A look back at 2012

OHIM has recently declared "a year of achievement".

The Cooperation Fund which uses the vast surplus built up by OHIM to improve systems and processes in trade marks across the EU has been well utilised.

TMView has been an extraordinary success. When I first blogged in December 2011, just 14 out of 27 Registers were available on TMView. Now 25 out of 27 are available including the major EU Registers.

Cyprus and Greece are the only countries not on board yet and they may not be joining up any time soon. My Cypriot associate has a more accurate reflection of the local Register on its own database than the local Office does, and Greece's well documented economic woes may mean it considers bringing its Trade Marks Register on board to be a low priority but the Cooperation Fund could help here.

Croatia should join the EU in July 2013. Its Register is already available on-line and I can anticipate that it should not be too much trouble in adding it to TMView's capabilities.

With full clearance searches in the EU costing a small fortune and therefore often being impractical, TMView is a very useful tool in conducting preliminary searches for trade mark proprietors with costs constraints on them. It is also challenging the commercial search companies to become more innovative in their search solutions; if you're going to pay for something then it needs to offer more than what you can get for free elsewhere.

Further international cooperation has been announced by OHIM and WIPO to link TMView with WIPO's Global Brand Database. The latter is very much more "work-in-progress" in that it currently contains only International Registers and those from Canada, Algeria and Morocco. Nevertheless, it is going to be a welcome link. In particular, US trade mark proprietors may like the ability to conduct initial screening for two key markets, Canada and the EU, through the same (free to use) platform.

Moving on to the EuroClass tool, which has also been praised by me in the past. While only one additional country has reached the final goal of harmonisation with OHIM, the EuroClass project now has all EU members on board with the exception of Latvia. WIPO is also on board, as is the USPTO and the Swiss Federal Institute of Intellectual Property. They have now been joined by the Japan Patent Office. Japan can represent a mysterious Far Eastern jurisdiction at times but now we have available to us all acceptable terms to enable us to draft specifications for filing in Japan (either nationally or through the Madrid Protocol).

Croatia is also on board with EuroClass in good time for its accession to the EU in mid-2013.

The IP Translator decision also made a significant impact on specifications in the EU.

OHIM's Seniority Tool is also making progress. Back in May when I first blogged on this project, it seemed to be making a slow start. However, if I go back to one of my examples from then, namely Irish Registration No. 94544 - which was not showing any seniority information at the time - we now see that seniority is reflected in its 'Status' and in a separate 'Seniority' field which links to the relevant Community Trade Mark record.

OHIM are also in a mood to celebrate 10 years of the Registered Community Design during 2013.

There has also been a lot going on down in Geneva this year at WIPO. Early in the year they introduced their 'Highlights' newsletter to better publicise themselves. This launched a number of new online services including Madrid Portfolio Manager. These should continue to improve users dealings with WIPO and to make WIPO more efficient too.

The Madrid Protocol has seen some notable increases in its membership during 2012 with the Philippines,  Colombia and New Zealand all coming on board with Mexico joining them in February. Who will accede to the Madrid Protocol in 2013? Will it see the waiting game with India come to an end? We may see one or more of the large ASEAN economies - Indonesia, Malaysia and/or Thailand - join up.

As for the Hague Union for designs, progress has been slower. Tajikistan and Tunisia became available during 2012. South Korea is expected to join up and the United States is getting closer. These will be significant countries to accede to Hague.

2012 has been a good year in the administration of IP rights, particularly trade marks. It is not just big players like OHIM and WIPO that are showing innovation and improvements. Closer to (my) home and the UK Intellectual Property Office has announced major enhancements to its services. Of course, as a fairly large developed country these should perhaps not be unexpected. However, with OHIM's Cooperation Fund and WIPO's support for systems for IP Offices in the developing world, 2013 could be a year of enhancements worldwide too.

Happy New Year!

Caribbean IP Part 22: St Vincent and the Grenadines

ISO 3166 country code: VC.

St Vincent and the Grenadines is a member of the Berne Convention, Paris Convention, Patent Cooperation Treaty and WIPO Convention.

The Commerce and Intellectual Property Office administers IP rights in the islands. The Office boasts an excellent and easy to navigate website and is a real stand out country in the region particularly when it is far from the wealthiest and has an estimated population of only 120,000.

When it comes to trade marks, St Vincent and the Grenadines has a modern law dating from 2003. It is modelled on the UK Trade Marks Act 1994 and those of you familiar with filing UK applications using a Form TM3 will spot instantly the similarities with the local form.

St Vincent and the Grenadines has an efficient trade mark system. It also operates an independent registered designs system, although there is little information regarding this on their website - probably because there are very few applications made.

The islands have shown a commitment to an effective and efficient intellectual property system and this may make them the next potential members of the Madrid Protocol. This could bring increased investment into the islands which are somewhat dependent on agriculture, especially bananas.

Caribbean IP Part 21: St Lucia

ISO 3166 country code: LC.

St Lucia is a member of the main IP treaties, namely, the Berne Convention, Nice Agreement, Paris Convention, Patent Cooperation Treaty, Vienna Agreement, WIPO Convention and more. It boasts record participation amongst the member countries of the Organisation of Eastern Caribbean States.

The Registry of Companies and Intellectual Property ("ROCIP") administers IP rights in St Lucia. However, from an internet perspective they could just be the 'Registry of Companies' as no mention is made of their intellectual property responsibilities.

Automation of IP records is a desire of the ROCIP to greatly improve efficiency of what is largely a manual, paper-based system at present.

Of a more modern note, St Lucia no longer allows for UK trade marks to be extended to the country and operates a purely local system. Likewise, for designs, UK registered designs no longer extend to St Lucia automatically; the island now has a purely independent filing system in place.

St Lucia is not a rapid registration country. However, it also does not usually suffer from large backlogs of applications. Its membership of various international treaties is noteworthy. An obvious exception is the Madrid Protocol. This should not be ruled out in the future as St Lucia has demonstrated a commitment to international IP treaties. However, it would require legislative amendments so it would be preferable that it did not rush to join up until these are in place for fear of making any possible Madrid Protocol designations unenforceable.

Caribbean IP Part 20: St Kitts and Nevis

ISO 3166 country code: KN.

St Kitts and Nevis, sometimes referred to as St Christopher and Nevis (both are referred to in the Constitution), is a federal country consisting of two islands. It is the smallest independent country in the Americas both in terms of population and area. Anguilla was formerly a part of the federation before being separated in the 1980s.

St Kitts and Nevis is a member of the Berne Convention, Nice Agreement, Paris Convention, Patent Cooperation Treaty and WIPO Convention.

The Registry of the Supreme Court administers IP rights in St Kitts and Nevis. They have no website.

St Kitts and Nevis has a modern trade mark law dating from 2002. However, it retains some bureaucratic features from previous regulations, namely, the need to submit Declarations and Statements with each trade mark application. It does allow for purely local protection - a UK registration not being a prerequisite for filing - which makes obtaining a trade mark accessible for locals and foreigners alike.

I cannot see that the country has a law for the registration of registered designs but Common Law protection may exist.

The country is very dependent on tourism although the island of Nevis has developed an offshore financial industry in recent years. Madrid Protocol membership does not seem to be on the cards although accession of other countries in the region could have a persuasive impact on the Government of St Kitts and Nevis.

Class headings

The IP Translator case created a judgement in relation to the use of Class headings of the International (Nice) Classification covering ALL the items in its particular class.

Previous OHIM practice was that Class headings included all other goods or services in a particular class. Now specifications must contain clarity and precision meaning this is no longer necessarily the case.

It is now possible to file for Class headings and then indicate that this is to include all the goods/services within that Class when filing Community Trade Marks by simple ticking a box when filing on-line.

This has led a number of International applications to be filed (that contain Class headings) with a statement to claim that the applicant wishes to include all the goods or services in the Class. Some of these statements have been specific to the European Community and some to other countries.

Bringing us more up-to-date, this has led WIPO to issue Information Notice 23/2012 stating firmly that it is the Offices of each designated country that will determine the scope of protection.

As WIPO allude to, this will almost undoubtedly see home applications filed for every single item of goods or services in a desired class and then any corresponding International applications for the same specification. It can also be anticipated that applications in non-Madrid countries, that use the International Classification and accept broad specifications, will be filed for these long specifications too.

In times past when filing instructions were received from foreign associates by fax this would have been unbearable having to re-type up long lists of goods or services. Nowadays with on-line systems and e-mail it is far less burdensome and less error prone to cut-and-paste. However, some countries still require printed forms to be filed - these may not have sufficient space for a long list of goods or services without the need for an awkward annex. We could then expect errors when the details are typed into the Register by an official. There are also countries where the Journal/Gazette is still physically printed - with some Government printers already under a huge strain this will surely add delays to applications. The practical implications could stretch across the globe.

Caribbean IP Part 19: Puerto Rico

ISO 3166 country code: PR.

Puerto Rico is an unincorporated territory of the United States. As such it cannot accede to international agreements being a non-sovereign nation.

The Department of State administers trade marks, commercial names and US deposits. The latter refers to the deposit of a US Federal Registration with the local Office, similar to the UK registration extension provision in a few Commonwealth countries.

Filings for these rights can be made on-line. It is also possible to make on-line trade mark searches although they state that the database is not yet complete and therefore you should corroborate any findings with the physical Trade Marks Register. It is also necessary to search trade marks, commercial names and US deposits through separate databases.

If you have clicked on the links, you will see that they are in Spanish only. Spanish is the language of an estimated 95% of the population, although English also has official status.

I understand that Puerto Rico does not have design legislation of its own and would be covered automatically by a US design patent granted federally by the USPTO.

Puerto Ricans, despite being US citizens, did not have the right to vote in the Federal election of 6 November 2012. However, on the same day, they voted with regard to their territory's status. They voted in favour of statehood, although like in the US, the island is very divided politcally. If statehood happens then it would see it covered by US Federal registrations (including Madrid Protocol designations) and relegate its Trade Marks Office to the same level as the State trade mark systems of Alabama, Alaska, etc. Statehood would have to be accepted by both the US House and Senate - and it's anticipated it could have a rough journey - so do not expect to need to treat Puerto Rico as a separate trade mark jurisdiction for some time yet.

Caribbean IP Part 18: Montserrat

ISO 3166 country code: MS.

I have seen Montserrat by boat and I'm not a fan of boats. However, Montserrat holds a place in my heart as I'm a bit of a geography anorak and it's one of the smallest trade mark jurisdictions (by population) in the world. Roughly 5,000 people live on the island.

This was not the case prior to 1995 when it sat above Tuvalu in the population tables and roughly alongside Anguilla. That year the eruption of the Soufrière Hills volcano led to 8,000 people evacuating the island. Over half of the island is now an exclusion zone and most the evacuees have not returned. The destroyed capital, Plymouth, is within this exclusion zone.

Given all this it can be surprising to note that Montserrat operates an efficient trade mark system from the Supreme Court Registry in the de facto capital of Brades. There is a dual filing regime in place. A substantive application could be filed previously using the old fashioned former British classification system (see The Bahamas), but an amendment of the Trade Marks Rules in October has changed this to the International Classification. Alternatively, a UK registration can be extended to Montserrat. Naturally, this will use the Nice Classification. The UK route was the only way to register service marks but the new Trade Marks Rules have now made these available for local (substantive) applications too.

It is also possible for Community Trade Marks and International Registrations (designating the UK or European Community) to be extended in the same way; the local Trade Marks Act was revised on 1 January 2002 to state:

"United Kingdom trade mark means any trade mark registered under the United Kingdom Trade Marks Act and any trade mark which, by virtue of any law in force in the United Kingdom is deemed to be a trade mark registered in the United Kingdom or which could, though not in fact registered in the United Kingdom, be given effect to in the United Kingdom."

When it comes to designs, I understand that UK designs provide automatic protection in Montserrat. However, I cannot locate the United Kingdom Designs (Protection) Act No. 181 of 1887 legislation on-line but I would anticipate it has not been amended to mean Registered Community Designs also have effect in Montserrat.

Patents are by extension of granted UK rights and must be on file within three years of grant in the UK.

Montserrat's IP Office lacks a web presence. Perhaps this will be developed in the future; the island is heavily subsidised by the UK (it being a British overseas territory) and some of this may be invested in a website. However, the local Government may have more pressing priorities - perhaps including improving the fortunes of the island's football team!

Mexico joins Madrid Protocol

More Madrid Protocol progress as WIPO announces Mexico will join the Madrid Protocol effective 19 February 2013.

Mexico represents a significant growth market and will be a very welcome addition to the Madrid Protocol family.

With its growing economy seeing many Mexican companies develop interests outside of their country we may now finally see some increases in Madrid applications filed in the Spanish language.

Caribbean IP Part 17: Jamaica

ISO 3166 country code: JM.

Jamaica is the largest English-speaking country in the Caribbean and celebrated 50 years of independence in August. 

The Commonwealth of Jamaica is a member of, among others, the Berne Convention, Nairobi Treaty, Nice Agreement, Paris Convention, Vienna Agreement and WIPO Convention.

The Jamaican Intellectual Property Office (JIPO) adminsters intellectual property rights in Jamaica. They have a colourful and informative website containing the forms required for protection. It is necessary to have an Address for Service in Jamaica in order to act before the JIPO.

The Trade Marks Act, 1999 was modelled on UK trade mark legislation (from 1994) and is therefore a modern law. However, Jamaica would need to make amendments to its regulations in order to accede to the Madrid Protocol (and ensure International Registrations would be enforceable there). With the addition of such regulations, Jamaica would be ready to manage Madrid Protocol designations although they would need to ensure they can always meet the 18-month examination deadline.

There is a provision for registering design copyright. The legislation is much older than its trade mark counterpart and protection is available on a national basis only; it seems unlikely that Jamaica has any short-term intentions to join the Hague System. Unlike many other Commonwealth jurisdictions in the region, it does not appear protection is accorded for UK Registered Designs (automatically or by extension).

WIPO's statistics, for trade marks at least, look more accurate than many of the others I have discovered.

A successful tale of branding is also told on WIPO's website in relation to Jamaica Blue Mountain® coffee. If Jamaican brands can become popular around the world - coupled with any pressure from the likes of the US and EU - then this may compel Jamaica to join the Madrid Protocol.

Caribbean IP Part 16: Haiti

ISO 3166 country code: HT.

Occupying the western third of the island of Hispaniola, Haiti is the only independent country of the Caribbean region where French is an official language (along with Haitian Creole). Haiti was the first independent nation in Latin America and the Caribbean following a successful slave revolt in 1804.

Haiti is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Service de la propriété intellectuelle (Service of intellectual property) is the responsible office in Haiti. Unfortunately, they do not appear to have a web presence of yet. The Haitian Copyright Office, Bureau haitien du droit d’auteur (BHDA), is able to boast a website, however. This is available in French only; there is no English version nor are pages available in Haitian Creole. This is a reflection generally where French appears to maintain prestige in legal matters in Haiti. Haitian Creole is based largely on French but it possesses standard orthography (it is a language available on the translation tool of the Google search engine) and has been official since the 1960s.

IP legislation in Haiti goes back many years - trade mark legislation was last amended in 1956 and that for designs in 1924. Independent registration is necessary for both trade marks and designs and accession to the Madrid Protocol or Hague System would appear to be far off for Haiti.

A trade mark registration is in force for 10 years but has an additional maintenance requirement - the due date being three months into the sixth year of registration - in which the trade mark owner must file evidence of use of their mark in Haiti, or, an executed Affidavit of Non-Use.

Haiti has sought full associate membership of the African Union and shares many IP characteristics with some African states: old laws, communication difficulties and agents that are not always as responsive as we may like. However, it does function in the IP arena and let's be realistic. With Haiti's economic state still suffering from the devastating earthquake of 2010 it is not surprising that the Government has more pressing priorities than modernising its trade mark law, for example.