10 October 2017

Trademark developments in Austria

In accordance with the latest EU Directive on trademarks, the trademark legislation in Austria has recently been updated.


In come Certification marks and the ability to divide applications. Out goes a need for notarised documents when recording trademark assignments.

It's all change with respect to renewal fees. Austria applied a unique approach to trademark renewals, more commonly seen with patents, in that the renewal fee increased over time i.e. the renewal for the second term of 10 years was lower than that for the third term of 10 years, which was in turn lower than the fourth term of 10 years.

These fees still apply to registrations falling due for renewal before 1 September 2018, but then a new fee system will come in. This will see a set fee irrespective of whether this is the registration's first renewal, second, third or 10th renewal.

However, it's not all that simple. Registration terms will change to being calculated from the application date. They have until now been calculated from a later registration date - and just for a bit of added complexity, the renewal date would be 'extended' to the last day of that month.

Existing registrations falling due for renewal on or after 1 September 2018 will have their renewal dates shortened so they are calculated from the application date.

Example

Therefore, if you have a case that was applied for on 23 November 2007 and matured to registration on 2 October 2008, it would fall due for renewal on 31 October 2018.

If it is renewed it will then remain in force until 23 November 2027.

To compensate trademark owners, if the term is shortened by one year or more, there is a fee discount available of €70 per year.

Austrian trademarks registered from 1 September 2018 will fall due for renewal 10 years from their application date. Until then, the term will be calculated from its registration date.

We will have nearly one more year where Austrian trademark renewal fees are calculated on a sliding scale and then after this still a number of years where the calculation of Austrian renewal fees will require careful checking.

Information from the Austrian Patent Office regarding renewal/maintenance fees is contained here (see page 5).

9 October 2017

Indonesia makes the Madrid System a '100 Club'

Last week Indonesia deposited its instrument of accession to the Madrid Protocol and brought the number of contracting parties into triple figures.


It follows hot on the heels of Thailand, which will be available for designation in International applications in less than a month.

The ASEAN (Association of Southeast Asian Nations) countries are committed to joining the Madrid Protocol and now eight out of the 10 countries are on board. Brunei, Cambodia and Laos joined up in the last two years leaving Malaysia and Myanmar as the only ASEAN countries not a part of Madrid. Malaysia has undergone consultations and appears to be in the process of taking steps to ready itself to accede.

In Myanmar, the IP world is still waiting for the country to adopt a formal trademark law. Currently, a deposit registration system with a Cautionary Notice publication supports Common Law rights in trademarks. After years of waiting, there are now indications that Myanmar will be opening a new IP Office to operate a formal trademark law. It appears the new law may be a stepping stone towards Madrid membership or, in other words, first of all there will only be a national system for registration but presumably once the Office is up to speed it can look to accede to the Madrid Protocol and have International Registrations designate Myanmar.

There are some concerns on how well Indonesia may manage meeting the strict timelines for examining International applications. It has made a declaration under Article 5(2)(b) of the Protocol to extend the refusal period to 18 months but it could be they still struggle to meet this given an expected increase of applications now it will be easier for foreign parties to simply tick a box to file in Indonesia in an International application. Could this therefore see a backlog in the examination of national applications?

It will be interesting to see how much Indonesian businesses use the Madrid system. Domestic applicants make a lot of trademark applications in their home market. Now they will have easier access to designate most of their ASEAN partners in an International application, Australia, just to the south may also be an attractive market, as well as the powerhouse economies of Asia, Europe and the United States.

12 May 2017

Miscellaneous musings (on recent IP news)

Madrid Protocol

I'll start my musings on Madrid (the Madrid Protocol) where Hong Kong is beginning steps to become available for International trademarks, although this is not likely until 2019 at the earliest.

Under Article 3bis of the Madrid Protocol, "The protection resulting from the international registration shall extend to any Contracting Party only at the request of the person who files the international application or who is the holder of the international registration. However, no such request can be made with respect to the Contracting Party whose Office is the Office of origin."

This is interpreted so that Hong Kong applicants will not be able to designate (mainland) China and vice-versa. As many will know, Hong Kong is not a sovereign state and is a Special Administrative Region of China. As such, any Madrid membership will be made by China on its behalf.

Notwithstanding this, the Netherlands has membership of the Madrid Protocol and has extended this to Bonaire, Sint Eustatius and Saba (sometimes referred to as the BES Islands or the Caribbean Netherlands). Bonaire, Sint Eustatius and Saba are special municipalities of the Netherlands. There are 817 live International Registrations which designate Bonaire, Sint Eustatius and Saba and where Benelux is the Office of origin (that's not to say all applicants are from the Netherlands, some are from Belgium or Luxembourg).

From the above, it seems a Contracting Party can have different Office of origins and is not necessarily caught by an Article 3bis restriction.

Anyway, it seems Hong Kong and (mainland) China will look to come to another arrangement outside of the Madrid Protocol.

Eurasian Trademark

Another IP system we may need to become aware of is through the Eurasian Trademark system. This may be with us in 2018. It will cover Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.

It seems it will be a mix between how the International and EU trademark systems work. There will be no need for a base application/registration, but applications can be filed with anyone of the five national IP Offices. Although it will be a unitary right across all countries, it will be examined by each national IP Office separately. In the event of refusal, this can be argued nationally. A final refusal in any country will result in refusal of the Eurasian trademark, but conversion/transformation into national applications in the non-refused countries appears to be possible.

It's not clear if this system will look to link to the International trademark system. I'm not sure I can envisage it being used much by Western trademark owners when all member countries are members of the Madrid Protocol anyway (Russia and Kazakhstan being particularly cheap under Madrid). However, it may be useful for local portfolios (think, in particular, marks in Cyrillic script) as there is no requirement to get an unnecessary base registration (with the 'Central Attack' fears that can pose). Any attractiveness to Western trademark owners may come down to costs.

Hague

Remaining in the Eurasian region and Russia will be joining the Hague System for Designs. They will join other regional countries as members: Armenia, Azerbaijan, Georgia, Kyrgyzstan, Moldova, Tajikistan, Turkmenistan and Ukraine. Accession is anticipated for later this year and will be for the Geneva Act only.

The UK is also likely to accede to the Geneva Act of the Hague System in early 2018. This will be welcomed, particularly if UK applicants shall no longer have easy direct access to the Registered Community Design system when 'Brexit' happens.

Representation at the EUIPO

Whether UK practitioners will still be able to work directly with the EUIPO is something that is very much on the radar of British IP professionals that undertake a lot of EU work. There has been talk of Brits opting into "EU citizenship" and this may present an opportunity, although a) anyone remaining in the UK would still not be resident in the EU/EEA and b) this is an idea that might not get any further than being just an idea. Nonetheless, it could be an interesting angle that may not currently be being looked at for British professionals looking to retain representation rights.

Series marks 

Remaining in the UK and the UKIPO has recently issued guidance on series marks. Although not exclusively available in the UK, they are a bit of an alien concept to some trademark professionals in other countries. A Series of trademarks is a number of marks with very small differences. Any differences between the marks must not substantially change how they look, sound or alter their meanings. As a common example, a black and white version of a trademark and a colour version of a trademark can often be included in the same application (and at no extra cost).

The IPO's guidance reflects a strict approach for marks to form a series.

Enjoy your weekends readers!

24 June 2016

Brexit and trademarks

The United Kingdom has decided in yesterday's referendum that it will leave the European Union.

Personally, I'm gutted. Having lived and worked on the continent, I regard myself as a Europhile. It may be a great shame that our younger people may not have so many opportunities to live and work in Europe.

There will be an impact on trademarks. What exactly needs to be determined? For now we do not need to worry.

The Prime Minister has indicated that he will stand down and it is his replacement who will submit the Article 50 request to the European Union that begins the formal withdrawal process. Indications are that this will take place in October and the withdrawal process will have a two-year negotiating period once submitted.

I think there's a chance of another General Election in the intervening period. This means we could be looking at between two-two and a half years before EU trademarks will no longer cover the UK.

Furthermore, I understand this negotiating period is extendable if agreed by both parties - a "cooling-off" period in trademark terms, I suppose.

Automatic re-registration?

What will happen to EU trademark (and design) registrations once the UK does leave the EU?

My hunch is that they will automatically continue to cover the UK. My reasons are:

1. There are so many of them that having a formal revalidation process would be a burden on UK IPO resources.
2. EU trademarks are searchable on the UK IPO's systems so it should be a fairly straightforward task to convert/duplicate them to become UK national registrations.
3. As for EU designations in International registrations, it should be possible, working with WIPO, to organise automatic 'Continuation of Effects' to the UK.
4. They would not want to discriminate UK businesses by making them pay to revalidate EU trademarks which they legitimately obtained thinking they had the UK covered.
5. It's certainly arguable that the UK IPO could lose out on a windfall that could be generated by a formal revalidation process, but I would argue that this would be a temporary spike (and the Office would need temporary staff for this) whereas they can bring in extra fees in a more managed way as registrations fall due for renewal and get assigned.

Reverse seniority?

I wonder if there is a need to allow seniority claims to be reversed so where an EU registration has claimed seniority from a UK registration then this UK registration can be reinstated (presuming it has since lapsed).

This may be beneficial in the case of very old prior rights where the corresponding EU registration does not date back as far. This could carry official fees for the UKIPO as I believe they would require examination. Whether such requests can restore the specification of the original UK registration or can only comprise that which is included in the EU registration (where they are different) would be a question to be answered in this eventuality.

From a practical point of view, an automatic revalidation process would negate the need to request "reverse seniority" in the vast majority of cases.

EEA and representatives

We wait to see if the UK's withdrawal from the EU will also be a withdrawal from the European Economic Area. If it remains in the EEA then the impacts on the management of trademarks will be less.

If it decides to leave the EEA then things may change more. Currently, only an Address for Service in the EEA is required for trademark matters before the UK IPO. Leave the EEA and the rules may change so that an Address for Service is in the UK only. In practice this would not be a big deal as the vast majority of Addresses for Service for UK national registrations are in the UK already, as opposed to other EEA countries. (Disclaimer: this is based on my regular scouring of the Trade Marks Journal and Register, and not on a detailed analysis of Addresses for Service.)

However, this could scupper any plans to automatically duplicate the EU Register to the UK as a large number of EU trademarks have IP representatives in other EEA countries. Perhaps these could be left be, with a UK Address for Service only needing to be appointed when there's subsequent dealings with the UK IPO.

UK Professional Representatives

Leave the EEA and the ability of UK Professional Representatives to act before the EUIPO (and other EU Offices) could be impacted. The Institute of Trade Mark Attorneys has indicated that they will "be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office."

If UK Professional Representatives can no longer act before the EUIPO then this lucrative strand of work will go elsewhere, firms in Germany, Ireland and the big IP units near Alicante likely destinations in my view.

If they can continue representing though then they will be well placed to continue the UK's strong level of representation before the EUIPO. Such work could also be supplemented by corresponding UK filings too.

However, we may see a change in filing strategy. If the UK is an added country to consider in filing programmes then the attractiveness of an International trademark may increase. The rationale being the more countries to be covered, the more attractive it is to use.

Scotland

In Scotland the people were in favour of remaining in the European Union. This may now lead to another Scottish referendum and further implications to trademarks. I've blogged previously on what could happen in this event.

Gibraltar and Northern Ireland

Gibraltar (overwhelmingly) and Northern Ireland (much more narrowly) also voted to remain in the European Union - the out votes of England, in particular, and Wales tipping the balance towards leave.

Politically I cannot see Northern Ireland looking to go it alone or look to instead form a part of a united Ireland and so will find itself alongside England and Wales (with or without Scotland).

Gibraltar is unlikely to make a bid for independence or accept co-hegemony from Spain (as the Spanish Government was keen to offer early on). Its local trademark system currently allows for the re-registration of UK or EU trademarks, but they may close the door on EU trademarks (which have more doubtful enforceability anyway).

Jersey

The Channel Island of Jersey lies outside of the European Union and its citizens were not entitled to vote in the referendum.

However, their trademark legislation allows for the automatic protection of EU trademarks to the island (i.e. without the need to re-register them locally). Conversely, UK national registrations must go through a formal re-registration process and get a local registration.

They would need to change their local law to stop EU trademarks providing protection to Jersey. I understand discussions in recent years saw them happy with the status quo but the UK's withdrawal from the EU may make them revisit this issue and we could perhaps anticipate an entirely revamped trademark law in Jersey (neighbouring Guernsey has taken its own route and runs a very efficient Registry).

Conclusion

Nothing changes overnight. There is no need to take action just yet. I think by "pro-actively" filing in the UK now then you may end up with duplicate UK registrations in the future. Keep your ears and eyes open as things become clearer.

20 May 2016

Delays at WIPO

A few days ago WIPO advised of increased delays following an update to its IT systems.

WIPO is not known for its streamlined operations compared to other offices such as the EUIPO or the UK's Intellectual Property Office, but it now seems there will be further delays with International trademark applications and transactions.

Madrid Real-Time Status is a handy tool provided by WIPO, but there's been little movement on incoming procedures on some of the cases I have been monitoring for a month or more now.

WIPO tries to reassures that,

Deadlines for responding to irregularity letters are calculated as of the date of communication of the letters in question.  Their late communication therefore has no bearing on the time available to respond.

It would appear the upgrade in IT systems will be beneficial in the long run and hopefully see an increase in the timeliness of action by WIPO.

WIPO, if desired by member states, may also look to implement a 'Performance Framework'. This could involve information on the performance of WIPO being published on a regular basis and would include information on pendency rates of all Madrid transactions. This would be another welcomed step with users who are currently left frustrated by slow movement at WIPO and not what many have come to expect of a modern Intellectual Property Office in 2016.

Things will hopefully be improving.

29 January 2016

New EU trademark regulations - some practicalities

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

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

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

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

New fee structure

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

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

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

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

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

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

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

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

Misleading invoices

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

It is important that trademark owners and representatives remain vigilant.

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

New website

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

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

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

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

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

Old specifications for class headings

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

Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.
  • The deadline is 24 September 2016
  • The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
  • Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class
If the deadline is not acted upon then any specifications for class headings will be interpreted literally (the means what it says approach).

EEA representation

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

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

International Registrations

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

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

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

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

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

22 December 2015

Season's greetings!

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

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

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

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

Happy holidays!

19 November 2015

Kuwait to increase trademark fees significantly

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


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

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

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

Looking ahead

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

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

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

17 November 2015

The Gambia joins the Madrid Protocol

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


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

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

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

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

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

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

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

12 November 2015

Misleading invoices - a small win for the UK Intellectual Property Office

The UK Intellectual Property Office was pleased to announce this week, "IP scammers face record financial liability".

Those involved in the business of maintaining intellectual property rights will be familiar with the unsolicited letters that are sent to proprietors with exorbitant fees for maintaining these rights, or for putting these rights into a "directory". Furthermore, many of these requests look like they come from official Intellectual Property Offices, at least to many IP owners who are not familiar with dealing with Intellectual Property Offices on a regular basis.

Various Offices around the world have made it an important task to educate their customers about these organisations, for example, see the warnings from the UK, OHIM, the USA, Norway and New Zealand, and also some examples of the actual letters from WIPO.

The judgement handed down by the Intellectual Property Enterprise Court (and found here) orders the defendant, Intellectual Property Agency Limited and its sole director, Harri Mattias Jonasson, to pay £500,000. This is maximum this court can impose.

Bearing in mind the defendants made a profit of over £1.1 million, this is really only a small win for the Intellectual Property Office, and probably an even smaller one for those that have been duped into paying such inflated fees.

There is a lack of sympathy in some quarters for IP owners who go ahead and pay "silly" money. This is a little unfair in my view. These legal steps, added to continued awareness by Intellectual Property Offices and IP professionals alike, will hopefully go some way to making these businesses less lucrative.

However, it's flabbergasting that a firm can make such significant profits on the basis of UK rights alone, and I dread to think how much money this "industry" makes worldwide.

My own firm is very reasonably priced when it comes to UK and worldwide renewals. Perhaps we are missing trick (I say in jest). Those that have been duped, or could be in the future, will be pleased to know there are many firms out there who will provide a service tantamount to its value and who can also act as a barrier to the scammers.