polynesia.
Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.
The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.
3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.
Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").
This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.
That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.
The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.
The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.
Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.
It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.
It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.
It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).
What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.
The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.
24 July 2013
Guam set to create "Trademark Commission"
Information from the Pacific News Center suggests Guam will look to refresh its trademark legislation shortly and help better protect its own cultural brand.
US Federal registrations automatically protect all US states and territories, the Act stating, "The United States includes and embraces all territory which is under its jurisdiction and control."
In Guam, which is an organized, unincorporated territory of the United States, a local registration system is also in place. There are two routes to protection under this. Firstly, a purely local route which requires evidence of use to be filed in order to obtain a Certificate of Registration and is akin to individual State trademark laws.
Secondly, it is also possible to re-register a US Federal registration in Guam, notwithstanding that such a Federal registration should already cover Guam.
It is not clear how the law will change things. It cannot overrule any Federal law. However, Puerto Rico is often considered a separate trademark jurisdiction from the "mainland" USA.
Tourism and the provision of retail services of designer goods are big business in the Guam economy and, in particular, businesses involved in these fields may wish to keep an eye on the situation in Guam with a view to securing local trademark registrations.
Furthermore, new legislation is planned to increase protection of the island's local culture, traditional knowledge and brand.
US Federal registrations automatically protect all US states and territories, the Act stating, "The United States includes and embraces all territory which is under its jurisdiction and control."
In Guam, which is an organized, unincorporated territory of the United States, a local registration system is also in place. There are two routes to protection under this. Firstly, a purely local route which requires evidence of use to be filed in order to obtain a Certificate of Registration and is akin to individual State trademark laws.
Secondly, it is also possible to re-register a US Federal registration in Guam, notwithstanding that such a Federal registration should already cover Guam.
It is not clear how the law will change things. It cannot overrule any Federal law. However, Puerto Rico is often considered a separate trademark jurisdiction from the "mainland" USA.
Tourism and the provision of retail services of designer goods are big business in the Guam economy and, in particular, businesses involved in these fields may wish to keep an eye on the situation in Guam with a view to securing local trademark registrations.
Furthermore, new legislation is planned to increase protection of the island's local culture, traditional knowledge and brand.
8 March 2013
Ethiopia introduces trade mark law
The Federal Democratic Republic of Ethiopia has recently introduced trade mark legislation to replace its quirky Cautionary Notice system.
This is positive news for Africa's second most populous country - it's ahead of Egypt and only behind Nigeria in this respect - and one of the world's fastest growing economies.
The country's coffee industry has made significant efforts around its brands - with the support of their IP Office - so it was important their own trade mark law was brought up-to-date.
During the Scramble for Africa in the late 19th Century, Ethiopia was one of only two African nations not to have been controlled by one of the European powers of the time. It retains pride with this fact and perhaps this explains why the new law, which is modern in the main, contains some quirks. A seven-year term of registration stands out. Perhaps they are conscious on losing out on renewal fees bearing in mind the old system established six-year terms, with short-form Cautionary Notices to be published in intervening two-year periods. It has also shown no enthusiasm for joining the Madrid Protocol club.
Certain bureaucratic elements are retained, namely, the need to submit a legalised Power of Attorney and a legalised "home" registration certificate. At least the latter requirement has been relaxed and a legalised Extract of the Commercial Register can be submitted as an alternative.
Well-known marks are recognised, priority can be claimed and registrations will be vulnerable to cancellation on the grounds of non-use if they are not used for a continuous period of three years.
There is an 18-month "sunrise" period in which owners of existing rights filed before 7 July 2006 can re-register their trade marks under the new law. The deadline in which to file these - and claim the filing dates of the existing rights - is informally set at 24 June 2014.
Applications filed after 7 July 2006 will be prosecuted under the new law. If they are already registered then it is possible to request fresh, updated Certificates of Registration and indeed it seems advisable to do this.
As is typical when a country introduces a new trade mark law there remain practical details that are unknown. Waiting to see how things will operate is not a bad idea, but I would recommend that trade mark owners with interests in Ethiopia should look to make their re-registration decisions shortly. This will give them plenty of time to collate all the necessary supporting documentation and file it with their applications. This will help avoid late filing expenses and also, perhaps more importantly, help the Ethiopian Intellectual Property Office remain organised and speed up registration times.
This is positive news for Africa's second most populous country - it's ahead of Egypt and only behind Nigeria in this respect - and one of the world's fastest growing economies.
The country's coffee industry has made significant efforts around its brands - with the support of their IP Office - so it was important their own trade mark law was brought up-to-date.
During the Scramble for Africa in the late 19th Century, Ethiopia was one of only two African nations not to have been controlled by one of the European powers of the time. It retains pride with this fact and perhaps this explains why the new law, which is modern in the main, contains some quirks. A seven-year term of registration stands out. Perhaps they are conscious on losing out on renewal fees bearing in mind the old system established six-year terms, with short-form Cautionary Notices to be published in intervening two-year periods. It has also shown no enthusiasm for joining the Madrid Protocol club.
Certain bureaucratic elements are retained, namely, the need to submit a legalised Power of Attorney and a legalised "home" registration certificate. At least the latter requirement has been relaxed and a legalised Extract of the Commercial Register can be submitted as an alternative.
Well-known marks are recognised, priority can be claimed and registrations will be vulnerable to cancellation on the grounds of non-use if they are not used for a continuous period of three years.
There is an 18-month "sunrise" period in which owners of existing rights filed before 7 July 2006 can re-register their trade marks under the new law. The deadline in which to file these - and claim the filing dates of the existing rights - is informally set at 24 June 2014.
Applications filed after 7 July 2006 will be prosecuted under the new law. If they are already registered then it is possible to request fresh, updated Certificates of Registration and indeed it seems advisable to do this.
As is typical when a country introduces a new trade mark law there remain practical details that are unknown. Waiting to see how things will operate is not a bad idea, but I would recommend that trade mark owners with interests in Ethiopia should look to make their re-registration decisions shortly. This will give them plenty of time to collate all the necessary supporting documentation and file it with their applications. This will help avoid late filing expenses and also, perhaps more importantly, help the Ethiopian Intellectual Property Office remain organised and speed up registration times.
11 April 2012
Vanuatu: Trade mark applications now possible
We have today heard from our associate in Vanuatu that the forms and fees for its new trade marks law have now been gazetted. Readers may recall that pending this the trade mark situation in Vanuatu was in a state of limbo.
Vanuatu has a population estimated to be approaching 250,000 and is an offshore financial services hub. It achieved independence in 1980 after being governed as a British-French condominium. English and French remain official languages along with the local creole, Bislama.
Under the previous legislation, it was possible to file directly with the Vanuatu Financial Services Commission. However, under the new law the trade marks authority is a new one and it is necessary to have an address for service in Vanuatu. We have a trusted associate in the Vanuatuan capital of Port Vila. My firm's fees (including the official fees and that of my associate) for a new filing in one class including dispatch of the Certificate of Registration assuming no problems are in the region of US$1250.
Convention priority is available under the new law and the "convention countries" have been published. I do not have a copy of the publication to hand but can anticipate this includes members of the Paris Convention.
It is anticipated that the processing of applications will be fairly efficient but as the new law is more substantive than that previously in force, we will need to wait and see if this proves to be the case. The situation in Vanuatu has been unpredictable of late and some will be less optimistic that everything will run quite so smoothly.
Please do not hesitate to get in touch if you require any assistance with registering your trade marks in Vanuatu and we would be pleased to help.
9 December 2011
New Trade Mark Jurisdiction
No not South Sudan. Developments here are being monitored and there does seem some varying information out there. We will try to keep you updated, but we are also following the excellent Afro IP blog regarding this one.
This jurisdiction is not actually that new, but it seems to have generally fallen under the radar. It's Abkhazia, a de facto independent republic in the Caucasus that most of the world recognise as de jure a part of Georgia. One country that has recognised it is Russia, a fall out of the recognition given to the independence of Kosovo by various western governments.
Abkhazia has opened its own Trade Marks Office. As could be expected in an area of the world which remains quite tense, this has gone down like a proverbial lead balloon with the Georgian Patent Office, SAKPATENTI. They have an article on their website denouncing the Office, advising it is illegal and that registrations covering it's Autonomous Republic of Abkhazia are granted exclusively by them in Tbilisi.
On the ground the situation may prove to be different for trade mark owners who may export to or trade in Abkhazia, perhaps as an extension of their Russian trading activities.
Any potential applicant should consider any negative implications of registering trade marks and trading in Abkhazia if it is unrecognised by their own country's government. They may also wish to take into account any impact it could have on their Georgian business.
Those interested in filing in Abkhazia, despite these warnings, should note it's not cheap. However, and with reference to the official fees due in Belarus, Turkmenistan and Uzbekistan, the former Soviet Union is not the most inexpensive part of the world to register trade marks.
It appears that registrations are granted for five year terms; the cynics amongst us will suggest that is so they can rake in even more in renewal fees.
We have located a law firm in Sukhumi, the Abkhaz capital. If more information is required, please do not hesitate to contact me.
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