OAPI to join Madrid

Good news came from Geneva and Yaoundé recently with word that OAPI will join the Madrid Protocol on 5 March 2015.

I understand there are still some regulations to be adopted locally at OAPI HQ but these were under discussion during a recent Council meeting.

A previous blog ensuring OAPI is not confused with ARIPO (or others) still attracts hits and is linked here for reference. It may also be worthwhile reminding readers of the member states - with a total population of an estimated 165 million people:

• Benin
• Burkina Faso
• Cameroon
• Central African Republic
• Chad
• Comoros
• Congo
• Côte d'Ivoire 
• Equatorial Guinea
• Gabon
• Guinea
• Guinea-Bissau
• Mali
• Mauritania
• Niger
• Senegal 
• Togo

Perhaps not surprisingly given the geographic coverage, official fees in OAPI are quite high. Under the Madrid Protocol, although they will be converted into Swiss francs, OAPI plans on individual fees corresponding with the official fees for direct filings.

My firm has handled a number of cases in OAPI and we may experience a decrease in local registrations. However, membership of the Madrid Protocol should see an increase in trademarks being protected across the OAPI members and this should benefit the countries concerned.

Horn of Africa and Sudan region update

It's been a while since I last blogged, but I am pleased to be back with a piece on the Horn of Africa and the Sudan region.

This is an area of the world that has seen a few developments with respect to trademarks, yet conversely is an area of the world where protecting trademarks can be difficult-to-impossible.

The most populated country of the region - and the most populated landlocked country in the world - Ethiopia introduced a new trademark law in early 2013. This provided a June 2014 deadline in which to re-register rights in the country. This deadline has now been extended to 23 December 2014. The requirements for re-registrations are fairly bureaucratic (e.g. a Power of Attorney must be legalised up to the Ethiopian Consulate) so it's recommended to act now if any rights need re-registering.

Across Ethiopia's western border is Africa's newest nation of South Sudan. This country has decided to use the law of (north) Sudan to which it was a part prior to independence. However, they have adopted some practicalities and don't follow the law to the lettter. For example, the law requires trademark applications to be supported by legalised documents but South Sudan does not have diplomatic missions in many countries so notarisation of documents is proving to be acceptable. That said, South Sudan does have consulates in the United Kingdom and United States, amongst a few others.

The trademark system appears to be more of a deposit system and trademarks are not being published for opposition purposes (as they should be according to the law). It does appear that cancellation can be requested at the court though.

It is hoped that when South Sudan does adopt a law of its own that it will recognise any of the rights it is registering in the meantime.

Elsewhere, in the region, it's not possible to register trademarks in Somalia despite this country having a trademark law. This has been the case for some time now and it is expected that the Trademarks Registry building was destroyed in the fighting of the early 1990s.

In the northern region of Somaliland, which has declared its independence from Somalia, it is possible to publish Cautionary Notices. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trademark legislation but in the absence of a Trademarks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”.

Eritrea is another Cautionary Notice jurisdiction in the region. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. Cautionary Notices are the protection route for brand owners without a local presence. However, the publication of Cautionary Notices in Eritrea is not always possible as the authoritarian government restricts the publication of Cautionary Notices from time-to-time.

A country where it is possible to protect trademarks is Djibouti. With an estimated population of 800,000, it's not high up in commercial importance to many brand owners and trademark filings are not high in volume. However, the Port of Djibouti is very important to Ethiopia's imports and exports and its position as a transit country should not be overlooked.

It is quite expensive to protect trademarks in the country compared to its size. Nevertheless, trademark applications mature to registration fairly quickly. An unusual colonial legacy sees that if you support an application with a certified copy of a French registration then it can smooth the way to registration, although this is not a prerequisite.

Sudan also has a trademark law and is the only country in the region to be a part of the Madrid System. That said, there are some question marks on how enforceable these are. I understand they do not follow the same process as national filings and there are rumours that Madrid designations are piled up in a corner of the Sudanese Office.

Sudan is also a member of ARIPO. However, it has not yet joined the Banjul Protocol that governs ARIPO trademark filings.

As for national applications, once you have satisfied the bureaucratic filing requirements, trademark applications are prosecuted slowly. An eight-month opposition period hardly assists with the fast-tracking of applications.

If the Horn of Africa and the Sudan region is an area of the world where you need to protect your trademarks then it is advisable to begin your efforts as soon as possible.

Fast track examination of trade marks - UK

The UK Intellectual Property Office is seeking views on whether there is a need to reintroduce the fast track examination procedure (perhaps - or perhaps not - inspired by the bobsleigh, luge and skeleton in Sochi).

With examination of UK trade mark applications usually taking less than a month, many will ask, "What would be the point?". I feel they would be justified in making such comments.

I can think of a number of things the IPO could improve on (better electronic communications, on-line applications for International applications, etc.) that I feel should be greater priority. Needless to say, these are personal thoughts and may not be shared among other users of the IPO.

I have nonetheless filed submissions to the consultation. If you would also like to respond then you have until 15 April 2014 and make sure it's by 11.45pm (British time).

My response is self-explanatory and repeated below:

I am responding to your consultation regarding the 'Fast Track Examination of Trade Marks'.

It is appreciated that there are circumstances when more speedy (than 'standard') registration is preferable, for example, businesses needing shorter timescales for product launch, legal proceedings, etc.

I believe applicants would be prepared to pay a premium to obtain quicker registration times. The amount proposed is not much in the scale of things if an applicant finds themselves in a scenario where speedier registration is required.

However, Fast Track examination is not cutting significant time from the time from filing to registration because of, notably, the two-month opposition period. Obviously, this is not a period of time that can be moved (without a notable legislative change).

Clearly, Fast Track examination does not guarantee acceptance and does not ensure oppositions will not be filed. In the event of objections or oppositions, these would likely mean a Fast Track application would take longer than a smooth standard application.

With examination periods for standard applications (and also 'Right Start' applications, it can be added) of 20 days or less, how much time would a Fast Track application shave off the whole process?

I would not envisage an uptake of a new Fast Track examination procedure in any greater numbers than from when the scheme ran between 2008-2009.

I make some suggestions to your proposals that may see a greater uptake of Fast Track applications and ensure it provides greater value for money:

1. Applications must be made on-line.

2. Examination by the end of the next working day

This would really put the "Fast" into Fast Track. If necessary, take Examiners from standard applications to fulfil significant demand for Fast Track on a given day.

A "Money Back Guarantee" or compensation scheme should be available when this is not fulfilled.

2. Mandate the use of accepted TMclass terms

This will help enable examination to be completed within the timescale above.

3. Auto-notification of prior rights

Searches can still be performed but, where no other issues have arisen and the application is otherwise accepted, the application should proceed proactively to advertisement. Owners of prior rights, as applicable (e.g. owners of UK marks but not Community Trade Marks), can be notified automatically.

If necessary, put in place a 'Warning Box' to applicants advising them of this if they choose the Fast Track option.

4. Daily publication of the Trade Marks Journal

Under the current suggestion, an application could be made on a Friday, examined and accepted by the following Friday and then still take another week until advertisement in the Trade Marks Journal. That is not fast tracking, in my view.

A daily publication would help ensure a process is truly Fast Track. If necessary, Monday-Thursday Trade Marks Journals only need contain Fast Track applications and the regular Trade Marks Journal can be continued on Fridays only.

5. Registration issued quickly - online notification

The period from the end of an opposition period to actual registration should be improved under Fast Track.

Currently, an application published on 6 December 2013 - therefore with an opposition period running until 6 February 2014 - is scheduled for registration on 21 February 2014. This is over two weeks following the expiration of the opposition period.

For Fast Track applications at least, registration should be completed within, say, two days of the expiration of the opposition period (or other reasonable time required for the Office to process oppositions). Fast Track applicants could also be sent online notification of registration pending receipt of the physical Certificate of Registration. You could also consider sending Fast Track applicants their Certificates of Registration by guaranteed next day post (UK applicants/representatives only).

In conclusion of the above, I think it is misguided to only look at the examination aspect of a Fast Track process. Fast Track publication and Fast Track notification of registration need to be put in place too. The current resources and operations of the Intellectual Property Office may not be geared up to manage this, and making changes to accommodate Fast Track may only be justified if there is significant take-up of Fast Track examinations. Amendments to the Trade Mark Rules may also need to be made which is an added burden.

I would stress that even with the adoption of the above suggestions that, due to the opposition period and the current examination period for standard applications, that the time shaved off in a Fast Track application is still going to be fairly negligible overall, perhaps at best one month. I could anticipate that the uptake of the Fast Track process will not be significant. However, it is appreciated that the Intellectual Property Office are committed to providing a high quality service and its introduction could be useful to applicants that find themselves needing registration more quickly.

It is felt that a standard examination period of under one month is perfectly acceptable in standard cases and matches or beats the performance of most of your counterparts in Europe and the Rest of the World.

Comparing to some other countries with expedited/accelerated examination, Australia does not make additional charges for expedited examination. However, applicants must submit a witnessed declaration detailing the reasons for the request. I feel, if there is going to be a Fast Track option available, that a fee-paying Fast Track approach is better, one where the applicant justifies use of this route and not an Intellectual Property Office.

Switzerland charges 400 CHF extra for expedited examination, cheaper than the 550 CHF basic fee. The Benelux charges €193 extra for fast registration (for 1-3 three classes), again cheaper than the €240 basic fee. Although I feel the £300 proposed additional fee for Fast Track is fare, you may find it useful to benchmark with fellow Intellectual Property Offices, particularly in Europe, also to get a wider picture of uptake and perceived value, as it may paint a similar picture to what could happen for the UK.

I hope these comments are useful.

TRADEMARKS AND BRAND PROTECTION IN 'EUROPEAN OVERSEAS TERRITORIES'

I have written an E-book with the above title that may be of interest to readers of this blog.

It's not expensive and can be purchased from Amazon here.

The Protocol - Past, Present and Future

Trade mark professionals in the UK – and many in other countries – work with the Madrid Protocol on a daily basis. How different it once was.

The Madrid Protocol, with the UK among its first members, came into play on 1 April 1996. For most, this date is better known as the first day Community Trade Marks (CTMs) could be filed (or, more precisely, the earliest filing date CTM applications could be accorded). CTMs got filed by the bucket-load and have been popular from the start.

For the Madrid Protocol it was different, as many countries were slow on the uptake. This included those that were already members of the Madrid Agreement, which, until they were in the Protocol, were out of bounds for UK businesses.

Only a handful of Madrid Protocol applications were filed by UK companies in the early days. With the European Union (EU) easily covered by the new CTM, the majority were filed to designate China as most of the other members of commercial importance at this time were other EU member states. I can recall speaking to the UK Trade Marks Registry to check on the progress of an early application and being told: “We’ve only had three applications so far.” A recent check of ROMARIN shows a mere 11 active registrations originating from the UK registered between April and September 1996.

Over time some key countries have come aboard such as Australia, Japan, Korea, Russia, Singapore and the US as well as the EU itself. And, if it was not immediately popular, the advent of the Protocol proved a watershed moment in the Madrid system and the global registration of trade marks.

Early expansion

The Madrid Agreement had been operational since 1892, but primarily as a European continental club. Prior to 1948, the only non-European member was Morocco. The arrival of Vietnam, in 1949, marked the Agreement's expansion to Asia, although it would take another 40 years before it touched the Americas with the accession of Cuba.

With little prospect of further expansion in the same guise, particularly to common-law countries, the inflexibilities of the Madrid Agreement were ironed out in the Madrid Protocol and allowed the UK, US and others to come aboard. It has grown rapidly since.

This decade has seen a diverse expansion, both geographical and economical. There has been the accession of Colombia, India, Israel, Mexico, New Zealand, the Philippines, Rwanda and Tunisia. And Kazakhstan, Sudan and Tajikistan added the Protocol to their Agreement membership. Furthermore, the dissolution of the Netherlands Antilles in 2010 created three new Madrid jurisdictions: Curaçao, Sint Maarten and Bonaire, Sint Eustatius and Saba. Meanwhile, far removed from the sunny climes of the Caribbean, Denmark extended its Madrid Protocol membership to include Greenland.

Challenges, of course, remain. Is the requirement to have a home registration really needed these days? Direct filings with WIPO would make them operationally less cumbersome. The removal of the threat of “central attack” would bring less uncertainty to the table when using Madrid, and this is a concept less easily understood by owners of smaller trade mark portfolios.

WIPO suffers processing delays at the moment. Statements of grant were made mandatory, as many users were forthright on the importance of these. WIPO listened, but the increased numbers of these documents put them under pressure.

They should have little problem in coaxing civil servants from Member States to a tax-free salary in Switzerland should it need more staff. Although my criticism of WIPO’s recruitment would be that Government experience seems to be a prerequisite for employment, when professionals from industry or private practice could add a different perspective.

I must give praise where it is due, though, and the set-up of three dedicated teams of examiners at WIPO has left the organisation less faceless. Incidentally, Madrid Team 1 (madrid.team1@wipo.int (+41) 22 338 750 1) looks after applications originating through OHIM, and Madrid Team 3 (madrid.team3@wipo.int (+41) 22 338 750 3) is responsible when the UK is the Office of origin.

The development of on-line tools should also be welcomed and will improve operations.

US issues

The onerous maintenance requirements for US designations still present a problem. In the first term of registration there are likely to be three maintenance events, namely two Affidavits due (to the US Patent and Trademark Office) and one renewal due (to WIPO). The high number of Provisional Refusals in the US may have meant there were no cost savings in the original Madrid filing, but even if there were (for there being no need to engage US Counsel), the maintenance requirements for US Madrid Protocol designations are, at best, no cheaper than they would be for a national registration. It’s easy to see why some argue that the US has taken all the benefits of the Madrid Protocol for its own businesses, but is barely extending this back to other users of Madrid. A similar situation arises for designations of the Philippines.

Common-law countries, mostly in Africa, pose another problem when they have not amended their local legislation to reflect their Madrid membership. WIPO can seem oblivious to this, thinking once they have a member signed up, it is “job done”, but ultimately if you could not enforce an International Registration in, for example, Zambia, isn’t that country's membership worthless?

As for the future, it is easiest to speculate on the new joiners. Remaining in Africa, Zimbabwe has made legislative steps to ready itself for membership, but, as we saw with India, this does not necessarily mean they will be depositing their instrument of accession immediately. Being the home of the African Regional Intellectual Property Organization (ARIPO), Zimbabwe could play an important role on the continent and help in finding a way of linking ARIPO’s Banjul Protocol with the Madrid Protocol.

Malta, currently the only EU member not to have Madrid membership, could complete the EU jigsaw. We may also anticipate Algeria – the sole remaining member of the Madrid Agreement only – to accede to the Protocol, too. This may put to bed the Madrid Agreement and abolish Article 9sexies. This provision allows applications from member states of both the Madrid Agreement and Madrid Protocol to pay complementary and supplementary fees (rather than individual fees) when designating members that are also party to the Madrid Agreement and Madrid Protocol. They also get the advantage of a 12-month examination period. Those from Madrid Protocol-only countries, including the UK, can claim this is unfair.

The ASEAN states are scheduled to join the Madrid Protocol by 2015. Thailand is expected to come aboard soon, joining the existing members in ASEAN: the Philippines, Singapore and Vietnam. Malaysia has made legislative amendments to prepare for Madrid. For the other ASEAN states (Brunei, Cambodia, Indonesia, Laos and Myanmar) this timetable may be less realistic, although we may expect Brunei or Indonesia to make strides in this time, and new legislation is imminently anticipated in Myanmar.

The same is true with CAFTA-DR countries whose free trade agreement with the US stipulates Madrid Protocol membership. Costa Rica, the Dominican Republic, El Salvador, Guatemala, Honduras and Nicaragua are the members, with Costa Rica and the Dominican Republic considered the most likely to join up first.

Pockets of resistance

Of some of the major markets currently outside of the Madrid family, resistance is strong in Canada, where local practitioners have lobbied their Government hard not to join.

Brazil and South Africa present some more positive vibes, although both realise they need to reduce examination backlogs to be able to cope with an influx of Madrid applications. They are making inroads into these backlogs, although not at the same rate as India.

Brazil faces another challenge because the local law stipulates Portuguese as the official language for all correspondence. This could be amended, but a change could present a linguistic burden on the local trade mark office. It is possible that Portuguese could become an official Madrid language – WIPO already provides some information in this language. However, there may be a reluctance to do this unless some dispensation can be reached that keeps a handle on translation costs (for example, only International Registrations designating Brazil are translated into Portuguese).

WIPO may also be wary. In 2004, Spanish was made an official language, but it has not been until the last year that Colombia and Mexico joined the Madrid club (Spanish-speaking Cuba and Spain were already members before 2004).

Making Portuguese an official language would be almost purely to lure in Brazil. Other Lusophone nations, such as Angola, Cape Verde and Timor-Leste, are not of commercial interest to as many businesses as Brazil (and Mozambique, Portugal and São Tomé and Príncipe are already a part of Madrid). Further, to digress somewhat, Portuguese could only be currently available as a first language for designations of the European Community and not (as is the case with English, French and Spanish) as a second language.

Some of the quirky mechanisms of the Madrid Protocol will continue to baffle some people and there are skills required to work with it, but it is clear that the Madrid Protocol is here to stay and will become increasingly prominent in the field of trade marks in years to come. It may get replaced with a new system in due course, but political wranglings may mean it is easier to amend the existing system than to start from scratch.

This article originally appeared in Issue 406 December 2013/January 2014 of ITMA Review, the journal of the Institute of Trade Mark Attorneys.

Certified Copies

I admit that this might not be the most interesting or high brow of topics. However, it might help provide some useful information.

I've had the need to order some Certified Copies recently to support a priority claim in one instance, and to substantiate applications based on United Kingdom registrations. I was wondering how quickly other jurisdictions were able to issue these documents (and how expensive they are).

A Certified Copy ordered through OHIM on 27 November took a month to be received. To be fair, the document was sealed by OHIM on 18 December and it got caught in the Christmas mail backlog although I believe "three-to-four weeks" would be typical for OHIM to issue Certified Copies. Such documents cost €30 each in Official fees.

Certified Copies ordered through the UK IPO on 23 December were issued in early January. UK Certified Copies cost £20 each in Official fees for trade marks (£22 each for designs). I believe "one-to-two weeks" would be the typical time period for the UK IPO to issue Certified Copies. In my case, the original documents went astray in the post - a service which doesn't have 100% reliability and, from time-to-time, may need factoring in - and, therefore, it ended up being more than two weeks when my replacements arrived.

In Switzerland, Certified Copies can be ordered by e-mail at no charge and are issued in about a week. However, I believe the length of time for WIPO to issue a Certified Copy (Extract) is a lot longer. In fairness, I should mention that I have not ordered such a document from WIPO for some time (obviously they cannot be used as priority documents) but WIPO suffers from some delays in their other Madrid Protocol operations. The costs involved in obtaining a Certified Extract from WIPO are variable as the link shows.

It's been a longer time since I've ordered a US Certified Copy direct from the USPTO. Usefully, they now have an on-line ordering service. A Certified Copy to serve as a priority document would cost $15 in Official fees making them cheaper than both OHIM and the UK IPO.

If readers would like to share knowledge of their jurisdictions timelines and costs for obtaining Certified Copies then perhaps this would be of use to other readers. Particularly if they have a priority claim to substantiate and are wondering when their client is likely to be able to provide this document to them.

The good news is that many countries no longer require Certified Copies to support priority claims. They will typically say that it is at an Examiner's discretion to request a priority document though.

One of the benefits of the International system is that priority claims can be made without substantiation (i.e. needing to provide a Certified Copy or other proof).

Other Offices will take the view that if they can check the on-line Register of the priority claim country then they'll do this pro-actively to verify the priority claim. OHIM's new on-line filing tool is designed so this 'link' can be made by the applicant in the application.

OHIM also provide for the self-downloading of CTM Certified Copies from the on-line record of a specific case. A third party, such as a foreign Trade Marks Office, can then verify the authenticity of the document through OHIM's website by entering an 'Identification code'. I have learned recently that the Trade Marks Office in Saudi Arabia, a country where formalities are known to be complicated, accepts these documents from OHIM to support priority claims.

Needless to say, bureaucracy is still rife in some countries and original physical documents will be required. When they require legalisation this creates another headache. OHIM provide a useful service where they will undertake the legalisation up to the European Commission Representation (for this purpose this is the equivalent of a Ministry of Foreign Affairs). Nevertheless, if such a document (i.e. originating from OHIM) requires consular legalisation then this will need to be done in Spain. If you're not in Spain then you will likely want to get an agent in Madrid to assist. Dealing with foreign Consulates is not always an easy task even when you're based in the same country, let alone when you're not.

When making priority claims or applications requiring Certified Copies, it is sensible to be prepared for the hassle and costs that can be involved.

UPDATE: In Jordan, it takes 2-3 days for a Certified Copy to be issued.

Cautionary Notices - not worth the paper they're printed on?‏ II

I posted on this topic back almost exactly two years ago in January 2012 and the blog continues to be popular.

In the subsequent two years though some things have changed so it was time for an update.

While it has decreased in recent years - including in the last two years - there are still a few countries around the world without trade mark legislation. It has become established practice to publish Cautionary Notices in the local press of these jurisdictions that alert third parties to a proprietor's trade mark rights.

But how valuable are these publications? Yes, they warn the local public of a proprietor's rights but could they unhelpfully attract the attention of the bad guys like counterfeiters?

The obvious problem in countries without trade mark legislation is there is no IP law per se to back up the trade mark "registrations" obtained by publishing Cautionary Notices.

Ethiopia was probably the most high profile of the Cautionary Notice countries but they adopted a trade mark law in 2013.

I speculated two years ago that the Comoros could join OAPI and this is exactly what it did from 25 May 2013.

In the absence of a UK National Registration it was also possible to publish a Cautionary Notice in Grenada under its archaic Merchandise Marks Act. New legislation has removed the requirement for a UK National Registration.

So another three countries dropped off the "Cautionary Notice list" and this leaves:

Myanmar (or Burma as the country is still referred to by some Governments) has a somewhat formalised system in place where a Trade Mark Declaration is lodged with a Registration Office prior to the publication of a Cautionary Notice. According to my research, case law exists that includes the throwing out of a trade mark infringement action on the basis that there was no provision for the same in Myanmar's law. However, the court was willing to entertain cases relating to passing off; Myanmar following a Common Law doctrine. However, WATCH THIS SPACE, Myanmar has trade mark legislation drafted and it is hoped this will come into force during 2014.

Until 1993, Eritrea was a part of Ethiopia, but upon independence did not introduce a trade mark law or even replicate the (old) Ethiopian registration procedures. A Trade Name Register appears to exist for authorised local traders who display these names at their premises. If you have a local subsidiary in Eritrea this could provide some rudimentary protection. The publication of Cautionary Notices in Eritrea has an unpredictable nature as it is not clear if there is any case law. It is also worth mentioning that the government - Eritrea is a single-party state - restricts the publication of Cautionary Notices from time-to-time. If the separation of government and judiciary is not what we might expect, it could be expected that the value of any Cautionary Notice, when it is allowed to be published, is unpredictable.

The Maldives have a similar situation. There is no codified IP law. However, locally incorporated companies can register their trademarks under the name of the company. Monthly fees must be paid to maintain a registration (albeit these are small).

In the absence of a locally incorporated company - and this seems common even for large international businesses - it is possible to publish a Cautionary Notice in a local newspaper. As a Muslim country, publications should be avoided for "alcoholic beverages".

Somaliland is recognised by the international community as a part of Somalia, but in practice enjoys de facto independence. It is constitutionally obliged to follow laws previously promulgated by Somalia prior to their declaration of independence provided they do not conflict with Sharia law. This includes trade mark legislation but in the absence of a Trade Marks Office this is unworkable. It is believed action for passing off could be undertaken under the inherited Civil Code of 1974, taking particular note of Article 176: "a person who, without just cause enriches himself to the detriment of another person is liable, to the extent of his profit, to compensate such other person for the loss sustained by him”. As another Muslim country, publications should be avoided for "alcoholic beverages".

Gibraltar represents an optional Cautionary Notice jurisdictions based on its Merchandise Marks Act 1888. This British overseas territory has a dependent registration status for its more formal Trade Mark laws. The local Trade Marks Registry accepts applications with a UK (including International designations) and a Community Trade Mark basis. It is questionable how easy to enforce the latter would be though in the absence of specific legislation to recognise them. As a part of the European Union, Gibraltar should be covered by a Community Trade Mark automatically but there are doubts to this. I have blogged in more detail regarding Gibraltar previously.

The remainder of the world's Cautionary Notice countries consist of a number of island countries in or near Oceania, namely, the Cook Islands, the Marshall Islands, the Federated States of Micronesia, Nauru, Niue, Palau, the Pitcairn Islands and Timor-Leste.

The latter is the exceptional case in this small list as it has a Civil law system based on that of Indonesia, which includes some remedies against trade mark misuse. While the penalties are not considered a sufficient deterrent, Cautionary Notices are nevertheless considered of some use.

The other islands derive their legislation from Common Law countries: Australia, New Zealand, the United Kingdom and the United States. Cautionary Notices for non-used marks could have limited value.

I am not aware of publications having ever taken place in the Pitcairn Islands but this is no surprise given the population is estimated at less than 50 (although there is a dedicated publication for the islands).

The Cook Islands and Niue provide an unusual situation due to their evolved relationship with New Zealand. Registrations granted under New Zealand Trade Marks Act of 1953 cover the Cook Islands and Niue whereas those granted under New Zealand Trade Marks Act of 2002 do not. This Act does not extend to the Cook Islands and Niue due to their increased levels of self government. As an alternative to introducing their own trade mark legislation, I imagine they could recognise the 2002 Act (or ask the New Zealand Government to extend the Act, if this is more appropriate) but that this would only be done on their specific action. Incidentally, Tokelau remains an unincorporated territory of New Zealand - and therefore directly covered by New Zealand trade marks - despite two UN supported referenda encouraging it to move to a self-governing state in free association with New Zealand like the Cook Islands and Niue.

Some firms can publish a single Cautionary Notice for multiple jurisdictions through a pan-Oceania publication. (We can do this too.) However, this does not have the same circulation figures as a national newspaper. I am therefore wary of doing this because of the unclear value Cautionary Notices provide in the first place and feel publication in local newspapers per jurisdiction may prove to provide improved protection.

One issue with Cautionary Notices is their cost. They don't really come cheap. This is not to say they are usually excessively more expensive than a standard trade mark application in many countries, but take into account that regular re-publication is expected in order to make them worthwhile. The term for republication can vary but if you took it at an average of every three years then you can do the maths and work out that this will work out more expensive than your regular trade mark renewals. With an estimated population of 60 million people, Myanmar represents a potential market of significance. Political developments seem likely to see its pariah state status improve and being situated between India and China it has obvious high growth potential.

However, note that most of the Pacific island nations support tiny populations. This does explain why some brand owners may opt for a single pan-Oceania Cautionary Notice publication for these jurisdictions. It could be considered a "better-than-nothing" approach that will not cost as much.

I would be reluctant to come to firm conclusions, but I like to provide an opinion that might be helpful. For Timor-Leste it seems that Cautionary Notices do provide some value even if it is somewhat limited. Eritrea represents particular ambiguity and I would endeavour to explore the registration of a trade name first of all, if possible.

Gibraltar is a special case. Ideally have a UK registration to extend to the territory, but in the absence of this it is possible there will be a CTM in place which can form the basis of an application. Because of a CTM's questionable enforceability, it could be worthwhile supplementing it with the publication of a Cautionary Notice. Publication costs for Cautionary Notices in Gibraltar are not too expensive.

For the other countries, Common Law rights would seem to provide for protection and I would consider the publication of Cautionary Notices to be a supplement to these rights rather than an alternative. The expense of Cautionary Notices would also be a notable disadvantage to "defensive" publications.

I am lucky enough to have the contacts that can arrange for the publication of Cautionary Notices around the world if ever a reader needs assistance.