Trade Marks and Scottish independence

The debate has been raging for a while now but the next two years should see a referendum on Scottish independence from the United Kingdom. The coalition government in Westminster want this to happen soonish, the devolved Scottish Government want to wait until 2014 - by no coincidence the 800th anniversary of Scottish victory over the English at the Battle of Bannockburn and when Glasgow hosts the Commonwealth Games and, presumably, Scotland is experiencing a feel good factor.

My cynicism aside, I am not a committed unionist although I do have a ticket to "Team GB's" opening match in Manchester at this year's Olympic Games; this team may only be made up of English players, however. I have no problem with Scottish independence or with Scotland remaining a part of the United Kingdom, although independence could lead to greater democracy "south of the border" and some elimination of the West Lothian question.

There would be lots of issues to iron out should Scotland vote for independence. One which does not capture the imagination as much as pandas is trade mark rights - what would happen to them?

The truth is we don't know and there may be no need to even speculate if Scots end up voting for the status quo. However...

Would independence for Scotland come within the European Union? There is some debate on whether Scotland would need to apply for membership, which would require a commitment to join the Euro. (There are even reports the remainder of the UK would need to reapply although these seem far fetched to me.) If Scotland does need to apply there are even reports that Spain would veto such a bid. I think this would end up being a PR disaster for the Spanish government that would only galvanise separatist movements and it is hardly in the spirit of European human rights. In any case, I can see EU membership being automatic - after some negotiations, for example, relating to voting rights - as Scotland is already within the European Union and has compliant laws. It's not exactly a precedent but the old East Germany jumped into the EU following German reunification; 16 million people being allowed into the EU without fuss. I don't see 5 million Scots being an issue especially as they are EU citizens already.

  

I would therefore speculate that Community Trade Marks will continue to cover Scotland as a continuing member of the European Union.

National rights will present a different story. From a legal perspective, the UK is currently three legal jurisdictions anyway: 1. England and Wales, 2. Scotland and 3. Northern Ireland. Scots law is a hybrid law. It is not pure Common Law as used in England and Wales (and Northern Ireland) and which the British Empire exported to other parts of the world. When it comes to trade marks though, UK legislation is "Federal" and unitary in that it covers England, Wales, Scotland and Northern Ireland. It also covers the crown dependency of the Isle of Man which is another distinct legal jurisdiction.

I would speculate that the UK Register will be duplicated into a Scottish Register. This would be easy to do as the UK Register is completely computerised and I'd anticipate Scotland enacting trade mark legislation and setting up a Trade Marks Office essentially identical to that in place now. I would suggest that revalidation of UK rights to Scotland will not be required because whilst it could see a large volume of revalidation applications (and perhaps related official fees) these would tail off quite soon after. It would also discriminate particularly against local Scottish businesses who only use their trade marks in Scotland and who would be forced to pay again.

There should also be no issue with agents (i.e. a need to appoint an agent in Scotland) as the UK currently allows an Address for Service anywhere in the EEA or Channel Islands. EU obligations would see that this is followed so a firm in, say, London could be an agent before the Scottish Trade Marks Office. (The Scots could theoretically close the door on agents from the Channel Islands.)

Replication of the UK Trade Marks Act would make Scotland Madrid Protocol compliant and Continuation of Effects requests would need to be made to WIPO (for United Kingdom designations only - designations of the European Community automatically cover all member states including new ones). This would create an anomaly as the only type of trade mark which would require some form of action on. This would impact on foreign owners, but our last precedent with Montenegro was a Continuation of Effects official fee per registration of 64 Swiss francs (£45 in today's money) so it is hardly going to hit them hard financially.

Prediction time and I don't think the referendum will gain a sufficient enough majority for independence, but if it does I do not anticipate it causing headaches for those in the trade mark community. Actually, trade mark practitioners in England would have more of an issue if Wales were to vote for independence in the future (which there is little appetite for) as the IPO is based in Wales and a new Office would need to be set up in England (or Northern Ireland).

I won't mention Spain again, but an independent Flanders has some possibility. Presumably this would remain a part of (a perhaps renamed) Benelux (and the EU) for trade mark purposes and would represent the most painless succession possible for trade mark professionals - we would not have to do anything!

It's time for Africa‏

This week we move to the world's second largest continent, Africa, and explore ways of obtaining trade mark protection here.

In Africa there are 16 countries that are members of the Madrid Protocol. However, this is not as simple as it should be. Botswana, Ghana, Kenya, Lesotho, Liberia, Namibia, Sierra Leone, Sudan, Swaziland and Zambia are usually considered Common Law countries and would require specific legislation to be passed locally in order to recognise Madrid Protocol registrations. This appears to have happened for Botswana and Kenya.

Sudan follows Sharia Law, which is based on legal precedent and analogy and is therefore considered similar to Common Law; it was also previously governed by Britain. For years it piled up Madrid designations but now processes them (and it could be said usually a lot quicker than national filings) and gives at least tacit recognition of them. However, it cannot be ruled out that in the absence of specific legislation amendments that any positive Trade Marks Office and court judgements in favour of Madrid holders could be annulled on appeal.

The Liberian Trade Marks Office has taken it upon itself to follow trade mark legislation that makes reference to Madrid registrations. However, this drafted legislation has not been passed by the Liberian Parliament and so this country represents another case of "proceed with caution". The same can be said of Namibia, which constitutionally should recognise the international treaties it has become a party to, but has yet to implement specific legislation catering for Madrid marks; it has a mixed Civil Law and Common Law legacy from being governed by South Africa.

The other (Civil Law) countries that are members should recognise Madrid marks in the same way as national registrations. These are Algeria, Egypt, Madagascar, Morocco, Mozambique and São Tomé and Príncipe. If you can add Botswana and Kenya to this list and you have eight African countries which could be designated in a Madrid Protocol application. Others could be included depending on how you evaluate the risk.

You could definitely argue that an International Registration that is ultimately not enforceable is worthless. However, I'd suggest it could have some value and this is when it comes to searching. The International Register is easily searchable and global companies regularly perform knock-out searches including this Register. They may or may not know if an IR designating, for example, Lesotho, Swaziland and Zambia has doubtful enforceability in these countries but at the earliest stage of their searches they are looking to quickly eliminate a large number of trade mark candidates and this may enable them to do this. I do feel this benefit is not substantial but take into account that the costs of including most countries in a Madrid Protocol application are fairly incremental.

If there is an ability to file through Madrid then this effectively makes the ARIPO route redundant. Those that read a previous blog may recall that only Botswana and Zimbabwe can be safely designated in an ARIPO application so if Botswana is included in a Madrid filing then it's easier to file in Zimbabwe separately.

A single application at OAPI will cover 16 countries of Africa.

There are still a handful of countries where the only trade mark protection available is through the publication of Cautionary Notices. Comoros, Ethiopia, Eritrea and Somaliland fall within this group; Eritrea when such Cautionary Notice publications are allowed.

With the exception of the aforementioned Somaliland region, the situation in Somalia remains perilous and finding out information on the ground is a difficult task. It is believed the Trade Marks Office no longer functions as it has probably been destroyed. Furthermore, the press is fragmented - it is considered very dangerous to be a journalist in Somalia - making the publication of Cautionary Notices nigh on impossible.

The region of Puntland has declared autonomy within Somalia (as opposed to independence like Somaliland). It enjoys a level of stability higher than the rest of Somalia but again it is difficult to arrange publication of Cautionary Notices. According to the monitoring team at the BBC, the region has no local press.

South Sudan, considered the world's newest country, is in a trade mark limbo at the moment whilst it organises the various arms of its government and administration. The authority that will handle trade mark registrations is apparently "reserving" trade marks on behalf of interested parties for the time being. I am not aware of how this works in practice and I was under the impression that it will adopt trade mark legislation comparable to that of (northern) Sudan. This remains unknown along with any possibilities for revalidation and/or obligations to sign up to Madrid, although doubts in enforceability of the latter will persist if the legislation proves to be a simple duplication.

Western Sahara is a disputed territory largely under the administration of Morocco and Moroccan trade mark laws are applied directly. In Morocco it is possible to lodge trade mark applications at a number of cities around the country including some in the territory of Western Sahara.

According to the United Nations, Western Sahara remains a decolonised territory (despite Spanish withdrawal), but in the remainder of the territory – a small slither of land known as the Free Zone – it is thought unlikely that Spanish registrations would provide any protection, even those granted before the Spanish left in 1975. Can Cautionary Notices be published in this area? It is not clear that there is a local press in circulation. Perhaps it is interesting to note that Western Sahara - as the Sahrawi Arab Democratic Republic - is a member of the African Union whereas Morocco is the only African country that is not.

Other quirks on the continent of Africa include Tanzania which operates two Trade Marks Offices. One is on the mainland or the former Tanganyika and the other is on the island of Zanzibar. When Tanganyika and Zanzibar merged to form Tanzania they maintained their separate trade mark systems.

Sierra Leone is now unique on the continent in using the former British classification system. In isolated St Helena - an island where the British exiled Napoleon - it is still a prerequisite to have a UK registration before local registration can be sought. In the absence of any amendments to the regulations this is seen to be a United Kingdom National Registration or, in other words, you cannot use a Community or International Registration designating the UK.

The French, Portuguese and Spanish territories located in Africa (e.g. Réunion in the Indian Ocean, Madeira and the Canary Islands in the Atlantic Ocean) are covered by Community Trade Marks (and national registrations in France, Portugal or Spain). An International Registration designating the European Union or France, Portugal and Spain would provide the same protection, although see my previous blog on why designating the EU in an International can be undesirable.

So the grand total for complete trade mark protection in Africa requires 32 or 33 applications (and a couple of Cautionary Notice publications). This may sound a lot, but it is a similar amount as required in North America of which it has nearly double the population. Madrid and OAPI filing routes also represent good value for this continent. You can lower this amount if you are willing to take calculated risks and designate additional countries such as Sudan in a Madrid Protocol application.

1. Madrid Protocol application designating Algeria, Botswana, Egypt, Kenya, Madagascar, Morocco, Mozambique and São Tomé and Príncipe

2. Community Trade Mark application to cover French, Portuguese and Spanish territories around Africa (can be included in Madrid application if need be)

3. OAPI application covering 16 countries of west Africa

4. 30 national applications in: Angola, Burundi, Cape Verde, Democratic Republic of the Congo, Djibouti, Ethiopia, Gambia, Ghana, Lesotho, Liberia, Libya, Malawi, Mauritius, Namibia, Nigeria, Rwanda, St Helena, Seychelles, Sierra Leone, South Africa, South Sudan*, Sudan, Swaziland, Tanzania (Tanganyika), Tunisia, Uganda, United Kingdom (as basis for application in St Helena), Zambia, Zanzibar and Zimbabwe
5. Cautionary Notice publications in Comoros, Eritrea (when allowed by the Goverment) and Somaliland. (Ethiopia indicated as a national application.) 
* when it becomes possible to lodge applications
(Lists exclude Somalia and Western Sahara.)

Cautionary Notices - not worth the paper they're printed on?‏

This blog has since been updated (January 2014).

Whilst it has decreased in recent years there are still a number of countries around the world without trade mark legislation. It has become established practice to publish Cautionary Notices in the local press of these jurisdictions that alert third parties to a proprietor's trade mark rights.

But how valuable are these publications? Yes, they warn the local public of a proprietor's rights but could they unhelpfully attract the attention of the bad guys like counterfeiters?

The obvious problem in countries without trade mark legislation is there is no IP law per se to back up the trade mark "registrations" obtained by publishing Cautionary Notices.

Ethiopia is really an exception. However, Ethiopia is not a mere Cautionary Notice jurisdiction in the strictest sense. Cautionary Notices do need to be published but this is after formal paperwork is filed and approved with a local IPO. The Federal High Court in Ethiopia is able to hear trade mark infringement cases and, I believe, has done so thus creating a body of case law. Ethiopia also has plans to introduce a more typical trade mark law and it could be anticipated they will grant priority rights to registrations granted under the current system.

Myanmar (or Burma as the country is still referred to by some Governments) also has a more formalised system in place where a Trade Mark Declaration is lodged with a Registration Office prior to the publication of a Cautionary Notice. According to my research, case law exists that includes the throwing out of a trade mark infringement action on the basis that there was no provision for the same in Myanmar's law. However, the court was willing to entertain cases relating to passing off; Myanmar following a Common Law doctrine.

Until 1993, Eritrea was a part of Ethiopia, but upon independence did not introduce a trade mark law or even replicate the Ethiopian registration procedures. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. The publication of Cautionary Notices in Eritrea has an unpredictable nature as it is not clear if there is any case law. It is also worth mentioning that the government - Eritrea is a single-party state - restricts the publication of Cautionary Notices from time-to-time. If the separation of government and judiciary is not what we might expect, it could be expected that the value of any Cautionary Notice, when it is allowed to be published, is not going to held in high regard.

The Comoros is an island chain between Madagascar and Mozambique. My understanding was that it is yet to introduce IP legislation following independence from France in 1975. However, the WIPO website indicates a trade mark law dating from the 1960s. It would appear this never came into operation and formal registration is not possible; or this may merely be the French legislation in force at the time. Cautionary Notices are an established means to show trade mark ownership and with a prior law drafted you could argue there is good faith to recognise trade mark rights. It should also be noted that the Comoros is a party to inter alia the Paris Convention. Its francophone heritage could mean future membership of OAPI is a possibility and it could represent a "quick win" in introducing trade mark legislation to the islands. However, this may prove unlikely as it would form a geographic outpost of this organisation. It is worth mentioning that the Comorian island of Mayotte is not a part of the independent Union of the Comoros (despite their claims to the contrary) and instead remains a part of France. As from 31 March 2011, when it became an overseas department, protection is accorded by French and Community Trade Marks (including relevant International Registrations).

Somaliland is recognised by the international community as a part of Somalia, but in practice seems to enjoy de facto independence. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trade mark legislation but in the absence of a Trade Marks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”.

Gibraltar and Grenada represent optional Cautionary Notice jurisdictions based on their Merchandise Marks Acts, in Gibraltar's case from 1888 and Grenada's from 1889. Both have a dependent registration status for their more formal Trade Mark laws. In Grenada's case this must be from the United Kingdom. In Gibraltar's case it is different as the Trade Marks Registry also accepts applications with a Community Trade Mark basis; it is questionable how easy to enforce these would be though in the absence of specific legislation to recognise them.

The remainder of the world's Cautionary Notice countries consist of an island group in the Indian Ocean, the Maldives, and a number of island countries in or near Oceania, namely, the Cook Islands, the Marshall Islands, the Federated States of Micronesia, Nauru, Niue, Palau, the Pitcairn Islands and Timor-Leste.

The latter is the exceptional case in this small list as it has a Civil law system based on that of Indonesia, which includes some remedies against trade mark misuse. Whilst the penalties are not considered a sufficient deterrent, Cautionary Notices are nevertheless considered useful.

The other islands derive their legislation from Common Law countries: Australia, New Zealand, the United Kingdom and the United States. Cautionary Notices for non-used marks could have limited value. I am not aware of publications having ever taken place in the Pitcairn Islands but this is no surprise given the population is estimated at less than 50 (although there is a dedicated publication for the islands if you would like someone to make enquiries).

The Cook Islands and Niue provide an unusual situation due to their evolved relationship with New Zealand. Registrations granted under New Zealand Trade Marks Act of 1953 cover the Cook Islands and Niue whereas those granted under New Zealand Trade Marks Act of 2002 do not. This Act does not extend to the Cook Islands and Niue due to their increased levels of self government. As an alternative to introducing their own trade mark legislation, I imagine they could recognise the 2002 Act (or ask the New Zealand Government to extend the Act, if this is more appropriate) but that this would only be done on their specific action. Incidentally, Tokelau remains an unincorporated territory of New Zealand - and therefore directly covered by New Zealand trade marks - despite two UN supported referenda encouraging it to move to a self-governing state in free association with New Zealand like the Cook Islands and Niue.

One issue with Cautionary Notices is their cost. They don't really come cheap. This is not to say they are usually excessively more expensive than a standard trade mark application in many countries, but take into account that regular re-publication is expected in order to make them worthwhile. The term for republication varies but if you took it at an average of every three years then you can do the maths and work out that this will work out more expensive than your regular trade mark renewals. With estimated populations of 82 million and 60 million people respectively, Ethiopia and Myanmar represent potential markets of significance. Political developments in Myanmar may see its pariah state status improve and being situated between India and China it has obvious high growth potential. However, note that most of the Pacific island nations support tiny populations.

I would be reluctant to come to firm conclusions, but sitting on the fence can become painful after a while! So... I would tend to treat Ethiopia as a regular trade mark jurisdiction. Comoros at least shows good intentions towards trade marks although how trade mark rights generated through Cautionary Notices would fare in any enforcement appears unknown. For Timor-Leste it seems that Cautionary Notices do provide some value even if it is somewhat limited. Eritrea represents particular ambiguity and I would endeavour to explore the registration of a trade name first of all, if possible.

Gibraltar is a special case. Ideally have a UK registration to extend to the territory, but in the absence of this it is possible there will be a CTM in place which can form the basis of an application, albeit with questionable enforceability. Nevertheless, this may well provide as much value as the publication of a Cautionary Notice.

For Grenada, it seems churlish that you need to obtain a registration from a country (the UK) miles away, but I would suggest that UK registration is nevertheless sought. If a UK registration is not obtainable because of a prior right, a Cautionary Notice may prove desirable, but only after it is searched that the UK prior right has not been registered locally in Grenada first.

For the other countries, Common Law rights would seem to provide for protection and I would consider the publication of Cautionary Notices to be a supplement to these rights rather than an alternative. The expense of Cautionary Notices would also be a notable disadvantage to "defensive" publications.

I am lucky enough to have the contacts that can arrange for the publication of Cautionary Notices around the world if ever a reader needs assistance.

ARIPO, Banjul Protocol, ESARIPO...

We now take a look at ARIPO, standing for the African Regional Intellectual Property Organization.

It is this Office's acronym that also dissuades me from using the English AIPO acronym for OAPI.

When ARIPO came about in the late 1970s it was prefixed as ESARIPO, the "ES" being for "English-speaking", but over time this was thought to restrict membership. With respect to trade marks ARIPO has only been relevant since the late 1990s and the adoption of the Banjul Protocol.

So there you have the origin of the three terms for the same thing. I would refer to it is ARIPO, but noting the Banjul Protocol can be useful to help you remember that it works in a similar way to the Madrid Protocol in that you pick and choose the countries you wish to include and the fees are calculated accordingly. The ARIPO members that have ratified the Banjul Protocol can be designated in an application:

• Botswana
• Lesotho
• Liberia
• Malawi
• Namibia
• Swaziland
• Tanzania (taken to exclude Zanzibar, which has its own separate Trade Marks Office)
• Uganda
• Zimbabwe

The problem is that these countries are all Common Law countries and therefore recognition of the Banjul Protocol needs to be enshrined in the national legislation. There are doubts regarding the enforceability of ARIPO trade marks in some member states due to a general lack of amendments to local laws. Botswana and Zimbabwe are exceptions to this. There is also a school of thought that suggests Namibia’s ratification of the Banjul Protocol is automatically applied locally due to the country’s constitution committing it to international agreements it has signed up to but this is, as yet, untested.

Therefore, it would be considered unwise to take the ARIPO route to obtain trade mark protection across these countries. They all maintain national filing routes and these should be preferred. An exception to this would be in an ARIPO application designating Botswana and Zimbabwe where an ARIPO application could provide cost savings.

Hopefully the other member states will make steps to recognise their Banjul Protocol obligations in their national laws although they may have more pressing priorities.

A final point would be on record keeping. OAPI registrations - given they are a unitary right - are usually docketed as a regular national trade marks. With ARIPO it is different. I would suggest they are docketed in a similar fashion to International Registrations. For many of us this would mean an International Registration record with sprouting records for each designated country and - depending on the sophistication of your IP database - allowing for easy mass updating of each country record, where appropriate. The issue here is that whilst most IP databases are geared up towards managing International Registrations in this way, they don't have a similar mechanism for ARIPO registrations. As such, in many organisations ARIPO registrations are docketed as regular national trade marks and this can mean if someone asks if they have XYZ trade mark in, say, Zimbabwe, a check of your database for XYZ in Zimbabwe would not locate an ARIPO registration for XYZ designating Zimbabwe. In this event, I suggest the designated countries are recorded in a prominent place of the ARIPO record and are immediately visible, and, in using the XYZ trade mark example, you would need to remember to search for both ARIPO and Zimbabwe. From a practical point of view, this issue is not of major concern whilst ARIPO trade mark filings remain low in number.

African Union? AIPO, ARIPO, Banjul Protocol, ESARIPO, OAPI, OAMPI...

Confused? You could be forgiven.

Africa has two distinct multi-jurisdictional systems for obtaining trade mark protection; add the Madrid System into the fray and you can make that three. It's easy to mix them up especially if you or your clients do not have interests in Africa on a regular basis.

When I first start working in the world of trade marks it was much simpler: there was just one, OAPI. This is a French acronym for l'Organisation Africaine de la Propriété Intellectuelle. If it doesn't confuse you further, this was previously OAMPI (the "M" for "et Malgache" to reflect Madagascar's then membership that has since ended) but I am thankfully not old enough to remember this.

As is our English way, we have a tendency to translate into our mother tongue even with acronyms and OAPI therefore becomes AIPO, the African Intellectual Property Organization.

However, acronyms can be unwieldy and the term 'African Union' was also used to describe OAPI, but politically this is misleading. It's no wonder people got confused. My preference is for OAPI, I find it rolls off the tongue better than AIPO.

Given its French acronym it is unsurprising to know that OAPI is primarily an organisation for francophone African countries. It has 16 members:

• Benin
• Burkina Faso
• Cameroon
• Central African Republic
• Chad 
• Congo
• Côte d'Ivoire 
• Equatorial Guinea
• Gabon 
• Guinea 
• Guinea-Bissau 
• Mali
• Mauritania 
• Niger 
• Senegal 
• Togo 

For the record, Guinea-Bissau is a Portuguese-speaking nation. Furthermore, French does not enjoy official status in Mauritania, but it is widely used by the educated classes, France being the former colonial power. In Cameroon, English is official alongside French. The OAPI office is based in Yaoundé, Cameroon's capital, and whilst the official forms are prepared in French they have allowed specification of goods and services to be attached in English which can save translation time and expense.

OAPI in its current guise dates from the 1977 signing of an accord in the now Central African Republic capital of Bangui, at the time capital of the infamous Central African Empire.

OAPI could be said to be Africa's version of the Community Trade Mark. It is a unitary right and you cannot pick and choose what countries you want covering, it's all or nothing, unlike with the Madrid Protocol. Perhaps interestingly most of the member countries are tied by their currency with most having either the Central African CFA franc or West African CFA franc; whilst technically two separate currencies they are tied to the Euro at the same rate.

Unlike the CTM though, national Offices do not run in parallel to OAPI. In the past both Guinea and Mali had their own Trade Marks Offices (both are subsequent members of OAPI). The Guinea Register is still operational to renew, assign, record Changes of Name, etc. although I understand questions have been asked if Guinea's membership of OAPI could have automatically resulted in old national registrations being effectively repealed. Nevertheless, it is possible to extend older OAPI registrations to subsequent joiners like Guinea and Mali - and the other latecomers, Equatorial Guinea and Guinea-Bissau.

All these 'Guineas'! Guinea itself is sometimes referred to as "Guinea (Conakry)" to distinguish it from the others, Conakry is its capital. If I was ever to have a pet guinea pig I would surely name him or her, "Oapi". There's also Papua New Guinea, but this is far away from Africa and, of course, not a part of OAPI.

We will cover ARIPO, the Banjul Protocol and ESARIPO in a new blog soon.

Journey south

The blog journeys south this week as we leave Panama and enter Colombia and South America.

Colombia represents the strongest chance that the Madrid Protocol will advance into Latin America (aside from the existing membership of Cuba). However, for the time being a national filing is required.

National filings are required for the other countries of South America too. Brazil's growing stature on the international stage may make it next in line to join the Madrid Protocol, but this is a guessing game in this region. Every time there seems to be a new member on the horizon, nothing materialises. Brazil has problems with the backlog of its applications which it would need to address (and appears to be doing so albeit slowly) if they were not to operate a two-tiered "slow national system" and "faster Madrid system".

I would commentate that Madrid membership may have hit a bit of a standstill. I think Colombia will join the fray (although let's see), but South America has generally moved to the left politically and the influence the US has in the region has arguably waned. Lawyers in Latin America can also be close to the politicians and with a general fear of the Madrid Protocol diminishing their case loads, they will naturally use any influence they may have in this respect.

The most notable country being as far away from Madrid Protocol membership as possible is surely Venezuela. Having reverted back to an old Trade Mark Law from 1955 it is easy to see their local classification system and 15-year registration terms being incompatible with Madrid.

So national filings are required in the Spanish-speaking countries of the continent: Argentina, Bolivia, Chile, Colombia, Ecuador, Paraguay, Peru, Uruguay and Venezuela. The regional powerhouse, Portuguese-speaking, Brazil also requires a national application as does Dutch-speaking Suriname. English-speaking Guyana requires a local application although the option exists to base an application on a United Kingdom registration which can simplify registration and is the only way to register a service mark.

A UK registration is required for automatic protection to the Falkland Islands, based on local legislation from 1996, and to South Georgia and the South Sandwich Islands, based on an Ordinance from 2001. It is believed that as this covers trade marks "having effect in the United Kingdom" this would include Community Trade Marks.

A French or a CTM registration will provide protection to the overseas department of French Guiana.

The minimum number of filings for South American protection is therefore 13 including a Community Trade Mark. Strangely enough this is a larger number than is required for Europe.

This week is one of January sales so you will get two continents for the price of one as we continue southwards to Antarctica!

The continent of Antarctica has no trade mark legislation of its own per se. It can be expected that Argentinian, Australian, Chilean, French, New Zealand and Norwegian registrations should provide protection in the relevant claimed areas, although note the Argentinian and Chilean claims overlap with British claims. Theoretically, common law rights could exist in the British claimed section, but UK registrations have no effect in the British Antarctic Territory as far as we are aware as it would need specific legislation to be passed.

The various claims to Antarctica are not recognised by a number of countries, although Australia, France, New Zealand, Norway and the United Kingdom recognise each other claims. According to the Antarctic Treaty System, "Article 4 – The treaty does not recognize, dispute, nor establish territorial sovereignty claims; no new claims shall be asserted while the treaty is in force."

Antarctica normally hosts a non-permanent population of roughly 1000 people who we must imagine bring extremely warm clothing and non-perishable foodstuffs from their home countries. On the IP radar it is not.