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,

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.

New EU trademark regulations - some practicalities

23 March 2016 will see some fundamental changes to trademarks in the European Union.

Gone will be Community Trade Marks to be replaced with European Union trade marks.

The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).

The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.

New fee structure

Official fees will change. It's generally good news.

The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.

If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.

For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.

If you do have a three class or more application to file then you may want to consider filing it before 23 March.

Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.

Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!

There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.

Misleading invoices

The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.

It is important that trademark owners and representatives remain vigilant.

In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.

New website

We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.

I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.

Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.

Speaking of which, watch out in case the Office adopts new social media handles.

If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.

Old specifications for class headings

The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.

Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.

• The deadline is 24 September 2016
• The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
• Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class

If the deadline is not acted upon then any specifications for class headings will be interpreted literally (the means what it says approach).

EEA representation

Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.

Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.

International Registrations

A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.

This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.

At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.

There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:

1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.

Season's greetings!

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

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

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

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

Happy holidays!

Kuwait to increase trademark fees significantly

It has been reported through various sources that in December 2015, the fees for trademarks in Kuwait will increase significantly.

I understand this will include filing, publication and registration fees. Furthermore, I believe that applications already on file will be subject to the new publication and registration fees (if they're not becoming due imminently). This is not something that would have been anticipated when originally filing applications and applicants are going to need to budget for some substantial additional fees.

Can anything be done to alleviate these fee increases? Yes, applications can be filed now and will be subject to the existing application fees. A legalised Power of Attorney is required for Kuwaiti applications but this can be late filed so it seems advisable not to delay if you want to take advantage of the current application fees.

However, examination does not happen that quickly in Kuwait so you are going to need to budget for the increased publication and registration fees.

Looking ahead

Kuwait is a member of the Cooperation Council for the Arab States of the Gulf, usually known as the Gulf Cooperation Council (GCC). The other members are Bahrain, Oman, Qatar, Saudi Arabia and the United Arab Emirates.

As the states look to implement a unifying trademark law (not a unitary law) this fee increase may be a reflection of this. The official fees of Saudi Arabia and the United Arab Emirates are some of the most expensive in the world. Kuwait's fee increase could be seen as a way of them putting their fee structure in line with the two members that receive the most trademark applications.

Therefore, could we see fee increases in Bahrain, Oman and Qatar too? I feel it is fair to anticipate doing so. It could be sensible to consider filing in these countries sooner rather than later if they're likely to be of commercial interest in the future. Bahrain and Oman are members of the Madrid Protocol and can be designated in International applications. If there are fee increases locally, expect them also to elect to increase the Individual fees payable to them under the Madrid Protocol.

The Gambia joins the Madrid Protocol

The Gambia will become the next member of the Madrid Protocol when it joins up on 18 December 2015.

African membership of the Madrid System continues to grow, although being the smallest country on the mainland of Africa, the addition of the Gambia will not make a significant impact on the worldwide Madrid System map.

Furthermore, although a lot of African countries are now members of the Madrid System, not all of these have made local legislative amendments to reflect Madrid membership and the enforceability of International Registrations is highly questionable.

This does not appear to be the case for the Gambia though, which has a relatively modern trademark law.

The Gambia has previously been infamous for its significant delays caused most notably by an enormous backlog in printing Trademark Journals. However, in recent times it has made tremendous efforts to get applications advertised and made significant inroads into its backlog.

Nonetheless, resources are at a premium at the Gambian Registry and an increase in filings caused by Madrid designations may push the Registry's capabilities even more. Of course, if you designate via Madrid and do not get a refusal in the designated time then you have an assumed registration (although this does not necessarily rule out a future challenge). Covering the Gambia through a Madrid designation will be an attractive option to many.

When it comes to Provisional Refusals, the Gambia has made a declaration under Rule 17(5)(e). Such ex officio Provisional Refusals can only be contested "before an authority external to the said Office" e.g. a tribunal or court.

The Gambia joins only China and Madagascar in making such a declaration. In practice, even if the Gambian Registry can cope with examining all its International designations in the required timescale, examination can be sketchy and it's not anticipated that the Registry will be issuing rafts of Provisional Refusals, probably very few.

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.

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

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

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

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

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

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

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

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

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

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

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

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

Algeria joins Protocol: impacts on trademark portfolios

Recent news from WIPO informs us that Algeria will join the Madrid Protocol from 31 October 2015.

With a population of close to 40 million and being the largest African and Arab country, Algeria's accession will be welcomed in many quarters. American, British and Japanese companies, as examples, will now be able to designate Algeria in International applications.

Previously, as a Madrid Agreement member only, Algeria was only available to entities from other Madrid Agreement countries. This means Chinese companies and those from the majority of continental European countries, for example, have already been able to designate Algeria in International applications for many years.

Algeria was the last remaining bastion of Madrid Agreement only membership.

This development may therefore have practical repercussions. Where a country is a member of the Madrid Agreement and the Madrid Protocol, in simple terms, the Protocol takes precedence. This means the Madrid Agreement is now largely redundant as the system is transformed into "a One Treaty System".

However, Article 9sexies is, at least for the time being, where there are some differences. If the Madrid Agreement is closed down this Article may fall by the wayside.

If you work for or represent companies from the likes of Belgium, China, France, Germany, Italy, Luxembourg, the Netherlands, Russia, Spain and Switzerland (and other Madrid Agreement member countries) then this could have an impact on your budgets.

If you're in the UK or US (or other Madrid Protocol only countries) then you're already paying the higher fees so no need to read on. You might be glad the playing field may soon be levelled.

I've mentioned Article 9sexies a couple of times before (here and here). It basically means that if you come from a Madrid Agreement and Protocol country (let's say France) and designate countries that are members of the Madrid Agreement and Protocol (let's say Benelux and Bulgaria) then you would pay the Complementary fee for each designated state as opposed to the Individual fees Benelux and Bulgaria charge under the Madrid Protocol.

Article 9sexies also impacts examination timelines - designated states only get 12 months through this Article - so this may lengthen procedures if it's abolished. From my viewpoint, this is unlikely to be significant in the majority of cases.

However, I do accept for those countries who can notify oppositions after the expiration of the 18 month period under Article 5(2)(c), - or, in other words, indefinitely - that they bring some uncertainty to applicants. This being more so to applicants who currently rely on Article 9sexies and therefore have more guaranteed timescales. These members are notably China plus Cyprus, Iran, Italy, Kenya and Ukraine; (other countries signed up to Article 5(2)(c) are Protocol only members).

With IP budgets often under scrutiny, it's the fees that some companies may need to be aware of. Let's do some analysis.

The Complementary fee for each designated state is 100 CHF and this includes up to three classes. What happens if you now need to pay Individual fees for three classes:

Armenia: 100 CHF up to 265 CHF
Belarus: 100 CHF up to 600 CHF
Benelux: 100 CHF up to 167 CHF
Bulgaria: 100 CHF up to 327 CHF
China: 100 CHF up to 499 CHF
Cuba: 100 CHF up to 356 CHF (both first and second part Individual fees)
Italy: 100 CHF up to 159 CHF
Kenya: 100 CHF up to 758 CHF
Kyrgyzstan: 100 CHF up to 660 CHF
Moldova: 100 CHF up to 356 CHF
San Marino: 100 CHF up to 178 CHF
Switzerland: 100 CHF up to 450 CHF
Tajikistan: 100 CHF up to 452 CHF
Ukraine: 100 CHF up to 429 CHF
Vietnam: 100 CHF up to 269 CHF

If you can file a word mark application covering those countries using the lower fees now you would pay 2153 CHF (plus your Office of origin's handling charge). Under the higher fees, it works out at 6496 CHF (plus your Office of origin's handling charge) (excluding the second part fee for Cuba of 82 CHF).

If you file in a single class, the lower figure of 2153 CHF (plus your Office of origin's handling charge) remains the same and the higher figure changes to 5068 CHF (plus your Office of origin's handling charge) (excluding the second part fee for Cuba of 82 CHF). Obviously, it's unlikely for anyone to file an International application designating only those countries but you'll get the idea of the costs changes that a trademark holder could be facing. This could be more acutely felt for large international trademark portfolios.

Renewals would also face similar changes in the fees.

We will have to wait and see whether Article 9sexies is something that is abolished - and resistance to this may be strong from those countries who benefit from it. This may mostly be from 'old guard' members from the Madrid Agreement's early days who may find themselves outvoted in any changes as more and more countries become members.

It's perhaps worth mentioning that both Syria and Uzbekistan withdrew from the Madrid Agreement (to rely on the Madrid Protocol only) so they could benefit from increased fees and examination timelines, possibly not prepared to wait for the repeal of Article 9sexies.

When simplification and harmonisation are watch words in IP this may mean the days of Article 9sexies are numbered though and so it might be something that is worthwhile being prepared for.

New trademark law in the British Virgin Islands

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.

Trademark Annuities...

In case the title of this blog left you with a quizzical look, no, the title is correct. Those of you that work across intellectual property rights (e.g. in both patents and trademarks) will be familiar with the payment of patent annuities.

However, there's a select group of jurisdictions where annual fees are payable to maintain trademark registrations.

Annual fees make the Cayman Islands one of the most expensive jurisdictions in which to maintain trademark registrations (although recent hikes in the official fees in the UAE and Venezuela means it's not the only place where maintaining a trademark registration can cost a fortune).

The Cayman Islands Registry used to allow representatives from anywhere to attend to matters before them. This changed in 2012 so that a local representative was required. I've previously worked with the local Registry but this change prevented me from doing so directly and therefore being able to maintain trademarks most cost-effectively for clients. Local agents in the Cayman Islands tend to be expensive reflecting the high cost of living there. It is worth considering paying all the annual fees (up to a registration's renewal date) in bulk to reduce the level of professional fees.

It's also worth being 'tactical' and avoiding registering trademarks in December. Annual fees fall due on 1 January each year so if you register in December you'll find yourself with an immediate payment to be made to keep the registration you have only just got in force.

The Cayman Islands are now looking to introduce a fresh trademark law (that removes its dependency on UK or Community registrations). It will be interesting to see how they set their official fees. Annual fees may be abolished but they will need to bring in examiners to handle applications filed under a new substantive trademark law so an increase in initial filing fees and, possibly, renewal fees could be anticipated.

Like the Cayman Islands, the Turks and Caicos Islands are a British Overseas Territory. They also share a need for annual fees to be paid to maintain trademark registrations. With a population roughly half that of the Cayman Islands and an economy that is not as developed, the number of trademarks registered in the Turks and Caicos Islands is a lot less.

Remaining firmly in the Western Hemisphere, Honduras is another country where annual fees are due. Again, I think it's worthwhile considering paying them in bulk up to a registration's renewal date as it can make the management of the registration easier.

Don't confuse these annual fees for Honduras with rehabilitation taxes. These taxes, which are unique to Honduras, are an optional payment. When paid they will protect a registration from being cancelled for non-use. Therefore, you only need to pay them if you're not using a trademark.

Rehabilitation taxes can easily be forgotten about and this is understandable when they are optional and not a mandatory maintenance requirement. They can be paid retrospectively. Therefore, if you have a registration that is vulnerable to cancellation on the grounds of non-use but you wish to file an opposition based on this registration, you would just need to back-pay any rehabilitation taxes prior to filing an opposition to help avoid a counter cancellation action on the grounds of non-use.

So annual maintenance payments to maintain trademark registrations may not be common, but if you help manage trademark renewals or maintenance then be aware that they can crop up from time-to-time. Even if you don't have patents under your responsibilities, you may also come across annual fees/annuities when maintaining design registrations (particularly in countries where the design law is a subset of the patent law) or domain names.