PROSUR - a new trade mark system?

IP tango reported last week on IP developments in PROSUR.

Could we see a new intergovernmental trade mark registration system akin to the Community Trade Mark and OAPI?

Colombia - which has just introduced a multi-class system - is also moving towards Madrid Protocol membership. Further internationalisation in Latin America could be a possibility. This would offer some cost benefits to what can be an expensive part of the world. However, I am not expecting any developments soon.

Co-operation has not been lacking in the past with the Andean Pact (comprising Bolivia, Colombia, Ecuador, Peru and formerly Venezuela) and Mercosur (Argentina, Brazil, Paraguay and Uruguay) having IP provisions. However, none have provided for a centralised registration procedure so a common PROSUR registration authority would be a radical step.

South America comprises 12 independent countries and PROSUR has a membership of 9 countries. It leaves just Bolivia, Guyana and Venezuela as non-members. WIPO has offered it's support for the group, but I hope, as must many others - particularly for the likes of Brazil - it does not distract them from a goal of Madrid Protocol membership.

ROSPATENT and OHIM meeting in Alicante

As I coincidentally prepare a presentation on 'Trade Marks in Russia', I was interested to learn of ROSPATENT, the Russian IP Office's visit to OHIM at the end of last week.

Joining the TMView project was discussed. The Russian Trade Marks database is now on-line and they use established codes so hopefully this is something that can be implemented relatively easily. Russia's EU neighbours Finland and Latvia are the latest countries that will come on board TMView soon as reported on their website this Monday.

EuroClass "accession" could be something that requires substantial work and not being privy to discussions between the two Offices, I'll just have to speculate that ROSPATENT were looking at some practical pointers on how to get started/further progress. Compiling a list of acceptable terms for goods and services is a task for the Office concerned and Russia, not being an EU member, is not obliged to follow any kind of European harmonisation. As OHIM does not have Russian as an official language, if ROSPATENT was looking at a "quick" win by replicating OHIM's acceptable terms then this would still involve an enormous translation effort.

Russia's relationship with the EU - or perhaps more accurately, with certain EU states - is very much up-and-down. Political factors may play a part in how fast progress is made in bringing Russia into the family of TMView and EuroClass. Nevertheless, this appears a positive step in the direction of cooperation and OHIM should be commended on their international outreach efforts as should ROSPATENT for wanting to come on board.

Vanuatu: Trade mark applications now possible

We have today heard from our associate in Vanuatu that the forms and fees for its new trade marks law have now been gazetted. Readers may recall that pending this the trade mark situation in Vanuatu was in a state of limbo.

Vanuatu has a population estimated to be approaching 250,000 and is an offshore financial services hub. It achieved independence in 1980 after being governed as a British-French condominium. English and French remain official languages along with the local creole, Bislama.

Under the previous legislation, it was possible to file directly with the Vanuatu Financial Services Commission. However, under the new law the trade marks authority is a new one and it is necessary to have an address for service in Vanuatu. We have a trusted associate in the Vanuatuan capital of Port Vila. My firm's fees (including the official fees and that of my associate) for a new filing in one class including dispatch of the Certificate of Registration assuming no problems are in the region of US$1250.

Convention priority is available under the new law and the "convention countries" have been published. I do not have a copy of the publication to hand but can anticipate this includes members of the Paris Convention.

It is anticipated that the processing of applications will be fairly efficient but as the new law is more substantive than that previously in force, we will need to wait and see if this proves to be the case. The situation in Vanuatu has been unpredictable of late and some will be less optimistic that everything will run quite so smoothly.

Please do not hesitate to get in touch if you require any assistance with registering your trade marks in Vanuatu and we would be pleased to help.

Specifications and useful tools

When I started out in the world of trade marks the crafting of specifications was sometimes a time-consuming task. There were two books. One contained the goods/services in class order. The other listed the goods/services in alphabetical order. It was, or still is, also printed in Chinese, Croatian, Czech, Danish, Dutch, German, Italian, Japanese, Lithuanian, Macedonian, Norwegian, Polish, Portuguese, Russian, Slovene, Spanish and Swedish. For some of these languages, it must still be an invaluable resource.

For some of us, we now have the benefit of on-line tools to help us devise specifications of goods and/or services.

In Europe we have the EuroClass Classification Assistance tool developed through OHIM. As a digression and being a teenager in the 1990s, the term EuroClass can only make me think of Eurotrash, a surreal and sarcastic TV show. Perhaps I am not the only Briton for whom this comes to mind?

There are six national Trade Marks Offices that are harmonised with OHIM. Italy, Spain and Sweden make up three. The other three are the English-speaking countries of the EU: Ireland, Malta and the United Kingdom. An acceptable (approved) specification at OHIM is going to be similarly automatically accepted by, for example, the Italian Ufficio Italiana Brevetti e Marchi or the UK Intellectual Property Office. Likewise, using an acceptable term to file nationally in the UK would also be an acceptable term for filing nationally in Ireland.

For the other countries it is possible to get accepted terms for each of the national Trade Marks Offices within the EU (another 19 Offices) plus the accepted terms from Switzerland and the United States are also included in the tool. The latter is taken from the "U.S. Acceptable Identification of Goods and Services Manual (ID Manual)".

Also, available through EuroClass are WIPO's acceptable items. As WIPO is the gatekeeper of the Nice Classification this is helpful.

WIPO do have their own tool available too. It is named the Goods & Services Manager, not quite as cheesy as the EuroClass name.

A recent announcement from Geneva informs us that this will now be available in 10 languages: English, French and Spanish, the official languages of WIPO, plus Arabic, Dutch, German, Hebrew, Italian, Portuguese and Russian.

I must admit that my navigation skills only provide the Goods & Services Manager in the three official languages of WIPO. I can, at least, locate the Russian version but have had no joy in finding the Arabic, Dutch, German, Hebrew, Italian or Portuguese versions.

Dutch, German, Italian and Portuguese specification items can be found through EuroClass. That leaves only Arabic and Hebrew as additional resources.

However, these tools are primarily for the benefit of local practitioners filing a Madrid Protocol application as opposed to a foreign applicant filing in an Arabic-speaking country or in Israel. Effectively, using acceptable WIPO terms (in English, French or Spanish) is going to avoid those awkward to deal with irregularity notices from WIPO.

This does not mean a wonderfully worded specification that WIPO loves is going to be accepted locally in the designated countries of a Madrid Protocol application. The Israeli Office does not like class headings and is particularly strict when it comes to pharmaceutical trade marks. You can obtain broader protection (e.g. for house marks) with the filing of an Affidavit and for pharmaceuticals you can defer limiting a specification to a specific product for five years. However, expect an Office Action if filing broadly; I'd recommend considering filing nationally over Madrid in this event.

The US, as many will realise, is also very strict with specifications and will not accept the more blanket coverage provided by some WIPO terms. Asian countries can present problems too. China requires specific items if you want them protected and don't rely on a class heading; note recent guidelines in the EU too. South Korea can also be stringent with what is acceptable.

These tools are useful and welcomed and they can go a long way to helping us avoid unnecessary Office Actions and irregularity notices but there are limitations.

The 10th Edition of the Nice Classification came into force on 1 January 2012. As WIPO look to review this every year going forward do be careful with searches, filings, renewals and watching. Not all countries will proceed with reclassifications whether this be ex-officio, at applicant's request or as a mandatory or optional part of a renewal.

For searches it could be important to ensure you search the 'old' Class in addition to the current class. For example, "vending machines" have moved to Class 7 from Class 9. The addition of Classes 43-45 for services created a general awareness of this but for goods we need to keep in mind as often it is not relevant yet sometimes it can be. The reverse is true for watching as if you are a vending machines company then you will need to ensure your marks are watched in the current Class 7.

When it comes to filings, be alert not to just copy-and-paste a specification from a registration accepted last year. Consideration can also be given to making re-filings in the correct class particularly for countries that examine on relative grounds and who have not reclassified. For a chain of beauty and hairdressing salons, you may find your old Class 42 registration not being cited against similar recent applications in Class 44. This may not be the best example but if you find yourselves fighting a number of oppositions then it might be more cost-effective to file afresh in Class 44 to form a bar to registration for third parties that the Trade Marks Office can defend on your behalf.

After all this it does beg the question, is classifying really getting easier?