Filing And Prosecution - Overseas

Question 1

What are the different ways for a British applicant to obtain TM protection abroad?

Answer 1

1. international registration under the Madrid Protocol
2. Overseas - National applications filed in a specific, single country
3. Overseas - regional applications e.g. Benelux, OAPI, ARIPO

Question 2

Who may apply for overseas TM applications?

Answer 2

Individuals, partnerships, corporate bodies etc with different nationalities
This will vary on a country by country basis

In some countries you require a ‘home’ registration I.e. for British applicant this would be a UK registration

Some countries need USE or intention to use the TM

Some countries are ‘dependent jurisdictions’ and you must have a registration in another country to obtain registration

Question 3

Examples of UK dependent territories

Answer 3

Gibraltar
Jersey
Kiribati
St Helena
Solomon Islands

Question 4

Examples of ‘optional’ UK dependent jurisdictions

Answer 4

Anguilla, Fiji, Guyana, Montserrat

Not necessary to have UK registration but advantageous, registration then obtained more quickly

When filing usually necessary to provide certified copy of UK registration

Question 5

US dependent jurisdictions

Answer 5

US Virgin Islands
Guam
Puerto Rico

Question 6

French “dependancy”

Answer 6

French Polynesia

Tick box and extra fee if you want to cover French Polynesia

Question 7

Other countries - dependancy?

Answer 7

Most other countries ensure that their TM’s cover all their outlying territories automatically e.g.

Portugal - Madeira, Azores
Spain - Canary Islands

Question 8

Requirement for Local Agent

Answer 8

Most countries have a requirement that a local agent is appointed in their country if you are not from that country
Often someone with certain qualifications, e.g. lawyer, or someone registered to act before the IPO
In some countries address for service required

Question 9

What language(s) should overseas TM applications be filed in?

Answer 9

Need to be filed in a local language of the country

Local agent will normally arrange for necessary translations

Question 10

What types of marks can be registered on an overseas TM application?

Answer 10

Word marks - should be available in all countries
Device (logo/figurative) - should be available in all countries

Local scripts e.g. Chinese, Japanese, Thai etc

Slogans - bit more difficult to register

Non-traditional marks (3D marks, sound marks etc)

Standard marks - typically available everywhere
- service marks (class 35-45) not always available

Certification(quality)/collective(association) marks - often available

Series marks - available in some commonwealth countries or countries with similar legislation to the UK

Defensive marks

Question 11

What are defensive marks?

Answer 11

Marks that have become so well-known for certain goods or services that their use in connection with other goods/services would be likely to indicate a relationship between those other goods/services and the original owner of the trademark may, in some countries, be registered as defensive marks.

BVI, Hong Kong, Japan, Namibia

Question 12

Countries that don’t allow service marks

Answer 12

Bahamas, Fiji, Suriname, Zambia

Question 13

What are cautionary notices?

Answer 13

In some countries without trademark legislation a practice has evolved of putting third parties ON NOTICE of TM rights by publishing them in local newspapers.

Cook Islands, Eritrea, Maldives

Advised to be republished at interval periods

Question 14

How does classification work for overseas TM applications?

Answer 14

Most countries have adopted the NICE classification

In countries without service marks, TM owners often register in class 16 ‘printed matter’ (e.g bc services would be advertised on leaflets etc) or class 9 ‘electronic media’ (advertised online etc)

Some countries multi-class (can file in more than one class), some single class

Alcoholic beverages (class 32/33) not allowed in some Islamic countries

Former British Classification system - only two countries left using - Bahamas, Fiji (no service classes)

Question 15

Is it possible to claim priority on overseas applications?

Answer 15

In most countries possible to claim priority under the Paris Convention
For most countries,needs to be done at filing and cannot be claimed subsequently
(Even for countries which have not signed up to Paris Convention, may be local provisions to allow for it, or WTO trips agreement)

Question 16

How do you obtain a certified copy of UK application? (If this is what you are basing priority on)

Answer 16

Filing a Form TM31R, £20 official fee for each certified copy

(Some countries require this)

Question 17

How do forms work for overseas applications?

Answer 17

Depends country to country

Most application forms normally prepared, signed and filed by local agents

Trend to encourage online filings

May need a PoA which may need to be notarized/legalized

Question 18

What are the fees for overseas applications?

Answer 18

Official fees variable per country and local agents will also have a charge

Countries with online filing facilities often charge less than paper filing

Make client aware that additional costs may be incurred during prosecution stage

Question 19

How does examination work for overseas applications?

Answer 19

Different countries have different laws and examination criteria

Some countries examine for formalities only (i.e have correct forms been filled in/fees paid etc)

Others check specification for clarity and classification

Others examine mark on absolute grounds (i.e. that there is nothing inherent in the mark that makes it unregistrable, descriptive or non distinctive)

Some countries examine on basis of prior rights (relative grounds)

Question 20

How does examination for prior rights work on overseas applications?

Answer 20

Trade Mark Office will check the Registry for any earlier marks for identical or similar goods/services which is deems identical or similar to your application

If it finds any - it will CITE them against your application in an examination report

Question 21

What are the ways in which you can overcome a citation?

Answer 21

1. Successfully argue that the mark and/or goods/services covered by the citation are not similar to your application
2. Obtain a Letter of Consent from the owner of the cited mark that states that they do not object to the registration of your mark (not available in all countries)
3. Purchase the cited mark and then assign ownership of the cited mark to applicant (either partially - for some of the goods/services or fully)
4. Apply to cancel the cited mark (either partially or fully) on grounds of non-use

Question 22

What happens if you cannot overcome the citation?

Answer 22

In most countries it is possible to appeal the decision of examiner

Appeal bodies vary - appellate body of the IPO or courts

If appeal at the court - costs likely to be high

Local agent can advise of likelihood of success of appeal

Question 23

What is the opposition procedure for MOST countries?

Answer 23

Same as the UK

Marks are published after examination for opposition and prior to registration

Question 24

Which countries have an opposition period after formalities but before substantive examination?

Answer 24

Spain and Latin American countries

Question 25

Which countries have their opposition period AFTER the mark has been registered?

Answer 25

Denmark, Finland, Sweden, Germany, Japan

mark is then cancelled if an opposition is successful

Question 26

What happens after publication for overseas applications?

Answer 26

If no opposition then mark proceeds to registration

Certificate of Registration issued - CHECK details and obtain an English translation if necessary

Check renewal date - input details into docketing system

Question 27

How are renewal dates for overseas applications calculated?

Answer 27

Varies country to country

Most countries calculate from the application date (same as the UK), however some use the registration date or the priority date

Dependant jurisdictions take the same renewal date as the base registration

Most countries have 10 year terms (but not all - check local legislation)

Question 28

Examples of countries with different renewal term

Answer 28

Lebanon and Venezuela - 15 year terms

Question 29

What are the use requirements for overseas registrations?

Answer 29

Registrations normally vulnerable to cancellation on the grounds of non-use if they are not used for a certain period of time. This period varies.

Often 3 or 5 years

UK - 5yrs
China - 3yrs

Always check with local agent

Question 30

Benelux

Answer 30

Unitary regional system

Belgium, Netherlands, Luxembourg

(Also covered by an EUTM)

Question 31

OAPI

Answer 31

African Intellectual Property Organisation

Unitary right

Covers 17 countries of mostly central and West Africa, mostly French speaking

Not possible to register TM’s in these individual countries

Question 32

3 members of OAPI

Answer 32

Cameroon,
Central African Republic
Chad

Question 33

ARIPO

Answer 33

African Regional Intellectual Property Organisation

NOT a unitary right - you can pick which countries to designate

Not used much for trademarks

Question 34

Cautionary notice countries

Answer 34

Cook Islands, Eritrea, Maldives