24 February 2014

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.

19 February 2014

11 February 2014

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.