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.