Filing And Prosecution - Overseas Flashcards
What are the different ways for a British applicant to obtain TM protection abroad?
- international registration under the Madrid Protocol
- Overseas - National applications filed in a specific, single country
- Overseas - regional applications e.g. Benelux, OAPI, ARIPO
Who may apply for overseas TM applications?
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
Examples of UK dependent territories
Gibraltar
Jersey
Kiribati
St Helena
Solomon Islands
Examples of ‘optional’ UK dependent jurisdictions
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
US dependent jurisdictions
US Virgin Islands
Guam
Puerto Rico
French “dependancy”
French Polynesia
Tick box and extra fee if you want to cover French Polynesia
Other countries - dependancy?
Most other countries ensure that their TM’s cover all their outlying territories automatically e.g.
Portugal - Madeira, Azores
Spain - Canary Islands
Requirement for Local Agent
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
What language(s) should overseas TM applications be filed in?
Need to be filed in a local language of the country
Local agent will normally arrange for necessary translations
What types of marks can be registered on an overseas TM application?
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
What are defensive marks?
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
Countries that don’t allow service marks
Bahamas, Fiji, Suriname, Zambia
What are cautionary notices?
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
How does classification work for overseas TM applications?
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)
Is it possible to claim priority on overseas applications?
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)
How do you obtain a certified copy of UK application? (If this is what you are basing priority on)
Filing a Form TM31R, £20 official fee for each certified copy
(Some countries require this)
How do forms work for overseas applications?
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
What are the fees for overseas applications?
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
How does examination work for overseas applications?
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)
How does examination for prior rights work on overseas applications?
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
What are the ways in which you can overcome a citation?
- Successfully argue that the mark and/or goods/services covered by the citation are not similar to your application
- 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)
- Purchase the cited mark and then assign ownership of the cited mark to applicant (either partially - for some of the goods/services or fully)
- Apply to cancel the cited mark (either partially or fully) on grounds of non-use
What happens if you cannot overcome the citation?
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
What is the opposition procedure for MOST countries?
Same as the UK
Marks are published after examination for opposition and prior to registration
Which countries have an opposition period after formalities but before substantive examination?
Spain and Latin American countries
Which countries have their opposition period AFTER the mark has been registered?
Denmark, Finland, Sweden, Germany, Japan
mark is then cancelled if an opposition is successful
What happens after publication for overseas applications?
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
How are renewal dates for overseas applications calculated?
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)
Examples of countries with different renewal term
Lebanon and Venezuela - 15 year terms
What are the use requirements for overseas registrations?
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
Benelux
Unitary regional system
Belgium, Netherlands, Luxembourg
(Also covered by an EUTM)
OAPI
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
3 members of OAPI
Cameroon,
Central African Republic
Chad
ARIPO
African Regional Intellectual Property Organisation
NOT a unitary right - you can pick which countries to designate
Not used much for trademarks
Cautionary notice countries
Cook Islands, Eritrea, Maldives
