18 December 2013

Season's Greetings

On behalf of COLMAN+SMART, I'd like to wish all our customers, associates, blog readers and supporters an enjoyable festive season and a fantastic start to 2014.


To be honest, we're not ones to send Christmas cards - all that paper and transport isn't great for the environment if this not a bit too neo-modern.

This year we have made two small donations to Macmillan, who provide cancer care and support, and Dementia Care as my late grandparents (representing the 'Colman' in our company name) suffered from these diseases.

Merry Christmas everyone!

6 December 2013

OHIM's new website

So OHIM has a new website (but this link might not load!) which launched on Monday.

It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?

For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.

E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.

There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.

Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.

Hopefully their techies will get the systems up and running as intended soon.

You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.

1 November 2013

Trade Marks "tactics": Iraq and Kurdistan Region

Many readers of this blog will be aware that the autonomous Kurdistan Region of Iraq has its own Trade Marks Office. This operates from the regional capital of Erbil.

This is in addition to the Federal Iraqi Trade Marks Office in Baghdad.

Registration for the Kurdistan Region can be obtained in two ways: purely local filing or an extension of a registered Federal Iraqi registration. The Kurdistan Region operates a trade mark law which is the same as that operated from the Federal Office in Baghdad.

Federal registration in Iraq should cover the whole country including the Kurdistan Region. Many brand owners may not therefore register locally in Iraq. An analogy to this would be that brand owners would not tend to register a Federal trademark in the USA and then separately a State registration in, say, Florida.

However, there are advantages of registering in the Kurdistan Region. This could be in addition to a Federal Iraqi application or not - if the Kurdistan Region is the only part of Iraq that is commercially attractive to a brand owner then they could concentrate on registering a trade mark there only.

There are two main advantages to registering in the Kurdistan Region. Firstly, there is the opportunity that the local authorities may watch locally registered marks at the Customs they are responsible for.

Secondly, registration is far quicker in Kurdistan Region than at the Office in Baghdad. The latter has an historic Register and one where many files have gone missing. Delays here can be long.

The Office in Erbil runs far more smoothly. They have recently announced plans to speed up their procedures by publishing applications received up to the 25th of each month by the end of the same month. Judging by the latest Bulletin they are certainly moving things forward quickly.

If they are not already, brand owners should consider the direct filing route in Kurdistan Region for optimum protection of their trademarks in Iraq.

Lastly, I should mention that Kurdistan, "the Land of the Kurds", is a loosely defined region covering parts of Iran, Iraq, Syria and Turkey. It is only in Iraq where the Kurds have autonomy and a separate Trade Marks Office. Protection of trade marks to the other areas of Kurdistan must be made through applications at the central Trade Marks Offices of Iran, Syria and Turkey, or through Madrid Protocol designations of the same.

17 October 2013

A little piece on Bosnia-Herzegovina

Being a football fan, I like to take inspiration from my favourite sport (e.g. here) and this week is no different. It's been World Cup 2014 qualification week and whilst I am delighted that England have qualified, I also like to see new teams qualify for the big stage too.

Brazil 2014 will see the first appearance of Bosnia-Herzegovina.

To be accurate, Bosnian players could have appeared for Yugoslavia in 1930, 1950, 1954, 1958, 1962, 1974, 1982 and 1990. There are also three other possible first-timers still in the hunt for qualification, although I feel their participation is unlikely.


Enough football and allow me to take a look at the IP landscape in Bosnia-Herzegovina.

The Institute of Intellectual Property manages intellectual property in the country. Delays are known to be encountered with the processing of trade mark applications filed locally although these have lessened of late.

International routes for trade mark protection and industrial design protection through the Madrid and Hague Systems are available. I was therefore quite surprised to see a large number of national design and trade mark applications from foreigners in the latest Gazette published on their website.

Bosnia-Herzegovina adopted a new trade mark law at the beginning of 2011. This introduced an opposition procedure. Previously, it relied on its relative and absolute grounds examination - this made a large contribution to the delays that were experienced. It also formalised procedures for making registration with Customs for IP rights.

EU accession would appear to be a goal for Bosnia-Herzegovina, but it is far behind other countries in the region. Croatia and Slovenia are already in the EU and Macedonia, Montenegro and Serbia are official candidate countries. Even Albania is ahead in the queue having submitted an application.

Croatia's recent accession to the EU means Bosnia-Herzegovina borders the European Union. To the naked eye, Bosnia-Herzegovina can appear to be landlocked on a map, but it actually has a small coastline on the Adriatic Sea around the town of Neum, which juts into Croatia. This makes the territory around the city of Dubrovnik an isolated exclave of Croatia and of the EU. Travelling to this part of the EU from another part of the EU by road therefore means traversing some territory of Bosnia-Herzegovina.

The horrific Bosnian War of the 1990s ended with the signing of the Dayton Peace Accord which set up Bosnia-Herzegovina as a federal state. There are two entities, the Federation of Bosnia and Herzegovina (mostly inhabited by Bosniaks and Bosnian Croats) and the Republika Srpska (mostly inhabited by ethnic Serbs). It's a jigsaw of a country where the internal borders have been meticulously drawn. On the ground, political conflicts between the two entities are common though.

So much so that it would cause little surprise if Republika Srpska were to declare independence. This would fracture the region even more and, selfishly speaking, we would have another IP jurisdiction on our hands. One that might not be entirely welcome in the international arena (see also Kosovo).

Perhaps if they can have a successful 2014 World Cup, this will be a unifying experience for Bosnia-Herzegovina.

7 October 2013

Hague movements, Brunei joins

After a quiet 2013 in the international world of designs comes some news from WIPO of the accession of Brunei to the Hague System for the International Registration of Industrial Designs.

It will be possible to designate Brunei in a Hague application from 24 December 2013.

As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.

Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.

For now though, welcome aboard to Brunei.

4 October 2013

Another separate IP jurisdiction: French Polynesia

This blog likes to explore exciting and exotic places that the writer has, unfortunately, little chance of visiting in person!

This week is no difference as it heads to Tahiti, the main island of French Polynesia.


Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.

The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.

3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.

Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").

This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.

That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.

The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.

The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.

Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.

It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.

It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.

It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).

What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.

The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.

25 September 2013

WIPO - Official fees

WIPO have recently issued Information Notice No. 29/2013 explaining how to pay official fees to them for registrations under the Madrid Protocol.

Those of you that deal with WIPO will know they can be a bit of bureaucratic organisation and the language of their Information Notice may be testament to this.

If you do not have a deposit account with WIPO - and many firms don't - then you will probably be required to transfer payment of official fees by bank transfer and this is why the Information Notice has issued. WIPO are regularly being short changed as users do not instruct their bank that they are to incur all the bank charges. This causes a headache and delay with WIPO and the user when it is necessary to request a second payment, which is usually fairly incremental.

If you have a deposit account with the UK Intellectual Property Office and you are filing a Madrid application through them as Office of origin then you can ask them to make the official fee payment (in Swiss francs) on your behalf and debit your deposit account. However, not many Offices of origin offer this service.

If you're based in Switzerland or Liechtenstein (or even in the Italian exclave of Campione d'Italia) then making payments in Swiss francs is not difficult. But most of us will not have a Swiss bank account.

Payment by credit card is not available at the time of filing Madrid Protocol applications because these are filed through an appropriate Office of origin and not WIPO directly. Nevertheless, I understand it is possible to wait for an Irregularity Notice to issue and then make payment by credit card through WIPO's E-payment tool. This is not exactly ideal as again it results in a delay.

WIPO also released their latest magazine 'Madrid Highlights' this week and this contained two fees related features.

Firstly, they will soon be launching a new on-line tool for filing Subsequent Designations with a credit card payment facility. This will not help with the initial filing of a Madrid application but I anticipate it making adding countries to an existing International Registration substantially easier - and hopefully quicker.

Their Madrid Tips section also explains some scenarios regarding the official fees payable for renewals. These can seem ridiculously complicated at times although if you can use WIPO's E-Renewal tool this should auto-calculate the correct fees for you.

13 September 2013

The Catalan Way (and IP)

Wednesday (11 September 2013) marked an impressive show of support for the independence of Catalonia, currently an autonomous part of Spain, when a human chain, the Catalan Way, spread for 400km/250 miles.


Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.

Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)

With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)

The Catalan language is also more widely spoken than some other national languages within the EU.

I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.

1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.

Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.

As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.

However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.

This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.

11 September 2013

Holiday season

August is Europe's traditional holiday season and is reflected with blogs where news to blog about dries up somewhat. Aside from some short jaunts to Germany, Switzerland, Yorkshire and God's own county of Hertfordshire, I have not been on a proper holiday (sun, sea and sangria-style).

I appreciate this is a bit of a 'filler' but I decided to check if any of our IP Offices around the world made a planned shut down. It would appear not.

Unsurprisingly, employees at the USPTO are only granted leave for Federal holidays, which for 2014 will look like this. This has been this way since the mid-late 1980s.

In the UK, where we complain about our lack of public holidays compared to our European cousins, the UK IPO is closed on one day less than the USPTO. Of course, staff will receive more annual leave than their American counterparts and our public sector is known for being generous with this.

In Geneva, home of WIPO, their public holidays are more extensive including many typical European and Christian holidays as well as the Muslim festival of Eid al-Adha and a purely local Geneva holiday.

There is an established Public Holiday Law in Japan which the Japan Patent Office follows. I was also interested to learn of Japan's 'Happy Monday System' whereby some holidays have been moved to a Monday to create a longer weekend. We have something similar in the UK, albeit without such a cool name, whereas in continental Europe if a holiday falls on a weekend it's tough, it won't be rolled over to the following Monday.

It will come as little shock to many that OHIM closes for the longest period of time - 18 days, with seven of these coming at Christmas and New Year. Being in Alicante on Spain's Costa Blanca, the weather isn't too bad either. For jobs at OHIM go here!

I hope readers of this blog enjoyed their holiday season. I hope I have more substantial things to blog about in the coming months.

9 August 2013

Closed Trade Marks Registers still existing

There are a handful of former Trade Marks Registers that have since merged into other Registers but for many intents and purposes are still in existence.

Some old Registers may not add new cases but their old registrations remain on record
Having an unhealthy collection of modern atlases as a child (in the days before the internet), I was aghast when I began working in this field and first came across a trade mark in Sabah. What? Where? I thought I'd heard of every country...

Sabah, formerly the British Crown Colony of North Borneo, had its own Trade Marks Registry operating from the capital Jesselton (now known as Kota Kinabalu). The same is true of neighbouring Sarawak.

Sabah and Sarawak joined with Malaya to form Malaysia. The region of Malaya, with connotations of its British colonial past, is now more properly referred to as Peninsular Malaysia.

The separate Trade Marks Registers remained in place although no new applications were possible; filing a Malaysian application was now required. For a stage, I understand it was possible to merge identical registrations in Malaya, Sabah and Sarawak into a single Malaysian registration but this is no longer possible. This is why there are still registrations in Malaya, Sabah and Sarawak being renewed (and assigned, etc.). However, they are all maintained and renewed at the Intellectual Property Corporation of Malaysia with headquarters in Kuala Lumpur but branch offices in Sabah and Sarawak.

These registrations provide protection in their relevant geographic area and there is a possibility that the owners of identical or highly similar marks may not be the same in different parts of Malaysia.

It is perhaps worth noting that Malaysia now contains three federal territories. Two of these are in Peninsula Malaysia (Malaya) but the other, the wealthy island of Labuan, was ceded by Sabah to the federal Malaysian government in 1984. As such it is possible that an owner of identical Malaya/Sabah/Sarawak registrations would not have coverage for the whole modern day country of Malaysia. (In this event it would, of course, be possible to make a new application in Malaysia.)

Flag of Transkei, one of three bantustans that had their own trade marks law
Of more notorious note are the three trade mark jurisdictions derived from former bantustans in South Africa. Four of these achieved independence, albeit unrecognised by the international community, the so-called "TBVC States" of Transkei, Bophuthatswana, Venda and Ciskei. The latter introduced intellectual property legislation in respect of copyright only so it was just the first three that had Trade Marks Registers.

Flag of Venda
Following the end of apartheid, these Registers were generally incorporated into the South African Register unless there were overlapping rights in which case they continued to cover the applicable geographic area (with provisions to cover the whole of South Africa if the overlapping rights lapsed or were cancelled). I have no idea how many Transkei/Bophuthatswana/Venda registrations now exist - I imagine they would be mostly held by local companies and they are relatively few in number. They have a special numbering in place. They are managed by the Companies and Intellectual Property Commission in Pretoria.

The flag of Bophuthatswana
Bophuthatswana was arguably the most well known of the bantustans as it contained Sun City (casinos being illegal in apartheid South Africa) and was the setting of an infamous coup in 1994 that saw the bantustan's last leader, Lucas Mangope, trying to cling to power and an invasion by Eugène Terre'Blanche's Afrikaner Resistance Movement.

Elsewhere in Africa, OAPI has grown at various junctures. Mali joined up in 1984 and was followed in 1990 by Guinea. Other countries have followed suit, but in the case of Guinea and Mali they had Trade Marks Registers of their own prior to OAPI accession (the others were Cautionary Notice countries).

Flag of Guinea
Mali's Register has now ceased to exist, but Guinea's is still - somewhat questionably - operational for renewals, assignments, etc.

Finally, at the tip of Africa is Tangier (sometimes Tangiers). Prior to independence, Morocco was largely governed by France and Spain, except the city of Tangier which was under the administration of various countries as the Tangier International Zone. The city enjoyed libertarianism unlike the rest of Morocco and even much of Europe and became the home for a number of escapist residents. It also had its own trade mark law which remained when it was integrated into Morocco upon independence in 1956.

Flag of Tangier International Zone
Parallel to this was a trade mark regime in "Morocco (Casablanca)"; the Casablanca often being added as this was the location of the Trade Marks Office and to distinguish it from Tangier. Registrations in Morocco (Casablanca) covered the whole of Morocco except Tangier.

In late 2004, a new trade mark law was introduced in Morocco to cover the entire country. Existing Morocco (Casablanca) and Tangier registrations would remain in force, each covering the whole country. Many trade mark owners would register in both. Upon renewal they will now only have to renew one of the registrations. This could be as late as 2024 in view of the 20-year registrations terms governed by the old laws in Morocco and Tangier.

These registrations can all be marked as covering Morocco, but many records may not have been amended to show this so you may still come across registrations in Tangier and/or Morocco (Casablanca).

Pay attention with country codes
Be careful with respect to country codes as codes used for these jurisdictions are often created internally or by database companies and then may come into use for other countries internationally. SS was commonly used for Sabah, but this is now the country code for South Sudan, independent since 2011. I have seen TK used for Transkei, but Tokelau is assigned this country code. Tokelau does not have a trade mark law (New Zealand registrations currently cover the territory) but it does possess a Domain Name Registry using this as its ccTLD.

We can come across many obscure countries when managing trade marks around the world. When it comes to post-registration matters like renewals then it is apparent that we have a few more jurisdictions to take into account.