Caribbean IP Part 4: The Bahamas

ISO 3166 country code: BS.

The Commonwealth of The Bahamas is party to the Berne Convention, Paris Convention and the WIPO Convention.

The Registrar General's Department in the Bahamian capital, Nassau, is responsible for the administration of IP rights on the islands.

Their website provides some brief information on registering a trade mark. They do not provide the forms on the website and these need obtaining from the Office. The site also indicates that the official fees are variable depending on the size of the mark.

There is no information on designs on the website but it is possible to register design copyright with the Registrar under provisions in the Industrial Property Act, 1965 - Cap. 324.

I feel WIPO's stats need taking with a pinch of salt. They state an increase of trade mark filings from 221 applications to 2,016 in one year (2005-2006) which I find hard to believe.

The Registrar General's website states that trade mark registration can be achieved in 18 months. In my experience this is a bit optimistic and registrations taking 3-4 years are not unheard of and can be closer to the norm.

The trade mark law is highly archaic, using the former British classification system and requiring a separate Authorisation of Agent per class. Classes 23 through to 35 (of 50 classes) relate to textiles and cloths, which perhaps gives you an idea of the era and location in which the classification was devised. This classification also lacks provision for service marks. If you would like a copy of this classification please contact me.

In conclusion, the Bahamas is a very prosperous nation in this region, albeit almost exclusively dependent on tourism and offshore banking, but its IP functions and legislation are in major need of modernisation and investment.

New Zealand joins Madrid Protocol

Madrid Protocol membership has, as anticipated, increased again recently with the accession of New Zealand. Designations of New Zealand can be made from 10 December 2012.

It is not surprising that New Zealand has elected to have an 18-month examination period and wishes to receive Individual Fees.

New Zealand's accession also makes it clear it will not extend to Tokelau unless requested to do so by that territory.

The United Nations is keen to see Tokelau - among 16 "non-self governing territories" - move towards independence. To move off on a political tangent, it seems decolonization is being forced. Tokelau has a tiny population (approximately 1,400) and has turned down self-determination in two referenda.

The Cook Islands and Niue are sovereign countries in free association with New Zealand. Their situation is not perfectly clear to me but it seems they could join WIPO and the Madrid Protocol in their own right if I cite this document:

"The Cook Islands and Niue maintained the status of self-governing territories in free association with New Zealand. In view of this special relationship with New Zealand, which discharged the external affairs and defense of the Cook Islands and Niue, neither the Cook Islands nor Niue could invoke the “all States” clause to participate in treaties deposited with the Secretary-General unless specifically invited to participate in a treaty. However, the responsibility of the Cook Islands and Niue to conduct their own international relations and particularly to conclude treaties has evolved substantially over the years:  the Cook Islands became a member of WHO in 1984, of FAO in 1985, of UNESCO in 1985, and of ICAO in 1986;  Niue became a member of UNESCO in 1993 and of the WHO in 1994."

This is a moot point at the moment as neither the Cook Islands or Niue have local trade mark legislation in place (both are 'Cautionary Notice countries'). As Common Law countries they would need to enact legislation to reflect Madrid Protocol membership and make International Registrations enforceable. Saying that, this has not stopped many African countries, for example, from joining up.

New Zealand joins Australia as a Madrid Protocol member in the region - and means the two dominant economic powers of Oceania can now be easily included in an International Registration. (Incidentally, Australia has recently requested to receive increased Individual Fees.) Also in this region, the American territories of American Samoa, Guam and the Northern Mariana Islands would be considered a part of a designation of the United States in a Madrid Protocol application (although you can register locally in American Samoa and Guam). Likewise, the French possessions of French Polynesia, New Caledonia and Wallis and Futuna would be covered by a Madrid Protocol or Agreement designation of France.

The updated worldwide Madrid Protocol situation, from 10 December 2012, will look something like this.

Madrid Protocol World Coverage

Map includes Kosovo and South Sudan (as parts of Serbia and Sudan respectively) but these are not covered by the Madrid Protocol

 Member State 

 Madrid Agreement only member 

 Questionable enforceability 

© worldmapmaker.com 

Caribbean IP Part 3: Aruba

ISO 3166 country code: AW.

The Netherlands generally, although not always, extends its membership of IP treaties to Aruba. A concise list is provided on the website of the Bureau of Intellectual Property.

It is the Bureau of Intellectual Property that administers IP in Aruba. They have an informative website, although it is not clear if it has been updated since 2007 - it states it is celebrating its 20th anniversary having been instituted in November 1987.

Nevertheless, the website contains most information anyone should need to know in Aruba and if you are looking for a local patent or trademark agent then lists are provided. Aruba enjoys a reasonably high standard of living and perhaps we should therefore expect there to be funds available for a decent website.

Aruba is a quick registration jurisdiction when it comes to trade marks. Strangely, the forms are provided in .XLS format. They must be filed in Dutch or, the somewhat quirky but attractive looking, Papiamento.

The Netherlands has not extended the Madrid Protocol to Aruba (unlike with the other parts of the Kingdom of the Netherlands in the Caribbean). There is little appetite from local practitioners and with a population of little more than 100,000 it is doubted there are brand owners there with significant interests abroad to press for membership. Aruba has a historically strong independence movement and in line with the Dutch consociational style of Government, Madrid Protocol extension will not be imposed upon them against their wishes. Therefore, I anticipate Aruba will remain outside the Madrid family for the immediate future.

Caribbean IP Part 2: Antigua and Barbuda

ISO 3166 country code: AG.

Antigua and Barbuda is party to Berne Convention, Madrid Protocol, Paris Convention, Patent Cooperation Treaty and the WIPO Convention.

The Antigua and Barbuda Intellectual Property & Commerce Office ("ABIPCO") is responsible for intellectual property in the country. They do not have a website of their own and are tagged on to a general Government website. From this we can find out that they celebrated World Intellectual Property Day on 26 April 2012 but not a lot else; their page on Intellectual Property fees erroneously produces information related to company incorporations. They do have a Facebook page but with only one 'like' so far it does not appear to be too popular.

WIPO have provided some statistics. They are not exactly easy to decipher and don't really tell us much except that it seems foreigners file more in Antigua and Barbuda than locals do, but I think most of us could have told ourselves that.

Independent trade mark and design applications are required, although Antigua and Barbuda can be designated in a Madrid Protocol application where it commands just a Complementary Fee (100 CHF) and is therefore inexpensive.

The ABIPCO is not the most efficient Office in the region and trade mark applications can take some time to mature to registration so designating through Madrid can be preferred for this reason too. However, it is modernising and Antigua and Barbuda's membership of the Madrid Protocol is a beacon in a region where membership is not significant.

Caribbean IP Part 1: Anguilla

ISO 3166 country code: AI.

Anguilla is a British overseas territory. With a population of approximately 13,600 it's certainly one of the tinier trade mark jurisdictions in the world.

As a non-sovereign nation it is unable to sign up to International organisations and treaties; that remains the responsibility of the United Kingdom. Despite this, priority is available following amendments to local legislation and protection is accorded to famous marks.

The Registrar of Commercial Activities appears to be responsible for intellectual property on the island. They have a website dedicated to company incorporation; Anguilla being a popular tax haven. This allows for state-of-the-art electronic incorporation of Anguillian companies. Interestingly, this was developed in partnership with Companies House in the UK and the UK Government. This shows a willingness for Anguilla to cooperate although we can maybe conclude that the development of systems relating to IP may not have the same priority level.

Anguilla introduced design legislation in 2002 which provides for independent registration and, contrary to the UK IPO's page, UK registered designs no longer have effect. As for patents, UK and EP (UK) registrations can be extended although independent registration is now also available.

Trade mark registration does not take too long to obtain in Anguilla. In fact, it is particularly rapid if based on a UK registration; Anguilla having a dual system whereby applications can be purely local (substantive applications) or based on a UK registration. The 'based-on' option is also available for Community and International Trade Marks which is useful for global brand owners who prefer not to register in the UK individually.

With little prospect of Madrid Protocol accession, Anguilla should be praised for its efficient trade mark operations, which reflect international aspects as much as it can, to make it straightforward for foreigners yet, through it's substantive applications, remains accessible to locals from the region.

Caribbean IP

I'll now start a regular feature on intellectual property in the Caribbean. I'll use the definition of the Caribbean provided by Wikipedia and supplement it with Belize, Guyana and Suriname. As these three countries are not officially Spanish-speaking they are more often associated with the Caribbean than they are with Central America or South America.

View Larger Map

It is easy to think of the Caribbean as paradise holiday islands in the sun, which can be true, but it is a diverse region containing high income territories such as the Cayman Islands and the British Virgin Islands to Haiti, often considered the "poorest country in the Western Hemisphere", and communist Cuba.

This is a region where lots of IP legislation has been modelled on that of the United Kingdom, and many British firms have good contacts in this part of the world. 12 of the independent Caribbean jurisdictions have a British colonial past, and five remain British overseas territories. However, do not rely solely on the UK Intellectual Property Office's advice contained on their website. I have found that this contains errors, particularly with respect to designs. I brought these to their attention when I wrote that blog post but it seems as though they are not in a rush to amend these pages.

The Caribbean contains three independent nations that can also be put into a Latin America bracket: Cuba, the Dominican Republic and Haiti.

I will not include the French overseas departments of Guadeloupe and Martinique or the overseas collectivities of St Barthélemy and St Martin as these (except St Barthélemy) are covered by French and Community Trade Marks (including International designations). Inhabited Caribbean islands belonging to Colombia, Honduras, Mexico, Nicaragua and Venezuela will also be excluded.

This will leave two insular areas of the United States: Puerto Rico and the US Virgin Islands, and finally the Dutch Verwantschapslanden (kindred countries): Aruba, Bonaire, Sint Eustatius and Saba, Curaçao and Sint Maarten.

To avoid any bias which I could have - and I have been lucky enough to visit three of the region's beautiful islands - I will approach this in alphabetical order:

• Anguilla
• Antigua and Barbuda
• Aruba
• Bahamas
• Barbados
• Belize
• Bonaire, Sint Eustatius and Saba
• British Virgin Islands
• Cayman Islands
• Cuba
• Curaçao
• Dominica
• Dominican Republic
• Grenada
• Guyana
• Haiti
• Jamaica
• Montserrat
• Puerto Rico
• St Kitts and Nevis
• St Lucia
• St Vincent and the Grenadines
• Sint Maarten
• Suriname
• Trinidad and Tobago
• Turks and Caicos Islands
• US Virgin Islands

Bermuda is omitted here as it is not a Caribbean country; it is actually located closer to Canada. However, it is an associated member of the economic group the Caribbean Community (CARICOM). Furthermore, Britain's second oldest remaining colony (after Bemuda), St Helena is often wrongly assumed to be with the other "Saint" islands in the Caribbean. It is very remote being located in the South Atlantic Ocean; Africa is the usual continent it is assigned to.

Nevertheless, if there is time I will also take a look at Bermuda and St Helena. In the meantime, stay tuned for 'Episode 1: Anguilla' next week.

As my practice concentrates on trade marks and designs I will focus on these IP rights in the main, but being able to handle extension of UK patent rights where this is a purely administrative task, I may touch on these too.

Fighting counterfeits through Customs registration of IP rights

Counterfeiting represents an ever increasing percentage of world trade and is likely to continue being a major problem facing IP rights owners in the coming years. Education of the general public that counterfeiting is not victimless and causes significant damage will still be offset by consumer demand for 'branded' (counterfeit) products.

In some countries it is possible to record trade marks and other IP rights with the Customs Authorities. This can be an effective step to catch counterfeits. It is also inexpensive and the costs involved can contribute towards financing increased IP training of border personnel. 

Registering with Customs can be useful in developed economies such as the European Union and United States, in particular, to help prevent the importation of counterfeit products. If you are only in possession of a national right in an EU member state then your Customs recordal application can be limited to a 'National Intellectual Property Rights Application' as opposed to a 'Community Intellectual Property Rights Application'.

China represents a manufacturing hub for counterfeit products and usefully the Chinese Customs authorities examine not just imports but exports too. A recordal of an IP right at Customs will enable them to detain a potentially infringing shipment coming into the country but also such a shipment leaving China.

It is also possible to register IP rights in other key jurisdictions such as India, Mexico (since January 2012), Taiwan and Turkey and many more. I have been advised that Brazil is looking to introduce similar provisions.

There are a couple of quirks to watch out for if you are looking to register your trade marks/IP rights with Customs authorities globally (where it is possible). Jordan is slightly unaligned with their trade mark regime as customs registration must be made with the central Jordanian authorities but also separately with the Aqaba Special Economic Zone Authority (ASEZA) to cover the whole country. Aqaba is Jordan's only seaport.

When it comes to the United Arab Emirates, the Customs authorities are not managed federally (unlike the Trade Marks Office) but remain under the responsibility of the seven emirates. Of these seven, Dubai, Ras al-Khaimah and Sharjah have implemented a registration of IP rights service. Sharjah is often regarded as an extension of Dubai these days. Ras al-Khaimah (or RAK for short) is more remote but the UAE is not a big country.

So you may now look to register your company's or your client's trade marks and IP rights with the local Customs authorities from the United States to Albania (where there is also a recordal facility). Some countries do not provide for the possibility to record trade marks or other IP rights with their Customs authorities. However, it can be possible to make informal requests to the Customs authorities and these can result in your successful notification when infringing products enter the country.

This is just a snapshot of the possibilities but if you have any more specific requests please do not hesitate to get in touch, or liaise with your usual agents.