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:

Czech Republic
United Kingdom

* part of Benelux for trade mark and design registration purposes