31 December 2012

A look back at 2012

OHIM has recently declared "a year of achievement".

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Happy New Year!

20 December 2012

Caribbean IP Part 22: St Vincent and the Grenadines

ISO 3166 country code: VC.

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

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

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

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

11 December 2012

Caribbean IP Part 21: St Lucia

ISO 3166 country code: LC.

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

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

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

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

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

4 December 2012

Caribbean IP Part 20: St Kitts and Nevis

ISO 3166 country code: KN.

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

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

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

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

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

29 November 2012

Class headings

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

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

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

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

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

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

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

27 November 2012

Caribbean IP Part 19: Puerto Rico

ISO 3166 country code: PR.

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

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

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

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

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

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

21 November 2012

Caribbean IP Part 18: Montserrat

ISO 3166 country code: MS.

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

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

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

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

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

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

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

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

20 November 2012

Mexico joins Madrid Protocol

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

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

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

16 November 2012

Caribbean IP Part 17: Jamaica

ISO 3166 country code: JM.

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

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

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

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

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

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

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

12 November 2012

Caribbean IP Part 16: Haiti

ISO 3166 country code: HT.

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

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

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

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

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

9 November 2012

Caribbean IP Part 15: Guyana

ISO 3166 country code: GY.

Guyana is located on the South American continent but is widely considered a part of the Anglophone Caribbean and sometimes referred to as 'Mainland Caribbean'. As a part of the West Indies it has a unique love of cricket in South America (although Argentina has long played the game too) and is a part of the CONCACAF (Central America and Caribbean) football federation. The Guyanese capital, Georgetown, is also the seat of the Secretariat of CARICOM, the Caribbean Community.

The Deeds Registry looks after the administration of patents, trade marks and designs. Their website contains only basic information.

The Trade Mark Register is split into three parts: Part A, Part B and Part C. Part A and Part B are typical in much Commonwealth trade mark legislation; for example, they were parts of the UK Trade Marks Act 1938. For those of you in the US, they have similarities with the Principal and Supplemental Registers.

Part C of the Register is for marks based on UK registrations. This part of the Register is the only way multi-class applications and service marks can be registered in Guyana at the minute. Community Trade Marks cannot be used to form this basis and neither can International Registrations even if they designate the United Kingdom.

Designs are available locally in addition to UK designs automatically covering Guyana although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana after registration (e.g. in the UK only), a registered design owner would be prevented from taking action. A Registered Community Design would not provide the same protection.

Patents are available locally although it is also possible to base an application on a UK patent provided it is filed within three years of grant.

The Deeds Registry suffers from delays in the processing of applications. Having a UK IP registration in place can greatly speed up the processes, although at least there are independent routes to protection available when you do not have - or it is undesirable to seek to obtain - a UK registration.

Madrid Protocol membership seems some way off, although it could form a part of future updating of local IP laws.

6 November 2012

Caribbean IP Part 14: Grenada

ISO 3166 country code: GD.

As previously reported on this blog, Grenada introduced new trade mark legislation on 1 August 2012. The new law replaced a need to have a UK registration before being able to register in Grenada. The law and regulations are not on the internet (WIPO Lex is yet to be updated in this respect) but having seen these I can confirm they are modern and like you would expect in 2012. The prescribed forms are highly similar to those in use in Trinidad and Tobago, to the south of Grenada. However, I would anticipate Grenadian examination being less strict than in Trinidad and Tobago.

The new trade mark law does not extend to joining the Madrid Protocol. At least with the UK dependency dispensed with it makes it easier for many brand owners to register in Grenada.

On the patents side, UK and EP(UK) registrations can be extended to Grenada (in addition to substantive or PCT applications). For designs, the United Kingdom Designs Protection Act (Cap. 331) allows United Kingdom design registration to cover Grenada automatically, and there is no provision for local registration. Such automatic protection is not accorded to Registered Community Designs.

In conclusion, Grenada, the Spice Island, has made welcome steps to modernise its trade mark system.

30 October 2012

Caribbean IP Part 13: Dominican Republic

ISO 3166 country code: DO.

The Dominican Republic is the second largest country (in terms of both population and area) in the Caribbean after Cuba. It is an economic power in the Caribbean region.

In IP it is a member of important international treaties such as the Berne Convention, Paris Convention, Patent Cooperation Treaty and WIPO Convention.

It is also a member of the UPOV Convention, the International Union for the protection of new varieties of plants. This was a mandatory requirement for the Dominican Republic when it became party to the 'Dominican Republic - Central America Free Trade Agreement' ("CAFTA-DR"), a free trade agreement which includes the United States.

There are a number of other intellectual property provisions within this agreement including that members "shall make all reasonable efforts to ratify or accede to" inter alia the Hague System for designs and the Madrid Protocol for trade marks. With such unassertive language it may come as little surprise that none of the member states have joined the Hague System and just one (the United States) has joined the Madrid Protocol.

The National Office of Intellectual Property (its Spanish acronym ONAPI) administers IP rights in the Dominican Republic, their website being available in Spanish only. I can, however, establish that it is possible to undertake identical trade mark searches on-line. There also appear to be on-line filing facilities (and there is a resolution in relation to electronic filings), although the web pages were not working for me when I tried.

The Dominican Republic used to be one of the quirkier trade mark jurisdictions around. I remember when it used to have its own classification system and you could choose your registration term (between 5 and 20 years) which caused record-keeping headaches, particularly for databases that liked to auto-calculate renewal dates. In recent times, things have become far more straightforward and the Office works effectively, a short opposition period helping trade mark applications, in smooth cases, mature to registration quickly.

The CAFTA-DR agreement will continue to see pressure from the United States for the Dominican Republic to join the Madrid Protocol. Costa Rica is anticipated to be the first (other than the US, of course) to come on board the Protocol and once they join perhaps there will be a domino effect with the other member countries.

26 October 2012

Caribbean IP Part 12: Dominica

ISO 3166 country code: DM.

Dominica is not to be confused with the Dominican Republic. It is an English-speaking island, albeit one where a number of the population speak a French Patois, compared to the Spanish-speaking Dominican Republic. Dominca is sometimes referred to as the Commonwealth of Dominica to distinguish it from the Dominican Republic. The locals are referred to as Dominicans, with the stress on the second 'i' to distinguish them from the Dominicans of the Dominican Republic where the stress is on the first 'i'.

Dominica is party to the most common IP treaties, namely, the Berne Convention, Nice Agreement, Paris Convention, Patent Cooperation Treaty and WIPO Convention.

The Companies and Intellectual Property Office, a department of the Ministry of Tourism and Legal Affairs, administers IP rights in Dominica. Unfortunately, there is no information on intellectual property on their website aside from the Office's contact details.

Formerly, Dominica operated a dual trade mark registration system allowing local (substantive) applications using the former British classification system or for extension of UK registered rights. This was commonplace amongst some of the Caribbean islands (and the system still operates in the British Virgin Islands). However, it now has a purely independent trade mark law using the International classification. As of yet though, Dominica has yet to join the Madrid Protocol - as has been the case in Antigua and Barbuda. Dominica may find itself under pressure from the EU and US to join the Madrid Protocol but this should make registering a trade mark in Dominica more attractive to foreign brand owners and could increase investment in Dominica.

Independent design protection is available in Dominica. The United Kingdom Designs (Protection) Act - allowing for automatic protection of UK Registered Designs - was repealed in 1998.

Dominica is one of the poorer islands of the region; being volcanic and with less beaches than its neighbours, tourism has been less developed although eco-tourism is now a developing industry. However, the island now has good trade mark and design laws in place and Madrid Protocol membership would be welcomed. Bringing in additional revenue to the IP Office may enable it to develop a more sophisticated web presence.

23 October 2012

Caribbean IP Part 11: Curaçao

ISO 3166 country code: CW.

Do note that Curaçao was the main island (in population and where the capital was located) of the now dissolved Netherlands Antilles. The ISO 3166 country code for the Netherlands Antilles was AN.

As an example of the latter's continued use, the Bureau for Intellectual Property still uses a domain name with the .an suffix. It was formerly the IP Office for the Netherlands Antilles and being located in the Curaçaoan capital of Willemstad has continued as the IP Office for Curaçao.

The Office has a useful website which details the various IP rights available. It also provides an 'i-Envelope' service for establishing the date of creation of an idea; this appears similar to - and possibly modelled on - the 'i-DEPOT' facility provided by the Benelux Office for Intellectual Property.

Curaçao is a constituent country of the Kingdom of The Netherlands which has extended most of its international treaties to Curaçao. Of particular note is the Madrid Protocol being available for Curaçao; the country must be designated separately and it requires the payment of Individual Fees.

The Bureau for Intellectual Property encourages use of the Madrid Protocol for local applicants and even for foreign applicants who may incorporate a company in the island, which could be beneficial from a tax perspective.

Applications can be made in English, Dutch, Papiamentu or Spanish although a local representative is required. It is also possible to register industrial designs locally, but International registration is not possible as the Hague Union has not been extended to Curaçao by the Dutch Government.

Curaçao boasts an efficient IP Office and with Madrid Protocol applications available to foreign brand owners is an easy Office to deal with. However, as it is not a member of the Madrid Protocol in its own right the country is not listed in the members list provided by WIPO; information on Curaçao is in the small print at the bottom of the list. Therefore, don't forget that it is available through the Madrid Protocol as part of any international trade mark filing strategy.

19 October 2012

Caribbean IP Part 10: Cuba

ISO 3166 country code: CU.

The Republic of Cuba is the largest and most populous of all the island nations of the Caribbean. It comprises nearly the whole of the island of Cuba except the Guantanamo Bay Naval Base which is perpetually leased to the United States despite the lack of diplomatic recognition bestowed to Cuba by the US Government.

A single-party communist state that can find itself somewhat isolated, it could be considered surprising that Cuba involves itself in international IP circles being a member of a number of treaties including the Berne Convention, Madrid Agreement and Protocol, Nairobi Treaty, Paris Convention, Patent Cooperation Treaty, and the Lisbon, Locarno and Nice Agreements.

The Cuban Industrial Property Office administers registered IP rights in the country. Their website is only available in Spanish. However, Cuba was one of the first members of the Madrid Protocol in 1996, some time before Spanish was added as an official language in April 2004.

Unfortunately, my Spanish is limited but it is clear the site contains information on the three main IP rights (patents, designs, trade marks). Typical for a communist nation, representatives must be registered with the Office and in Cuba there is a choice of just five firms. To be fair this is an improvement if we go back to the 1980s and compare to former Communist states such as the Soviet Union and the German Democratic Republic where foreigners had a choice of just one and two Government-approved IP agencies respectively.

Cuba allows the registration of trade marks and designs through a national route. For trade marks, as stated above, International applications through both the Madrid Agreement and Protocol are possible. For the Protocol, Cuba has made a declaration under Rule 34(3)(a) that it wishes to receive Individual fees in two parts (you may well be more familiar with this requirement with respect to designations of Japan).

Cuba seems an enthusiastic member of the 'international IP community' and it also provides IP support and guidance to local businesses. Despite this, International applications originating from Cuba total just 37 in the last 8 years. This may be unsurprising given the economic situation in Cuba. The country also has work to do on improving the efficiency and operations of its IP Office with delays being a regular occurrence. These are often not helped by unresponsive agents but as Cuba (very) slowly opens up more to the West, we can hope for improvements.

16 October 2012

Caribbean IP Part 9: Cayman Islands

ISO 3166 country code: KY.

I have previously blogged on developments in the Cayman Islands so will avoid repeating the same here.

Quite simply, registering patents and trade marks in the Cayman Islands requires a UK registration to be extended. In the case of trade marks, Community and International Registrations (designating the UK) are also acceptable bases to an application.

It would be preferable to many brand owners to have a more substantive law in the Cayman Islands. The proposed law in the British Virgin Islands would also fit the requirements of the Cayman Islands better; there being a lot of similarities between the high income, financial services and tourism charged island groups. However, with a recent change to the procedures in obtaining IP rights in the Cayman Islands, it is difficult to see that there will be additional amendments (improvements) in the immediate future.

12 October 2012

Caribbean IP Part 8: British Virgin Islands

ISO 3166 country code: VG.

The Virgin Islands as they are officially known are usually referred to as the British Virgin Islands ("BVI") to distinguish them from the neighbouring US Virgin Islands. You may even have heard of the Spanish Virgin Islands, which far from belonging to Spain form a part of Puerto Rico, and/or the Danish Virgin Islands (more properly, the Danish West Indies). Denmark sold the latter to the United States in 1916 whence they became the US Virgin Islands.

The British part of the (unofficial) name also correctly alludes to the fact that the islands are a British overseas territory. With the naming issues hopefully addressed, we can now look at IP on the islands.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom.

The Registry of Corporate Affairs, a part of the British Virgin Islands Financial Services Commission, oversees the administration of IP rights. Unfortunately, there is a real lack of any IP information on their website.

Substantive (independent) trade mark applications are possible. These must be filed using the former British classification system, which you may recall is still used by The Bahamas. It is also possible to register (extend) trade marks based on UK registrations. These will replicate a UK registration's particulars including the specification and classification. Currently, the UK extension route is the only one available in which to register service marks.

The local Government are planning on introducing new trade mark legislation. You will see that this is a modern law meeting international standards (e.g. provisions for well-known marks, priority, multi-class applications, etc.). It does not contain any provision for the Madrid Protocol. The BVI Government are not in a position to accede to the Madrid Protocol, but the United Kingdom could do so on their behalf if they were specifically requested to do so by the BVI Government. I feel this is a disappointing oversight bearing in mind I believe the BVI Registrar has been a member of INTA and should be aware of international agreements in relation to trade marks.

When it comes to designs I believe UK registrations cover the BVI automatically, although if the jurisdiction is of importance it is recommended to have a local 'confirmatory' Cautionary Notice published too. However, Registered Community Designs should not provide protection. UK patents can be extended to the BVI but this must be done within three years of the UK date of issue (this includes European patents valid in the UK).

A new trade mark law will greatly simplify this area and make it easier for North American applicants, in particular, to register their trade marks. Despite being a British overseas territory the BVI's geographical proximity to the likes of the US is obvious. The islands also use the US dollar as their currency.

9 October 2012

Caribbean IP Part 7: Bonaire, Sint Eustatius and Saba

ISO 3166 country code: BQ.

This is one of those jurisdictions that has multiple names. Bonaire, Sint Eustatius and Saba is that used by WIPO and is arguably less ambiguous than the other names used: BES Islands or the Caribbean Netherlands.



Sint Eustatius

The latter demonstrates that it is not an independent part of the Netherlands. It is not even a constituent country of the Kingdom of the Netherlands; note the Kingdom of the Netherlands being different to the Netherlands. They obtained their current status following the dissolution of the Netherlands Antilles on 10 October 2010, that is of special municipalities of the Netherlands. With a collective population of only 21,000, the majority being on Bonaire, this may have been a reason why self-government would have been unattractive.

Many would be forgiven for thinking that now these islands are a part of the Netherlands they would be protected by a trade mark covering the Netherlands (i.e. a Benelux or Community Trade Mark). However, this is not the case and a separate trade mark process is applicable. I use the word "process" here deliberately as a separate Trade Marks Office does not exist. Trade marks are managed through the Benelux Office for Intellectual Property (BOIP) in The Hague, albeit a different section to that administering Benelux trade marks. At least there is a separate website for the part related to Bonaire, Sint Eustatius and Saba: CaribIE.

As you may imagine for a system developed by the BOIP this is an easy on the eye and intuitive website to navigate. Trade mark searches can be conducted on-line and an on-line filing facility exists. According to the guidance notes, it appears that if you are the proprietor filing directly then you do not need an agent but if you appoint one then they must have an address in either Aruba, Curaçao, the Netherlands, Sint Maarten or, naturally, Bonaire, Sint Eustatius or Saba. In practice, most are based in Curaçao, given this is where the Netherlands Antilles' IP Office was, or in the Netherlands. Representatives from Belgium or Luxembourg or other EEA states are not accorded representative rights currently (as they are for the BOIP in Benelux trade mark matters).

It is possible to file trade mark applications in English in addition to Dutch. English has official status on Sint Eustatius and Saba. It is not currently possible to file in Papiamentu which is co-official with Dutch in Bonaire (see also under Aruba).

If you did not confirm old Netherlands Antilles registrations with the CaribIE then the deadline in which to do so has now passed.

The Madrid Protocol has been extended to Bonaire, Sint Eustatius and Saba by the Dutch government but a designation must be requested separately from that of the Benelux or European Community and separate fees must be paid.

Older International Registrations that designated the Netherlands Antilles will have continued to have effect in Bonaire, Sint Eustatius and Saba automatically.

I am not aware that it is possible to register Industrial Designs in Bonaire, Sint Eustatius and Saba. In view of its special status within the Netherlands, I would doubt that Benelux (or indeed Community) Designs provide protection. International Hague System registration has not been available since the freeze of the London Act (applicable to Bonaire, Sint Eustatius and Saba) on 1 January 2010 and an official denunciation of this was made by the Dutch Government on 13 December 2010.

In October 2015, the special status of Bonaire, Sint Eustatius and Saba will be reviewed by the Dutch Government and the islands could be included within the European Union (there are provisions in the Lisbon Agreement to do so). Logistically this may not be desirable for obvious geographic reasons and the islands use the US dollar as their currency, not the Euro.

If the islands do become a part of the European Union then Community Trade Marks and Registered Community Designs would be expected to be automatically extended. However, would it, for example, be possible to file opposition to a Community Trade Mark based on a Bonaire, Sint Eustatius and Saba registration? I would doubt it because OHIM considers Gibraltar a part of the European Union yet basing an opposition on a Gibraltarian registration is not possible (at least not on the opposition form). (This is almost nitpicking as to have a registration in Gibraltar requires one in the United Kingdom; although a CTM opponent could conceivably prefer to base an opposition on a registration in Gibraltar as opposed to the UK to avoid a possible counter-claim to its mark in a larger market.)

To avoid going off at a tangent (bit late!) and back to Bonaire, Sint Eustatius and Saba where many will anticipate little change to its current relationship with the EU. We may not have to worry ourselves about such a scenario.

5 October 2012

Caribbean IP Part 6: Belize

ISO 3166 country code: BZ.

Belize is a country of Central America but being a former British possession, as British Honduras, is often linked with the Caribbean region. Spanish is a widely spoken language in this linguistically diverse country and Guatemala holds territorial claims to Belize meaning it sits at the crossroads between the West Indies and Central America.

The Belize Intellectual Property Office (BELIPO) administers IP rights in Belize. They have a bold mission statement, "To build a modern intellectual property system that values and protects the vibrant creative culture of Belize." Their website is a dedicated resource to IP and provides for on-line filings of trade marks and industrial designs and it also publishes its Intellectual Property Journal on-line.

Belize has made significant strides in developing its IP legislation this century with new legislation introduced for trade marks, industrial designs and patents in 2000. Before this date, I can recall the former trade marks law requiring a UK registration to obtain local registration. In those days, applications could be made direct to the General Registry and I recall that they were not easy to get hold off if you wanted to query a delay in registering a trade mark. These days a local agent is required. You can even use the law firm in which the current Prime Minister of Belize is senior partner (although, unsurprisingly, he is on a leave of absence from the firm whilst he carries out these duties).

A Statement of Use is required in order to renew trade marks in Belize although non-use can be excusable; "lack of a suitable distributor in Belize" usually being an acceptable reason, for example.

It is possible to designate Belize in a Hague design application. It is only available to those with an entitlement under the Hague Act as Belize has not become party to the Geneva Act. In any case, this membership does not appear to be reflected in the Industrial Designs Act - Cap. 254 and therefore I find it unlikely that such Hague designs would be enforceable in Belize; the country following the Common Law doctrine.

With the Prime Minister winning re-election earlier in the year - and him coming from an IP agency - will the coming years see Belize join the Madrid Protocol and make efforts to put their Hague system membership in order?

2 October 2012

Caribbean IP Part 5: Barbados

ISO 3166 country code: BB.

The Corporate Affairs and Intellectual Property Office (CAIPO) administers IP rights in Barbados. It boasts a decent website explaining the various types of intellectual property available and a slideshow on trade marks in particular.

As in previous entries, WIPO's statistics do not paint a particular clear picture and I have doubts regarding their accuracy.

Barbados has a decent trade mark regime. In my experience it can take some time to obtain the filing number though as it is not issued upon application. The fees are not expensive ($75) although there is an strange $25 increase for using an agent. Publication costs vary.

Industrial designs are registered on a local basis in Barbados.

Barbados has a decent economy, a stable government and suffers little from corruption. To increase its attractiveness to foreign businesses, Madrid Protocol membership would undoubtedly be welcomed.