22 December 2015

Season's greetings!

To our Readers, Clients, Colleagues, Friends and Associates,

As we approach the holiday season, I’d like to wish you all a Merry Christmas and a happy and healthy New Year.

Instead of sending Christmas cards, we are making a small donation to Oxfam this Christmas to help with their continuing efforts in fighting poverty worldwide.

Please do not hesitate to get in touch in 2016 should you require any support with trademarks or registered designs.

Happy holidays!

19 November 2015

Kuwait to increase trademark fees significantly

It has been reported through various sources that in December 2015, the fees for trademarks in Kuwait will increase significantly.

I understand this will include filing, publication and registration fees. Furthermore, I believe that applications already on file will be subject to the new publication and registration fees (if they're not becoming due imminently). This is not something that would have been anticipated when originally filing applications and applicants are going to need to budget for some substantial additional fees.

Can anything be done to alleviate these fee increases? Yes, applications can be filed now and will be subject to the existing application fees. A legalised Power of Attorney is required for Kuwaiti applications but this can be late filed so it seems advisable not to delay if you want to take advantage of the current application fees.

However, examination does not happen that quickly in Kuwait so you are going to need to budget for the increased publication and registration fees.

Looking ahead

Kuwait is a member of the Cooperation Council for the Arab States of the Gulf, usually known as the Gulf Cooperation Council (GCC). The other members are Bahrain, Oman, Qatar, Saudi Arabia and the United Arab Emirates.

As the states look to implement a unifying trademark law (not a unitary law) this fee increase may be a reflection of this. The official fees of Saudi Arabia and the United Arab Emirates are some of the most expensive in the world. Kuwait's fee increase could be seen as a way of them putting their fee structure in line with the two members that receive the most trademark applications.

Therefore, could we see fee increases in Bahrain, Oman and Qatar too? I feel it is fair to anticipate doing so. It could be sensible to consider filing in these countries sooner rather than later if they're likely to be of commercial interest in the future. Bahrain and Oman are members of the Madrid Protocol and can be designated in International applications. If there are fee increases locally, expect them also to elect to increase the Individual fees payable to them under the Madrid Protocol.

17 November 2015

The Gambia joins the Madrid Protocol

The Gambia will become the next member of the Madrid Protocol when it joins up on 18 December 2015.

African membership of the Madrid System continues to grow, although being the smallest country on the mainland of Africa, the addition of the Gambia will not make a significant impact on the worldwide Madrid System map.

Furthermore, although a lot of African countries are now members of the Madrid System, not all of these have made local legislative amendments to reflect Madrid membership and the enforceability of International Registrations is highly questionable.

This does not appear to be the case for the Gambia though, which has a relatively modern trademark law.

The Gambia has previously been infamous for its significant delays caused most notably by an enormous backlog in printing Trademark Journals. However, in recent times it has made tremendous efforts to get applications advertised and made significant inroads into its backlog.

Nonetheless, resources are at a premium at the Gambian Registry and an increase in filings caused by Madrid designations may push the Registry's capabilities even more. Of course, if you designate via Madrid and do not get a refusal in the designated time then you have an assumed registration (although this does not necessarily rule out a future challenge). Covering the Gambia through a Madrid designation will be an attractive option to many.

When it comes to Provisional Refusals, the Gambia has made a declaration under Rule 17(5)(e). Such ex officio Provisional Refusals can only be contested "before an authority external to the said Office" e.g. a tribunal or court.

The Gambia joins only China and Madagascar in making such a declaration. In practice, even if the Gambian Registry can cope with examining all its International designations in the required timescale, examination can be sketchy and it's not anticipated that the Registry will be issuing rafts of Provisional Refusals, probably very few.

12 November 2015

Misleading invoices - a small win for the UK Intellectual Property Office

The UK Intellectual Property Office was pleased to announce this week, "IP scammers face record financial liability".

Those involved in the business of maintaining intellectual property rights will be familiar with the unsolicited letters that are sent to proprietors with exorbitant fees for maintaining these rights, or for putting these rights into a "directory". Furthermore, many of these requests look like they come from official Intellectual Property Offices, at least to many IP owners who are not familiar with dealing with Intellectual Property Offices on a regular basis.

Various Offices around the world have made it an important task to educate their customers about these organisations, for example, see the warnings from the UK, OHIM, the USA, Norway and New Zealand, and also some examples of the actual letters from WIPO.

The judgement handed down by the Intellectual Property Enterprise Court (and found here) orders the defendant, Intellectual Property Agency Limited and its sole director, Harri Mattias Jonasson, to pay £500,000. This is maximum this court can impose.

Bearing in mind the defendants made a profit of over £1.1 million, this is really only a small win for the Intellectual Property Office, and probably an even smaller one for those that have been duped into paying such inflated fees.

There is a lack of sympathy in some quarters for IP owners who go ahead and pay "silly" money. This is a little unfair in my view. These legal steps, added to continued awareness by Intellectual Property Offices and IP professionals alike, will hopefully go some way to making these businesses less lucrative.

However, it's flabbergasting that a firm can make such significant profits on the basis of UK rights alone, and I dread to think how much money this "industry" makes worldwide.

My own firm is very reasonably priced when it comes to UK and worldwide renewals. Perhaps we are missing trick (I say in jest). Those that have been duped, or could be in the future, will be pleased to know there are many firms out there who will provide a service tantamount to its value and who can also act as a barrier to the scammers.

21 October 2015

UK Registered Designs - online filing for all filing routes - and other bits

The Intellectual Property Office in the United Kingdom recently introduced an online tool for the filing of UK national registered design applications.

I blogged over two years ago on the online filings of designs when the UK was certainly not alone in not offering an online service. The UK system is new and not yet as developed as I imagine it will become e.g. it does not support priority filings which must still be made by post.

Ignoring any unregistered rights that can persist, this now means design applicants have three (online) routes to protect their designs to the United Kingdom:

1. National UK application
2. Registered Community Design application covering the 28 member states of the European Union including the UK
3. International Design application through the Hague System designating the European Union

What route is preferable will depend on whether a business has interest in protecting their design nationally, across the EU, or in other states that are also a part of the Hague System, or to a handful of jurisdictions with a link (historical or current) to the UK.

There has been much fanfare that Japan, Korea and the US have joined the Hague System relatively recently. These are countries with different design regimes than Europe. I have had to temper clients' enthusiasm that they could now get easy and cost-effective design protection in such countries. It's not going to be quite as straightforward as some circles have made it out to be. For example, the Marques Class 99 blog has explained how the task of claiming priority (which should be a simple formality) is complex and expensive, meaning designating these countries in an International application may be a false economy; i.e. you may as well just file nationally from the start (see 'Priority problems - parts 1 and 2 from 13 October).

Incidentally, the UK is likely to accede to the Hague System in its own right in due course. As I've commented on the SOLO IP blog, I'm not convinced this brings much to the table. However, it would be beneficial if the UK decides to leave the European Union.

The International Design system is useful for obtaining protection to mostly other European countries if protection beyond the EU is required. Iceland, Liechtenstein and Norway - which along with the EU members make up the European Economic Area - can be covered, as can Switzerland.

I've blogged before on the usefulness of a UK National Registered Design to foreign shores. These benefits are highly unlikely to be extended to designations of the UK in a Hague International registration (when it becomes possible to designate the UK).

This is because protection in the overseas jurisdictions arises from legislation enacted locally (and usually a long time ago). To provide protection of a Hague designation of the UK will likely require local legislation to be amended and, to be frank, if this were to happen it more likely independent design legislation would be enacted and a 'link' to the UK ended.

Whether National, Community or International (or a combination thereof) is preferable, official fees for all three filing routes are not expensive.

13 August 2015

Algeria joins Protocol: impacts on trademark portfolios

Recent news from WIPO informs us that Algeria will join the Madrid Protocol from 31 October 2015.

With a population of close to 40 million and being the largest African and Arab country, Algeria's accession will be welcomed in many quarters. American, British and Japanese companies, as examples, will now be able to designate Algeria in International applications.

Previously, as a Madrid Agreement member only, Algeria was only available to entities from other Madrid Agreement countries. This means Chinese companies and those from the majority of continental European countries, for example, have already been able to designate Algeria in International applications for many years.

Algeria was the last remaining bastion of Madrid Agreement only membership.

This development may therefore have practical repercussions. Where a country is a member of the Madrid Agreement and the Madrid Protocol, in simple terms, the Protocol takes precedence. This means the Madrid Agreement is now largely redundant as the system is transformed into "a One Treaty System".

However, Article 9sexies is, at least for the time being, where there are some differences. If the Madrid Agreement is closed down this Article may fall by the wayside.

If you work for or represent companies from the likes of Belgium, China, France, Germany, Italy, Luxembourg, the Netherlands, Russia, Spain and Switzerland (and other Madrid Agreement member countries) then this could have an impact on your budgets.

If you're in the UK or US (or other Madrid Protocol only countries) then you're already paying the higher fees so no need to read on. You might be glad the playing field may soon be levelled.

I've mentioned Article 9sexies a couple of times before (here and here). It basically means that if you come from a Madrid Agreement and Protocol country (let's say France) and designate countries that are members of the Madrid Agreement and Protocol (let's say Benelux and Bulgaria) then you would pay the Complementary fee for each designated state as opposed to the Individual fees Benelux and Bulgaria charge under the Madrid Protocol.

Article 9sexies also impacts examination timelines - designated states only get 12 months through this Article - so this may lengthen procedures if it's abolished. From my viewpoint, this is unlikely to be significant in the majority of cases.

However, I do accept for those countries who can notify oppositions after the expiration of the 18 month period under Article 5(2)(c), - or, in other words, indefinitely - that they bring some uncertainty to applicants. This being more so to applicants who currently rely on Article 9sexies and therefore have more guaranteed timescales. These members are notably China plus Cyprus, Iran, Italy, Kenya and Ukraine; (other countries signed up to Article 5(2)(c) are Protocol only members).

With IP budgets often under scrutiny, it's the fees that some companies may need to be aware of. Let's do some analysis.

The Complementary fee for each designated state is 100 CHF and this includes up to three classes. What happens if you now need to pay Individual fees for three classes:

Armenia: 100 CHF up to 265 CHF
Belarus: 100 CHF up to 600 CHF
Benelux: 100 CHF up to 167 CHF
Bulgaria: 100 CHF up to 327 CHF
China: 100 CHF up to 499 CHF
Cuba: 100 CHF up to 356 CHF (both first and second part Individual fees)
Italy: 100 CHF up to 159 CHF
Kenya: 100 CHF up to 758 CHF
Kyrgyzstan: 100 CHF up to 660 CHF
Moldova: 100 CHF up to 356 CHF
San Marino: 100 CHF up to 178 CHF
Switzerland: 100 CHF up to 450 CHF
Tajikistan: 100 CHF up to 452 CHF
Ukraine: 100 CHF up to 429 CHF
Vietnam: 100 CHF up to 269 CHF

If you can file a word mark application covering those countries using the lower fees now you would pay 2153 CHF (plus your Office of origin's handling charge). Under the higher fees, it works out at 6496 CHF (plus your Office of origin's handling charge) (excluding the second part fee for Cuba of 82 CHF).

If you file in a single class, the lower figure of 2153 CHF (plus your Office of origin's handling charge) remains the same and the higher figure changes to 5068 CHF (plus your Office of origin's handling charge) (excluding the second part fee for Cuba of 82 CHF). Obviously, it's unlikely for anyone to file an International application designating only those countries but you'll get the idea of the costs changes that a trademark holder could be facing. This could be more acutely felt for large international trademark portfolios.

Renewals would also face similar changes in the fees.

We will have to wait and see whether Article 9sexies is something that is abolished - and resistance to this may be strong from those countries who benefit from it. This may mostly be from 'old guard' members from the Madrid Agreement's early days who may find themselves outvoted in any changes as more and more countries become members.

It's perhaps worth mentioning that both Syria and Uzbekistan withdrew from the Madrid Agreement (to rely on the Madrid Protocol only) so they could benefit from increased fees and examination timelines, possibly not prepared to wait for the repeal of Article 9sexies.

When simplification and harmonisation are watch words in IP this may mean the days of Article 9sexies are numbered though and so it might be something that is worthwhile being prepared for.

29 July 2015

New trademark law in the British Virgin Islands

A new trademark law in the British Virgin Islands ("BVI") will enter into force on 1 September 2015. It has been a while coming.

This will completely modernise a law that is archaic. Currently, there are two ways to register a trademark in the BVI:

1. A local, substantive application. This uses the very dated former British classification system. Importantly, this does not provide for service marks.

2. A UK-based application. This requires a base UK registration. As the UK and BVI are many miles apart on different continents, it can be the case for some trademark owners that the UK is not a market of interest whereas the BVI is, or the UK is covered by a Community Trade Mark (and national protection is not obtained in the UK). However, the UK-based method is currently the only way in which to obtain service mark protection.

The new law will abolish the two ways to register trademarks and consolidate it into one. It will bring in provisions for Certification and Collective marks, allow for priority claims to be made, and provide protection for "well known" marks. The registration term will be reduced to 10 years from 14 years (for local, substantive registrations; UK-based registrations were given registration terms matching their base UK registration).

The International Classification will be used as the former British classification system is replaced in yet another jurisdiction. How reclassification will be managed remains to be seen.

However, should any thoughts be made about taking action before the new trademarks law comes into force? Perhaps, yes. The current official fees are low. The BVI is one of the wealthiest of the Caribbean nations (it's where Sir Richard Branson's Necker Island is) and it's anticipated that official fees will rise and, possibly, quite considerably (they are waiting to be announced).

If you have a UK registration and you need corresponding protection in the BVI, consider filing before 1 September 2015. UK-based registrations are not advertised for opposition purposes so if you file on or after 1 September 2015 when the UK option is removed, your application will be advertised for opposition purposes.

If you file now then you can take advantage of the (probable) lower official fees. However, be sure this is not going to be false economy. Local, substantive applications may require some form of reclassification incurring costs. If an application needs to be filed covering modern goods not well envisaged by the former British classification system then it may also be a good idea to wait until the International classification can be used.

For UK-based applications, check the base UK registration's renewal date. The BVI registration will take this renewal date so if the UK registration is due for renewal in the next few years then so will the BVI registration.

As for renewals, although registrations falling due for renewal on or after 1 September 2015 will be renewed for 10 years, their renewals can be filed now and the current official fees can be taken advantage of.

Trademark matters in the BVI must be handled by resident trademark agents duly registered with the Registry of Corporate Affairs. This is the case currently although I understand the new law will allow them to be more stringent on who they will accept as a resident registered trademark agent. Naturally, I work with local registered trademark agents should you not have one of your own and need any support.

10 June 2015

Trademark Annuities...

In case the title of this blog left you with a quizzical look, no, the title is correct. Those of you that work across intellectual property rights (e.g. in both patents and trademarks) will be familiar with the payment of patent annuities.

However, there's a select group of jurisdictions where annual fees are payable to maintain trademark registrations.

Annual fees make the Cayman Islands one of the most expensive jurisdictions in which to maintain trademark registrations (although recent hikes in the official fees in the UAE and Venezuela means it's not the only place where maintaining a trademark registration can cost a fortune).

The Cayman Islands Registry used to allow representatives from anywhere to attend to matters before them. This changed in 2012 so that a local representative was required. I've previously worked with the local Registry but this change prevented me from doing so directly and therefore being able to maintain trademarks most cost-effectively for clients. Local agents in the Cayman Islands tend to be expensive reflecting the high cost of living there. It is worth considering paying all the annual fees (up to a registration's renewal date) in bulk to reduce the level of professional fees.

It's also worth being 'tactical' and avoiding registering trademarks in December. Annual fees fall due on 1 January each year so if you register in December you'll find yourself with an immediate payment to be made to keep the registration you have only just got in force.

The Cayman Islands are now looking to introduce a fresh trademark law (that removes its dependency on UK or Community registrations). It will be interesting to see how they set their official fees. Annual fees may be abolished but they will need to bring in examiners to handle applications filed under a new substantive trademark law so an increase in initial filing fees and, possibly, renewal fees could be anticipated.

Like the Cayman Islands, the Turks and Caicos Islands are a British Overseas Territory. They also share a need for annual fees to be paid to maintain trademark registrations. With a population roughly half that of the Cayman Islands and an economy that is not as developed, the number of trademarks registered in the Turks and Caicos Islands is a lot less.

Remaining firmly in the Western Hemisphere, Honduras is another country where annual fees are due. Again, I think it's worthwhile considering paying them in bulk up to a registration's renewal date as it can make the management of the registration easier.

Don't confuse these annual fees for Honduras with rehabilitation taxes. These taxes, which are unique to Honduras, are an optional payment. When paid they will protect a registration from being cancelled for non-use. Therefore, you only need to pay them if you're not using a trademark.

Rehabilitation taxes can easily be forgotten about and this is understandable when they are optional and not a mandatory maintenance requirement. They can be paid retrospectively. Therefore, if you have a registration that is vulnerable to cancellation on the grounds of non-use but you wish to file an opposition based on this registration, you would just need to back-pay any rehabilitation taxes prior to filing an opposition to help avoid a counter cancellation action on the grounds of non-use.

So annual maintenance payments to maintain trademark registrations may not be common, but if you help manage trademark renewals or maintenance then be aware that they can crop up from time-to-time. Even if you don't have patents under your responsibilities, you may also come across annual fees/annuities when maintaining design registrations (particularly in countries where the design law is a subset of the patent law) or domain names.

22 March 2015

Hong Kong: expected official fee changes

Hong Kong is expected to make changes to their official fees from 30 March 2015.

Trademark filing fees will go up, whereby renewal fees will go down. Renewal fees for design registrations will also decrease.

What to do?

If you have any new trademark filings, you are advised to get them instructed as soon as possible so you can avail yourselves of the current (lower) official fee.

If you have any trademarks or designs falling due for renewal imminently but from 31 March 2015 onwards, these can be renewed after 30 March to ensure a lower official fee is paid.

For any renewals due from 31 March onwards entrusted to us, we will make conscious efforts to pay the new lower fees. Of course, it might be that the introduction of the fee changes is delayed.