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.