18 December 2013

Season's Greetings

On behalf of COLMAN+SMART, I'd like to wish all our customers, associates, blog readers and supporters an enjoyable festive season and a fantastic start to 2014.


To be honest, we're not ones to send Christmas cards - all that paper and transport isn't great for the environment if this not a bit too neo-modern.

This year we have made two small donations to Macmillan, who provide cancer care and support, and Dementia Care as my late grandparents (representing the 'Colman' in our company name) suffered from these diseases.

Merry Christmas everyone!

6 December 2013

OHIM's new website

So OHIM has a new website (but this link might not load!) which launched on Monday.

It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?

For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.

E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.

There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.

Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.

Hopefully their techies will get the systems up and running as intended soon.

You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.

1 November 2013

Trade Marks "tactics": Iraq and Kurdistan Region

Many readers of this blog will be aware that the autonomous Kurdistan Region of Iraq has its own Trade Marks Office. This operates from the regional capital of Erbil.

This is in addition to the Federal Iraqi Trade Marks Office in Baghdad.

Registration for the Kurdistan Region can be obtained in two ways: purely local filing or an extension of a registered Federal Iraqi registration. The Kurdistan Region operates a trade mark law which is the same as that operated from the Federal Office in Baghdad.

Federal registration in Iraq should cover the whole country including the Kurdistan Region. Many brand owners may not therefore register locally in Iraq. An analogy to this would be that brand owners would not tend to register a Federal trademark in the USA and then separately a State registration in, say, Florida.

However, there are advantages of registering in the Kurdistan Region. This could be in addition to a Federal Iraqi application or not - if the Kurdistan Region is the only part of Iraq that is commercially attractive to a brand owner then they could concentrate on registering a trade mark there only.

There are two main advantages to registering in the Kurdistan Region. Firstly, there is the opportunity that the local authorities may watch locally registered marks at the Customs they are responsible for.

Secondly, registration is far quicker in Kurdistan Region than at the Office in Baghdad. The latter has an historic Register and one where many files have gone missing. Delays here can be long.

The Office in Erbil runs far more smoothly. They have recently announced plans to speed up their procedures by publishing applications received up to the 25th of each month by the end of the same month. Judging by the latest Bulletin they are certainly moving things forward quickly.

If they are not already, brand owners should consider the direct filing route in Kurdistan Region for optimum protection of their trademarks in Iraq.

Lastly, I should mention that Kurdistan, "the Land of the Kurds", is a loosely defined region covering parts of Iran, Iraq, Syria and Turkey. It is only in Iraq where the Kurds have autonomy and a separate Trade Marks Office. Protection of trade marks to the other areas of Kurdistan must be made through applications at the central Trade Marks Offices of Iran, Syria and Turkey, or through Madrid Protocol designations of the same.

17 October 2013

A little piece on Bosnia-Herzegovina

Being a football fan, I like to take inspiration from my favourite sport (e.g. here) and this week is no different. It's been World Cup 2014 qualification week and whilst I am delighted that England have qualified, I also like to see new teams qualify for the big stage too.

Brazil 2014 will see the first appearance of Bosnia-Herzegovina.

To be accurate, Bosnian players could have appeared for Yugoslavia in 1930, 1950, 1954, 1958, 1962, 1974, 1982 and 1990. There are also three other possible first-timers still in the hunt for qualification, although I feel their participation is unlikely.


Enough football and allow me to take a look at the IP landscape in Bosnia-Herzegovina.

The Institute of Intellectual Property manages intellectual property in the country. Delays are known to be encountered with the processing of trade mark applications filed locally although these have lessened of late.

International routes for trade mark protection and industrial design protection through the Madrid and Hague Systems are available. I was therefore quite surprised to see a large number of national design and trade mark applications from foreigners in the latest Gazette published on their website.

Bosnia-Herzegovina adopted a new trade mark law at the beginning of 2011. This introduced an opposition procedure. Previously, it relied on its relative and absolute grounds examination - this made a large contribution to the delays that were experienced. It also formalised procedures for making registration with Customs for IP rights.

EU accession would appear to be a goal for Bosnia-Herzegovina, but it is far behind other countries in the region. Croatia and Slovenia are already in the EU and Macedonia, Montenegro and Serbia are official candidate countries. Even Albania is ahead in the queue having submitted an application.

Croatia's recent accession to the EU means Bosnia-Herzegovina borders the European Union. To the naked eye, Bosnia-Herzegovina can appear to be landlocked on a map, but it actually has a small coastline on the Adriatic Sea around the town of Neum, which juts into Croatia. This makes the territory around the city of Dubrovnik an isolated exclave of Croatia and of the EU. Travelling to this part of the EU from another part of the EU by road therefore means traversing some territory of Bosnia-Herzegovina.

The horrific Bosnian War of the 1990s ended with the signing of the Dayton Peace Accord which set up Bosnia-Herzegovina as a federal state. There are two entities, the Federation of Bosnia and Herzegovina (mostly inhabited by Bosniaks and Bosnian Croats) and the Republika Srpska (mostly inhabited by ethnic Serbs). It's a jigsaw of a country where the internal borders have been meticulously drawn. On the ground, political conflicts between the two entities are common though.

So much so that it would cause little surprise if Republika Srpska were to declare independence. This would fracture the region even more and, selfishly speaking, we would have another IP jurisdiction on our hands. One that might not be entirely welcome in the international arena (see also Kosovo).

Perhaps if they can have a successful 2014 World Cup, this will be a unifying experience for Bosnia-Herzegovina.

7 October 2013

Hague movements, Brunei joins

After a quiet 2013 in the international world of designs comes some news from WIPO of the accession of Brunei to the Hague System for the International Registration of Industrial Designs.

It will be possible to designate Brunei in a Hague application from 24 December 2013.

As a word of caution, Brunei is a common law jurisdiction and should therefore reflect its membership of international treaties by making reference to them in their local laws. I cannot see that this has been done, although I may not have access to the latest legislation. In the absence of legislative amendments there could be some doubt regarding the enforceability of International design registrations in Brunei.

Although a wealthy country, Brunei is not quite the major Asian economy to join the Hague System with there being talk of China, Japan and the Republic of Korea all acceding. The United States is scheduled to join up in the near future and this may prove to be the catalyst for a more rapid expansion to new jurisdictions.

For now though, welcome aboard to Brunei.

4 October 2013

Another separate IP jurisdiction: French Polynesia

This blog likes to explore exciting and exotic places that the writer has, unfortunately, little chance of visiting in person!

This week is no difference as it heads to Tahiti, the main island of French Polynesia.


Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.

The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.

3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.

Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").

This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.

That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.

The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.

The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.

Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.

It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.

It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.

It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).

What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.

The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.

25 September 2013

WIPO - Official fees

WIPO have recently issued Information Notice No. 29/2013 explaining how to pay official fees to them for registrations under the Madrid Protocol.

Those of you that deal with WIPO will know they can be a bit of bureaucratic organisation and the language of their Information Notice may be testament to this.

If you do not have a deposit account with WIPO - and many firms don't - then you will probably be required to transfer payment of official fees by bank transfer and this is why the Information Notice has issued. WIPO are regularly being short changed as users do not instruct their bank that they are to incur all the bank charges. This causes a headache and delay with WIPO and the user when it is necessary to request a second payment, which is usually fairly incremental.

If you have a deposit account with the UK Intellectual Property Office and you are filing a Madrid application through them as Office of origin then you can ask them to make the official fee payment (in Swiss francs) on your behalf and debit your deposit account. However, not many Offices of origin offer this service.

If you're based in Switzerland or Liechtenstein (or even in the Italian exclave of Campione d'Italia) then making payments in Swiss francs is not difficult. But most of us will not have a Swiss bank account.

Payment by credit card is not available at the time of filing Madrid Protocol applications because these are filed through an appropriate Office of origin and not WIPO directly. Nevertheless, I understand it is possible to wait for an Irregularity Notice to issue and then make payment by credit card through WIPO's E-payment tool. This is not exactly ideal as again it results in a delay.

WIPO also released their latest magazine 'Madrid Highlights' this week and this contained two fees related features.

Firstly, they will soon be launching a new on-line tool for filing Subsequent Designations with a credit card payment facility. This will not help with the initial filing of a Madrid application but I anticipate it making adding countries to an existing International Registration substantially easier - and hopefully quicker.

Their Madrid Tips section also explains some scenarios regarding the official fees payable for renewals. These can seem ridiculously complicated at times although if you can use WIPO's E-Renewal tool this should auto-calculate the correct fees for you.

13 September 2013

The Catalan Way (and IP)

Wednesday (11 September 2013) marked an impressive show of support for the independence of Catalonia, currently an autonomous part of Spain, when a human chain, the Catalan Way, spread for 400km/250 miles.


Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.

Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)

With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)

The Catalan language is also more widely spoken than some other national languages within the EU.

I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.

1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.

Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.

As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.

However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.

This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.

11 September 2013

Holiday season

August is Europe's traditional holiday season and is reflected with blogs where news to blog about dries up somewhat. Aside from some short jaunts to Germany, Switzerland, Yorkshire and God's own county of Hertfordshire, I have not been on a proper holiday (sun, sea and sangria-style).

I appreciate this is a bit of a 'filler' but I decided to check if any of our IP Offices around the world made a planned shut down. It would appear not.

Unsurprisingly, employees at the USPTO are only granted leave for Federal holidays, which for 2014 will look like this. This has been this way since the mid-late 1980s.

In the UK, where we complain about our lack of public holidays compared to our European cousins, the UK IPO is closed on one day less than the USPTO. Of course, staff will receive more annual leave than their American counterparts and our public sector is known for being generous with this.

In Geneva, home of WIPO, their public holidays are more extensive including many typical European and Christian holidays as well as the Muslim festival of Eid al-Adha and a purely local Geneva holiday.

There is an established Public Holiday Law in Japan which the Japan Patent Office follows. I was also interested to learn of Japan's 'Happy Monday System' whereby some holidays have been moved to a Monday to create a longer weekend. We have something similar in the UK, albeit without such a cool name, whereas in continental Europe if a holiday falls on a weekend it's tough, it won't be rolled over to the following Monday.

It will come as little shock to many that OHIM closes for the longest period of time - 18 days, with seven of these coming at Christmas and New Year. Being in Alicante on Spain's Costa Blanca, the weather isn't too bad either. For jobs at OHIM go here!

I hope readers of this blog enjoyed their holiday season. I hope I have more substantial things to blog about in the coming months.

9 August 2013

Closed Trade Marks Registers still existing

There are a handful of former Trade Marks Registers that have since merged into other Registers but for many intents and purposes are still in existence.

Some old Registers may not add new cases but their old registrations remain on record
Having an unhealthy collection of modern atlases as a child (in the days before the internet), I was aghast when I began working in this field and first came across a trade mark in Sabah. What? Where? I thought I'd heard of every country...

Sabah, formerly the British Crown Colony of North Borneo, had its own Trade Marks Registry operating from the capital Jesselton (now known as Kota Kinabalu). The same is true of neighbouring Sarawak.

Sabah and Sarawak joined with Malaya to form Malaysia. The region of Malaya, with connotations of its British colonial past, is now more properly referred to as Peninsular Malaysia.

The separate Trade Marks Registers remained in place although no new applications were possible; filing a Malaysian application was now required. For a stage, I understand it was possible to merge identical registrations in Malaya, Sabah and Sarawak into a single Malaysian registration but this is no longer possible. This is why there are still registrations in Malaya, Sabah and Sarawak being renewed (and assigned, etc.). However, they are all maintained and renewed at the Intellectual Property Corporation of Malaysia with headquarters in Kuala Lumpur but branch offices in Sabah and Sarawak.

These registrations provide protection in their relevant geographic area and there is a possibility that the owners of identical or highly similar marks may not be the same in different parts of Malaysia.

It is perhaps worth noting that Malaysia now contains three federal territories. Two of these are in Peninsula Malaysia (Malaya) but the other, the wealthy island of Labuan, was ceded by Sabah to the federal Malaysian government in 1984. As such it is possible that an owner of identical Malaya/Sabah/Sarawak registrations would not have coverage for the whole modern day country of Malaysia. (In this event it would, of course, be possible to make a new application in Malaysia.)

Flag of Transkei, one of three bantustans that had their own trade marks law
Of more notorious note are the three trade mark jurisdictions derived from former bantustans in South Africa. Four of these achieved independence, albeit unrecognised by the international community, the so-called "TBVC States" of Transkei, Bophuthatswana, Venda and Ciskei. The latter introduced intellectual property legislation in respect of copyright only so it was just the first three that had Trade Marks Registers.

Flag of Venda
Following the end of apartheid, these Registers were generally incorporated into the South African Register unless there were overlapping rights in which case they continued to cover the applicable geographic area (with provisions to cover the whole of South Africa if the overlapping rights lapsed or were cancelled). I have no idea how many Transkei/Bophuthatswana/Venda registrations now exist - I imagine they would be mostly held by local companies and they are relatively few in number. They have a special numbering in place. They are managed by the Companies and Intellectual Property Commission in Pretoria.

The flag of Bophuthatswana
Bophuthatswana was arguably the most well known of the bantustans as it contained Sun City (casinos being illegal in apartheid South Africa) and was the setting of an infamous coup in 1994 that saw the bantustan's last leader, Lucas Mangope, trying to cling to power and an invasion by Eugène Terre'Blanche's Afrikaner Resistance Movement.

Elsewhere in Africa, OAPI has grown at various junctures. Mali joined up in 1984 and was followed in 1990 by Guinea. Other countries have followed suit, but in the case of Guinea and Mali they had Trade Marks Registers of their own prior to OAPI accession (the others were Cautionary Notice countries).

Flag of Guinea
Mali's Register has now ceased to exist, but Guinea's is still - somewhat questionably - operational for renewals, assignments, etc.

Finally, at the tip of Africa is Tangier (sometimes Tangiers). Prior to independence, Morocco was largely governed by France and Spain, except the city of Tangier which was under the administration of various countries as the Tangier International Zone. The city enjoyed libertarianism unlike the rest of Morocco and even much of Europe and became the home for a number of escapist residents. It also had its own trade mark law which remained when it was integrated into Morocco upon independence in 1956.

Flag of Tangier International Zone
Parallel to this was a trade mark regime in "Morocco (Casablanca)"; the Casablanca often being added as this was the location of the Trade Marks Office and to distinguish it from Tangier. Registrations in Morocco (Casablanca) covered the whole of Morocco except Tangier.

In late 2004, a new trade mark law was introduced in Morocco to cover the entire country. Existing Morocco (Casablanca) and Tangier registrations would remain in force, each covering the whole country. Many trade mark owners would register in both. Upon renewal they will now only have to renew one of the registrations. This could be as late as 2024 in view of the 20-year registrations terms governed by the old laws in Morocco and Tangier.

These registrations can all be marked as covering Morocco, but many records may not have been amended to show this so you may still come across registrations in Tangier and/or Morocco (Casablanca).

Pay attention with country codes
Be careful with respect to country codes as codes used for these jurisdictions are often created internally or by database companies and then may come into use for other countries internationally. SS was commonly used for Sabah, but this is now the country code for South Sudan, independent since 2011. I have seen TK used for Transkei, but Tokelau is assigned this country code. Tokelau does not have a trade mark law (New Zealand registrations currently cover the territory) but it does possess a Domain Name Registry using this as its ccTLD.

We can come across many obscure countries when managing trade marks around the world. When it comes to post-registration matters like renewals then it is apparent that we have a few more jurisdictions to take into account.

2 August 2013

'Fast track' opposition procedure

The UK is planning on introducing a 'fast track' opposition procedure for trade marks.

'Fast track'

It is designed specifically with SMEs in mind and is evidence of the UK IPO's proactive efforts to help these businesses. Their outreach programme sees them regularly at business conferences and seminars as speakers and/or exhibitors. They are also approachable (with restrictions on the advice they can give) when it comes to "DIY" applicants and a large number of UK trade mark applications are self-filed.

SMEs tend to like (in all areas of their business) - and I speak from my own experiences as a business owner here - fixed indications of costs as much as possible. I believe most can handle a scale, e.g. from £x to £y. Transparency of costs is important to them. The IPO identified that the current opposition process can be unwieldy with uncertain cost outcomes and less than predictable timelines. The 'fast track' procedure will be designed to bring more certainty to the table.

OHIM (and WIPO) also have sections for SME's (here and here), but perhaps a more extensive role in engaging with SMEs will/should/must fall more within the duties of national IPOs. It is possible to envisage a future where national applications are predominantly filed by local SMEs/start-ups with the Community Trade Mark being the preferred vehicle for larger businesses; the ONEL case may also have a bearing on this. Of course, trade mark needs are determined by the nature of the products, services and markets so this is a bit of a simplistic view meant as food for thought. Larger companies will continue to use national routes when there is a purely local trade mark need or to form a less risky basis to a Madrid application, as examples, and SMEs will have reasons for filing Community Trade Marks as they do for filing in other foreign jurisdictions.

Trade Mark Watching

A challenge faced by some SMEs - particularly those that represent themselves but includes others that show reluctance to spend the additional money - is with trade mark watching. Many of these SMEs will not have set up a watching service. Owners of UK national trade marks will receive notifications from the IPO when they search subsequent applications. These may not be as extensive as a commercial watching service, but it should catch identical and near identical marks. With an SME on a limited budget in mind, it's free. Trade mark professionals can argue that the IPO's notifications are not sufficient, but the free aspect can represent value to many SMEs and we tend to have different personal definitions of "value".

What this does overlook though is Community Trade Marks. An owner of a UK national registration - or any other national registration in an EU member state (including Ireland, Sweden and those others still with relative grounds examination) - will not get notified of any Community Trade Marks even if for an identical mark with identical goods or services. If they have no watching service set up how will they find out about such a mark? If you've ever tried downloading the CTM Bulletin, published on-line every working day, then you'll know that conducting your own checks is not particularly realistic. Identical searches can be conducted periodically but you would have to remember to do them.

Nevertheless, OHIM do conduct searches - much like the UK IPO - of their own Community Trade Mark Register only and they too send notifications to the owners of these earlier marks. I understand they are looking to abolish these (this is perhaps evidence of this), but arguably it could be better to extend them. How?

Extend them by allowing owners of national registrations to notify OHIM of their rights. There could be a mechanism within TMView for doing this (so sorry owners of Greek national registrations until your country is on board you'd be ruled out). It would not need to cost anything as it would all be done on-line. It would be just as easy for OHIM to do their checks through TMView (which I imagine could easily be specially adapted for this purpose) as it is to do them on just their own Register.

Representatives could add their clients marks to this system pro-actively, particularly when they have been unable to convince a client of the merits of a watching service. This may then still give them access to avenues of possible opposition work.

OHIM may consider this as a way of helping SMEs, start-ups and those with cost constraints. It is not something national Offices can set up so while they may take the lead in meeting and educating many SMEs in their respective countries, this sort of initiative would need to be led by OHIM.

I do not believe the searches conducted are as comprehensive as a trade mark watch performed by commercial companies and I am not suggesting they are an alternative to having a proper watch in place. However, aside from cost pressures for SMEs, IPOs are not in a position to refer trade mark owners to specialist watching companies and SMEs may be reluctant to go to companies they do not know.

I should mention that the Danish Patent and Trademark Office provides a trade mark watching service as do their Swedish counterparts (neither of which are particularly cheap, I may add) but most offices do not; the UK Office has moved away from providing non-statutory, commercial services.

In conclusion, improvements to processes that make them quicker should be welcomed (when quality does not go down), but with national and Community Trade Marks working in parallel more could be done to ensure awareness if not alignment. It could be in the remit of the Convergence programme and Cooperation Fund to undertake some work in this area. National offices should bring such agenda items to the table. It's all well and good that SME owners of UK registrations can cost-effectively and quickly oppose conflicting UK applications but helping them ensure conflicting Community Trade Mark applications do not escape their radars is something that could be better addressed by the authorities.

24 July 2013

Guam set to create "Trademark Commission"

Information from the Pacific News Center suggests Guam will look to refresh its trademark legislation shortly and help better protect its own cultural brand.


US Federal registrations automatically protect all US states and territories, the Act stating, "The United States includes and embraces all territory which is under its jurisdiction and control."

In Guam, which is an organized, unincorporated territory of the United States, a local registration system is also in place. There are two routes to protection under this. Firstly, a purely local route which requires evidence of use to be filed in order to obtain a Certificate of Registration and is akin to individual State trademark laws.

Secondly, it is also possible to re-register a US Federal registration in Guam, notwithstanding that such a Federal registration should already cover Guam.

It is not clear how the law will change things. It cannot overrule any Federal law. However, Puerto Rico is often considered a separate trademark jurisdiction from the "mainland" USA.

Tourism and the provision of retail services of designer goods are big business in the Guam economy and, in particular, businesses involved in these fields may wish to keep an eye on the situation in Guam with a view to securing local trademark registrations.

Furthermore, new legislation is planned to increase protection of the island's local culture, traditional knowledge and brand.

18 July 2013

TMView gets stronger and stronger

Earlier this month the TMView grew with the addition of over 1.1 million new trade marks when the Registers of Croatia, Cyprus, Mexico and Norway were added to the system.

This follows the earlier announcement that Morocco was to be integrated with TMView.

Croatia joined the EU at the beginning of the month.

Cyprus - an EU member since 2004 - has a relatively small Trade Marks Register but it was known for needing manual searches so this is a very welcome addition.

Norway is outside of the European Union, but its membership of the European Economic Area means it is very closely linked to the EU economically.

Mexico becomes the first non-European country to "go live" in TMView and represents excellent news for global rights holders.

It leaves Greece as the only EU member state without its Trade Marks Register available on TMView. Neighbouring Turkey is slated to join the TMView project at some point in the future.

TMView is positioning itself well as a free go-to database for initial knock-out searches not just for the European Union but further afield too.

5 July 2013

Isle of Man Trade Marks

I have had some queries recently regarding trade marks in the Isle of Man, and as I made a weekend visit to the island recently, I thought some explanations on trade marks could be worthwhile.

Douglas, the capital of the Isle of Man
The Isle of Man does not have its own trade mark law or Trade Marks Registry. It is covered by a United Kingdom trade mark including designations within International Registrations.

But there is not a Trade Marks Registry
The Isle of Man Government make reference to trade marks in some guidance they provide in relation to choosing a company name.

The UK Trade Marks Act 1994 makes reference to the Isle of Man:

"This Act also extends to the Isle of Man, subject to such exceptions and modifications as Her Majesty may specify by Order in Council; and subject to any such Order references in this Act to the United Kingdom shall be construed as including the Isle of Man."

This makes the Isle of Man unique among the UK's overseas territories and Crown dependencies because the UK's legislation is applied directly - or, in other words, there is not (and there is no need for) a local trade mark law enacted by the Isle of Man Government. It is normal for the overseas territories/Crown dependencies to enact local legislation themselves, which can either provide a local registration system, or provide for automatic protection of UK registrations (as has happened in the Falkland Islands, for example).

Despite claims to being the oldest continuous parliament in the world, the Tynwald has not introduced its own trade marks law
Furthermore, I understand Orders in Council have been made to ensure European Community Trade Marks cover the Isle of Man.

It should also be mentioned that the United Kingdom's ratification of the Madrid Protocol is "in respect of the United Kingdom and the Isle of Man."

The Isle of Man is one of three Crown dependencies, the others being the Bailiwicks of Jersey and Guernsey (aka the Channel Islands). They are known as offshore financial centres and each has their own versions of the pound, e.g. the Manx pound (although British currency is also accepted). Tourism is another important part of their economies.

The Manx people are patriotic judging from the significant flying of the island's flag, although the Manx language is sparsely spoken nowadays and the local (English) accent - after years of immigration from the mainland - is not easily distinguishable from that of parts of the North West of England.

This windy island is perfect for flag flying
Culturally they are similar to mainland Brits and a popular brand in the UK is likely to be a popular brand in the Isle of Man. However, the cost of living in the Isle of Man tends to be higher than that of the UK mainland.

This store is equivalent to a UK version where every item is £1 whereas in the Isle of Man most of their prices seemed to be £1.20 
Their relationship with the EU is not exactly straightforward but freedom of goods is allowed between the Isle of Man and the European Union. A Common Purse Agreement with the UK means the Isle of Man is effectively in customs union with the rest of the EU.

In the case of local infringement of a registered trade mark then enforcement would need to be taken through the Isle of Man courts.

Although there is no Trade Marks Registry, there is a local Domain Registry. This manages .im domain names which have proved popular with providers of instant messaging software.

The Crown dependencies are culturally and economically closely linked to the United Kingdom and the fact that the Isle of Man is covered by UK trade marks is helpful to British, Manx and overseas businesses. Nevertheless, trade mark owners may wish to secure registration of a local domain name as a way of engaging with Manx consumers; it is inexpensive.

The other Crown dependencies, Jersey and Guernsey, have independent trade mark laws so do not overlook them if your business expands and spills over into the Channel Islands. (I've not covered Jersey or Guernsey here but please do not hesitate to get in touch if you have any questions regarding protecting trade marks in these jurisdictions.)

With a Scottish independence referendum scheduled for next year, there has even been speculation that Na h-Eileanan Siar (the Western Isles), Orkney and Shetland may request Crown dependency status, perhaps creating more considerations for trade mark owners across these numerous islands in north western Europe.

1 July 2013

Croatia: Welcome to the EU!

Croatia joined the EU today (1 July 2013). From an intellectual property perspective Croatia will now be covered by Community Trade Marks and Registered Community Designs.


A page on the Irish Patents Office website does a good job of explaining the impact of Croatian accession on existing EU trade mark and design applications and registrations.

It also provides a useful reminder for trade mark owners to be vigilant to avoid the spammers who may take this opportunity to solicit for trade mark "services".

Ahead of accession, Croatia has already aligned its specification terms for trade marks - it being a harmonised Office on TMClass. It has yet to be integrated in the search facility of TMView but as it is possible to conduct on-line trade mark searches through the State Intellectual Property Office website we can anticipate that they will come aboard TMView quite soon. However, it is not yet possible to file on-line Community Trade Mark or Registered Community Design applications in the Croatian language through the OHIM website. I expect OHIM to offer a Croatian filing option soon.

Croatia becomes the 28th member state of the European Union joining:

Austria
Belgium*
Bulgaria
Cyprus
Czech Republic
Denmark
Estonia
Finland
France
Germany
Greece
Hungary
Ireland
Italy
Latvia
Lithuania
Luxembourg*
Malta
Netherlands*
Poland
Portugal
Romania
Slovakia
Slovenia
Spain
Sweden
United Kingdom

* part of Benelux for trade mark and design registration purposes

20 June 2013

Maintenance of designations of the Philippines in International Registrations

A recent Information Notice from WIPO has, somewhat belatedly, clarified the maintenance requirements for designations of the Philippines in International Registrations.


Some of you may already be aware of these, some may have anticipated they would have been in place and some of you may have been unaware of these maintenance requirements. When news emerged in May last year that the Philippines were joining the Madrid Protocol there was a complete lack of information concerning their (additional) maintenance requirements and the filing of Declarations of Actual Use (DAUs).

It is effectively the same as national applications filed in the Philippines although take note of the timings.

These DAUs are due at three junctures:

1. Within three years of filing the International Registration (application and registration dates being the same)
or
If the Philippines is subject of a Subsequent Designation within three years of the Subsequent Designation recording date by WIPO.

These DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO), usually for foreigners through a law firm in the Philippines although the WIPO notification also indicates that this can be filed through "the holder’s authorized representative with a local address".

A single six-month Extension of Time can be sought, but likewise these must be requested at the Intellectual Property Office of the Philippines (not WIPO) through a Filipino lawyer (or authorized representative). Please note that an Extension of Time must be explicitly requested; it is not an automatically existing grace period.

2. Between the 5th and 6th anniversary of registration (i.e. local Statement of Grant date) in the Philippines.

Again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).

3. Between the 5th and 6th anniversaries of each renewal of an International Registration. Remember that renewals are filed centrally at WIPO, but, again, these DAUs must be filed with the Intellectual Property Office of the Philippines (not WIPO).

Let's take a (fictitious) example:

International Registration No. 123098 filed and registered 19 January 2013
Philippines: Subject of Subsequent Designation on 9 May 2013
Intellectual Property Office of the Philippines issues Statement of Grant on 27 February 2014

  • First DAU due 9 May 2016 (three years from "date of filing" in the Philippines; six-month extension possible till 9 November 2016)
  • Second DAU due 27 February 2019-27 February 2020 (5-6 years following local "registration" in the Philippines)
  • Third DAU due 19 January 2028-19 January 2029 (5-6 years following renewal (i.e. on 19 January 2023) of the International Registration)
Trade mark law files within databases will need to be sophisticated to calculate these correctly and vigilance will be important with any docketing/record keeping.

These onerous maintenance requirements may lead many to consider avoiding designating the Philippines within Madrid applications (and file national applications instead). It is a similar consideration when designating the United States, whereby at the outset Madrid applications can be more cost-effective but in the longer term it can represent a false economy when it is not possible, as with national registrations, to combine Use Declarations/Affidavits with renewals because the technical renewal is handled through WIPO.

11 June 2013

On-line Design applications

Following last week's announcement from WIPO on their improved on-line filing facility for Hague International Design applications, this week I will look at the on-line filing abilities of some other Offices.

OHIM provides a platform for filing Registered Community Design applications on-line. This is well used and the ease of uploading representations makes the applications significantly easier.

Compare this to the United Kingdom where paper forms are still required and it can be a bit fiddly collating all the representations into order. The same is the case in Germany, Benelux and Portugal, as examples.

OHIM's Cooperation Fund should help all countries within the EU introduce on-line facilities for filing design applications in the future. Among its initiatives, many national trade mark applications in EU member states can be filed on-line. These are scheduled to be extended to design applications in due course.

Outside the European Union, Switzerland has not yet developed an on-line process although it does accept applications via e-mail. However, Switzerland can be included within a Hague application.

Further afield, Canada and Australia offer on-line tools for which they should be commended.

It is understandable that systems for on-line design applications need to be robust in order to cope with a large number of representations as attachments. This makes them less easy to implement.

In the UK at least, most national designs are filed by local, often individual, designers directly (bigger firms and those professionally represented tend to take the European or International route). Their voice is perhaps less heard than professional IP organisations. This factor may also contribute towards why the UK IPO may not have considered it a priority to implement an on-line filing system for designs. As the UK looks to revamp its design legislation, the practical improvement of developing an on-line tool may also be carried out ahead of any support from OHIM's Cooperation Fund..

6 June 2013

New on-line filing tool for Hague Design applications

WIPO have announced the introduction for a new on-line filing system for Hague International Design applications.

It will now be possible to upload multiple design representations at the same time, which may speed up the preparation of applications. A fee calculator will be built into the tool to help with the accurate calculation of fees due (which can be complicated under Hague). Furthermore, it will be possible to pay for applications using a credit card. This will be very useful for filers that do not hold a deposit account with WIPO; previously if you wanted to make payment by credit card then you needed to wait for a WIPO irregularity notice and then make payment through their E-Payment tool.

WIPO have prepared some step-by-step tutorials for the filing of Hague applications including the creation of a user account that is necessary.

With the accession of the United States and the powerhouse economies of the Far East to Hague expected in the not-too-distant future, WIPO are preparing themselves well to be more efficient ready for an increase in the number of filings.

30 May 2013

Rwanda to become latest Madrid member

Following on from the eagerly anticipated accession of India to the Madrid Protocol, now it is the turn of Rwanda to join up. We will be able to designate Rwanda in a Madrid Protocol application from 17 August 2013.


Rwanda will become the 91st member of the Madrid family. Having joined the Hague Agreement Concerning the International Registration of Industrial Designs in August 2011, Rwanda is proving to be keen on international arrangements in intellectual property.

Formerly a German colony and then under Belgian administration, Rwanda has a Civil law system (although nowadays Rwanda is also now a member of the Commonwealth).

This Civil law history should mean its Madrid Protocol membership is automatic and requires no legislative amendments locally (although, of course, the Office of the Registrar General may need to make some operational changes). This does mean that the enforceability of International Registrations designating Rwanda is not in question, which is not the case for many African Madrid members with a Common Law legal system.

Rwanda joins Kenya as the only other member of the East African Community to also be a member of the Madrid Protocol. Rwanda will become the 16th member of the Madrid Union in Africa (although again note the questionable enforceability of International Registrations to some African countries).

Welcome aboard Rwanda!

16 May 2013

Comoros joins OAPI

News from Africa sees the island nation of the Comoros ratify the Bangui Accord to become the 17th member state of OAPI.


I understand the hard copies of the Comoros' accession documents are yet to reach OAPI. It is believed these will arrive soon but there is a little uncertainty pending their arrival.

The Union of the Comoros is due to become a member on 25 May 2013. From this date, applications filed in OAPI will cover the Comoros. Furthermore, renewals filed after this date will then extend the relevant registrations to cover the Comoros.

In the meantime, if renewals are some time away and you wish to protect your trade mark rights in this country, it is possible to file Extension Applications to cover the Comoros. (This is very much different from the CTM system where new members (such as Croatia) will be automatically covered upon their joining.)

Prior to its accession to OAPI, the Comoros was one of the Cautionary Notice countries of the world. If you have published a Cautionary Notice in the islands then you should now look to register these rights at OAPI either by making an application or, if existing OAPI rights already exist, by making Extension Applications (although if these rights are close to renewal you may be able to save some money by just waiting until renewal can be filed).

I have previously speculated that the Comoros may join OAPI because as a small, francophone country it would represent a quick-win to join this organisation. However, it is located between Mozambique and Madagascar in the south west of Africa and will form a geographic outpost of OAPI - they will need to enlarge the map appearing on their homepage. Saying this, Madagascar was a member of a precursor to OAPI, OAMPI.

The Comoros represents the 17th member of the OHADA - Treaty on the Harmonisation of Business Law in Africa to mirror this with membership of OAPI. The Democratic Republic of Congo (for those of you of a certain age, this might still be Zaire to you) is also due to adhere to OHADA. This country already has its own trade mark legislation and has less need to join up to OAPI too (although this did not prevent Mali and Guinea becoming OAPI members in the 1980s and 1990s respectively).

As one of the world's poorest countries, the Comoran government will be hoping that its accession to OAPI will encourage investment to the islands.

Incidentally, the Comoros disputes the status of Mayotte, part of the Comoros islands archipelago but administered by France (at the wishes of its local population it may be said). Mayotte is covered by French registrations (including International Registrations designating France) and, from 1 January 2014, when it will become an Outermost region of the European Union, Community Trade Marks too.

9 May 2013

Morocco to join "TMView" project

The TMView system has been a notable achievement driven by OHIM, as I have opined before.

OHIM have recently announced that Morocco will integrate with TMView. While the International Register is already incorporated within TMView and there are plans are to link this with WIPO's Global Brand Database, this does represent the first time that a non-EU country is to join the TMView project.

Over 106,000 Moroccan trade marks are already contained on the Global Brand Database and these should soon be available through TMView, which is arguably an easier to use tool.

Morocco did apply to join (what is now) the EU way back in 1987 but their application was rejected as membership is only open to "European states". Nevertheless, Moroccan-EU relations are strong and this small step is some evidence of this. Morocco often looks north to Europe; it is the only all-African state not in the African Union.

This development paves the way for other non-EU countries to come aboard TMView. Switzerland is probably at the front of the queue given it is already a part of another OHIM-led project, TMclass (recently rebranded from Euroclass) and already has an excellent on-line database available.

22 April 2013

Irregularity Notices from WIPO - International Applications

I have sung the praises of WIPO's Madrid Highlights publication in the past (for example, see here).

Their latest issue and their first of 2013 has recently issued. It contains information collated over the previous three months, such as the notification issued by the Syrian Trade Marks Office.

I would like to bring attention to readers of this blog to the 'Madrid Tips - Practical Examples on the Implementation of the Madrid System' section. In this issue WIPO explore Rule 13 of the Common Regulations.

This relates to the WIPO Irregularity Notices they can issue regarding the classification of goods or services. These are somewhat unusual so if you do not have much experience of the system, or tend to file standard specifications (that are always acceptable) then WIPO's questions and answers could be quite useful for you in case you receive such an Irregularity Notice.

I copy WIPO's questions but have adapted the language of the answers to be (possibly) more user-friendly and less "WIPO-speak" in case this could be helpful. Of course, the original WIPO text can be found in the Madrid Highlights publication.

Whenever WIPO considers that the classification of goods and services in an International application is incorrect, it will notify the Office of origin (your Trade Marks Office, where you filed the International application) and inform the applicant (or representative).

However, the responsibility for remedying this irregularity lies with your Trade Marks Office, which may, within three months from the notification, make a proposal for remedying the irregularity.

Q1. I am the applicant of an international application. I have received an irregularity letter indicating that a term of the list of goods and services is too vague for the purposes of classification. The letter also states that the irregularity is to be remedied by the Office of Origin. What does it mean?
R1. This means that WIPO considers that a term used in the list of goods and services is not
sufficiently clear for the purposes of classification. When this happens, WIPO notifies your Trade Marks Office and informs you, the applicant (or representative). WIPO may suggest either a substitute term or the deletion of the term. Your Trade Marks Office may, within three months of the notification, make a proposal to remedy the irregularity.

Q2. Is any action required on my part as the applicant (or representative) of the international application concerned?
R2. There is no action required from you in this case. However, you, as the applicant (or representative), may communicate your views regarding the irregularity to your Trade Marks Office, or your Trade Marks Office may seek your views.

Q3. What options has the Office of origin to reply to the irregularity?
R3. Your Trade Marks Office may respond to the irregularity as follows:
  • Agree to accept any suggestion which WIPO may have made, then the term will be changed accordingly.
  • Disagree with any suggestions. Then, your Trade Marks Office may respond to the irregularity by submitting a new proposal. 
If the new proposal is acceptable to WIPO, then the term will be changed accordingly.

If the new proposal is unacceptable to WIPO within the three-month time limit, there are two
possibilities:
  • If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
  • If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.
Q4. What happens if the Office of origin does not reply to the irregularity?
R4. If your Trade Marks Office does not reply to the irregularity, there are two options:
  • If a class number has been indicated for the term in question, the term will be included in the international application as filed, with an indication stating that, in the opinion of WIPO, the term is too vague for the purposes of classification (this indication may not be deleted from the International Register at a later stage).
  • If a class number has not been indicated for the term in question, it will be deleted and WIPO will notify your Trade Marks Office and inform the applicant (or representative) accordingly.
Q5. If the Office does not reply, can I reply in its place?
R5. No! You may communicate your views regarding the irregularity letter to your Trade Marks Office, but you cannot respond to the irregularity directly to WIPO. The reply to the irregularity must be sent to WIPO through your Trade Marks Office within the prescribed time limit.

Q6. Will I be informed of the outcome of this procedure?
R6. Yes, where the irregularity is resolved and the international application conforms to the
applicable requirements, the mark is registered in the International Register and a certificate is
issued. Furthermore, the international registration is published in the Gazette and, for
information purposes, in the ROMARIN database. You will also be informed when a non-classified term is deleted due to a non-acceptable proposal or in the absence of a reply from your Trade Marks Office.

It should be clear that the responsibility of responding to these Irregularity Notices lies with your Trade Marks Office but it is important that these are not overlooked by applicants or their representatives.

As the gatekeeper of the Nice International Classification, WIPO take a strict view to where products and services are classified.

If an Irregularity Notice is issued, do not merely docket the deadline provided by WIPO for your Trade Marks Office to respond to them. It is suggested that you docket an earlier date so you can give input to your Trade Marks Office and they can take it into account when responding to WIPO.

You will also be familiar with how your Trade Marks Office operates. Are they organised? Are they pro-active? This will help you determine if you need to get in contact with them upon receipt of an Irregularity Notice to ensure your views are heard and so they respond in good time.

This is a quirk of the Madrid system. It can leave you scratching your head if you find yourself in the strange situation where you receive an Irregularity Notice (aka Office Action) yet you cannot respond to it. Hopefully this scenario is now more clearly explained.

18 April 2013

Libyan Trade Marks Office resumes operations

It has recently been announced that the Libyan Trade Marks Office has resumed its activities and will recommence receiving the filing of trade mark applications.


This follow the time of unrest following the 2011 Libyan Civil War and the overthrow of Colonel Gaddafi.

Perhaps reflecting its status as a pariah state over the last decades, Libya has been a special case with respect to trade marks for many years.

In the late 1970s the Office basically ceased to operate. However, in this time it was possible to file applications - and the Office quite happily took the fees - but applications then sat in a perpetual state of limbo. The Office was also quite happy to receive renewal fees 10 years down the line.

This changed in the early 2000s when Libya unilaterally cancelled any old registrations and pending applications and required trade mark owners to file fresh applications.

I worked for a Swiss company in 2008 when Switzerland and Libya had a diplomatic row following the arrest of one of Colonel Gaddafi's son in Geneva. This led to repercussions for Swiss companies with business interests in Libya and, with respect to trade mark owners, the issuing of an edict prohibiting Swiss applicants for making applications for trade marks.

The resumption of activities has also seen the restrictions on Swiss applicants removed.

Libya remains a cumbersome and relatively expensive jurisdiction in which to file trade mark applications. Along with a Power of Attorney, filing requirements include a Certificate of Incorporation/Extract of the Commercial Register and a certified copy of the "home" registration. These documents require translation into Arabic and legalisation up to the Libyan Consulate.

Fees are payable at filing, publication and registration. It will remain to be seen how quickly applications can now move forward to registration.


9 April 2013

India joins Madrid - finally!

It has been anticipated for some time now, but finally Madrid Protocol membership has increased to 90 members with the accession of India.



It will be possible to designate India in an International application from 8 July 2013.

The Indian Trade Marks Registry has made commendable efforts in recent years to reduce its examination backlog so they would be in a position to meet the 18-month examination period for Madrid Protocol designations.

Whether they remain well equipped to handle an increase of examinations which should follow when it can become designated in an International application may remain to be seen. It will be important that examination of Indian national applications is not delayed because Madrid Protocol designations must take priority. Otherwise the attractiveness of the Madrid Protocol will diminish for Indian trade mark owners as its high number of oppositions would mean Central Attack could be a problem.

The Madrid Protocol already covers most of the West (with the notable exception of Canada) and the emerging markets of Eastern Europe. The joining of India adds another major newly industrialized country to the selection of countries available following on from the accession of Mexico and the Philippines last year. With China and Turkey already on board and Thailand expected to one of the next joiners, the Madrid Protocol continues to grow and grow.

26 March 2013

Trademark Clearinghouse

The Internet Corporation for Assigned Names and Numbers ("ICANN") has seen its Trademark Clearinghouse open for business today, 26 March 2013.

For those unfamiliar with the Trademark Clearinghouse:

"The Trademark Clearinghouse (TMCH) is the most important rights protection mechanism built into ICANN’s new gTLD program. Operators of new gTLDs will be responsible for implementing certain rights protection mechanisms, supported by the Trademark Clearinghouse. The Clearinghouse allows brand owners to submit their trademark data into one centralized database, prior to and during the launch of new gTLDs. The Clearinghouse will open on March 26.

  • Trademark holders will be able to submit their trademark information to a centralized repository.
  • After verification, the trademark holder has fulfilled the basic (most important) condition to be able to register its corresponding domain name during the pre-registration period of multiple TLDs – also known as the "Sunrise period".
  • Trademark holders will also have the option to be notified when someone registers a domain name that matches their record in the Clearinghouse."
Owners of famous brands will look to register their trade marks with the Clearinghouse. However, with inexpensive fees, the Clearinghouse is accessible to smaller brand owners - particularly where these brand owners would focus on registering only their house mark with the Clearinghouse.

Fees can be paid annually, which when compared to the duration of trade mark registrations is too often. Thankfully, fees can also be paid for three year or five year terms too with some small discounts available for the longer periods.

The Trademark Clearinghouse is expected to be a useful tool in the continued battle against cybersquatters.

19 March 2013

Pragmatic help from the Syrian Trade Marks Office

I regularly present on 'Notarisation & Legalisation' for the Institute of Trade Mark Attorney's Trade Mark Administrators' Course and I think it would be almost an understatement to say that we consider legalisation to be a real headache in the West.

Nevertheless, appreciation of other legal cultures is important especially in the globalised world of trade marks and we need to comply with these requirements.

Therefore, we are very grateful when notices are issued by Trade Marks Offices requiring legalised documents that recognise the difficulties - particularly with respect to turnaround times - in providing legalised documents. One such notice has just been issued by the Trade Marks Office in Syria in relation to Madrid Protocol designations of their country.


The Syrian Office works well with the Madrid Protocol system regularly sending out acceptance notices and Statements of Grants to holders via WIPO. Examination is also robust and Provisional Refusals are not uncommon.

With the Syrian Civil War ongoing for over two years now it is perhaps remarkable that the Office continues to function relatively efficiently. Of course, this may change if the situation escalates nearer to the Office, which according to my maps is located in a part of Damascus not so far away from Douma, a major flashpoint city of the War to date.

8 March 2013

Ethiopia introduces trade mark law

The Federal Democratic Republic of Ethiopia has recently introduced trade mark legislation to replace its quirky Cautionary Notice system.



This is positive news for Africa's second most populous country - it's ahead of Egypt and only behind Nigeria in this respect - and one of the world's fastest growing economies.

The country's coffee industry has made significant efforts around its brands - with the support of their IP Office - so it was important their own trade mark law was brought up-to-date.

During the Scramble for Africa in the late 19th Century, Ethiopia was one of only two African nations not to have been controlled by one of the European powers of the time. It retains pride with this fact and perhaps this explains why the new law, which is modern in the main, contains some quirks. A seven-year term of registration stands out. Perhaps they are conscious on losing out on renewal fees bearing in mind the old system established six-year terms, with short-form Cautionary Notices to be published in intervening two-year periods. It has also shown no enthusiasm for joining the Madrid Protocol club.

Certain bureaucratic elements are retained, namely, the need to submit a legalised Power of Attorney and a legalised "home" registration certificate. At least the latter requirement has been relaxed and a legalised Extract of the Commercial Register can be submitted as an alternative.

Well-known marks are recognised, priority can be claimed and registrations will be vulnerable to cancellation on the grounds of non-use if they are not used for a continuous period of three years.

There is an 18-month "sunrise" period in which owners of existing rights filed before 7 July 2006 can re-register their trade marks under the new law. The deadline in which to file these - and claim the filing dates of the existing rights - is informally set at 24 June 2014.

Applications filed after 7 July 2006 will be prosecuted under the new law. If they are already registered then it is possible to request fresh, updated Certificates of Registration and indeed it seems advisable to do this.

As is typical when a country introduces a new trade mark law there remain practical details that are unknown. Waiting to see how things will operate is not a bad idea, but I would recommend that trade mark owners with interests in Ethiopia should look to make their re-registration decisions shortly. This will give them plenty of time to collate all the necessary supporting documentation and file it with their applications. This will help avoid late filing expenses and also, perhaps more importantly, help the Ethiopian Intellectual Property Office remain organised and speed up registration times.