Zambia - "first to file"

The case has been reported elsewhere, but in case you missed it. In 2009, the Zambian Patents & Companies Registration Agency refused an opposition based on unregistered trade mark rights in use in the country stating that unregistered rights cannot form the basis of an opposition. This has since been confirmed by the Supreme Court of Zambia.

Summarising, Zambia was thought of as a typical Common Law "first to use" jurisdiction whereby the first user of a mark enjoys rights in the mark (contrary to the Civil Law principle of "first to file" (an application)). This decision has now changed the situation in Zambia.

It is not expected to change any possibilities of using the common law tort of passing off, like in the United Kingdom.

Nevertheless, brand owners should consider registering their trade marks in Zambia. Those that own International trade marks in Zambia may wish to take action to register their trade marks nationally as a designation of Zambia in an International Registration may not provide protection; Zambian trade mark legislation has not been amended to reflect Madrid Protocol membership.

As African Trade Marks Offices go, Zambia functions well although this decision helps African practice maintain a level of unpredictability.

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.

Watch it!

I began what would turn out to be my career in the field of trade marks when I was a teenager. I'd like to claim this was only a few years ago, but my mother taught me never to lie.

One of my tasks in these early days was to reproduce the marks advertised for opposition purposes in the UK Trade Marks Journal into a more concise publication, the "Trade Mark Record". My employers had permission from the Crown to do this although I don't think Her Majesty would have been too impressed with the scissors and glue method to its production!

This was then sent out to a number of subscribers to flick through. For most it was to find marks they may wish to oppose although it did also go to, for example, a Trade Marks Registry in the Caribbean so they could keep themselves abreast of what the UK Trade Marks Registry was accepting at the time. It coincided with a huge effort to clear a backlog of UK applications, helped by the recent introduction of new legislation, that meant many Trade Mark Journals were double volumes.

If my memory serves me correctly, a yearly subscription was not expensive but it would have been roughly the same as a standard UK watch (with the usual commercial watch providers) at today's prices.

In those days, watching (in today's sense of the word) was not done with the same regularity. The UK still issued citations of prior rights and whilst the CTM was on the horizon, it was going to be a little while before in came into force and then the first CTM Bulletin was published. (However, it would be the CTM that would help consign the Trade Mark Record to the history books.)

Watching services did exist. The UK's most well known provider had existed since just after the Second World War driven by the Scotch Whisky Association's need to spot imitation marks around the globe, something that would have met with my late grandfather's approval (the Colman in my company's name). However, technology has moved on significantly not just from the 1940s but from the 1990s too and back then watching would have been a laborious (and thus expensive) task.

It still is to a certain extent. Languages are complex and understanding their subtleties is still something more suited to qualified human brains. It is arguably at its most notable with the Chinese languages. I previously worked next door to a watching team and watching, if you'll excuse the pun, a trade mark watcher at work really brought home their unusual skills.

I hope this trip down Memory Lane provides some entertainment to those with a sentiment for trade mark history, but I will try to bring us up-to-date and make some points of modern interest.

Watching is now dominated by a few global players that have built up the infrastructure and resources (and with this I also mean, as I grin slightly cynically, their sales and marketing teams) to offer these services in a consistent and relatively cost effective manner. As more Gazettes move to being published on-line, the increased automation of watching should help make it even more affordable.

However, what I have found is that large trade mark owners can find themselves watching too many trade marks. Aligning watching with renewal strategy can be overlooked particularly where the two fall to different responsible people or teams. Reviewing portfolios in their entirety and monitoring non-use dates is also something beyond the capacity of many departments. Personally, I would like to see watching companies work more closely with their clients to strip out the "deadwood" being watched. This may prove unlikely as it could result in a loss of revenue but I do not think they should underestimate the goodwill it could provide and what may come of that.

Large corporates have a lot of bargaining power, and you could say more so in the current economic climate, but I am not aware of any that have placed demands on their agent network with respect to trade mark watching. Requesting that agents watch trade marks (for free, we will come to this) could result in savings of not only money, but also time. A local specialist will ignore irrelevant watch notices that computers and trade mark watchers may not - the simple reason is they are more in tune with local practice and may also be better aligned with a client's strategies - so the client receives a lot less watch notices to review. It could not only save money on initial watching fees, but in the general management of watches (e.g. watch renewals and cancellations).

Could law firms organise this for free? This is debatable. The theory behind it is that they would receive any contentious work and the related $$$ (or €€€ or whatever) that even if they need to organise the watching externally they could absorb the costs. Offering for free and really doing it for free are two different things though. In Spain and other countries where publication happens before examination, complimentary internal watching services have been provided for a long time. Some Spanish firms still provide this whereas others - who I imagine question the value if they've filed a CTM and then cannot watch all national EU publications - no longer provide this service. Firms that do provide this service are often more expensive than those that do not. I'll allow you to draw your own conclusions. It might be something that you can live with.

This blog is merely food for thought. I am not supporting one way over others as different circumstances may prefer one over another. Is quality control and risk best managed internally or externally? Receiving watch notices, even irrelevant ones, helps you monitor industry trends and competition so if someone else does this how are you keeping informed? (Of course, applicant watches can be set up for specific competitors.)

This blog talks about watching in isolation - and only trade mark watching at that, no domain names, no company names, no internet, etc. In practice, how watching fits in with other parts of your practice will be very important. It may sit side-by-side with filings/prosecution and renewals but analytically speaking is the sister of trade mark searching.

Got a Registered Community Design, got Europe?

As my 'Got a CTM, got Europe?' blog proved popular and continues to receive regular hits - and following on from my blog on the rising importance of registered designs - it seems worthwhile to write about protecting designs throughout Europe.

As before, I will use the definition provided by Wikipedia for Europe.

We will focus on the applicant being from a member state of the Hague System (Geneva Act) e.g. an applicant from the European Union. This rules out applicants from non-Hague countries such as the United States. However, a US applicant with "a real and effective commercial or industrial establishment" or "habitual residence" in a member state could take advantage of the system. Ownership could also be through a trust company incorporated in, say, the EU and then licensed back. However, there is no provision for the recording of a license at WIPO against a Hague International Registration which could make this less desirable.

Benefits of the Hague system, contrasting to the Madrid Protocol for trade marks, are:

1. There is no need for a base registration.
2. You can designate your own country (e.g. the EU) in an application.

This means a single International application can be made to cover the home country of, say, the European Community plus Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Croatia, Georgia, Iceland, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Serbia, Switzerland, Turkey and Ukraine.

For the sake of argument, if we were to file one design with seven reproductions and no deferment of publication it would cost CHF 1560 (approximately €1300/$1630) in official fees.

The inclusion of the European Community would not provide protection to any further territories within Europe but outside of the European Union with the exception, as far as I understand, of the Isle of Man. My understanding extends further to it not providing protection to Gibraltar, as I have previously blogged.

Nevertheless, the Isle of Man is covered by a registration in the United Kingdom. A registration in the United Kingdom is required to provide automatic protection to Gibraltar. It also provides protection to the Sovereign Base Areas of Akrotiri and Dhekelia (as I cannot see that design legislation was delegated to the Republic of Cyprus government). It is this same law, dating from when Cyprus was a British colony, that still appears to be in force to protect designs in the Turkish Republic of Northern Cyprus ("TRNC"). The TRNC, recognised only by Turkey, has not introduced design legislation of its own.

Obtaining a Registered Design in the United Kingdom, under the same criteria as the International filing above, would cost £60 in official fees (approximately €75/$95).

Such a UK Registered Design would need to be extended to the Channel Islands. Official fees here are £120 in Jersey (approximately €150/$190) and £100 in Guernsey (approximately €125/$155) plus an official fee of £22 (approximately €28/$35) each to the UK Designs Registry for the certified copies required to substantiate the applications locally.

Kosovo introduced a new designs law in 2011 with the assistance of OHIM. With official fees of €40 (approximately $50) it is also inexpensive.

The EU designation will cover Denmark, but a Danish national design registration is required to provide protection to the remote Faroe Islands. Denmark operates a deposit system for designs meaning they are registered quickly and efficiently. The basic fee is DKK 1200 (approximately €165/$205).

This means a significant part of Europe can be covered by six simple applications at a very reasonable cost (official fees of approximately €1911/$2395).

Many businesses will consider protection for Gibraltar, the TRNC and the British bases on Cyprus, the Channel Islands and Faroe Islands as unnecessary. The estimated combined population is little over half a million with over half of this figure made up of the TRNC's population, although this figure is disputed. Omitting filings to cover these territories will see official fees drop to approximately €1340/$1680).

You may have agent charges on top of the official fees and, with the probable exception of a Hague filing, agent fees will be more expensive than those charged by the Design Offices. I can speak for my firm and know we can provide very reasonable costs for coordinating the filings.

Further afield, the only remaining European states to have design legislation are Belarus, Kazakhstan and Russia. In these countries designs are more expensive due to higher official fees, agent charges and more vigorous examinations resulting in increased chances of objections. However, as the rest of the continent can be protected so inexpensively there can be room left in budgets to pursue registration in these three emerging markets that form a Customs Union.

D-d-d-d-designs

Despite a terrible reputation for its food, the United Kingdom has historically lead the way in many areas. In terms of intellectual property, it introduced the world's first trade mark registration system through enactment of the Trade Mark Registration Act 1875. However, design legislation pre-dates this - by some time - starting with the Designing & Printing of Linen Act 1787.

In fact, there was a branch of the UK Patent Office based in Salford (a city in walking distance from my office) purely for the receipt of textile designs. This area of the country was nicknamed 'Cottonopolis'.

During the 20th Century, I think it is fair to say that designs fell behind trademarks (and patents) in terms of prestige and perceived value. However, these reflections are being evaluated if not already revised.

Quotes from two branding professionals:

"Design is intelligence made visible", Alina Wheeler

"Design is an opportunity to continue telling the story, not just to sum everything up", Tate Linden

These quotes are, of course, not restricted to the intellectual property right definition of "design". However, design rights are now often seen as an increasingly critical piece of a brand owner's IP arsenal. They can provide an invaluable right given a registered design is not restricted to certain products in the same way as a trademark registration must be. The Locarno classification exists but not to pigeon hole in the same way as the Nice Classification for trade marks. There is "no principle of speciality".

However, the addition of Class 32 covering "graphic symbols and logos, surface patterns, ornamentation" to the Locarno classification in 2009 has made it easier for brand owners to protect the likes of logos through design registration.

Obtaining design protection is largely seen as a supplement to trade mark registration rather than an alternative.

SMEs are often more pressured on costs to rely on designs only - and new products are created and protected through registered designs whereas a verbal brand is not developed or a descriptive name is adopted. From an IP professional's perspective this may not be ideal but at least they are recognising that a form of intellectual property protection is useful.

With steps being taken by the UK and the International community to simplify and harmonise design legislation, the status of registered designs in IP's 'hierarchy' should continue to rise.

All is revealed: the newly applied for gTLDs

So yesterday was 'Reveal Day' when ICANN provided a list of new gTLDs applied for, sometimes referred to as .BRAND although they are not exclusively for trade marks.

There will be some of interest to legal entities with the applications for .INC, .LLP, .LTD, .GMBH, etc. which could enable them to register domain names beyond .COM.

Applications have been made for obviously desirable gTLDs: .APP, .GAME, .HOTEL, .MOVIE, .MUSIC, .TICKETS, the optimistic .LOVE and something I appear to order on the internet far too regularly: .PIZZA.

There are also geographic applications in which domain names will presumably be issued to applicants with a connection or residence. Such examples include from France, .ALSACE and .CORSICA and from South Africa, .CAPETOWN, .DURBAN, and a more familiar and easy to spell, .JOBURG. These applications seem to have been made on behalf of regional organisations and governments, although I spotted .CYMRU (this meaning Wales in Welsh) was applied for by Nominet, who administer the ccTLD for the United Kingdom.

When it comes to trade marks, it is no surprise that some of the world's biggest brand owners have applied so we see the likes of .MICROSOFT, but it is perhaps more interesting to see who has not applied.

Using Interbrand's top 25 brands (2011), there is no .GE or .HP as it appears two-letter gTLDs are not allowed but then there are no applications for .GENERALELECTRIC or .HEWLETTPACKARD either. H&M would have needed to spell out their ampersand (.HANDM) and there is no application here. There are also no applications for .DISNEY, .MERCEDES, .GILLETTE or .LOUISVUITTON and, arguably most suprisingly, for .COCACOLA or .COKE; .PEPSI is also not subject of an application. 

It is interesting how different brand owners have considered an application necessary or not. They were very expensive, but to massive brands still surely not out of their reach.

There could be a battle for .GUARDIAN which has been applied for by a British newspaper and American life insurance company.

L'Oréal have filed a number of applications. A number of these are for their brands but they have also decided to go for some generic words too: .BEAUTY, .HAIR, .MAKEUP, .SALON, .SKIN plus one in non-Latin characters.

In fact, generally speaking there have been many applications for gTLDs in non-Latin characters.

Finally, there is also an application for .WTF (used as a euphemism in English) and .SUCKS, which one can only anticipate would be highly controversial.

There are now seven months in which objections on various grounds can be filed with an appropriate Dispute Resolution Service Provider. For brand owners, the 'Legal Rights' avenue is likely to be of most interest and objections for these will be handled by our colleagues at WIPO. I wonder how many are going to be filed...

Madrid madness!

The Philippines accession was perhaps more surprising as Colombia joining the Madrid Protocol was anticipated. However, they have shocked us somewhat with the speed of their accession. As I understand it they were aiming for the end of the year with local practitioners more conservatively expecting an early 2013 joining date.

There is not much to add to WIPO's announcement. As they say, India, Mexico and New Zealand have made a number of internal measures meaning Madrid Protocol membership is on the horizon for them.

We must wait to see if this is the catalyst towards a more rapid increase in Madrid Protocol membership and, specifically for Latin America, if this will swim against the "pink tide".

Trade Marks and Tax Havens

Having recently returned from a trip to Gibraltar, I thought I'd write a piece on tax havens and intellectual property, specifically trade marks. It'll explore some jurisdictions in western Europe and the Caribbean and won't be an exhaustive tour of all tax havens; the definition of 'tax haven' varies depending on your sources anyway. The term 'tax haven' is often applied negatively these days but my aim is not to label these places - I have visited many of them, visited one regularly on business, and even lived in another and certainly did not regard myself as a tax exile.

Gibraltar

It can be tax efficient to own intellectual property by entities based in such tax havens. It is argued that this deprives Governments of significant income that could aid development, but I won't discuss any ethical issues. I'm also not a tax expert and will not look at the best jurisdiction for tax purposes. Furthermore, I will not advise on how easy it is to incorporate and manage companies in the referred jurisdictions.

I will look at the internal trade mark systems of such tax efficient locations. Given that a home jurisdiction can impact on how protection of trade marks in other countries is obtained there are things to be considered from this perspective, and the work involved in the management of such a trade mark portfolio. Any increases in trade mark costs are likely to be easily offset by the tax savings, but a trade mark owner (specifically those responsible in-house for the trade marks) who is thinking of such an ownership model should consider their additional budget required and resources (e.g. people) required to effectively manage this.

Beginning with Gibraltar, 'the Rock' is rebranding itself as a non-tax haven. Nevertheless, taxes are not as 'invasive' here as they are in other places.

Gibraltar has an ambiguous situation with respect to trade marks. As I have blogged before, OHIM considers Community Trade Marks to cover Gibraltar. This is based on an understanding of Gibraltar's status with the EU under Article 299(4) of the Treaty of Rome. However, there do not appear to have been amendments to Gibraltar's local Trade Marks Act to reflect this. As a Common Law jurisdiction, it should enact local legislation to reflect any European or International arrangements in place and so I believe the enforceability of a CTM in Gibraltar is questionable.

The existing trade marks law provides for the re-registration of United Kingdom National registrations.

Conversely, Gibraltarian companies can own Community Trade Marks and, being a part of the European Union, there is the possibility to file Madrid Protocol applications based on such Community Trade Marks. Perhaps a word of caution - although I admit I do not have personal experience of this situation - I would anticipate some designated countries would issue Provisional Refusals/Office Actions seeking clarification of the applicant's nationality; perhaps this could even come from WIPO. However, I think these could be overcome once and they would not arise again.

This could create a bizarre and unique situation where the home mark you base your Madrid Protocol application on does not actually cover your home jurisdiction.

Remaining on the Iberian Peninsula and the Pyrenean co-principality of Andorra has a trade marks law dating from the 1990s (its first trade mark legislation). Andorra has not joined the Madrid Protocol although it is a quick registration jurisdiction and would have little trouble meeting Madrid Protocol examination deadlines. Despite being sandwiched between France and Spain, neither French or Spanish enjoy official status; Catalan is the official language. Andorra is not part of the European Union and therefore not covered by a Community Trade Mark, although it uses the Euro.

Another mountainous European principality, Liechtenstein, has more registered companies than it does citizens. The local Trade Marks Office works efficiently and Certificates are issued quickly; note that there are no provisions for trade mark oppositions in Liechtenstein. At 400 Swiss francs (around £270/$425/€335) for the initial filing fee it is not the cheapest country around particularly when the population is little over 30,000. If you need to use an agent, quite possible if your Liechtenstein company is just a tax vehicle that employs few people, then expect high agent charges in this extremely wealthy country. However, Liechtenstein is a member of the Madrid System, and its simple domestic trade mark system minimises the risk of "central attack". Liechtenstein is not a member of the European Union although it participates in the European Economic Area.

Neighbouring Switzerland is also famed for its low tax status, most notably the Canton of Zug. Swiss domestic trade mark law is robust and efficient although with many well known and sophisticated businesses and a population attractive to foreign brand owners, its Trade Marks Register is much larger than that of smaller jurisdictions. Switzerland has been at the forefront of international trade marks being an original signatory to the Madrid Agreement effective 15 July 1892. Also dating from 1892 is the 'German-Swiss agreement concerning mutual recognition of patent, design and trade mark protection' that means use of an identical German trade mark, which is registered for the same goods/services in Germany and Switzerland, counts as valid use in Switzerland (and vice-versa) provided the owner has a place of business/legal seat in either country. I am not aware that this agreement would extend to German owned Community Trade Marks, and most will know that the proudly neutral Swiss have not joined the European Union and so CTMs do not provide coverage ordinarily.

Within the EU, the world's only remaining sovereign Grand Duchy, Luxembourg follows Liechtenstein and Switzerland in boasting wealth and low taxes. Covered by a Benelux Trade Mark (covering a market of over 28 million people) or a Community Trade Mark (covering a market of over 500 million) this would be one of the more difficult of tax havens to get a domestic trade mark registered because of larger numbers of existing trade mark registrations. Luxembourg has membership of the Madrid System (in addition to the European Community being a party to the Madrid Protocol).

Maintaining a francophone connection we will move on to the Channel Islands. The French language has official status in Luxembourg and the Channel Islands, albeit most use being in administrative or ceremonial circumstances. The larger of the two Channel Islands, Jersey, is in the midsts of revamping its IP laws. For now, the trade mark law allows for the re-registration of United Kingdom National Registrations (as per Gibraltar) and for the automatic protection of Community Trade Marks. This latter situation is different to Gibraltar as it is due to legislation enacted locally in Jersey. On the contrary, whilst a Jersey company can file for a Community Trade Mark (and it would provide protection to the island), it could not base a Madrid Protocol application based on a Community Trade Mark as it not a part of the European Union.

If it doesn't confuse matters further, International Registrations designating the United Kingdom also have automatic coverage to Jersey but a Jersey company cannot file a Madrid Protocol application based on a United Kingdom National trade mark. It's easy to see why Jersey wants to introduce new IP legislation as currently it is far more straightforward for foreign applicants to protect their trade marks in Jersey than it is for local applicants to protect them at home.

Just to the north, Guernsey has already introduced a far more sophisticated trade mark system, modelled to some extent on how the UK IP Office operates, and it wants to be seen as a very forward thinking and progressive intellectual property hub; it is planning on being the first jurisdiction worldwide to introduce Image Rights registrable protection.

The trade mark system allows for direct applications (although if you have a UK trade mark or CTM in place you can use this to 'support' your Guernsey application and benefit from lower official fees). Guernsey is not a member of the European Union or the Madrid Protocol.

We will remain in the 'Atlantic Archipelago' - the term British Isles, although currently geographically correct, is controversial in Ireland (the British Lions rugby team has been the British and Irish Lions since 2001). Ireland provides similar benefits to Luxembourg in being a member of the European Union and a party to the Madrid Protocol.

Perhaps useful to North American brand owners is that Ireland is an hour closer to them than continental Europe. This might not sound much but consider 09.00 in Los Angeles is 17.00 in Dublin, but 18.00 in Paris, (Gibraltar and Luxembourg). Ireland is also natively English-speaking, although so is Gibraltar and you would be hard pressed to find a business person not fluent in English (or French or German) in multilingual Luxembourg.

Moving to sunnier climes and the Cayman Islands, where there is a need for a UK registration or CTM registration or International Registration designating the UK to form the basis of a local application. Additionally, there is no membership of the Madrid Protocol.

The Bahamas can at least boast an independent trade mark system where registration in the UK or CTM is not a prerequisite. However, a single class system that uses the archaic former British classification is in place. This means you would need to 'translate' specifications of goods into the International Classification when ready to file in most other countries, there is no provision for service marks and the Madrid Protocol is unavailable. It can also take some time to obtain registration; the Registry's indication that this can "take up to 18 months" does not match my experience that has taken around double this timeline at times.

Returning closer to home (well closer to home for me and just a 30 minute flight away) and we have the Isle of Man. The birth place of the late Bee Gees brothers and the resting place of Sir Norman Wisdom, the island also lays claim to having the oldest parliament in the world, The High Court of Tynwald.

The Isle of Man is a self-governing Crown Dependency and the United Kingdom does not normally interfere with its internal legislation. However, when it comes to trade marks, the UK Trade Marks Act 1994 covers the Isle of Man automatically (and there is no separate local registration possible). Under Section 108(2), "references in this Act to the United Kingdom shall be construed as including the Isle of Man", and a Community Trade Mark is also effective although the Isle of Man is not a part of the European Union. Furthermore, the UK Government ratified the Madrid Protocol "with respect to the United Kingdom and the Isle of Man". A Manx company can therefore take advantage of the Madrid Protocol, although as with the EU-Gibraltar nationality entitlement example above, I would not be surprised in receiving the odd Office Action from overly ardent examiners requiring ownership clarification.

As with the examples of Ireland and Luxembourg and, to a lesser extent, Switzerland above, a Manx company (by virtue of its home jurisdiction being effectively the United Kingdom for trade mark purposes) would have to contend with having to deal with more crowded Trade Mark Registers domestically.

Do not overlook a general ownership concern for companies from Gibraltar, Jersey, Guernsey, the Cayman Islands and the Isle of Man. The foreign affairs of all of these are managed by the United Kingdom and the fact they do not have diplomatic recognition themselves can create issues in some foreign countries. Some explanations and proof that Gibraltar, etc. provide reciprocity to nationals of their country may need to be filed with a foreign Trade Marks Office.

Management of trade mark portfolios in tax havens can be complicated at the best of times but when these are your home jurisdictions - and thus impacting on your global trade mark portfolio - you will see there can be some added obstacles to navigate.

I'll conclude with a table summing up various places visited in this blog.

Jurisdiction	Currency	Time Zone	Local registration	Community Trade Mark	Madrid Protocol
Andorra	Euro	CET	Yes	No	No
Bahamas	Bahamian dollar (pegged to US dollar 1:1)	EST	Yes	No	No
Cayman Islands	Cayman Islands dollar (pegged to US dollar 1:1.2)	EST	Yes but must be based on UK National or IR, or CTM Registration	No	No
Gibraltar	Pound sterling (Gibraltar pound also in circulation (same value))	CET	Yes but must be based on UK National Registration	Questionable	Yes (based on a CTM)
Guernsey	Pound sterling (Guernsey pound also in circulation (same value))	GMT	Yes	No	No
Jersey	Pound sterling (Jersey pound also in circulation (same value))	GMT (proposal to switch to CET defeated in 2008 referendum)	Yes but must be based on UK National Registration	Yes	No
Ireland	Euro	GMT	Yes	Yes	Yes (based on national trade mark or CTM)
Isle of Man	Pound sterling (Manx pound also in circulation (same value))	GMT	UK is local	Yes	Yes (based on a UK trade mark)
Liechtenstein	Swiss franc	CET	Yes	No	Yes
Luxembourg	Euro	CET	Benelux is local	Yes	Yes (based on a Benelux trade mark or CTM)
Switzerland	Swiss franc	CET	Yes	No	Yes

Seniority Tool from OHIM

In addition to their TMView and EuroClass projects, OHIM is also heading up a cooperation tool with EU National Offices surrounding seniority.

As a quick briefing to those outside of the EU and not completely familiar with the concept of seniority, this allows earlier registrations in EU member states to be 'packaged' into a Community Trade Mark. The national registrations can then be allowed to lapse and renewal fees can be saved; significant savings can be achieved if there are a number of registrations across EU member states.

Named the 'Seniority Tool' this has an aim of harmonised seniority databases. It is not particularly well publicised so far and only 15 National Offices (out of 25) are participating at this moment in time: Benelux, Bulgaria, the Czech Republic, Estonia, France, Greece, Hungary, Ireland, Lithuania, Portugal, Romania, Slovakia, Slovenia, Sweden and the United Kingdom. The non-participation of Germany, Italy, Poland and Spain is particularly noticeable.

OHIM's literature on the Seniority Tool states:

"Several national offices and other national administrations such as enforcement authorities often treat earlier trade marks as 'expired' or 'cancelled', even when seniority has been claimed under the CTM Regulation for that mark. To better comply with Directive 2008/95/EC, EU national offices need to update their databases to include information regarding seniority. By harmonising the seniority information among national offices, the Seniority Tool will help better achieve this goal effectively."

Seniority has been used apprehensively by practitioners, and while the absence of case law will continue to make many nervous at relying upon it, having seniority information on national databases in addition to the OHIM database should add some confidence to the concept.

According to OHIM, four of the participating National Offices, namely, the Czech Republic, Hungary, Ireland and Portugal have implemented the seniority tool into their Office website so I've checked out examples in the latter two databases to see how this works.

Unfortunately, Irish Registration No. 94544 for HEINEKEN shows as 'Removed' and no seniority information is referred to in the database, not even in the 'Notings' field. Not the most encouraging of starts and we must hope that the use of the word "implemented" by OHIM means "implementation in progress" and not "implementation completed".

For Portuguese Registration No. 148893 VIMTO (which I cannot link to) we do have a status of "REGISTRATION LAPSED - Seniority claimed for CTM" so here we have an example of how the tool is meant to work. I could anticipate there may be a need for some education of authorities here to ensure they look beyond the words "REGISTRATION LAPSED" when checking a registration's status.

In the United Kingdom - yet to implement this tool - where relative grounds examination is not performed, the Office does nevertheless notify owners of national marks should a potentially similar later application be advertised for opposition purposes. Conversely, they do not, as a matter of course, notify owners of earlier Community Trade Marks. It will be interesting to note if they may end up sending out notifications to owners of national registrations which have lapsed but are subject to a claim to seniority. I would anticipate not, but the underlying intention in such scenario is to keep the national registration and the benefits this entails (albeit within a CTM to avoid duplication and excess renewal fees).

OHIM continue to invest in tools that fit their name of being an "Office for Harmonisation" although let's hope this one does not prove to be a white elephant when many could prefer the continued (and rapid) development of TMView and EuroClass.