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.