Florence Fenton and Richard Naidu, Munro Leys Introduction Nobody said it was easy to protect your IP rights in the island states of the South Pacific. There are 14 separate states, ranging in population between 1,800 and 5.6 million people. There is no harmonization between their trade-mark, patent, copyright and other IP legislation; some have none at all. They operate with differing levels of efficiency over millions of square kilometers of ocean with communication links of varying quality. In short, running a client portfolio in the South Pacific can be a bit of a nightmare. At last, it seems, the island states of the Pacific Islands Forum (“Forum Island Countries”, or FICs – see table) want to do something about it. They have begun tentative steps towards a regional facility for trademark administration. They are encouraging their members to discuss revising (or in some cases creating) their trade-mark legislation with WIPO. And a draft memorandum of understanding is now in circulation for FICs to consider. These measures are intended, over time, to produce centralized, filing, examination and registration points for trade-mark applicants looking for coverage across the either Pacific Islands Forum region. FICs – the current situation Currently, a trade-mark owner seeking protection in the FICs must file a separate application in each of those countries that it can (in some cases only common law rights apply), meeting a range of different filing requirements and fees and dealing, in most cases, with a range of different trade-mark agents, some legally qualified, some not, and with widely varying standards of efficiency. The legal regimes in each state are significantly different. Those of Papua New Guinea (PNG) follow Australian precedent and are modern and responsive; Fiji’s laws are based on English legislation of early last century. Tuvalu, Kiribati and the Solomon Islands have pre-independence laws requiring first registration in the United Kingdom. The Federated States of Micronesia and Palau have no legislation but are influenced by US law; the Marshall Islands includes English common law among its influences. Only a few FICs – Tonga, Papua New Guinea and the Cook Islands among them – expressly allow for registration of service marks. Tonga, Samoa and PNG use the Nice (international) Classification, while certain other states use the old United Kingdom classes. Most FIC laws are not TRIPS compliant. Administrative systems (other than PNG’s) are poorly resourced. There are few dedicated trade-mark offices. In Fiji, for example, the Registrar of Trade-marks is also the Registrar of Companies, Business Names and Credit Unions. Some national registries are government ministries dealing with commerce and labour issues. Few registries make effective use of information technology – electronic searches are not available anywhere other than PNG. Generally trade-mark and patent registries in the region are given low priority when it comes to government resources. The result of this neglect is slow processing – Fiji’s oppositions backlog, for example, is 10 years – and poor record-keeping, with resulting consequences for enforcement of rights. There are few IP specialists in the FIC region – examiners, lawyers, tribunal staff or judicial officers – who can assist in effectively enforcing rights. Border control systems for IP are virtually non-existent in most FICs. Managing in the current environment Managing a client’s trade-mark portfolio in this environment requires perseverance and practicality. In those states which rely for local registration on prior UK registration (compulsory in some states, optional in others), clients are often best-served to first secure UK registration (which may mean doubling up on the process they have followed to obtain a European Community mark). Service marks have to be protected through ‘back door’ registration in goods categories. There is often a question over cost-effectiveness of enforcement action in small economies (or indeed whether there is a benefit in registering a mark in the first place). In a global market increasingly making use of licensing arrangements, questions frequently arise over the enforceability of IP rights held by licensees. In common law jurisdictions cautionary notice advertisements are one of a limited number of tools for asserting trade-mark rights. With modern trade practices legislation slowly coming into force around the region, it is possible to resort to causes of action based on “misleading and deceptive conduct” and sometimes bypass the difficulties created by poor trade-mark administration. The future The recent meeting of FIC trade ministers in Vanuatu has acknowledged the importance of co-operation between FICs in the IP area as critical to the region’s economic development. Most of the FICs are mini or micro states in a global context; they run the risk of being ignored altogether. Integrating a series of national systems into a regional one is never easy. Each state has its own territorial interests to protect in terms of sovereignty, IP policies and income. One of the dangers of centralizing regional IP services is that it strips each FIC of the few professional IP skills it now retains and inhibits future development, making more difficult the enforcement of IP rights in a single FIC market (at least until the region develops unified laws or even court systems). In trying to balance these competing interests, the FICs have agreed to: seek support from WIPO and IP Australia to help FICs develop their IP legislation and infrastructure support further development of a Pacific Regional Trademark Application System (PRTAS). The PRTAS envisages (one day): applicants being able to secure regional trade-marks by filing a single application (probably in one of several FICs) a single process of checking the application against the different filing requirements in the FIC region (which, it is hoped, would become more uniform over time) a central examination point the grant of a ‘regional mark’. A draft Memorandum of Understanding (not yet officially released) is now in circulation between the FICs. As well as the larger issues of principle it covers the selection of receiving offices for applications, examination and priority issues, approved forms, fees, time periods, classification and other formalities in relation to potential regional marks. Conclusion The FICs have finally recognized at government level the growing importance of intellectual property and the need to improve the regulatory environment in the region for owners of trade-marks and other IP rights. This recognition is long overdue, in a region of small states with no harmonization of IP regimes. In the long run, trade-mark owners hesitant about negotiating their way through the maze of different IP legislation and compliance in these small countries may be able to access a ‘one-stop shop’ to protect their rights in the entire region. This would enhance their interests and the reputations of FICs as states that respect and enforce IP rights.
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