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.

Hong Kong: expected official fee changes

Hong Kong is expected to make changes to their official fees from 30 March 2015.

Trademark filing fees will go up, whereby renewal fees will go down. Renewal fees for design registrations will also decrease.

What to do?

If you have any new trademark filings, you are advised to get them instructed as soon as possible so you can avail yourselves of the current (lower) official fee.

If you have any trademarks or designs falling due for renewal imminently but from 31 March 2015 onwards, these can be renewed after 30 March to ensure a lower official fee is paid.

For any renewals due from 31 March onwards entrusted to us, we will make conscious efforts to pay the new lower fees. Of course, it might be that the introduction of the fee changes is delayed.

OAPI to join Madrid

Good news came from Geneva and Yaoundé recently with word that OAPI will join the Madrid Protocol on 5 March 2015.

I understand there are still some regulations to be adopted locally at OAPI HQ but these were under discussion during a recent Council meeting.

A previous blog ensuring OAPI is not confused with ARIPO (or others) still attracts hits and is linked here for reference. It may also be worthwhile reminding readers of the member states - with a total population of an estimated 165 million people:

• Benin
• Burkina Faso
• Cameroon
• Central African Republic
• Chad
• Comoros
• Congo
• Côte d'Ivoire 
• Equatorial Guinea
• Gabon
• Guinea
• Guinea-Bissau
• Mali
• Mauritania
• Niger
• Senegal 
• Togo

Perhaps not surprisingly given the geographic coverage, official fees in OAPI are quite high. Under the Madrid Protocol, although they will be converted into Swiss francs, OAPI plans on individual fees corresponding with the official fees for direct filings.

My firm has handled a number of cases in OAPI and we may experience a decrease in local registrations. However, membership of the Madrid Protocol should see an increase in trademarks being protected across the OAPI members and this should benefit the countries concerned.

Horn of Africa and Sudan region update

It's been a while since I last blogged, but I am pleased to be back with a piece on the Horn of Africa and the Sudan region.

This is an area of the world that has seen a few developments with respect to trademarks, yet conversely is an area of the world where protecting trademarks can be difficult-to-impossible.

The most populated country of the region - and the most populated landlocked country in the world - Ethiopia introduced a new trademark law in early 2013. This provided a June 2014 deadline in which to re-register rights in the country. This deadline has now been extended to 23 December 2014. The requirements for re-registrations are fairly bureaucratic (e.g. a Power of Attorney must be legalised up to the Ethiopian Consulate) so it's recommended to act now if any rights need re-registering.

Across Ethiopia's western border is Africa's newest nation of South Sudan. This country has decided to use the law of (north) Sudan to which it was a part prior to independence. However, they have adopted some practicalities and don't follow the law to the lettter. For example, the law requires trademark applications to be supported by legalised documents but South Sudan does not have diplomatic missions in many countries so notarisation of documents is proving to be acceptable. That said, South Sudan does have consulates in the United Kingdom and United States, amongst a few others.

The trademark system appears to be more of a deposit system and trademarks are not being published for opposition purposes (as they should be according to the law). It does appear that cancellation can be requested at the court though.

It is hoped that when South Sudan does adopt a law of its own that it will recognise any of the rights it is registering in the meantime.

Elsewhere, in the region, it's not possible to register trademarks in Somalia despite this country having a trademark law. This has been the case for some time now and it is expected that the Trademarks Registry building was destroyed in the fighting of the early 1990s.

In the northern region of Somaliland, which has declared its independence from Somalia, it is possible to publish Cautionary Notices. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trademark legislation but in the absence of a Trademarks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”.

Eritrea is another Cautionary Notice jurisdiction in the region. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. Cautionary Notices are the protection route for brand owners without a local presence. However, the publication of Cautionary Notices in Eritrea is not always possible as the authoritarian government restricts the publication of Cautionary Notices from time-to-time.

A country where it is possible to protect trademarks is Djibouti. With an estimated population of 800,000, it's not high up in commercial importance to many brand owners and trademark filings are not high in volume. However, the Port of Djibouti is very important to Ethiopia's imports and exports and its position as a transit country should not be overlooked.

It is quite expensive to protect trademarks in the country compared to its size. Nevertheless, trademark applications mature to registration fairly quickly. An unusual colonial legacy sees that if you support an application with a certified copy of a French registration then it can smooth the way to registration, although this is not a prerequisite.

Sudan also has a trademark law and is the only country in the region to be a part of the Madrid System. That said, there are some question marks on how enforceable these are. I understand they do not follow the same process as national filings and there are rumours that Madrid designations are piled up in a corner of the Sudanese Office.

Sudan is also a member of ARIPO. However, it has not yet joined the Banjul Protocol that governs ARIPO trademark filings.

As for national applications, once you have satisfied the bureaucratic filing requirements, trademark applications are prosecuted slowly. An eight-month opposition period hardly assists with the fast-tracking of applications.

If the Horn of Africa and the Sudan region is an area of the world where you need to protect your trademarks then it is advisable to begin your efforts as soon as possible.

Fast track examination of trade marks - UK

The UK Intellectual Property Office is seeking views on whether there is a need to reintroduce the fast track examination procedure (perhaps - or perhaps not - inspired by the bobsleigh, luge and skeleton in Sochi).

With examination of UK trade mark applications usually taking less than a month, many will ask, "What would be the point?". I feel they would be justified in making such comments.

I can think of a number of things the IPO could improve on (better electronic communications, on-line applications for International applications, etc.) that I feel should be greater priority. Needless to say, these are personal thoughts and may not be shared among other users of the IPO.

I have nonetheless filed submissions to the consultation. If you would also like to respond then you have until 15 April 2014 and make sure it's by 11.45pm (British time).

My response is self-explanatory and repeated below:

I am responding to your consultation regarding the 'Fast Track Examination of Trade Marks'.

It is appreciated that there are circumstances when more speedy (than 'standard') registration is preferable, for example, businesses needing shorter timescales for product launch, legal proceedings, etc.

I believe applicants would be prepared to pay a premium to obtain quicker registration times. The amount proposed is not much in the scale of things if an applicant finds themselves in a scenario where speedier registration is required.

However, Fast Track examination is not cutting significant time from the time from filing to registration because of, notably, the two-month opposition period. Obviously, this is not a period of time that can be moved (without a notable legislative change).

Clearly, Fast Track examination does not guarantee acceptance and does not ensure oppositions will not be filed. In the event of objections or oppositions, these would likely mean a Fast Track application would take longer than a smooth standard application.

With examination periods for standard applications (and also 'Right Start' applications, it can be added) of 20 days or less, how much time would a Fast Track application shave off the whole process?

I would not envisage an uptake of a new Fast Track examination procedure in any greater numbers than from when the scheme ran between 2008-2009.

I make some suggestions to your proposals that may see a greater uptake of Fast Track applications and ensure it provides greater value for money:

1. Applications must be made on-line.

2. Examination by the end of the next working day

This would really put the "Fast" into Fast Track. If necessary, take Examiners from standard applications to fulfil significant demand for Fast Track on a given day.

A "Money Back Guarantee" or compensation scheme should be available when this is not fulfilled.

2. Mandate the use of accepted TMclass terms

This will help enable examination to be completed within the timescale above.

3. Auto-notification of prior rights

Searches can still be performed but, where no other issues have arisen and the application is otherwise accepted, the application should proceed proactively to advertisement. Owners of prior rights, as applicable (e.g. owners of UK marks but not Community Trade Marks), can be notified automatically.

If necessary, put in place a 'Warning Box' to applicants advising them of this if they choose the Fast Track option.

4. Daily publication of the Trade Marks Journal

Under the current suggestion, an application could be made on a Friday, examined and accepted by the following Friday and then still take another week until advertisement in the Trade Marks Journal. That is not fast tracking, in my view.

A daily publication would help ensure a process is truly Fast Track. If necessary, Monday-Thursday Trade Marks Journals only need contain Fast Track applications and the regular Trade Marks Journal can be continued on Fridays only.

5. Registration issued quickly - online notification

The period from the end of an opposition period to actual registration should be improved under Fast Track.

Currently, an application published on 6 December 2013 - therefore with an opposition period running until 6 February 2014 - is scheduled for registration on 21 February 2014. This is over two weeks following the expiration of the opposition period.

For Fast Track applications at least, registration should be completed within, say, two days of the expiration of the opposition period (or other reasonable time required for the Office to process oppositions). Fast Track applicants could also be sent online notification of registration pending receipt of the physical Certificate of Registration. You could also consider sending Fast Track applicants their Certificates of Registration by guaranteed next day post (UK applicants/representatives only).

In conclusion of the above, I think it is misguided to only look at the examination aspect of a Fast Track process. Fast Track publication and Fast Track notification of registration need to be put in place too. The current resources and operations of the Intellectual Property Office may not be geared up to manage this, and making changes to accommodate Fast Track may only be justified if there is significant take-up of Fast Track examinations. Amendments to the Trade Mark Rules may also need to be made which is an added burden.

I would stress that even with the adoption of the above suggestions that, due to the opposition period and the current examination period for standard applications, that the time shaved off in a Fast Track application is still going to be fairly negligible overall, perhaps at best one month. I could anticipate that the uptake of the Fast Track process will not be significant. However, it is appreciated that the Intellectual Property Office are committed to providing a high quality service and its introduction could be useful to applicants that find themselves needing registration more quickly.

It is felt that a standard examination period of under one month is perfectly acceptable in standard cases and matches or beats the performance of most of your counterparts in Europe and the Rest of the World.

Comparing to some other countries with expedited/accelerated examination, Australia does not make additional charges for expedited examination. However, applicants must submit a witnessed declaration detailing the reasons for the request. I feel, if there is going to be a Fast Track option available, that a fee-paying Fast Track approach is better, one where the applicant justifies use of this route and not an Intellectual Property Office.

Switzerland charges 400 CHF extra for expedited examination, cheaper than the 550 CHF basic fee. The Benelux charges €193 extra for fast registration (for 1-3 three classes), again cheaper than the €240 basic fee. Although I feel the £300 proposed additional fee for Fast Track is fare, you may find it useful to benchmark with fellow Intellectual Property Offices, particularly in Europe, also to get a wider picture of uptake and perceived value, as it may paint a similar picture to what could happen for the UK.

I hope these comments are useful.

TRADEMARKS AND BRAND PROTECTION IN 'EUROPEAN OVERSEAS TERRITORIES'

I have written an E-book with the above title that may be of interest to readers of this blog.

It's not expensive and can be purchased from Amazon here.

The Protocol - Past, Present and Future

Trade mark professionals in the UK – and many in other countries – work with the Madrid Protocol on a daily basis. How different it once was.

The Madrid Protocol, with the UK among its first members, came into play on 1 April 1996. For most, this date is better known as the first day Community Trade Marks (CTMs) could be filed (or, more precisely, the earliest filing date CTM applications could be accorded). CTMs got filed by the bucket-load and have been popular from the start.

For the Madrid Protocol it was different, as many countries were slow on the uptake. This included those that were already members of the Madrid Agreement, which, until they were in the Protocol, were out of bounds for UK businesses.

Only a handful of Madrid Protocol applications were filed by UK companies in the early days. With the European Union (EU) easily covered by the new CTM, the majority were filed to designate China as most of the other members of commercial importance at this time were other EU member states. I can recall speaking to the UK Trade Marks Registry to check on the progress of an early application and being told: “We’ve only had three applications so far.” A recent check of ROMARIN shows a mere 11 active registrations originating from the UK registered between April and September 1996.

Over time some key countries have come aboard such as Australia, Japan, Korea, Russia, Singapore and the US as well as the EU itself. And, if it was not immediately popular, the advent of the Protocol proved a watershed moment in the Madrid system and the global registration of trade marks.

Early expansion

The Madrid Agreement had been operational since 1892, but primarily as a European continental club. Prior to 1948, the only non-European member was Morocco. The arrival of Vietnam, in 1949, marked the Agreement's expansion to Asia, although it would take another 40 years before it touched the Americas with the accession of Cuba.

With little prospect of further expansion in the same guise, particularly to common-law countries, the inflexibilities of the Madrid Agreement were ironed out in the Madrid Protocol and allowed the UK, US and others to come aboard. It has grown rapidly since.

This decade has seen a diverse expansion, both geographical and economical. There has been the accession of Colombia, India, Israel, Mexico, New Zealand, the Philippines, Rwanda and Tunisia. And Kazakhstan, Sudan and Tajikistan added the Protocol to their Agreement membership. Furthermore, the dissolution of the Netherlands Antilles in 2010 created three new Madrid jurisdictions: Curaçao, Sint Maarten and Bonaire, Sint Eustatius and Saba. Meanwhile, far removed from the sunny climes of the Caribbean, Denmark extended its Madrid Protocol membership to include Greenland.

Challenges, of course, remain. Is the requirement to have a home registration really needed these days? Direct filings with WIPO would make them operationally less cumbersome. The removal of the threat of “central attack” would bring less uncertainty to the table when using Madrid, and this is a concept less easily understood by owners of smaller trade mark portfolios.

WIPO suffers processing delays at the moment. Statements of grant were made mandatory, as many users were forthright on the importance of these. WIPO listened, but the increased numbers of these documents put them under pressure.

They should have little problem in coaxing civil servants from Member States to a tax-free salary in Switzerland should it need more staff. Although my criticism of WIPO’s recruitment would be that Government experience seems to be a prerequisite for employment, when professionals from industry or private practice could add a different perspective.

I must give praise where it is due, though, and the set-up of three dedicated teams of examiners at WIPO has left the organisation less faceless. Incidentally, Madrid Team 1 (madrid.team1@wipo.int (+41) 22 338 750 1) looks after applications originating through OHIM, and Madrid Team 3 (madrid.team3@wipo.int (+41) 22 338 750 3) is responsible when the UK is the Office of origin.

The development of on-line tools should also be welcomed and will improve operations.

US issues

The onerous maintenance requirements for US designations still present a problem. In the first term of registration there are likely to be three maintenance events, namely two Affidavits due (to the US Patent and Trademark Office) and one renewal due (to WIPO). The high number of Provisional Refusals in the US may have meant there were no cost savings in the original Madrid filing, but even if there were (for there being no need to engage US Counsel), the maintenance requirements for US Madrid Protocol designations are, at best, no cheaper than they would be for a national registration. It’s easy to see why some argue that the US has taken all the benefits of the Madrid Protocol for its own businesses, but is barely extending this back to other users of Madrid. A similar situation arises for designations of the Philippines.

Common-law countries, mostly in Africa, pose another problem when they have not amended their local legislation to reflect their Madrid membership. WIPO can seem oblivious to this, thinking once they have a member signed up, it is “job done”, but ultimately if you could not enforce an International Registration in, for example, Zambia, isn’t that country's membership worthless?

As for the future, it is easiest to speculate on the new joiners. Remaining in Africa, Zimbabwe has made legislative steps to ready itself for membership, but, as we saw with India, this does not necessarily mean they will be depositing their instrument of accession immediately. Being the home of the African Regional Intellectual Property Organization (ARIPO), Zimbabwe could play an important role on the continent and help in finding a way of linking ARIPO’s Banjul Protocol with the Madrid Protocol.

Malta, currently the only EU member not to have Madrid membership, could complete the EU jigsaw. We may also anticipate Algeria – the sole remaining member of the Madrid Agreement only – to accede to the Protocol, too. This may put to bed the Madrid Agreement and abolish Article 9sexies. This provision allows applications from member states of both the Madrid Agreement and Madrid Protocol to pay complementary and supplementary fees (rather than individual fees) when designating members that are also party to the Madrid Agreement and Madrid Protocol. They also get the advantage of a 12-month examination period. Those from Madrid Protocol-only countries, including the UK, can claim this is unfair.

The ASEAN states are scheduled to join the Madrid Protocol by 2015. Thailand is expected to come aboard soon, joining the existing members in ASEAN: the Philippines, Singapore and Vietnam. Malaysia has made legislative amendments to prepare for Madrid. For the other ASEAN states (Brunei, Cambodia, Indonesia, Laos and Myanmar) this timetable may be less realistic, although we may expect Brunei or Indonesia to make strides in this time, and new legislation is imminently anticipated in Myanmar.

The same is true with CAFTA-DR countries whose free trade agreement with the US stipulates Madrid Protocol membership. Costa Rica, the Dominican Republic, El Salvador, Guatemala, Honduras and Nicaragua are the members, with Costa Rica and the Dominican Republic considered the most likely to join up first.

Pockets of resistance

Of some of the major markets currently outside of the Madrid family, resistance is strong in Canada, where local practitioners have lobbied their Government hard not to join.

Brazil and South Africa present some more positive vibes, although both realise they need to reduce examination backlogs to be able to cope with an influx of Madrid applications. They are making inroads into these backlogs, although not at the same rate as India.

Brazil faces another challenge because the local law stipulates Portuguese as the official language for all correspondence. This could be amended, but a change could present a linguistic burden on the local trade mark office. It is possible that Portuguese could become an official Madrid language – WIPO already provides some information in this language. However, there may be a reluctance to do this unless some dispensation can be reached that keeps a handle on translation costs (for example, only International Registrations designating Brazil are translated into Portuguese).

WIPO may also be wary. In 2004, Spanish was made an official language, but it has not been until the last year that Colombia and Mexico joined the Madrid club (Spanish-speaking Cuba and Spain were already members before 2004).

Making Portuguese an official language would be almost purely to lure in Brazil. Other Lusophone nations, such as Angola, Cape Verde and Timor-Leste, are not of commercial interest to as many businesses as Brazil (and Mozambique, Portugal and São Tomé and Príncipe are already a part of Madrid). Further, to digress somewhat, Portuguese could only be currently available as a first language for designations of the European Community and not (as is the case with English, French and Spanish) as a second language.

Some of the quirky mechanisms of the Madrid Protocol will continue to baffle some people and there are skills required to work with it, but it is clear that the Madrid Protocol is here to stay and will become increasingly prominent in the field of trade marks in years to come. It may get replaced with a new system in due course, but political wranglings may mean it is easier to amend the existing system than to start from scratch.

This article originally appeared in Issue 406 December 2013/January 2014 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.