25 February 2012

Equality and Diversity in IP

In January, the IPO in the United Kingdom issued its Equality and Diversity report. I am as white and as middle class as could be but as I find myself as a minority in other respects this may explain why I find this subject particularly interesting (notwithstanding that we should all have a commitment towards it).

The IPO here has a staff of 903, comparable to roughly 1000 at OHIM, nothing compared to the thousands employed at the EPO, but 10 times that of the IP Office of Kosovo which has just 9 employees (and 3 of them are part-time!). 

The UK is a diverse country. The years following the Second World War saw an influx of people from the likes of India, Pakistan and the Caribbean and our membership of the European Union has seen many other Europeans enjoy the freedom of movement to reside here. There are also well established Chinese communities.

Ethnicity at the IPO reflects Newport's demographic profile. When it comes to religion, the response rate is too low in number to be truly representative, and this does not match the picture of Newport as a whole. Saying this, scientists are known to be less God-fearing than others so could we come to a fair conclusion that most Patent Examiners are atheists?

A response rate of only 15% makes the voluntary questionnaire sent out fairly worthless but with sexual orientation figures there is nothing to go against as this information is not sought in a census in the UK. Any other data sources are unreliable as sexual orientation is still something many do not wish to disclose.

Maybe my own experiences are not truly representative, although they stretch over 15 years and have taken in three countries, but I have found many women working in the trade marks field. This is not reflected in the IPO's gender statistics. It might be the more "masculine" patents that diverts the data towards a marginal male minority?

It is noticeable that men occupy the senior positions and this reflects my experiences where, for example, the partners in law firms have been in the majority men. Equality is still a "work in progress" when it comes to the sexes so this is not surprising and some women will still be pulled (much more than men) towards a traditional role as a stay-at-home parent or to combining motherhood with a part-time role, which may restrict their career development. However, I think the figure of "over 90% of staff return to work after maternity leave" is commendable.

In general, the IPO provides good career opportunities to the Newport area and continues to improve having not sat on its laurels since being awarded Investors in People status in 1998. The excellent and timely services that the IPO provides gives it an excellent reputation and, in my view, make it one of the best Intellectual Property Offices in the world.

23 February 2012

The benefits of UK registration in addition to a CTM

The United Kingdom (despite a fair bit of internal Euro-scepticism) is an integral part of the European Union. Community Trade Marks provide for trade mark protection to the country like they do to all other member states of the EU.

The Community Trade Mark is not designed as a supplement to any national trade mark rights, more of an alternative. It is designed for those with business interests throughout the trading block (although use in one member state should be regarded as sufficient use to stave off cancellation proceedings). Naturally, some local companies may register in the home country first of all before they develop expansion plans for the EU and then file a CTM.

However, are there any reasons or benefits to obtaining national protection separately and in addition to CTM protection?

When it comes to the United Kingdom the answer is "yes". Although the reasons stretch beyond Europe and are more relevant to global trade mark owners.

A UK National registration either covers automatically or can be extended to former or current UK territories. The same right is not accorded to Community Trade Marks with a few exceptions. UK legislation is not extended to its territories automatically and the territories have a distinct legal status so they would need to change their own laws to cater for CTMs. Most have not done so.

UK legislation is directly extended to the Isle of Man. In this sense it also provides for protection of Community Trade Marks.

Jersey has introduced legislation that allows for Community Trade Marks to cover the island automatically. This is a special situation as United Kingdom National registrations do not cover Jersey automatically but must be extended to the island with the filing of a local application.

The situation with Gibraltar is, in my view, ambiguous. OHIM indicates that a Community Trade Mark does cover Gibraltar. This is based on an understanding of Gibraltar's status with the EU under Article 299(4) of the Treaty of Rome. However, there do not appear to have been amendments to Gibraltar's local Trade Marks Act to reflect this. The 'usual' way to protect a trade mark in Gibraltar is to extend a UK registration by making a local application. Confusingly, it is also possible to extend a Community Trade Mark to Gibraltar (in addition to it apparently covering the territory automatically). This news release from Gibraltar offers some evidence of the indecisive situation.

Guernsey operates a separate and modern Intellectual Property Office. It allows for purely local applications but also 'supported' applications which can be based on inter alia a UK or CTM registration. A benefit to 'supported' applications is a reduction in the official fee due.

Outside of Europe, a Community Trade Mark is going to be sufficient if you need protection in the Cayman Islands as it is possible to extend a CTM registration locally in addition to a UK registration. The Falkland Islands introduced legislation to coincide with the start of the Community Trade Mark in 1996 which allows for automatic protection of UK and CTM registrations. It previously required a UK registration to be extended to the Islands - making it the world's smallest jurisdiction with a formal trade mark law by population - but the General Registry no longer maintains a Trade Marks Register of its own.

Neighbouring South Georgia and the South Sandwich Islands has a Trade Marks Ordinance from 2001. This covers trade marks "having effect in the United Kingdom" and I interpret this as including Community Trade Marks, particularly as the legislation dates from when the CTM was already operational. It is not exactly densely populated!

Outside this a UK registration is a prerequisite basis to making local applications in Grenada, Kiribati, St Helena, Solomon Islands and Tuvalu. Note that with the exception of St Helena, all of these are now independent of the UK. If you need service mark protection in the British Virgin Islands ("BVI") then a UK registration is also required. This will (probably) change soon with the adoption of a new Trade Marks Act in the BVI. The UK IPO's website indicates that a Community Trade Mark has effect in Kiribati, but I cannot see on what basis this statement is made and I cannot see any amendments to the local legislation. It might be based on an informal interpretation from the Administration in Kiribati which I would be wary of relying upon.

The British Indian Ocean Territory introduced a Trade Marks Ordinance in 1984 allowing for the automatic protection of UK registrations. I cannot locate this legislation on-line but suspect this is only with respect to UK National registrations.

This table may help clarify the incoherent situations:

British Indian Ocean Territory
British Virgin Islands (service marks)
Cayman Islands
Falkland Islands
Automatic and
Extendable but
questions remain
Can 'support' an application
Can 'support' an application
Isle of Man
St Helena
Solomon Islands
South Georgia and the South Sandwich Islands

In short this explains why a UK National registration can be of use in addition to a Community Trade Mark registration.

Those who examined the OHIM's notice may note that a French registration also has value above a Community Trade Mark. France has overseas departments and territories sometimes referred to as "DOM-TOM". The DOM is for the departments which are covered by a CTM. The TOM is for the territories which are not and are only protected by a French trade mark.

The Faroe Islands and Greenland are constituent countries of the Kingdom of Denmark. They are outside of the EU and therefore not covered by a CTM. They do not maintain separate trade mark regimes so registration in Denmark covers them both.

Italy and San Marino have an Agreement of Amity and Good Neighbourhood which provides for mutual recognition of trade mark rights from one to the other without the need to register in both. This is not provided for under the CTM but in this event it is a simple case of registering locally in San Marino. It can be added that Sammarinese registrations are usually obtained far quicker than Italian registrations.

With other EU countries, the situation is more straightforward with National and Community rights (including International designations) providing automatic protection. This applies to the Atlantic island groups of the Azores, Madeira and the Canary Islands, the Spanish possessions in Morocco of Ceuta and Melilla and the Swedish-speaking autonomous Ă…land Islands of Finland.

In the other places that OHIM indicates are not covered by a CTM, local filing routes are generally available and I would be happy to advise where required.

Companies with global needs reaching out to far flung places should be wary of the limitations of a Community Trade Mark in its wider context and consider filings in Denmark, France and the United Kingdom. Please also be aware that whilst a designation of France in an International Registration is fine, designations of Denmark or the United Kingdom are not always recognised in the same manner as National applications. Please do not hesitate to get in touch if any advice on this is required.

We will take a look at the situation with UK Registered Designs shortly.

17 February 2012

Republic of Kosovo is 4

This day four years ago was a Sunday. I was living in Basel, Switzerland at the time and during the afternoon I decided to walk into the city centre and, inadvertently, joined the celebrations of the Republic of Kosovo's Declaration of Independence (from Serbia). Switzerland has a large Kosovar diaspora, estimated at about 10% of all Kosovars and Basel's Marktplatz was the meeting place for a crowd of Albanian flag-waving and whistling revellers. The flag of the Republic of Kosovo (below) was yet to be formally adopted.

It's actually just over four years that Kosovo began operating its own IP regime as on 19 November 2007 it opened an IP Office in the capital, Pristina. It has good intentions but is hampered by delays and this blog will give a brief overview.

Serbia does not recognise Kosovo's Declaration of Independence and it was not recognised by all other countries either. It has not applied to join the United Nations. Any request to do so is likely to be vetoed by Serbia's ally, Russia. Not being a member of the UN prevents Kosovo from acceding to the Madrid Protocol and means Kosovo is purely a national trade mark jurisdiction; the largest by population in Europe.

The IP Office works with paper files and has suffered from power cuts and from being understaffed which has resulted in a backlog of applications. It has looked at recruiting additional employees - and Kosovo suffers from chronic unemployment - but finding the right staff and getting them trained is still not a straightforward task. At least some of the local IP firms try to actively support the Office which is commendable.

Staffing resources have meant trade mark searches are restricted to identical/near identical searches and for word marks only which is far from an ideal situation when examination and registration is taking some time. It is something that will have to be lived with for the time being, but hopefully the Office is moving in the right direction. A useful development is that accelerated examination of trade mark applications has been made available since January, although this is only available in case of alleged infringement of the trade mark.

Kosovo does have an active Customs authority and it allows for trade marks to be recorded with them. They recently destroyed a number of counterfeited products of the Slovenian soap company, Ilirija, which demonstrates positive action. OK, the cynics amongst you will suggest this is due to large amounts of pressure from the EU, but let us not be begrudging in giving Kosovar Customs some credit.

When it comes to North Kosovo, this remains under the control of Serbia although there are border controls between them administered by the United Nations Interim Administration Mission in Kosovo (UNMIK) who Serbia accepts as governing its province.

Serbian trade mark registrations should therefore provide protection in North Kosovo, including Madrid Protocol designations of Serbia.

Do note that it is possible to travel from Serbia proper to Kosovo and from North Kosovo to the Republic of Kosovo at the divided town of Kosovska Mitrovica. Whilst the Republic of Kosovo may look to assert its control over North Kosovo in the future, for the time being at least you should look to get trade mark protection in both the Republic of Kosovo and Serbia if the whole Kosovar territory needs covering. Interestingly, the Serbian (pro-EU) government recently denounced a local referendum held in the North Kosovo region which might be a sign of a softening of Serbia's stance towards Kosovo in general.

16 February 2012

Down Under Trade Marks

Finally, we reach 'Down Under' in our continental journey across the world as we look at trade mark protection in the continent of Australia and within its wider Oceania definition.

The obvious big gun in this region - in terms of population and area - is Australia. This is the only member of the Madrid Protocol in the region although this could change soon with New Zealand getting closer to membership. (Ignore the misleading headline in the link; also New Zealand would not be the first country to allow on-line International applications.)

For now, New Zealand is covered by national filings and it boasts an extremely efficient and organised Trade Marks Office. Registrations in New Zealand cover its dependent territory of Tokelau, but not the Cook Islands or Niue when granted under the Trade Marks Act 2002. Cautionary Notices form the only rudimentary way of protecting trade marks in the Cook Islands and Niue.

Cautionary Notices are also available in the Marshall Islands, the Federated States of Micronesia, Nauru and Palau.

The situation for the Pitcairn Islands is unknown. There is a local publication for the island (only one is inhabited) but the population is estimated at less than 50. The nearest it gets to a trade mark legislation is a Registration of Business Names Ordinance.

Norfolk Island, culturally related to the Pitcairn Islands, is automatically covered by an Australian trade mark.

Britain's colonial legacy is ubiquitous in this region and a United Kingdom National trade mark registration is a pre-requisite for protection in Kiribati, the Solomon Islands and Tuvalu, all now independent from the UK. Incidentally, there are no agents in Kiribati or Tuvalu. A UK basis is an option in Fiji where it can greatly reduce the registration timeline compared to a local substantive application. Note that Fiji does not have provision for service marks.

Samoa allows purely local applications or applications based on an overseas registration provided they are filed within two years of the overseas registration being obtained. Papua New Guinea and Tonga represent jurisdictions where only local applications can be filed. Tonga previously operated on the basis of requiring a UK National trade mark registration but introduced its own law to get away from this colonial stranglehold.

This is also the intention in Vanuatu which has introduced a new Trade Marks law repealing the old dependent legislation. The previous legislation was introduced in 2008 to allow for protection of other EU registrations but the Office then interpreted this to be registrations in EU member states only but not Community Trade Marks. The "new" legislation derives from 2003 but no regulations have been issued and no fees set and so it is not operational. It is believed registration cannot be obtained in the meantime based on the old legislation. Wait and see...

The French territories within the Pacific are covered by French registrations (including International registrations designating France) but not Community Trade Marks. New Caledonia could represent a case to keep an eye on as it is due to have a referendum on independence from France in the next few years. Paris, as well as London, with some separatist issues.

US Federal registrations cover the whole of the USA. However, both American Samoa and Guam have their own registration systems. American Samoa's trade mark law is somewhat 'light'; there is not even any renewal provisions (making re-filing the only possibility) and, in my experience, seems to operate as a deposit registry. Guam has a local system of registration, which requires use, and an alternative USPTO deposit system where proof of a US Federal registration is required. Because the USPTO allocates separate registration numbers to Madrid Protocol registrations and it should be possible to obtain certified copies of these, I believe it would be possible to deposit one of these in Guam under the latter system.

If a business only has interests in the Pacific they could forego US Federal registration in favour of a State registration in Hawaii. Non-American trade mark owners are presumed to conduct business inter-state - although this is easier in the congruent 48 states - but a registration in Hawaii is very cheap. The Department of Commerce and Consumer Affairs has halved the official fee (to just $25) for this calendar year, like it did last year.

The Northern Mariana Islands are not known to have a trade mark law of their own meaning a US Federal registration should provide protection automatically. In fact, there are provisions within an anti-counterfeiting law to protect not just trade marks registered with the USPTO, but also trade marks registered in any State or Territory of the US, or foreign trade mark or those protected by Common Law.

(The provinces of Indonesia and special territories of Chile would be covered by national registrations in Indonesia and Chile respectively and are excluded here.)

To conclude, this sparsely populated continent would require 11 applications:

1. Madrid Protocol application designating Australia, France and United States of America
2. National applications in American Samoa, Guam, Kiribati, New Zealand, Papua New Guinea, Samoa, Solomon Islands, Tonga, Tuvalu and United Kingdom
(Vanuatu currently not possible.)

Then six Cautionary Notices in Cook Islands, Marshall Islands, Federated States of Micronesia, Nauru, Niue and Palau.

Australia and New Zealand represent respected developed markets. The other jurisdictions are usually only on the radar of owners of large trade mark portfolios.

9 February 2012

Journey to the East

My blog now takes a look at trade mark protection across Asia, the world's largest continent that contains 60% of the world's population.

There is much cross over between Europe and Asia and so there will be some duplication from a previous blog on Europe.

The Madrid Protocol is not as extensive at protecting trade marks in Europe as it is in Asia, but it is nevertheless a useful tool and is more extensive than in Africa or the Americas.

India is hopefully not far away from joining as the Trademarks Amendment Bill, 2009 has been passed by both Houses of Parliament. It is now down to the Indian Government to accede to the Protocol.

Armenia, Azerbaijan, Bahrain, Bhutan, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam make up the current Madrid Protocol members in Asia.

Of these countries, Bhutan is a Common Law country but I cannot see any reflection of its Madrid Protocol membership within its Industrial Property Act of 2001. This puts the enforceability of a Bhutanese designation into question. Readers might be aware of similar issues faced in Africa.

Oman introduced legislation in 2008 to allow for the recognition of International Registrations.

The Democratic People's Republic of Korea ("DPRK") - or North Korea to most of us - is currently under UN sanctions and that of national governments. Banks in the UK, and I believe in the US and elsewhere, refuse to transfer funds to the DPRK. With respect to Madrid applications the official fees would be passed to the DPRK Government direct and I have enquired with WIPO whether they have put a stop to this (especially as it is a UN agency). Ironically, given WIPO is currently undertaking a survey on things such as customer service, a response to my query is still awaited! If you have any need to register in the DPRK - nationally or via Madrid - do be careful not to breach any sanctions that are in place. Provisional Refusals to Madrid designations can be issued willy-nilly which will require the appointment of a local agent.

The Cooperation Council for the Arab States of the Gulf has its own Patent Office, but this does not manage trade mark rights which continue to be handled nationally in the member states: Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates. (Bahrain and Oman can be included in a Madrid Protocol filing, however.)

The Association of Southeast Asian ("ASEAN") nations have commitments towards intellectual property rights but there is no regional registration possible. Therefore, separate applications are required in Brunei, Cambodia, Indonesia, Laos, Malaysia, Myanmar, Philippines, Singapore, Thailand and Vietnam. (Singapore and Vietnam can be included in a Madrid Protocol filing, however.)

Commitments towards IP harmonisation in the ASEAN are not exactly moving at a rapid pace and there are large differences between the developed law of Singapore with that of Laos, for example. Myanmar still operates a Cautionary Notice system.

The Maldives and Timor-Leste also represent Cautionary Notice jurisdictions within Asia.

National filings are the course of action in the remainder of the continent: Afghanistan, Bangladesh, India, Iraq, Jordan, Lebanon, Nepal, Pakistan, Sri Lanka and Yemen.

In Iraq, the autonomous Kurdistan Region operates its own Trade Marks Office and it is possible to "confirm" Federal registrations in the local Kurdistan Register. This seems desirable particularly whilst the Kurdistan Region enjoys greater stability than the rest of Iraq and the Trade Marks Office in Baghdad is not known for its excellent record keeping.

There are also a handful of partially recognised states within Asia. Abkhazia began operating its own Trade Marks Office quite recently. Also within the Caucasus region lie the de facto independent states of 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.

The northern third of the island of Cyprus is declared as the Turkish Republic of Northern Cyprus, recognised only by Turkey. It has its own Trade Marks Office. The island of Cyprus also contains two military bases of the United Kingdom, the Sovereign Base Areas of Akrotiri and Dhekelia. (Greek) Cypriot trade mark law is mirrored and, with respect to this article being specific to Asia, a Madrid Protocol designation of Cyprus should provide protection.

Palestine has two separate systems for registering trade marks reflecting its non-congruent territory, one being in the West Bank and the other in the Gaza Strip.

Taiwan is not recognised by many countries in official diplomatic circles, but "cultural offices" nurture bilateral relationships, for example, the British Trade & Cultural Office. Taiwan operates its own separate trade mark system from mainland China. The same is true for the two Special Administrative Regions of China, Hong Kong and Macao. Under the "One country, two systems" principle, Hong Kong and Macao maintained their separate Trade Marks Offices following their return to China by the United Kingdom and Portugal respectively.

Last but not least, there are some small territories in the Indian Ocean that constitute a part of Asia. Christmas Island and Cocos (Keeling) Islands form territories of Australia and Australian trade marks cover all Australian territories; there is specific mention of Christmas Island and Cocos (Keeling) Islands in the Australian Trade Marks Act 1995. It is possible to designate Australia in a Madrid Protocol application.

The British Indian Ocean Territory ("BIOT") provides protection automatically for UK trade marks in accordance with BIOT Ordinance No. 9 of 1984. I cannot locate this legislation on-line and so cannot see if it is anticipatory enough that it could be interpreted as allowing for protection of Community or International Trade Mark registrations. For the avoidance of doubt, a United Kingdom National registration would be required. This territory, despite being British, would be more of interest to American brand holders popular with US service personnel as the only inhabited island, Diego Garcia, is a military base. The islands have a controversial recent history in that the native inhabitants were involuntarily removed and there have been a number of court cases involving them in recent years.

The number of trade mark applications required to cover Asia is therefore 32 (plus some Cautionary Notices):

1. A Madrid Protocol application designating Armenia, Australia, Azerbaijan, Bahrain, China, Cyprus, Georgia, Iran, Israel, Japan, Kazakhstan, Kyrgyzstan, Mongolia, North Korea, Oman, Russia, Singapore, South Korea, Syria, Tajikistan, Turkey, Turkmenistan, Uzbekistan and Vietnam
2. National trade mark applications: Abkhazia, Afghanistan, Bangladesh, Bhutan, Brunei, Cambodia, Gaza Strip, Hong Kong, India, Indonesia, Iraq, Jordan, Kurdistan Region, Kuwait, Laos, Lebanon, Macao, Malaysia, Nepal, Pakistan, Philippines, Qatar, Saudi Arabia, Sri Lanka, Taiwan, Thailand, Turkish Republic of Northern Cyprus, United Arab Emirates, United Kingdom (to cover British Indian Ocean Territory), West Bank and Yemen
3. Cautionary Notice publications in Maldives, Myanmar and Timor-Leste

Whilst considerable more than is required in Europe, it is the half the amount of Africa and North America combined, two continents which collectively have only 40% of Asia's population.

3 February 2012

Cayman Islands - trade mark developments commentary

There have been recent developments in the regulations surrounding trade marks in the Cayman Islands.

The developments will not change much for some trade mark owners. It will have its most notable impact on trade mark owners who use an agent or specialist annuity payment provider based outside the Cayman Islands who have previously been dealing with the General Registry directly. They will now need to use a local agent which will raise costs. Caymanian agents are not particularly cheap and this is not surprising as the Cayman Islands enjoy the highest standard of living in the Caribbean; the islands are a key international financial centre and luxury tourist destination.

In my experience, having an agent on the ground in the Cayman Islands is not a bad thing. The General Registry has had issues with resources and a local agent is able to go to the Registry and help out physically; something not available to non-resident agents.

The new legislation also requires a stricter requirement on the payment of annuities although it remains to see if the Registrar will be equipped enough to proactively cancel trade mark registrations for failure to pay annuities ex officio.

The law appears to maintain the current requirement to have a UK, Community or International Registration designating the UK to form the basis of a local Cayman Islands application. This will be a disappointment to some, particularly for trade mark owners with little need for UK/European protection which they will need to get in advance. This is an obvious disadvantage to local Cayman Islands applicants.

It also maintains the Cayman Islands as one of the most expensive trade mark jurisdictions in the world, especially considering it is a deposit registry. Even taking away the need to obtain registration in the UK or EU (this could be needed by a business anyway), it is the annual fees that ramp up the costs in the Cayman Islands. It is not clear if the fees will change under the new legislation, but presuming they remain the same, a three class registration will cost $4390.20 in official fees to obtain and maintain in force for its first 10-year term - and this is without the agents fees on top. It is hoped it will still be possible to bulk pay the annual fees up to the next renewal date as this can go some way to reducing the agents fees as well as reducing the administrative burden.

With an estimated population of only 55,000, the Cayman Islands do not represent the best value trade mark jurisdiction out there. When you require protection here, be sure to budget accordingly.