19 December 2011

From the cold to the canal

Our continental drift takes us across the Atlantic this week to North America. Britain may not be the global power she once was, but she still appears in the centre of most maps so its logical for me to start in the left hand corner of the world for this latest blog instalment.

As before, Wikipedia will be our guide when determining the definition of North America. There are a handful of islands belonging to Colombia and Venezuela that are technically in North America but I will exclude them from this piece.

The United States of America is the obvious powerhouse in the region. I have a certain reluctance to file through the Madrid Protocol though. There is a high rate of Office Actions issued, although this can be partly explained by filing too broad specifications which could be avoided with better preparation. My main concern is with the onerous maintenance requirements that I feel make it lose out in the cost savings advantage to a national filing in the long term.

The Madrid Protocol is not an extensive tool for filing in North America anyway with only Antigua and Barbuda, Bonaire, Sint Eustatius and Saba, Cuba, Curacao and Sint Maarten being available. Three of these make up a part of the Kingdom of the Netherlands but registration is secured separately from that in the Benelux. Incidentally, Bonaire, Sint Eustatius and Saba is a single jurisdiction for trade marks, alternatively referred to as the BES Islands or the Caribbean Netherlands; however, the Trade Marks Office is in Europe being managed by the Benelux Merkenbureau.

US and INTA encouragement to adopt Madrid in this region has not been as successful as could be expected. Fellow NAFTA members Canada and Mexico appear no closer to membership. In fact, Canadians have generally negative feelings towards the Protocol.

Greenland is covered by a Danish registration and, since 11 January 2011, in designations of Denmark in an International Registration. If you already have an International Registration designating Denmark before this date the option exists to request renunciation and simultaneously designate Denmark in a subsequent designation (although this will lose you your original filing date). Note that Community Trade Marks do not provide any protection to Greenland as it is outside the EU.

Community Trade Mark applications do cover Guadeloupe and Martinique. However, a national registration from France (including an International Registration designating France) is required for the other French possessions in North America: St Barthélemy, St Martin and St Pierre and Miquelon.

Incidentally, St Martin and Sint Maarten are the same island. It is just the names in French and Dutch. In practice, there is no border and the two communities mix and get on very well.

In the main, individual applications are required. It's the case for all Central American nations: Belize, Costa Rica, El Salvador, Guatemala, Honduras, Nicaragua and Panama. The two countries making up the island of Hispaniola, Dominican Republic and Haiti, also require national applications.

It's also the case for Bermuda, an overseas territory of the United Kingdom. A UK registration can be of assistance in securing protection in Bermuda. It will in any case be needed in case protection is required in parts of the Caribbean.

A UK national registration is a prerequisite for registration in Grenada. In the absence of the UK registration some protection can be accorded through the publication of a Cautionary Notice under the Merchandise Marks Act.

A UK registration can also form the basis of an application or at least have some persuasive value in some of the Commonwealth islands of the Caribbean. However, many of these countries have been introducing new trade mark legislation in recent times that reflects a more independent line.

The Cayman Islands maintain a solely dependent filing system although a CTM or International Registration designating the UK can form this basis, not just a UK national registration.

Anguilla, Bahamas, Barbados, British Virgin Islands, Dominica, Jamaica, Montserrat, St Kitts-Nevis, St Lucia, St Vincent and the Grenadines, Trinidad and Tobago and Turks and Caicos Islands complete the British colonial legacy of the Caribbean. Don't confuse Dominica with the Dominican Republic.

Do note that a handful of Caribbean states are continuing to use the former British classification system. "Archaic" would be an understatement when describing this. It contains no provisions for service marks, although I have seen services placed, rather questionably, in the miscellaneous Class 50 (10). The UK ditched it way back in 1938, although it still hung around for a bit with some old registrations not being reclassified until the 1990s. In the UK we referred to this classification as "Schedule III" but as more and more people do not remember it, this term appears to be falling out of use.

In the British Virgin Islands, after some debate this year, a UK registration basis is the only way to register a service mark.

Canada is the most notable classification "anomaly" in the region in that it does not use a classification system at all.

Aruba, a constituent country of the Kingdom of the Netherlands, must be protected through a separate local application contrary to the other parts of the Kingdom which can be included through a Madrid filing.

Puerto Rico and US Virgin Islands complete the set of trade mark jurisdictions in North America. Federal US registrations cover the external territories of the US but Puerto Rico, in particular, is usually the subject of local applications. I understand they are better in the event of fighting localised infringement. The US Virgin Islands operates a deposit system that merely registers Federal registrations upon production of a certified copy. At least it is cheap to secure local protection there if ultimately required although many do not bother.

The conclusion, and whereas Europe required just 10 or 11 filings, for North America it's a whopping 31 or 32.
  • US filing (if budget allows, otherwise include in Madrid filing)
  • Madrid Protocol filing designating: Antigua and Barbuda, Bonaire, Sint Eustatius and Saba, Cuba, Curacao, Denmark, France and Sint Maarten
  • 30 x more national filings in Anguilla, Aruba, Bahamas, Barbados, Belize, Bermuda, British Virgin Islands, Canada, Cayman Islands, Costa Rica, Dominica, Dominican Republic, El Salvador, Grenada, Guatemala, Haiti, Honduras, Jamaica, Mexico, Montserrat, Nicaragua, Panama, Puerto Rico, St Kitts-Nevis, St Lucia, St Vincent and the Grenadines, Trinidad and Tobago, Turks and Caicos Islands, United Kingdom, US Virgin Islands
If you take out the three members of NAFTA then the population of North America is less than 70 million and represents high trade mark costs per head of the population. Nevertheless, the influence of the US which has a large Hispanic population is clear, many use the US dollar and receive US television making them very American brand savvy.

18 December 2011

Manchester wins "counterfeit" capital of the UK

I woke up this morning to read the unfortunate accolade bestowed on the city I am based in as Manchester and neighbouring Salford are declared top of the list for fakes in the UK.

This area is the traditional centre of the nation's textile trade so this news will be partly unsurprising.

It's notable that the article indicates that authorities have reduced their levels of enforcement against counterfeit goods in the last year as part of a wider issue of government cutbacks. IP owners will be aware that they cannot merely rely on the authorities and must make efforts themselves to tackle counterfeiting.

16 December 2011

Protocol progress

Will 2012 see the membership of the Madrid Protocol increase?

Where do you see new members coming from, if at all?

In the words of Elvis Presley, "a little less conversation, a bit more action please" could be in order and I think the last few years have brought many false dawns. Political factors, economic factors and the clout of local legal professionals (when the majority are against membership) put barriers to membership. I say barriers as it's clear we see these as barriers from Europe and the US but I have heard the arguments against. The one that suggests, "the Protocol is a great way of reducing the trade mark spend of large primarily US and European trade mark owners but what benefits does it bring to small local applicants in emerging markets and the developing world?" is prominent, and we do need to guard against arrogance in this respect.

I'll wager that 2012 will see two new members of the Protocol. There might be the addition of a Common Law African country, but don't count on the amendment of the local law to make an International Registration enforceable. I can get a bit annoyed when WIPO secure a new membership but don't follow up vigorously on the adaptation of the local law to accommodate it. It's like receiving a signed cheque when the account has no money in it, or take it the other way, like saying get this amazing Madrid Protocol software when you don't have the hardware to run it.

Anyway, I will even goes as far as saying that the two new members will be Colombia and New Zealand. I don't think I've really put my head on the block here as legal developments in Colombia and New Zealand point towards this.

When WIPO made Spanish an official language of the Madrid Protocol it was expected to facilitate waves of membership from Latin America. This hasn't happen but Colombian membership will bring a sigh of relief from Geneva.

New Zealand is a logical extension. It's legislation is in order, they'll benchmark with countries with similar laws (Australia, Singapore, United Kingdom) and their IPO is very organised so the 18-month examination timeline is no problem. New Zealand IP firms may feel a decline in filings, but Australian IP firms have been filing direct in New Zealand for a few years now due to bilateral arrangements and I think it is an outward looking profession that will adapt, despite some natural reservations.

India and South Africa represent possible future membership but I believe most of us would not want them to rush things. They generally see the benefits and the legislative amendments required should not prove problematic. However, backlogs in the examination of applications should be addressed before they commit to membership. India has made significant progress but I feel some consolidation would be sensible.

I think it's difficult to see much action from Latin America aside from Colombia. I'd anticipate other possible members coming from North Africa. Algeria, the final sole member of the Madrid Agreement may bring some sadness to European quarters as it will bring the curtain down on the Madrid Agreement. Tunisia, a former member of the Madrid Agreement in years gone by may also be ripe for membership.

We shall see and we wait with baited breath.

On another point, as the Madrid Protocol can feel highly politicised at times, you may wish to keep an eye out on International Registration No. 1090797 filed on 10 August 2011 designating, amongst others, Iran and Syria.  Office of origin: Israel...

13 December 2011

Ironic branding

The beginning of this month saw the publication of a UK trade mark application Primarni in Classes 24 and 25 in the name of an individual from Merseyside.

Unlike non-UK readers, most of us in the UK will probably think of the budget fashion store, Primark. The term Primarni is itself derived from Armani, to make Primark "sound more posh". Slang permeates British society so much so that it becomes second nature for much of the population.

I find this term a sign of typical Britishness: wanting to make something sound high class by displaying an ironic humour. It has been created by the public and, as far as I am aware, is not used directly by Primark.

On another note, it seems the domain name primarni.co.uk was registered by a furniture company back in 2007.

Primark are a heavily branded company - comparable to Lidl's own multi-branded products for food - and they own a significant number of (used) trade marks.

The multi-branded approach does not include Primarni
Registering trade marks and domain names on a defensive basis can be an endless task but should consideration be given to securing "cult brands" created by your customers to help deter opportunistic registration? Clearly, derivations from other (third party) brands creates a complex situation, you would not want to dilute your own brand and a non-used trade mark would ultimately be vulnerable to cancellation if it's never used. I do wonder how much marketing departments are happy to passively encourage their use though; there are a number of fan pages on Facebook for Primarni, for example.

Incidentally, on 7 December, just five days following publication, a Notice of Threatened Opposition was filed against the application. The IPO records do not indicate the Threatening Opponent.

12 December 2011

Got a CTM, got Europe?

I am sure you know the answer to this question but forgive me for sucking you in with a sensationalist headline!

This blog will explore obtaining trade mark protection across the whole continent. It will travel (although not literally) to every corner of this diverse but compact continent.

The first thing is to define Europe itself. This isn't particularly easy, but let's take Wikipedia as our guide.

It's absolutely clear that most trade mark owners do not need to cover the whole of Europe. We will leave it to the commercial priorities of each trade mark owner/adviser to determine where protection is and is not required.

My inner geek means I can visualise a map of Europe (and other continents) in my head but those of you without this "skill" can see a country's location on the Wikipedia article.

We will approach this from the angle of a non-European. In our usual attempts to be cost effective, we will look at it from the perspective of a Madrid Protocol compliant applicant.

The European Union is the key jurisdiction here, although there's also the significant emerging growth market of Russia which we will come to.

The European Community can be designated in a Madrid Protocol application. Speed is a practical disadvantage to taking the Madrid route and you may consider it money well spent filing through the "traditional" Community Trade Mark route. Nevertheless, through Madrid is possible.

The next countries are those that are a part of the European Economic Area ("EEA") but not part of the European Union. In basic terms, these countries benefit from the EU's free trade but do not have a direct say in how it functions. Norway is the biggest member and it does come as a surprise to some people that this is not part of the EU; referenda on joining in 1972 and 1994 resulted in "no" votes. Iceland (which has applied to join the EU) and Liechtenstein are the other members of the EEA. All three can be designated in a Madrid Protocol application.

Switzerland can also be designated in a Madrid Protocol application. Whilst not technically part of the EEA, bilateral agreements between the Swiss and the EU make the relationship very close. There is no physical border. When I lived in the north west of Switzerland, I could take a walk to both France and Germany with no fuss, quite a surreal experience for someone from an island nation.

The EU will welcome its 28th member on 1 July 2013 with the accession of Croatia. In the meantime, Croatia can also be included in a Madrid filing.

The EU candidate countries can also be designated within Madrid: Macedonia, Montenegro and Turkey. Applications have also been submitted by Albania and Serbia and likewise these countries can be designated in a Madrid filing. Further, Bosnia-Herzegovina, identified by the EU as a possible future member, can also be included in a Madrid filing.

Likewise, two of the microstates of Europe with economies closely linked to EU members can be included in a Madrid filing, namely, Monaco and San Marino. Jersey and the Isle of Man, crown dependencies of the UK, are automatically covered by a Community Trade Mark.

Russia can be included within a Madrid application as can other former Soviet republics. As far as Europe is concerned this can also include: Armenia, Azerbaijan, Belarus, Georgia, Kazakhstan, Moldova and Ukraine.

That's nice and easy! Around 99.9% of Europe covered by a single Madrid filing (or by two filings, a CTM and Madrid). That leaves 0.1% that could be potentially left behind. They may not be commercially important to everyone, but incorrect assumptions that they are already covered are easily made.

The UK's third crown dependency is the Bailiwick of Guernsey. As the UK is largely responsible for foreign affairs it cannot sign up to international agreements like the Madrid Protocol itself. Its legislation for trade marks is independent and a local application can be filed. However, it is possible to claim priority on the application form.

Gibraltar is arguably covered by a CTM registration but as the territory has not amended local legislation to reflect this, relying on this would be considered risky. The surest form of protection is obtained by extending a United Kingdom registration to Gibraltar.

Andorra is situated in the Pyrenees mountains between Spain and France. For obvious reasons it has adopted the Euro currency. It maintains a purely independent trade mark registration system, which despite being relatively new, contains no provisions for international agreements like the Madrid Protocol although it is possible to claim priority based on reciprocal arrangements.

The Faroe Islands, a constituent country of the Kingdom of Denmark, are not a part of the European Union and therefore not covered by a Community Trade Mark. They do not operate a separate Trade Marks Office and instead protection is provided by a Danish national registration. However, note the same protection is not accorded to an International Registration designating Denmark as Denmark's membership of the Madrid Protocol specifically excludes the Faroe Islands.

It is more straightforward with other Nordic possessions within Europe. Svalbard, whilst not a part of the EEA, is subject to Norwegian laws including those related to trade marks. The Åland Islands are covered by Finnish laws, inclusive of protection of Community Trade Marks.

The situation with the Vatican City State is somewhat ambiguous. The Lateran treaties between Italy and the Vatican provided for automatic protection of Italian trade marks. However, this was under the Italian Trade Mark Law of 1929 which has since been superseded. As the Vatican is not within the EU, it could be unwise to rely on a Community Trade Mark, but Italy was already a member of the Madrid Agreement in 1929 so I would anticipate International Registrations designating Italy would be held in the same regard as Italian national registrations. Covering Italy would mean that San Marino does not require separate protection; each country recognises trade mark rights from the other. However, the additional fees for including San Marino are relatively incremental and it seems sensible to include separately.

Europe contains a handful of partially unrecognised states. Kosovo is the most high profile. It is yet to join the UN under threat that any application will be vetoed by Russia or China and, as such, cannot join the Madrid Protocol. A national application is therefore required. Priority claims are accepted.

Turkish or Northern Cyprus - formally the Turkish Republic of Northern Cyprus - is recognised only by Turkey. Despite Cypriot accession to the EU there is at least tacit recognition that it does not cover the Turkish controlled northern third of the island. An independent Trade Marks Office exists and due to Cyprus's history as a colony of the UK, the law is British influenced. British influence is also maintained on the island of Cyprus with the holding of two military bases, the Sovereign Base Areas of Akrotiri and Dhekelia ("SBA"). (Greek) Cypriot trade mark law is mirrored in these meaning a Community Trade Mark should provide protection and I understand this to be the case based on the SBA's Trade Mark Ordinance 21/02.

In the former Soviet Union, the Pridnestrovian Moldavian Republic ("PMR") (often Transnistria for short) has operated its own Trade Marks Office for some time. The international community recognises the PMR as de jure a part of Moldova. Abkhazia - see my previous blog - opened an Office fairly recently. That leaves Nagorno Karabakh Republic ("NKR") and South Ossetia. I am advised by the Ministry of Economy in NKR that they recognise Armenian registrations. Kindly note that de jure this territory is a part of Azerbaijan; even Armenia does not recognise it officially. As for South Ossetia, there is a "Committee for Patent and Trademark" which I believe is exploring the opening of an Intellectual Property Office as in Abkhazia, but the situation is unclear at the moment. With a small population and undoubtedly higher priorities, I would not anticipate any developments in this regard soon unless they are supported by Russia. Note that western governments, as is the case with Abkhazia, consider South Ossetia de jure a part of Georgia.

An applicant should consider any negative implications of registering trade marks and trading in countries unrecognised by their own country's government.

I should add that there are overseas territories of some European countries that lie outside of Europe not discussed in this blog.

The conclusion and how many filings would "Europe" require at most? 10 or 11.

  • European Community filing (if budget allows otherwise jump to 2 and include there)
  • Madrid Protocol filing designating: Albania, Armenia, Azerbaijan, Belarus, Bosnia-Herzegovina, Croatia, Georgia, Iceland, Italy (to cover Vatican City State), Kazakhstan, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Russia, San Marino, Serbia, Switzerland, Turkey, Ukraine
  • 9 x local filings: Abkhazia, Andorra, Denmark (to cover the Faroe Islands), Gibraltar, Guernsey, Kosovo, Pridnestrovian Moldavian Republic, Turkish Republic of Northern Cyprus, United Kingdom (as basis for application in Gibraltar)

How much would all this cost? Perhaps not as much as you may imagine. Official fees for a one class Madrid Protocol application would amount to CHF4978 or roughly US$5420, or including the European Community and it's CHF6089 or roughly US$6630. You will have your local IPO's handling fee on charge of this. If you're stuck then we can help you out.

For the other filings you will need to work with associates and, of course, my firm - and I am sure other firms including existing contacts that you have - would be pleased to quote you on fees for any of these.

9 December 2011

Croatia to join the EU

Croatia will join the EU on 1 July 2013.

From this date, Community Trade Marks and Registered Community Designs will be automatically extended to Croatia. No action will be required by the proprietors.

It will then become possible to file Community Trade Marks and applications for Registered Community Designs in the Croatian language.

Croatia becomes the second former Yugoslav republic to join the EU after Slovenia and will be the EU's 28th member in total.

It will be an added country to consider searching when filing a Community Trade Mark. Thankfully, it is not too expensive. Identical searches can be performed on the Croatian IPO's website.

New Trade Mark Jurisdiction

No not South Sudan. Developments here are being monitored and there does seem some varying information out there. We will try to keep you updated, but we are also following the excellent Afro IP blog regarding this one.

This jurisdiction is not actually that new, but it seems to have generally fallen under the radar. It's Abkhazia, a de facto independent republic in the Caucasus that most of the world recognise as de jure a part of Georgia. One country that has recognised it is Russia, a fall out of the recognition given to the independence of Kosovo by various western governments.

Abkhazia has opened its own Trade Marks Office. As could be expected in an area of the world which remains quite tense, this has gone down like a proverbial lead balloon with the Georgian Patent Office, SAKPATENTI. They have an article on their website denouncing the Office, advising it is illegal and that registrations covering it's Autonomous Republic of Abkhazia are granted exclusively by them in Tbilisi.

On the ground the situation may prove to be different for trade mark owners who may export to or trade in Abkhazia, perhaps as an extension of their Russian trading activities.

Any potential applicant should consider any negative implications of registering trade marks and trading in Abkhazia if it is unrecognised by their own country's government. They may also wish to take into account any impact it could have on their Georgian business.

Those interested in filing in Abkhazia, despite these warnings, should note it's not cheap. However, and with reference to the official fees due in Belarus, Turkmenistan and Uzbekistan, the former Soviet Union is not the most inexpensive part of the world to register trade marks.

It appears that registrations are granted for five year terms; the cynics amongst us will suggest that is so they can rake in even more in renewal fees.

We have located a law firm in Sukhumi, the Abkhaz capital. If more information is required, please do not hesitate to contact me.

8 December 2011

Location, location, location

As my background is almost exclusively in the field of trade marks, I have been following the extensive discussions on The IPKat regarding the EU's planned Unified Patent Court wearing my geographer's hat. It seems European harmonisation has been put on the back burner for a bit as old rivalries are restored and the British, French and Germans slog it out to see who will host this Court.

The choice it seems is between London, Paris or Munich which can only lead me back to a year I can't remember, 1979.

If only this Court was due to hear copyright cases then M's lyrics, "London, Paris, Munich, everybody talk about pop muzik" could have been prophetic.

The US is also having a location debate as the USPTO is looking to establish satellite offices around the country.

Detroit is due to have the first of these offices and is slated to open its doors in the later half of next year. I read an article on this that expressed surprise at this choice as Detroit's reputation is poor by American standards and it was felt this could hinder staff retention. With an election next year, it was also suggested that swing states may prove popular choices for the other satellite offices for the current government.

I'll provide alternative views not to be controversial but because our experience in the UK is different.

The Conservative Party government of the 1980s took the decision to relocate many Government departments away from London. South Wales benefited from this with its three biggest cities receiving new organisations. Companies House, the company registration office went to the Welsh capital, Cardiff. Swansea received the Driver and Vehicle Licensing Agency. Newport received the Patent Office, since rebranded as the Intellectual Property Office. A smaller office is still maintained in London, but the headquarters in Newport opened in 1991.

Newport - in this sense comparable to Detroit - would not be high up on a list of the UK's most liveable cities. This article is about a parody of the song Empire State of Mind that went viral here, but demonstrates underlying feelings towards the city.

Conversely, Newport as a location has helped staff retention as there is little in the way of IP practices in the local area or other civil service roles on its doorstep. Whilst there is no reason Patent or Trade Mark Examiners could not be coaxed into private practice or an in-house IP department, this is less true of the administration staff that form the efficient backbone of an organisation. And Examiners have not moved with the fluidity they did when based in London. As they settle in the Newport area, perhaps with families, their ability and desire to move reduces. It's also important not to overlook work-life balance and this is a strong selling point for both the UK IPO and the USPTO no matter where they are located.

Newport, like most of South Wales, is also Labour Party heartland and the relocation of the Patent Office did little to change this. From 1987 to date, both Members of Parliament elected by the people of Newport have been Labour Party candidates with their support, in the main, strengthening over this time. Newport has a population of around 120,000 so if the direct and indirect employment opportunities the Office's relocation created had little impact on local political beliefs, what change would this make to the political landscapes of far larger American cities?

Decentralisation of a country's IPO has not been limited to the UK. Ireland and Slovakia now have their main Offices out in the provinces, in Kilkenny and Banská Bystrica respectively. Germany, whilst maintaining bases in Munich and Berlin, handles some operations through an office in Jena, which was a part of the former GDR.

We will have to wait and see if the USPTO picks politically expedient locations, economic hubs or takes its satellite offices to unexpected locations in the country. As for the Unified Patent Court, Paris is rumoured to be the favourite.

Brand Manchester takes a beating

I am based in Manchester in the North West of England. Manchester's modern day reputation and image is largely based on two things: music and football (soccer). It's the home of iconic bands such as the Stone Roses and Oasis and the high profile football teams, Manchester United and Manchester City.

However, last night both football teams exited the lucrative Champions League and the impact on "brand Manchester" or "MCR" and the local economy is not being underestimated.

I'm not so sure it's all doom and gloom. Previously United have been the dominant side in the city, but this season sees both clubs go head-to-head for the league title. This domestic battle will likely continue for the rest of the season as they currently sit in first and second places in the league table. Personally, I'd prefer the current third placed team to overtake them by the season's end, but then I am a typical selfish football fan!

It's this selfishness that left me elated at Manchester United's departure from the Champions League. I am a former season ticket holder at Basel's St Jakob Park, known to locals as Joggeli, and FC Basel's progression in the Champions League is a real triumph for this small Swiss city. A brand I am highly familiar with, Novartis, will also be delighted with their added exposure. Novartis are the shirt sponsor of FC Basel.

7 December 2011

The UK's on the Right Start

The UK is far from perfect. But one thing we do have is an excellent IPO. Following on from my previous blogs on searching, they have an efficient search facility in place.

Request a search from them and if you are happy with the results you can file an application for half price. This is not what happens in practice, but this is effectively what you can do.

The IPO operates a "Right Start" filing option where you file a trade mark application and pay half the regular filing fees. They examine it and notify you of any marks they consider similar - or in other words they inform you of marks that could have been cited in a search. The search covers UK and Community Trade Marks, including appropriate International Registrations. It is no longer in their power to refuse an application on prior rights and the applicant can decide if it wants to pay the balance of the filing fee and the application then proceeds to advertisement (this assumes there were no other objections or they could be resolved).

Official fees for a Right Start application start at £100 for one class. This is in the same ballpark as a UK Register search conducted through a specialist search firm. You then pay £100 again (one class) following examination, presuming you wish your application to proceed. You do lose out on the £30 discount provided for regular e-filings by taking the Right Start route but it is still representing good value.

I believe Right Start was designed for small UK applicants, particularly those that file directly at the IPO without being represented, but there is no reason why the service cannot be taken advantage of by larger trade mark owners including those from abroad. A clear advantage is getting a filing date whilst "searches" are being undertaken, although applications enter the public domain and it might allow competitors to scrutinise your branding strategies. You are also reliant on the Examiner as marks he or she considers dissimilar will not be listed in their examination report but could still form the basis of oppositions.

This does not supersede any (free) identical or near identical searches that can be made prior to filing.

Foreign trade mark owners file less and less in the United Kingdom as the Community Trade Mark route is usually preferred. However, many British people do not regard themselves as European (much to this Europhile's chagrin!) and some businesses from certain industries - most infamously food - may treat the UK as a distinct, important market. They may find particular value in exploring this workaround with respect to searching and filing.

6 December 2011

Shortcutting across the Atlantic

Onwards to the US and how can we search here? Particularly with pragmatism and with an eye on the costs.

Full searches for the US should not only include searches of the Federal Register (including International Registrations covering the US) but also the individual State Registers and a Common Law search for any unregistered rights.

I think we would all agree that not undertaking any checks would be a bad idea. Beside the USPTO's TESS database, which is great for identical searches, I would refer you again to the Markify database which can provide a more intelligent search and catch many killers. Remember it does not claim it will find every similar mark, but then who can do that anyway?

Many of the State Registers are on-line and searchable but there's 50 of them and it would take you a while to conduct identical searches across them separately. Commercial databases are often better for this and with one tick of "US State" you can search all 50 of them in one go, including the ones that are not available to search through their Secretary of State's website. Some check Puerto Rico too meaning it's actually 51 databases being searched. You will probably have to pay on a per-hit basis unless you have a subscription and this covers the US State database.

You could omit the individual States because most - although I don't believe it is all - States operate a registration system that confirms any common law rights in existence i.e. use is a prerequisite for registration. This leads us nicely on to Common Law searches.

The cheapest Common Law search out there is an internet search. Whether you restrict to the most popular search engine, Google, or extend it to others like Yahoo and Bing would be up to you. There are obvious limitations to this approach and it is absolutely far from a catch all. It is generally restricted to identical matches although Google sometimes makes alternative spelling suggestions. You could also rely on market intelligence you/your client may have or can leverage e.g. through a local distributor who may know about similar marks already on the market.

For foreigners filing in the US particularly via the Madrid Protocol, where time is on our side and penetration of the US market is not expected imminently, we could take a relaxed view and just file from here. It would be a "suck it and see" approach to see what issues are raised, if any, by the USPTO. It would be important to file for an acceptable specification, which you may or may not be skilled at drafting, and not a "Europeanised" broad specification, but this is another discussion. It's also important to realise that any Common Law rights will not be revealed by an Examining Attorney.

In an ideal world, a full search (Federal, State and Common Law) with legal opinion would still be requested through a US trade mark lawyer. They would be able to advise on negotiating around possible problems, for example, by carefully crafting a specification of goods or providing an opinion on a 50/50 mark where you really need a detailed knowledge of local practice and case law. There is a lot of value a US trade mark lawyer could add to a matter. However, you may be able to knock out trade mark candidates far more cheaply before you go to them for a final (hopefully) green light to file or use. Adopting this approach could mean you knock out candidates that could possibly be available, but you may evaluate that risk as acceptable.

Overall, don't underestimate the number of free tools available to you. This is not an ideal economic environment and you have budgetary constraints. You have to weigh up costs versus risk. When it comes to the crunch, rely on a US lawyer to be absolutely sure.

5 December 2011

Cutting the corners of a trade mark search?

As the global economic woes continue to hit the IP budgets of companies around the world would foregoing (some) trade mark searches provide savings or would it prove a false economy?

Like many questions, the answer to this is not black and white. There will always be limitations with trade mark searching - even when there can be perfect and instant record keeping and indexing, the Paris Convention and priority will always see to this. Nevertheless, practitioners would recommend a trade mark search in nearly all scenarios.

In the European Union, in addition to the Community Register there are 24 member states with a National Trade Marks Register plus the Benelux Trade Marks Register, covering Belgium, the Netherlands and Luxembourg, and the International Register. In total, 27 Registers. This is a considerable amount and it is hardly surprising that searching all of these Registers is costly. On top of this, unregistered trade mark rights could also exist from common law countries like the United Kingdom.

Taking a look at some of the costs available on websites of specialist companies shows the following figures for a word mark search in one class in all 27 Registers:
  • Belgian search company €5850 8 hour turnaround, no legal opinion
  • Belgian search company €3900 5 day turnaround, no legal opinion
  • Dutch search company €8805 10 day turnaround, with overall legal opinion
  • German search company €4950 6 day turnaround, no legal opinion
  • Luxembourg search company €4278 5 day turnaround, no legal opinion
  • Luxembourg search company €8007 5 day turnaround, with overall legal opinion
  • My firm (please forgive the self marketing) €3650 no legal opinion
These are meant as a comparison and you may not be comparing exactly apples with apples with the search packages available. The thing is to demonstrate that it's an expensive business, although it could easily be more expensive - contact your agents in 25 individual countries for searches and then see what the collective fees would be!

It makes the official fee of €900 to file an application (in 1-3 classes) at OHIM seem a drop in the ocean, although you may have associate's fees on top of that.

There are times when it is important to clear a mark thoroughly across all 27 Registers e.g. ahead of a big launch across the whole of the EU and it could be useful for a trade mark professional, whether in private practice or in-house, to entrust the searching with a single provider.

At other times, the costs are going to be prohibitive. Pragmatic - if not entirely risk-free - solutions need to be provided.

This blog will now take a bottom up approach. Risk evaluation would need to be handled on a case-by-case basis.

Firstly, to not bother searching. But this is inadvisable when the tools out there for basic searching are readily available, most notably TMView. This currently includes 14 of the 27 Registers (including 6 of the "Big 7", which I'll come to later). I had the privilege to travel to Spain to test this on behalf of project leaders OHIM and it is a simple tool with the "*" being used as a wildcard. It gives the opportunity to at least undertake identical and rudimentary searches of 14 Registers. Some countries not on TMView, most notably Germany, can be searched through their national Office's website if need be.

The good thing is this is all for free and available to anyone not just from Europe, but from Canada to New Zealand, Chile to Japan too.

Commercial platforms also exist for conducting these searches often with more Registers available through one search query on a single platform and with a more intelligent ability to find similar marks. The disadvantage is they cost money whether this is on a subscription or a pay-per-hit basis.

Identical and near identical searching is not going to catch everything but it will catch absolute killers and it's cheap. I say cheap instead of free as you must take into account your time involved.

Also cheap and easy to use is the tool provided by Markify, a commercial company based in Sweden. Whilst this only covers the CTM and US Federal Registers (you can disable the latter if need be), it is more intelligent than any identical/near identical search most of us can conduct ourselves and produces more extensive results. It doesn't claim it will find every similar mark, but it's another freebie available to anyone worldwide and a useful way of locating any possible problems. People are sceptical of free things. Their website states that they make money from their premium services (trade mark watching) and referrals to law firms. For the record, I do not have a commercial relationship with Markify.

After a Community Trade Mark application is filed, OHIM will automatically search its own Register and advise you of the results. If you've undertaken the previous steps, you may not learn of anything new.

Upon filing a Community Trade Mark application it is also possible to request "National Search Reports". These cost an additional €132 and prior to your CTM's publication you will receive search reports from the 11 participating Offices: Austria, Czech Republic, Denmark, Finland, Greece, Hungary, Lithuania, Poland, Romania, Slovakia and Spain. In practice, these are irregularly requested as you have already committed yourself to filing an application and incurred the main application fee. If these searches were available on a standalone, pre-filing basis they would represent outstanding value for money.

"EU5" is a common package of interest to CTM applicants. This search concentrates on the British, French, German, Italian and Spanish Registers in addition to the Community and International Registers (the "Big 7" I mentioned before). The simple reason is that 80% of oppositions are said to be based on rights originating from one of these Registers and these searches tend to be around 70-80% cheaper than the full "EU27" searches above.

"EU15" is a package focussed on the first 15 members of the EU - as opposed to "EU12", the countries that have joined the Union in the last two waves of enlargement. As Portugal has already slipped behind accession countries such as Slovenia, I feel this is an outdated way to determine a searching strategy. As the Registers across the whole Union are now mostly well tuned, a pick-and-mix approach (perhaps supplemented by identical searches of the remaining Registers) depending on a client's budget and industry is probably going to be more appropriate. The Cypriot, Greek and Maltese Registers are still in need of some modernisation, but Cyprus and Malta are often omitted as they have two smallest populations in the EU (Luxembourg being taken as part of the larger Benelux for this statement).

If your interests are only in a portion of the European Union you can concentrate your searches on these core countries. It is usually said that as soon as you have three or more EU countries of interest then it becomes cheaper to file a CTM over separate applications. Take this example, you only have a real interest in Austria, Benelux and Germany so your searches of these three Registers are comprehensive, but you are less thorough with searching the other Registers. Your CTM application is then opposed on the basis of a Greek registration, but you can convert your CTM application into applications in Austria, Benelux and Germany. Conversion is a bit of an insurance policy; you do not lose your original CTM filing date. It doesn't come particularly cheap, national applications must be filed at the usual rates and there are no discounts available just because there was a prior CTM and you will not get your CTM filing fees back. However, in this example, would the additional cost of filing nationally in three countries be cheaper than having searched completely across "EU27"?  This would probably be marginal, depending on the circumstances. But if you had, taking this example, searched "EU27" and found the killer Greek mark and then realised you would have to file separately in Austria, Benelux and Germany then you would only have saved the CTM filing fees. This would have worked out more expensive than omitting the full "EU27" search in the first place, filing the CTM and then converting the CTM.

It is a juggling act. Trade mark professionals are tuned to believe that if you don't search properly then don't go crying to them if it goes wrong. However, in this day evaluated cost versus risk is critical. In the conversion example where you don't search comprehensively, "justice" is served on your "laxness" as you face an opposition. But you still end up getting trade mark protection where needed - cheating the system? Or being creative?

There are no hard and fast rules to searching but as clients squeeze their attorneys for costs and in-house teams feel the pinch, whether you are in our outside of the EU, take a look at some of the free tools available. If you can familiarise yourself with them so it's not an inefficient and ineffective burden on you then the time and costs savings could prove very useful. Then when it comes to the searches that cost money, be creative - or seek creative advice.

I'll take a (shorter) look at US searching soon.