Class headings

The IP Translator case created a judgement in relation to the use of Class headings of the International (Nice) Classification covering ALL the items in its particular class.

Previous OHIM practice was that Class headings included all other goods or services in a particular class. Now specifications must contain clarity and precision meaning this is no longer necessarily the case.

It is now possible to file for Class headings and then indicate that this is to include all the goods/services within that Class when filing Community Trade Marks by simple ticking a box when filing on-line.

This has led a number of International applications to be filed (that contain Class headings) with a statement to claim that the applicant wishes to include all the goods or services in the Class. Some of these statements have been specific to the European Community and some to other countries.

Bringing us more up-to-date, this has led WIPO to issue Information Notice 23/2012 stating firmly that it is the Offices of each designated country that will determine the scope of protection.

As WIPO allude to, this will almost undoubtedly see home applications filed for every single item of goods or services in a desired class and then any corresponding International applications for the same specification. It can also be anticipated that applications in non-Madrid countries, that use the International Classification and accept broad specifications, will be filed for these long specifications too.

In times past when filing instructions were received from foreign associates by fax this would have been unbearable having to re-type up long lists of goods or services. Nowadays with on-line systems and e-mail it is far less burdensome and less error prone to cut-and-paste. However, some countries still require printed forms to be filed - these may not have sufficient space for a long list of goods or services without the need for an awkward annex. We could then expect errors when the details are typed into the Register by an official. There are also countries where the Journal/Gazette is still physically printed - with some Government printers already under a huge strain this will surely add delays to applications. The practical implications could stretch across the globe.

Caribbean IP Part 19: Puerto Rico

ISO 3166 country code: PR.

Puerto Rico is an unincorporated territory of the United States. As such it cannot accede to international agreements being a non-sovereign nation.

The Department of State administers trade marks, commercial names and US deposits. The latter refers to the deposit of a US Federal Registration with the local Office, similar to the UK registration extension provision in a few Commonwealth countries.

Filings for these rights can be made on-line. It is also possible to make on-line trade mark searches although they state that the database is not yet complete and therefore you should corroborate any findings with the physical Trade Marks Register. It is also necessary to search trade marks, commercial names and US deposits through separate databases.

If you have clicked on the links, you will see that they are in Spanish only. Spanish is the language of an estimated 95% of the population, although English also has official status.

I understand that Puerto Rico does not have design legislation of its own and would be covered automatically by a US design patent granted federally by the USPTO.

Puerto Ricans, despite being US citizens, did not have the right to vote in the Federal election of 6 November 2012. However, on the same day, they voted with regard to their territory's status. They voted in favour of statehood, although like in the US, the island is very divided politcally. If statehood happens then it would see it covered by US Federal registrations (including Madrid Protocol designations) and relegate its Trade Marks Office to the same level as the State trade mark systems of Alabama, Alaska, etc. Statehood would have to be accepted by both the US House and Senate - and it's anticipated it could have a rough journey - so do not expect to need to treat Puerto Rico as a separate trade mark jurisdiction for some time yet.

Caribbean IP Part 18: Montserrat

ISO 3166 country code: MS.

I have seen Montserrat by boat and I'm not a fan of boats. However, Montserrat holds a place in my heart as I'm a bit of a geography anorak and it's one of the smallest trade mark jurisdictions (by population) in the world. Roughly 5,000 people live on the island.

This was not the case prior to 1995 when it sat above Tuvalu in the population tables and roughly alongside Anguilla. That year the eruption of the Soufrière Hills volcano led to 8,000 people evacuating the island. Over half of the island is now an exclusion zone and most the evacuees have not returned. The destroyed capital, Plymouth, is within this exclusion zone.

Given all this it can be surprising to note that Montserrat operates an efficient trade mark system from the Supreme Court Registry in the de facto capital of Brades. There is a dual filing regime in place. A substantive application could be filed previously using the old fashioned former British classification system (see The Bahamas), but an amendment of the Trade Marks Rules in October has changed this to the International Classification. Alternatively, a UK registration can be extended to Montserrat. Naturally, this will use the Nice Classification. The UK route was the only way to register service marks but the new Trade Marks Rules have now made these available for local (substantive) applications too.

It is also possible for Community Trade Marks and International Registrations (designating the UK or European Community) to be extended in the same way; the local Trade Marks Act was revised on 1 January 2002 to state:

"United Kingdom trade mark means any trade mark registered under the United Kingdom Trade Marks Act and any trade mark which, by virtue of any law in force in the United Kingdom is deemed to be a trade mark registered in the United Kingdom or which could, though not in fact registered in the United Kingdom, be given effect to in the United Kingdom."

When it comes to designs, I understand that UK designs provide automatic protection in Montserrat. However, I cannot locate the United Kingdom Designs (Protection) Act No. 181 of 1887 legislation on-line but I would anticipate it has not been amended to mean Registered Community Designs also have effect in Montserrat.

Patents are by extension of granted UK rights and must be on file within three years of grant in the UK.

Montserrat's IP Office lacks a web presence. Perhaps this will be developed in the future; the island is heavily subsidised by the UK (it being a British overseas territory) and some of this may be invested in a website. However, the local Government may have more pressing priorities - perhaps including improving the fortunes of the island's football team!

Mexico joins Madrid Protocol

More Madrid Protocol progress as WIPO announces Mexico will join the Madrid Protocol effective 19 February 2013.

Mexico represents a significant growth market and will be a very welcome addition to the Madrid Protocol family.

With its growing economy seeing many Mexican companies develop interests outside of their country we may now finally see some increases in Madrid applications filed in the Spanish language.

Caribbean IP Part 17: Jamaica

ISO 3166 country code: JM.

Jamaica is the largest English-speaking country in the Caribbean and celebrated 50 years of independence in August. 

The Commonwealth of Jamaica is a member of, among others, the Berne Convention, Nairobi Treaty, Nice Agreement, Paris Convention, Vienna Agreement and WIPO Convention.

The Jamaican Intellectual Property Office (JIPO) adminsters intellectual property rights in Jamaica. They have a colourful and informative website containing the forms required for protection. It is necessary to have an Address for Service in Jamaica in order to act before the JIPO.

The Trade Marks Act, 1999 was modelled on UK trade mark legislation (from 1994) and is therefore a modern law. However, Jamaica would need to make amendments to its regulations in order to accede to the Madrid Protocol (and ensure International Registrations would be enforceable there). With the addition of such regulations, Jamaica would be ready to manage Madrid Protocol designations although they would need to ensure they can always meet the 18-month examination deadline.

There is a provision for registering design copyright. The legislation is much older than its trade mark counterpart and protection is available on a national basis only; it seems unlikely that Jamaica has any short-term intentions to join the Hague System. Unlike many other Commonwealth jurisdictions in the region, it does not appear protection is accorded for UK Registered Designs (automatically or by extension).

WIPO's statistics, for trade marks at least, look more accurate than many of the others I have discovered.

A successful tale of branding is also told on WIPO's website in relation to Jamaica Blue Mountain® coffee. If Jamaican brands can become popular around the world - coupled with any pressure from the likes of the US and EU - then this may compel Jamaica to join the Madrid Protocol.

Caribbean IP Part 16: Haiti

ISO 3166 country code: HT.

Occupying the western third of the island of Hispaniola, Haiti is the only independent country of the Caribbean region where French is an official language (along with Haitian Creole). Haiti was the first independent nation in Latin America and the Caribbean following a successful slave revolt in 1804.

Haiti is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Service de la propriété intellectuelle (Service of intellectual property) is the responsible office in Haiti. Unfortunately, they do not appear to have a web presence of yet. The Haitian Copyright Office, Bureau haitien du droit d’auteur (BHDA), is able to boast a website, however. This is available in French only; there is no English version nor are pages available in Haitian Creole. This is a reflection generally where French appears to maintain prestige in legal matters in Haiti. Haitian Creole is based largely on French but it possesses standard orthography (it is a language available on the translation tool of the Google search engine) and has been official since the 1960s.

IP legislation in Haiti goes back many years - trade mark legislation was last amended in 1956 and that for designs in 1924. Independent registration is necessary for both trade marks and designs and accession to the Madrid Protocol or Hague System would appear to be far off for Haiti.

A trade mark registration is in force for 10 years but has an additional maintenance requirement - the due date being three months into the sixth year of registration - in which the trade mark owner must file evidence of use of their mark in Haiti, or, an executed Affidavit of Non-Use.

Haiti has sought full associate membership of the African Union and shares many IP characteristics with some African states: old laws, communication difficulties and agents that are not always as responsive as we may like. However, it does function in the IP arena and let's be realistic. With Haiti's economic state still suffering from the devastating earthquake of 2010 it is not surprising that the Government has more pressing priorities than modernising its trade mark law, for example.

Caribbean IP Part 15: Guyana

ISO 3166 country code: GY.

Guyana is located on the South American continent but is widely considered a part of the Anglophone Caribbean and sometimes referred to as 'Mainland Caribbean'. As a part of the West Indies it has a unique love of cricket in South America (although Argentina has long played the game too) and is a part of the CONCACAF (Central America and Caribbean) football federation. The Guyanese capital, Georgetown, is also the seat of the Secretariat of CARICOM, the Caribbean Community.

The Co-operative Republic of Guyana is a member of the Berne Convention, Paris Convention and WIPO Convention.

The Deeds Registry looks after the administration of patents, trade marks and designs. Their website contains only basic information.

The Trade Mark Register is split into three parts: Part A, Part B and Part C. Part A and Part B are typical in much Commonwealth trade mark legislation; for example, they were parts of the UK Trade Marks Act 1938. For those of you in the US, they have similarities with the Principal and Supplemental Registers.

Part C of the Register is for marks based on UK registrations. This part of the Register is the only way multi-class applications and service marks can be registered in Guyana at the minute. Community Trade Marks cannot be used to form this basis and neither can International Registrations even if they designate the United Kingdom.

Designs are available locally in addition to UK designs automatically covering Guyana although there is a defence for infringers if they could not know of the design in Guyana which suggests if there is no use or disclosure in Guyana after registration (e.g. in the UK only), a registered design owner would be prevented from taking action. A Registered Community Design would not provide the same protection.

Patents are available locally although it is also possible to base an application on a UK patent provided it is filed within three years of grant.

The Deeds Registry suffers from delays in the processing of applications. Having a UK IP registration in place can greatly speed up the processes, although at least there are independent routes to protection available when you do not have - or it is undesirable to seek to obtain - a UK registration.

Madrid Protocol membership seems some way off, although it could form a part of future updating of local IP laws.

Caribbean IP Part 14: Grenada

ISO 3166 country code: GD.

Grenada is a member of the Berne Convention, Paris Convention, Patent Cooperation Treaty and the WIPO Convention.

As previously reported on this blog, Grenada introduced new trade mark legislation on 1 August 2012. The new law replaced a need to have a UK registration before being able to register in Grenada. The law and regulations are not on the internet (WIPO Lex is yet to be updated in this respect) but having seen these I can confirm they are modern and like you would expect in 2012. The prescribed forms are highly similar to those in use in Trinidad and Tobago, to the south of Grenada. However, I would anticipate Grenadian examination being less strict than in Trinidad and Tobago.

The new trade mark law does not extend to joining the Madrid Protocol. At least with the UK dependency dispensed with it makes it easier for many brand owners to register in Grenada.

On the patents side, UK and EP(UK) registrations can be extended to Grenada (in addition to substantive or PCT applications). For designs, the United Kingdom Designs Protection Act (Cap. 331) allows United Kingdom design registration to cover Grenada automatically, and there is no provision for local registration. Such automatic protection is not accorded to Registered Community Designs.

In conclusion, Grenada, the Spice Island, has made welcome steps to modernise its trade mark system.