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Latest News: 09-20-2017 (Newsletter Issue 16/17)
Transitional Provisions Regulations in Cayman Islands Issued
The Cabinet of the Cayman Islands issued the Trade Marks (Transitional Provisions) Regulations, 2017 (the “Transitional Provisions”) on July 28, 2017. The Trade Marks Law, 2016 was passed in November of last year and went into effect on August 1, 2017.

The Registrar must automatically transfer marks currently registered under the 2011 Law to the Register established by the 2016 Law. These marks will continue as registered until their renewal dates as established under the 2011 Law (i.e., the renewal dates of the UK registration, EUTM, or International Registration used as their basis). Disclaimers, conditions, and restrictions remain with the transferred marks. Pending applications for registration made before August 1, 2017 will be treated as a registration under the 2011 Law. Such marks will then automatically become a part of the new Register as described above.

For further information, please read the article of our Partner Caribbean IP here

Source: Caribbean IP, USA


Latest News: 07-25-2017 (Newsletter Issue 14/17)
Business Guidance for IP (Unjustified Threats) Act Now Published
The UK Intellectual Property Office (IPO) informs that the Intellectual Property (Unjustified Threats) Act received Royal Assent on April 27, 2017. A Commencement Order is required for the Act’s measures to be brought into force which is expected to take place on October 1, 2017.

The Act will make the law of unjustified threats more easily navigable for rights holders, professional advisers and third parties alike.

IPO has now published a business guidance on the Intellectual Property (Unjustified Threats) Act 2017. The guidance sets out the changes that have been made to the legal framework, and the expected impacts on IP rights holders, and third parties, as well as businesses, including legal services.

The business guidance can be accessed here

Source: www.gov.uk


Latest News: 06-14-2017 (Newsletter Issue 11/17)
New Trademark Laws in the Cayman Islands Effective on August 1,2017
The new Trade Marks Law 2016 will be implemented in the Cayman Islands on August 1, 2017.

The current law provided only for the registration of trademarks previously registered in the UK, or as a European Union Trademark, or as an International Registration designating UK, which results in extension of identical rights in Cayman with no provision for opposition.

The new Law will make it possible for trademark proprietors to file for trademark protection without the need to re-register a UK or EUTM registration in the Cayman Islands.

Cayman trademark registrations based on UK/EU trademark registrations will continue to have effect until the next renewal/expiry date and will fall due for renewal on the same date as the underlying UK/EU trademark.

Future trademark renewals can be made independently. The renewal period of marks filed under the new law will be 10 years from the date of filing.

For further information, please check the article from Ms Sophie Davies from HSM IP, Cayman Island, which can be accessed here

Also detailed and updated information on the Cayman Islands can be seen in our guide on Dependent Territories here

Source: HSM IP, Cayman Islands and Caribbean IP, USA


Latest News: 05-26-2017 (Newsletter Issue 10/17)
Accession to Hague Agreement Expected
The United Kingdom Minister for Intellectual Property has recently stated that the UK will ratify and join the Hague Agreement for International Design registrations by March 31, 2018. The service is due to come into operation on April 6, 2018. Currently, UK-based applicants are able to apply for an International Design by virtue of the UK being part of the EU. This separate ratification by the UK will ensure that UK-based applicants will continue to be able to file International Design registrations after the UK leaves the EU.

Under the Hague Agreement it is possible to submit a single ‘International’ design application which covers selected states that are members of the Hague Agreement. By virtue of the UK joining the Hague Agreement, the UK will also be individually selectable from April 2018 as a designated state rather than only via an EU designation.

Source: Boult Wade Tennant, United Kingdom


04-12-2017 (Newsletter Issue 7/17)
White Paper on Great Repeal Bill Published
In March 2017 the Prime Minister formally started the process of the United Kingdoms’ withdrawal from the European Union (EU). The government has published a White Paper on the Great Repeal Bill. This will provide legal certainty by converting the body of existing EU law into United Kingdom (UK) law.

EU Trademarks (EUTM) continue to be valid in the UK while the country remains a full member of the EU. When the UK leaves the EU, a EUTM will continue to be valid in the remaining EU member states.

When the UK has left the EU, UK businesses will still be able to register an EU trade mark, which will cover all remaining EU Member States.

With regard to International Registrations UK businesses will continue to have access to the Madrid System when looking to protect their trademarks.

IPO informs that inquiries can be sent EUenquiries@ipo.gov.uk.

Source: www.gov.uk


03-29-2017 (Newsletter Issue 6/17)
Guide on Registered Designs Examination Practice Introduced
The UK Intellectual Property Office (IPO) introduced on its website the guide on registered designs application and examination practice.

The guide explains the Intellectual Property practice under the Registered Designs Act 1949 and the Registered Design Rules 2006. It provides guidance on how design applications are examined in respect of national applications filed at IPO. Its aim is to ensure consistency of approach in respect of decisions made by the Registrar of Designs, and to provide guidance on examination practice and procedures for those seeking to register their designs.

For more information, please click here

Source: www.gov.uk


01-11-2017 (Newsletter Issue 1/17)
IP Laws Passed in Cayman Islands
On November 16, 2016, the Cayman Islands Government passed two IP laws: The Design Rights Registration Law, 2016 and The Patents and Trade Marks (Amendment) Law, 2016. Copies of the laws were published with Gazette No. 25 dated December 5, 2016.

The new Trade Marks Law has also been approved by Government and is expected to be published shortly on or before April 1, 2017.

The impact of The Design Rights is that the new law provides owners of original UK registered designs (UKRD) and registered Community designs (RCDs) with the opportunity to extend their rights to the Cayman Islands. The extension / re-registration process affords the owner with all the equivalent rights and remedies available to them in respect of that design right in the UK. The Cayman Islands does not have its own unregistered design right regime, so protection should be sought through the registration process.

The primary purpose of The Patents and Trade Marks (Amendment) Law is to essentially strip out all references to “trademarks” in the existing Patents and Trade Marks Law in order to make way for the new Trade Marks Law expected to come into force in 2017. Whilst under the new Trade Marks Law only national trade mark applications will be accepted in the Cayman Islands, the Patents law will continue only to provide for the re-registration/extension of UK Registered Patents to Cayman; there is no national registration route.

For more information, please see the article of the law firm HSM IP Ltd here

Source: HSM IP, Cayman Islands


11-22-2016 (Newsletter Issue 21/16)
Appearance of UKIPO Digital Services Changed
The UK Intellectual Property Office (UKIPO) informed that two trademark services have been changed as of a consequence of the ongoing work of the digital services.

The changes are to improve the appearance of these services which include the
- response to trademark examination letter
- response to Right Start trademark examination letter

The changes have taken place on November 3, 2016.

Source: www.gov.uk


10-12-2016 (Newsletter Issue 18/16)
Major Changes to IP Laws in Cayman Islands Soon
Three new intellectual property (IP) laws concerning trademarks, patents and designs were published in the Cayman Islands on August 31, 2016. These laws will come into force on a date to be announced. They will have a significant impact, especially on trademark and design protection. The laws are:

- The Trade Marks Bill 2016
- The Design Rights Registration Law 2016
- The Patents and Trade Marks (Amendment) Bill 2016

Presently, the only way of getting IP protection in the Cayman Islands is through the extension of UK registrations, and there is only provision for patent and trademark rights. The new laws will:
- Create a system of direct trademark registration in the Cayman Islands
- Create a system for the extension of UK design registrations
- Bring about some minor amendments to the existing system of extending UK patents

The bill on trademarks creates an independent trade mark registration system. Other interesting features of the bill are:
- There is a requirement that a proprietor must appoint an agent;
- The term ‘trade mark’ is defined in fairly broad terms to include words, designs, numerals, letters and shapes of goods or their packaging;
- There is provision for the registration of ordinary trademarks, as well as certification marks and collective marks;
- There are absolute and relative grounds of refusal;
- The registration and renewal terms are 10 years;
- An annual maintenance fee is payable;
- There are various offences relating to trademark infringement, and these carry hefty fines and prison terms;
- There are specific provisions regarding counterfeiting - for example, the registered proprietor can give notice to the Collector of Customs of suspected infringing goods that are expected to arrive in the Cayman Islands and, provided that the proprietor furnishes the necessary fees and security, the officials will impound the goods and the goods will be forfeited;
- Regulations can be passed and these can relate to the continued application of the Patents and Trade Marks Law of 2011 - presumably the Regulations will explain how existing registrations (UK extensions) will be treated.

For more information, please click here

Source: Spoor & Fisher, South Africa/Channel Islands


09-28-2016 (Newsletter Issue 17/16)
Filing of International Trademark Applications by Email
The UK Intellectual Property Office (UKIPO) announced that it is now possible to file international trademark applications electronically as from September 26, 2016, by using the following email address Internationaltrademarks@ipo.gov.uk

The Office encourages applicants to use the UKIPO version of the MM2. The MM17/MM18 will be accepted if filed with the MM2. No other forms or correspondence should be emailed to the above mentioned address.

An updated version of the UKIPO’s form MM2 'Application to register an International trade mark' is available here

Source: www.gov.uk


09-28-2016 (Newsletter Issue 17/16)
Fees for Designs Reduced Soon
The UK Intellectual Property Office (UKIPO) has changed fees for UK registered design protection. The new fees will come into force on October 1, 2016.

The fee reductions will be substantial. Filing fees will be based on the number of applications filed; the more applications, the greater the saving. For example, the fee for filing one design application will be reduced from £60 to £50 when filed electronically which is not a great saving. However, applicants can now for the first time file up to ten designs for a single fee of £70 (currently £420) and up to 20 designs for a single fee of £90 (currently £820).

Renewal fees will increase every five years of the term of protection but, overall, will also be reduced, with the biggest savings made in the third and final renewal periods. For example, the renewal fee payable at the end of year 15 will be £110 compared with the current £310 (a 64% reduction). At year 20, the fee will be £140 instead of the current £450 (a 69% saving). Overall, the total renewal fees for a full 25 year term will be reduced by 63% from £1,100 to £410.

For further information, please check here

Source: www.gov.uk and Squire Patton Boggs (UK) LLP, UK


07-12-2016 (Newsletter Issue 13/16)
All EU Laws Fully in Force
EUIPO informs that the United Kingdom remains a member of the European Union, with all the rights and obligations that derive from this. According to the Treaties which the United Kingdom has ratified, EU law continues to apply to the full to and in the United Kingdom until it is no longer a member.

Unless and until the process in article 50 of the Lisbon Treaty is triggered by the United Kingdom, the formal process for the United Kingdom to exit the EU will not commence. The negotiations once article 50 has been triggered will last up to two years, longer if agreed by the consent of all member states.

To access the statement, please click here

Source: www.euipo.europa.eu


06-14-2016 (Newsletter Issue 11/16)
Changes to Annual Fee Payment in Cayman Islands
The General Registry of the Cayman Islands recently announced that it will prohibit advance payment of annual fees. Practice Note No. 01/2016, which goes into effect on August 1, 2016, requires all trademark and patent annual fee payments to be made on or after January 1 of the year in which they are due. A penalty has applied and will continue to apply for fees paid after 31 March.

In the past, it has been commonplace to pay annuities well ahead of time, including for years in advance or up to the next renewal date. Mark holders will lose that option when the Practice Note goes into effect. Clients wishing to take advantage of prepayment of annuities must act to do so before the end of July 2016.

Source: Caribbean IP, USA


09-02-2015 (Newsletter Issue 13/15)
New Trade Marks Act Now Effective in British Virgin Islands
The Trade Marks Act, 2013 came into force in the British Virgin Islands on September 1, 2015. The new Act replaces the Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946.

There are several additional features of the new law. Most significantly, it will abolish the dual filing system. It will no longer be possible to register marks in the British Virgin Islands on the basis of an existing United Kingdom registration.

The main features of the new law include:
- Provision for service marks
- Provision for defensive marks, series marks, certification and collective marks
- Adoption of the 10th Edition of the Nice classification
- Provision for multi-class registration
- Protection for well-known marks
- Definition of a registrable trade mark broadened to include any sign that is capable of being registered graphically (including brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, ticket or word and numeral, as well as “non-traditional” sound, taste and scent marks)
- Priority may be claimed under the provisions of the Paris Convention
- Renewal period revised from 14 to10 years
- Provision for removal after three years’ non-use
- Provision for recordal of licences
- Provision for recordal of assignments without goodwill
- Compulsory preliminary searches (under review)

Transitional provisions:
- Independent and UK-based registrations filed before September 1, 2015, will remain valid under the new law
- Independent and UK-based applications which were pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
- The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)
- Existing independent registrations will need to be re-classified from the old British to the Nice classification (procedure to be confirmed)

Further, a new scale of official fees has been introduced.

Source: Spoor & Fisher, South Africa/Channel Islands


07-28-2015 (Newsletter Issue 12/15)
New Trade Marks Act in Cayman Islands Soon
A new Trade Marks Act is in the process of being finalized in the Cayman Islands. It is anticipated that the new law will be passed and implemented by September 2015.

The new law will make it possible for trade mark proprietors to file for trade mark protection in the Cayman Islands directly. Currently, it is only possible for proprietors to gain trade mark protection in the Cayman Islands by way of an application to extend an existing UK or Community trade mark registration. This can be a costly and time consuming process, particularly for proprietors who have no desire or need to maintain trade marks in the UK and/or EU.

The new law provides for a full examination and opposition process, as well as modern trade mark infringement provisions and effective remedies.

Source: HSM IP, Cayman Islands


07-14-2015 (Newsletter Issue 11/15)
Amendments of the New Trade Mark Act in British Virgin Islands
Major changes are about to take place in the IP regime of the British Virgin Islands, when the Trade Marks Act, 2013 (passed by the House of Assembly on April 30, 2013) comes into force on September 1, 2015.

The new Act will replace the Trade Marks Act (Cap.158) of 1887 and the United Kingdom Trade Marks Act (Cap.157) of 1946, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in British Virgin Islands on the basis of an existing United Kingdom registration.

For trade mark owners to benefit from the existing provision that permits the “fast-track” extension of a United Kingdom national right to the British Virgin Islands , a UK-based application should be filed in good time before the present legislation is repealed and that option ceases to exist.

The main features of the new law include:
- Provision for service marks
- Provision for defensive marks, series marks, certification and collective marks
- Adoption of the 10th Edition of the Nice classification
- Provision for multi-class registration
- Protection for well-known marks
- Definition of a registrable trade mark broadened to include any sign that is capable of being registered graphically (including brand, colour, device, figurative element, heading, label, letter, name, numeral, shape, signature, ticket or word and numeral, as well as “non-traditional” sound, taste and scent marks)
- Priority may be claimed under the provisions of the Paris Convention
- Renewal period revised from 14 to 10 years
- Provision for removal after three years’ non-use
- Provision for recordal of licences
- Provision for recordal of assignments without goodwill
- Compulsory preliminary searches (under review)

Transitional provisions:
- Existing independent and UK-based registrations will remain valid under the new law
- Existing independent and UK-based applications which are still pending at the time of the implementation of the new law will be finalised under the provisions of the repealed law
- The 14-year renewal term will continue to apply to independent registrations filed under the repealed law (the 10-year term already applies to UK-based registrations)
- Existing independent registrations will need to be re-classified from the old British to the Nice classification (procedure to be confirmed)

A new scale of official fees is being introduced. This is currently under review, and should be in place by the time the new law takes effect.

Source: Spoor & Fisher, South Africa/Channel Islands


06-16-2015 (Newsletter Issue 9/15)
New Trade Mark Act in British Virgin Islands
On September 1, 2015, the British Virgin Islands’ new Trade Marks Act, 2013 and Trade Marks Rules, 2015 will go into effect, ending the dual filing system currently in place for trademarks. Once the new laws go into effect, it will no longer be possible to register marks in British Virgin Islands on the basis of an existing United Kingdom registration.

For many years, this has been a relatively fast track to registration for UK mark owners. For trademark owners without an existing UK registration, the current regime requires application within the local system. At present, the local system allows new filings for goods only, and all goods must be classified according to the British classification system.

Long outdated, this classification system does not afford adequate protection for many mark owners. Under the new regime, all applications will be made within the local filing system, and finally it will be possible to register both goods and services according the International Classification system. New fees have not yet been set but should be determined before the implementation of the new trademark laws.

Source: Caribbean IP, USA posted on www.iptango.blogspot.de


09-02-2014 (Newsletter Issue 13/14)
Changes to Design Law
The UK Intellectual Property Act has received Royal Assent. Some of the most interesting changes relate to design law. These include the introduction of criminal sanctions against blatant copying of UK registered designs in the course of business, cheaper options for appeals from decisions of the UK IPO on registered designs, consistency with EU design law on matters such as ownership and prior user rights, and the provision of a UK IPO opinions service on designs, to supplement the existing service relating to patents.

Whilst the Act is now officially law, most provisions will not come into force until 1 October 2014, whilst others will take effect in 2015.

For further information, please see the article on 'UK IP law gets a makeover' from Barker Brettell LLP here.

Source: www.barkerbrettell.co.uk


07-22-2014 (Newsletter Issue 12/14)
No Re-Introduction of Fast Track Examination
The Intellectual Property Office (IPO) has published the Government response to the consultation on whether to re-introduce the fast track examination for UK trademarks.

The Government decided not to reinstate the fast track service after the outcome of the consultation due to the lack of demand amongst users of the system. The responses that were received outlined that users are content with the routine examination procedure, and associated timescale, which is currently offered by the Office.

To access the response document, please click here

Source: www.gov.uk


03-18-2014 (Newsletter Issue 5/14)
IPO Joins Similarity
The UK Intellectual Property Office (IPO) has joined the Similarity tool.

Similarity is a common database of comparisons of goods and services that allows users to assess whether given goods or services are considered similar or dissimilar – and to what degree – according to the practice of the participating IP offices. Similarity benefits users by bringing more transparency to the decision-taking process of EU national offices and OHIM. Similarity also improves the predictability of opposition decisions.

Source: www.tmdn.org


03-04-2014 (Newsletter Issue 4/14)
Fast Track Examination Consultation Open
The Intellectual Property Office (IPO) has informed its users about a new public consultation on whether there is a need to re-introduce the fast track examination procedure.

The fast track examination service of trade marks came into effect in April 2008 and was suspended in 2009, due to a combination of low take up and the short time to examination using the standard procedure, at that time. In late 2012 the idea of reintroducing the service was raised but, since then, circumstances have changed and the introduction of a new IT processing system in early 2013 has meant that examination periods using the standard procedure are again very short.

For further information, please check here. Comments can be sent to 'fasttrackresponse@ipo.gov.uk' until 15 April 2014.

Source: www.ipo.gov.uk and www.gov.uk


02-04-2014 (Newsletter Issue 2/14)
New Practice to Trademark Proceedings
The United Kingdom Intellectual Property Office (UKIPO) has issued a new Tribunal Practice Notice (TPN 1/2014) relating to the relevance of colour to a mark registered in black and white but used extensively in a particular colour or colours.
For more information on the new Tribunal Practice Notice please click here

Source: www.ipo.gov.uk


12-03-2013 (Newsletter Issue 17/13)
Trade Marks (Isle of Man) Order 2013 in Force
The Trade Marks (Isle of Man) Order 2013 from 9 October 2013 has been in force since 11. November 2013.
This Order modifies the Trade Marks Act 1994 in its application to the Isle of Man. It replaces the Trade Marks Act 1994 (Isle of Man) Order 1996 (S.I. 1996/729) as amended, and makes additional modifications to correspond to the amendments made to the Act (as it has effect in the United Kingdom) by the Trade Marks (International Registrations Designating the European Community, etc.) Regulations 2004 (S.I. 2004/2332), the Serious and Organised Crime and Police Act 2005 (c.15), the Intellectual Property (Enforcement, etc.) Regulations 2006 (S.I. 2006/1028), the Trade Marks (Earlier Trade Marks) Regulations 2008 (S.I. 2008/1067) and the Legal Services Act 2007 (Functions of an Approved Regulator) Order 2009 (S.I. 2009/3339).

For more information, please check The Trade Marks (Isle of Man) Order 2013

Source: www.legislation.gov.uk and Squire Sanders (UK) LLP, UK


10-01-2013 (Newsletter Issue 14/13)
New Fast-Track TM Opposition Procedure
The Trade Mark Rules 2008 has been amended to provide for an additional fast track opposition procedure under the Trade Mark Act 1994. The new procedure is available from October 1, 2013.

The main points of the new fast-track opposition are as follows:
- The opposition is based solely on relative grounds under sections 5(1) and/or 5(2) of the Trade Marks Act 1994, namely that the opponent owns an earlier trade mark application or registration protecting a trade mark that is either identical or similar to the applied for mark and, except in cases of double identity, there exists a likelihood of confusion between the marks. The fast track procedure will not be available in cases where the opponent seeks to rely upon alternative grounds. The number of earlier marks which can be relied upon in a fast-track opposition is limited to three UK or Community marks.
- Where a fast-track opposition is based on a trade mark registration that was more than 5 years old at the date of publication of the application under opposition, proof of use of the earlier registered mark must be filed with the Opposition. Where the requirements of a fast-track opposition in this regard are not met but the requirements of a conventional opposition are, the registrar shall have discretion to treat a fast-track opposition as a conventional opposition.
- Leave must be obtained to file any evidence other than the Proof of Use submitted with the opposition.
-The official fee for the filing of a fast track opposition is £100. The official fee for a conventional opposition is reduced to £100 from October 1, 2013, provided that the opposition is based only on sections 5(1) or 5(2) of the Act.
- Provision will be made for an oral hearing where requested by either party and deemed appropriate by the Hearing Officer, or where initiated by a Hearing Officer. Hearings may be conducted by telephone rather than in person.

It is expected that the fast track opposition proceedings lasts approx. 6 months in contrast to the 12-18 month duration of standard opposition proceedings.

For more information, please check The Trade Marks (Fast Track Opposition) (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment No. 2) Order 2013

Source: Dehns Patent and Trade Mark Attorneys, UK;
www.ipo.gov.uk and www.legislation.gov.uk


07-01-2013 (Newsletter Issue 10/13)
Accession to Vienna Classification
The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the United Kingdom of Great Britain and Northern Ireland, on 11 June 2013, of its instrument of accession to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, done at Vienna on June 12, 1973, as amended on October 1, 1985.

The said instrument of accession contains a declaration that the United Kingdom of Great Britain and Northern Ireland intends to avail itself of the reservation provided for in Article 4(5) of the Agreement.

The said Agreement will enter into force, with respect to the United Kingdom of Great Britain and Northern Ireland, on 11 September 2013 and can be entered here

Source: www.wipo.int


04-15-2013 (Newsletter Issue 5/13)
New TM Law in VG Expected
The publication of the Proclamation in the Government Gazette to implement the new Trade Marks Act, 2013 is expected. This will repeal the Trade Marks Act (Cap. 158) and the Registration of United Kingdom Trade Marks Act (Cap. 157).

Once the new Act is effective, the existing ‘dual’ registration system, which provides for the filing of either independent or UK-based applications, will be replaced by a single system for filing independent registrations.

In brief, the following changes are expected:
- Provision for the registration of service marks
- Provision for the registration of collective and certification marks
- Adoption of the Nice Classification (10th Edition)
- Revision of the renewal term from 14 to 10 years

Source: Spoor & Fisher, South Africa


04-15-2013 (Newsletter Issue 5/13)
Consultation for Fast Track Opposition Procedure
The Intellectual Property Office (IPO) has today launched a public consultation on the introduction of

1) an opposition ‘fast track’ procedure within the Trade Mark Tribunal, and
2) a refundable appeal fee for inter partes appeals to the Appointed Person

The consultation seeks views on the appropriate procedural changes and closes on 17 May 2013.

Through the fast track procedure business can oppose the registration of new trade marks if the mark appears to be the same as, or too similar to their own existing mark.

The fast track seeks to improve access to opposition proceedings by reducing the cost, complexity and increasing the speed at which business can protect their trade mark rights.

For more information, please click here

Source: www.ipo.gov.uk



04-02-2013 (Newsletter Issue 4/13)
Time Periods/Opposition Periods Changed
The United Kingdom Intellectual Property Office (UKIPO) announced that the Trade Marks and Registered Designs (Amendment) Rules 2013 and The Trade Marks (International Registration) (Amendment) Order 2013 came into force on 31 March 2013.

In terms of the amendment to the opposition period, this applies to any period that was still open on or after 31 March 2013. This means that for any UK trade mark application or UK designation of an IR that is published on 1 February 2013 or afterwards, the opposition period lasts for 2 months gross (ie: a trade mark application published on 1 February is be open to third party opposition until 1 April 2013 - instead of 31 March 2013 under the old regime).

For further information, please click here

Source: Squire Sanders (UK) LLP, UK


04-02-2013 (Newsletter Issue 4/13)
Online Services Enhanced
On 2 April 2013, the IPO implements enhancements to its online trade mark services. This includes improvements to the online trade mark application, online trade mark renewals, e-correspondence, and the trade marks journal.

Full details can be viewed here

Source: Squire Sanders (UK) LLP, UK


02-18-2013 (Newsletter Issue 2/13)
Changes to Trademark Services Soon Active
The United Kingdom Intellectual Property Office (UKIPO) announced that their new IT system for processing trademarks is going to be implemented in February 2013. The new system will increase the processing efficiencies and introduce some customer enhancements. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.

For further information and full details, please click here

Source: www.ipo.gov.uk


02-18-2013 (Newsletter Issue 2/13)
Protection for Person's Personality in Guernsey
On 3 December 2012 new legislation came into force in Guernsey allowing the protection of ‘personality’ and ‘image’ rights as new forms of intellectual property.

Any natural persons (alive or dead within the last 100 years), legal persons, joint or group personalities and even fictional characters can have their ‘personality’ registered and any photos, moving images, names, signatures, appearances, expressions, voices, likenesses, gestures or mannerisms can also qualify for protection via association or registration as ‘images’.

Source: www.ipo.guernseyregistry.com and Schillings, Uk


11-19-2012 (Newsletter Issue 17/12)
New Trade Mark Law in Montserrat
The implementing Regulations for the Trademarks Act (Cap15:23) 2002 came into effect in Montserrat on 1 November 2012.

Under the new Act, the ‘dual’ registration system which provides for the filing of either independent or UK-based applications remains in place. The changes primarily affect independent applications (bringing them into line with UK-based applications). Some of the changes are:

- Provision for the registration of service marks
- Provision for the registration of collective, certification and series marks
- Adoption of the Nice Classification (10th Edition) (replacing the old British Classification of 50 classes)
- Provision for the recordal of licences
- Revision of the renewal term from 14 to 10 years
- General increase in the official fees

Source: Spoor & Fisher, South Africa/Channel Islands


10-16-2012 (Newsletter Issue 15/12)
New Requirements for Merging TMs
In 2010, the UK IPO launched a public consultation which proposed changes to laws governing the merging of trademarks. As a result of this consultation, new requirements for the merging of trademarks have now come into force.

With effect from October 1, 2012, any request for a merger must now meet the following requirements:
- The trademarks must have the same filing date.
- The trademarks must be registered.
- None of the trademarks intended for merger is subject to cancellation proceedings.
- None of the trademarks intended for merger is the base for an international registration still within the 5 year dependency period.

The new form TM17 is available since October 1, 2012 and can be accessed here. The old form TM17 will be rejected by the IPO after December 31, 2012.

For more information of the merger changes please click here

Source: www.ipo.gov.uk


09-27-2012 (Newsletter Issue 14/12)
New Trademark Act in Grenada Introduced
The Trademarks Act of 2012 has now come into effect and replaces the Registration of United Kingdom Trade Marks Act Cap 284 of 1939. Under the new Act the UK-based system has been abolished, and there is only provision for independent registration.

Under the transitional provisions existing UK-based registrations shall continue to have effect as if registered under the new Act.

Source: Spoor & Fisher, British Isles


07-30-2012 (Newsletter Issue 12/12)
Changes to Trademark Services
The United Kingdom Intellectual Property Office (UKIPO) is implementing a new IT system for processing trademarks in order to increase its processing efficiencies and introduce some customer enhancements including more user friendly access to information and web services. Changes are to be implemented in two phases, with approximately a 6 week gap between the phases.

Phase 1
- Notice of Threatened Opposition: New layout e-form TM7A which should be used for filing notices of threatened opposition.
- Notice of Opposition and Statement of Grounds: New layout of form TM7 and available in PDF fillable format.
- New Style Journal: International UK designations and UK applications will be integrated and published in one Journal. The Journal numbering will change (to reflect week and year).
- New Style Examination Report: For International UK designations, taking into account feedback from customers.

Phase 2
- 'Ecaveats' Changes to 'eAlerts': eAlerts has enhanced features allowing customers to monitor the progress or status of a trade mark by requesting alerts for specific events all FREE of charge. This service is also available for International Registrations designating the UK.
- Trade Mark e-Renewal: A new ‘e’ trade mark service for fast, efficient online renewal and payment, using form, eTM11. The service provides timely email receipt acknowledgements, with the Certificate of Renewal emailed as a PDF attachment once payment has cleared.
- Trade Mark e-Application: Some of the changes include i.e. a more user friendly language and better examples to aid customer completion as well as a goods and services classification search tool located within the application process.

For further information and full details, please click here

Source: www.ipo.gov.uk


05-29-2012 (Newsletter Issue 9/12)
Ratification of Singapore Treaty
United Kingdom of Great Britain and Northern Ireland ratified to the Singapore Treaty on March 21, 2012.
In conformity with Article 28(3), the said Treaty will enter into force on June 21, 2012.

Source: www.wipo.int


05-02-2012 (Newsletter Issue 7/12)
New Practice in Trademark Proceedings
The United Kingdom Intellectual Property Office (UKIPO) has issued a new Tribunal Practice Notice (TPN) relating to the submission of survey and expert witness evidence in UKIPO trade mark proceedings:

This practice notice gives notice that survey evidence and expert witness evidence can only be adduced into trade mark proceedings before the Intellectual Property Office with the permission of the hearing officer. It sets out the criteria which will need to be satisfied for such evidence to be adduced and the nature of that evidence.

The new TPN will be in force on July 16,2012.

For more information, please click here

Source: www.ipo.gov.uk


04-17-2012 (Newsletter Issue 6/12)
Change of Address of UKIPO
The Intellectual Property Office London will be located at a new address as of May 21, 2012.

Normal business will be unaffected but any filing of documents after 11.59 p.m., May 20, 2012 should be at the new address:
1st Floor
4 Abbey Orchard Street
London, SW1P 2HT

There will be no change to the telephone numbers for the office.

Source: www.ipo.gov.uk


02-21-2012 (Newsletter Issue 3/12)
Requirement for Local Agent in Cayman Islands Postponed
Although the new Patents and Trade Marks Law, 2011, came into force on December 7, 2011, the Government has now passed the Patents and Trade Marks (Transitional Provision) Regulations which provide that the date for implementation of the requirement to use a local registered agent will be postponed until March 31, 2012.

The Registry will cease to accept instructions from overseas agents or proprietors of patents and trade marks on April 1, 2012. Please see newsletter issue 1/12 for more information on the new law.

The reason for this short postponement is that the regulations which make provision for the application process for registered agents, namely the Patents and Trade Marks Regulations, 2012, (“the Regulations”) were just recently passed on February 3, 2012, some time after the implementation of the Law.

Source: Appleby Intellectual Property, UK


01-23-2012 (Newsletter Issue 1/12)
New Patents and TM Law in Cayman Islands
The new Patents and Trade Marks Law 2011 took effect in the Cayman Islands on December 7, 2011.

Following amendments can be reported:
- A registered agent is now required: Proprietors of patents and trade marks can now only transact business with the Registry of Patents and Trade Marks in the Cayman Islands via a registered agent who must be resident in the Cayman Islands.
- Certificates of Good Standing will now be available: The new legislation provides that the Registry, upon request by a registered agent, may issue a certificate of good standing to evidence that a patent or trade mark has been recorded in the Cayman Islands and that all applicable fees have been paid.
- Annual fees and penalty fees: The new legislation provides that if the annual fee is not paid by March 31 of the relevant year, the right protected will be held in abeyance from April 1 until the annual fee and penalty fee is paid. A penalty is payable when the annual fee is paid after March 31. It should also be noted that in the event that an annual fee and the applicable penalty fee is not paid for more than twelve months, the patent or trade mark in question may be cancelled by the Registrar.
- Renewal of expired patents or trade marks: Proprietors should also be aware that whilst their registered agent may apply for an expired patent or trade mark to be renewed, a renewal application which is made more than two months after expiry will attract a late renewal fee in addition to the renewal fee and any outstanding annual and penalty fees.
- Abandoned patents or trade marks: The proprietors shall inform the Registry, via their registered agent, if a patent or trade mark has been abandoned when the Registry will record the protected right as inactive. Upon payment of a re-activation fee and annual fees the protected right may be revived.

To access the new law, please click here. For further information please also check the article of Mr. Moses from Appleby Intellectual Property here

Source: Appleby Intellectual Property, UK

Further information on Cayman Islands see below (Related Territories).


10-25-2011 (Newsletter Issue 12/11)
Requirement to Attend Hearings on Invalidation on Relative Grounds
The UK Intellectual Property Office (UKIPO) issued Tribunal Practice Notice (3/2011) which updated TPN (6/2009) concerning the requirement to attend hearings in relation to applications for invalidation on relative grounds.
The registrar does not consider that a mandatory hearing in every such invalidation case is necessary or even beneficial. The registrar will, accordingly, review each invalidation action based on relative grounds, and either direct attendance at a hearing under rule 62(2), or alternatively, suggest instead that a decision be taken from the papers only. In the latter case, the parties will nevertheless retain their right to be heard if they wish.

For more information please click here


10-25-2011 (Newsletter Issue 12/11)
Report on Trade Mark Incentives
The UK Intellectual Property Office (UKIPO) has commissioned the report 'Trade Mark Incentives'. It investigates the relationship between trade marking and business performance in terms of productivity, employment, wages and growth.

According to this study, positive linkages were found between trade marking and business performance, which ”indicate[s] that trade mark active firms are different in important and valuable ways from other firms. This should reassure policymakers, who design innovation policy to encourage domestic producers to compete on product quality and variety, not just cost and price, and to use trade marks to signal their innovations.”

To access the full report please click here


08-12-2011 (Newsletter Issue 10/11)
End of Reclassifications
The UK Intellectual Property Office (UKIPO) will cease reclassification of trademark registrations effective October 31st, 2011.

The Registrar offered proprietors with UK domestic registrations in Class 42 the opportunity to reclassify the services affected by the restructuring of the Nice Classification. In some cases this required a new class (or classes) to be added to the registration.
The benefits of reclassifying the UK domestic registrations are questionable as Community Trade Marks and International Registrations (designating the UK) are not being reclassified.

Therefore, the UKIPO stops to reclassify trademark registrations. Up to (and including) this date, any owner of a trade mark registration who wishes to have their registration considered for reclassification may contacting the UKIPO. For more information please click here

Source: Marks & Clerk LLP, United Kingdom


03-28-2011 (Newsletter Issue 5/11)
Manual of Trademarks Practice Updated
The United Kingdom Intellectual Property Office has updated the documents New applications and The Examination Guide: publication and registration.

For more information please click here


10-01-2010 (Newsletter Issue 15/10)
Opposition Period Reduced by One Day
The UK Intellectual Property Office (UKIPO) has published a new Tribunal Practice Notice 4/2010 which effects the calculation of the oppostion period. The opposition deadlines for UK national trademark applications, the UK designations of trademark applications under the Madrid Protocol and the deadlines to extend the opposition period have been reduced by one day.

This new practice entered into effect on September 30th, 2010.

For more information please click here


05-20-2010 (Newsletter Issue 11/10)
Administrative Trademark Fees Increased
The United Kingdom Intellectual Property Office increased the administrative fees for recording assignments, licences and security interests, effective April 6th, 2010.

For more information please click here


02-15-2010 (Newsletter Issue 7/10)
Trademark Invalidation Proceedings Changed
The UK Intellectual Property Office (IPO) has its handling of trademark invalidation proceedings. The Hearing Officer’s decision will no longer be made on paper. The parties or their legal representatives will be required to attend a full hearing before any decision is made. This is the position only where the challenge to the trademark is made on relative grounds. The IPO’s new approach will likely increase costs for brand owners bringing or defending invalidation proceedings.

For more information please click here


Source: Hammonds LLP, London, UK

01-27-2010 (Newsletter Issue 6/10)
Cayman Islands: Increase of Official Fees
From January 1st, 2010 the application fees for extension of trademark rights to the Cayman Islands based on a prior UK registration has been increased from KYD 150.00 to KYD 200.00 (from EUR 132.00 to approx. EUR 176.00).

The annual fee to maintain the trademark registration increased from KYD 100.00 to KYD 200.00 (from EUR 88.00 to approx. EUR 176.00) for one class. Each additional class costs now KYD 100.00 (approx. EUR 88.00).


Legal basis is the Trade Marks Act 1994.
A registration provides protection for the trademark in the United Kingdom (UK) of Great Britain and Northern Ireland and automatically extends to the British Indian Ocean Territory, the Falkland Islands, and the Isle of Man. In the Bahamas, subject to local prior rights, the owner of a UK trademark is entitled to registration upon production of a UK registration certificate.
Trademark protection is available in the following countries through extension of an existing UK mark: Gambia , Jersey, Kiribati, Saint Helena, Solomon Islands, Tuvalu. With respect to Gambia, application must be filed within 4 months from the UK application date. In Grenada, a new trademark Act was introduced in 2012, which abolishes the UK-based system. Under the transitional provisions however, existing UK-based registrations shall continue to have effect as if registered under the new Act.
In addition to local registration, it is also possible to apply for registration based on a UK trademark in the following countries: Anguilla, Bermuda, British Virgin Islands, Dominica, Fiji, Gibraltar, Bailiwick of Guernsey, Guyana, Montserrat, Saint Kitts and Wells, Saint Lucia Sierra Leone, Turks and Caicos Islands as well as Western Samoa.
British territories with no law and no extension of UK rights include Pitcairn Island, South Georgia and the Sandwich Islands, British Antarctic Territory, Tanganyika and Zanzibar. There is no trademark law in these territories.
The UK is a member of the Madrid Protocol and the European Union.
Trademark protection is obtained by registration. It can also be acquired by use.
The UK is a “common law“ jurisdiction, i. e. official and juridical decisions on the Trade Marks Act 1994 are rendered on the basis of prior decisions and judgments on similar cases
Nice classification, 11th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, moving images, colours, colour combinations, the three-dimensional shape of a product or its packaging as well as sound marks, olfactory marks and any combination of the mentioned signs.
The following trademark types are registrable: trademarks, service marks, collective marks, certification marks.
The application is filed at the UK Intellectual Property Office.
Multiple class applications are possible.
Foreign applicants do not need a local agent. A postal address (address for service) within the EU or EEA is required.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The application process includes an examination on formal and absolute grounds. Signs not deemed distinctive can be accepted for publication if there is evidence that sufficient distinctiveness has been acquired by use.
The processing time from first filing to registration is approximately 4 to 6 months. The first office action is issued after approximately 2 to 4 weeks.
Before registration, the application is published in the weekly electronic “Trade Marks Journal” for opposition purposes. The trademark will then proceed to registration, unless other reasons prevent the registration.
National:
The deadline for filing an opposition period is 2 months from publication date of a trademark application in the Trade Marks Journal. This period can be extended for a further month, as of right. To do so, an interested party must file a Form TM7a, “Notice of Threatened Opposition”, during the initial two-month opposition period.

Details regarding the Opposition Period against designation of IR Mark are available in our publication on this topic here
Upon registration, protection is backdated to the application date. A trademark registration is valid for 10 years from the date of application. The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the renewal deadline. After the 6-month grace period, there is a further 6-month period in which an application to restore a trade mark can be filed. Extra fees are payable in both instances.

Further practical details are available in our publication on this topic here
If the trademark has not been used within 5 years following registration or if use has been suspended for an uninterrupted period of 5 years, it may be subject to revocation. Subsequent use of the trademark can restore protection if no party has applied for revocation due to non-use in the meantime.

Further practical details are available in our publication on this topic here
The official fee for filing a trademark application is GBP 200 for one class and GBP 50 for each additional class. Applications made through the online application form (e-TM3), which include the full payment at the time of filing, will qualify for a discount of GBP 30 of the total cost. There is no official registration or publication fee.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 170,00 € 40,00 € 
Word Mark Search (identical) 60,00 € 0,00 € 

The Prices above are SMD Group Search Fees
Further practical details are available in our publication on this topic here
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
02-24-2017
Elkington & Fife LLP, London, United Kingdom

12-03-2015
Elkington & Fife LLP, London, United Kingdom

08-05-2013
Squire Patton Boggs (UK) LLP, London, United Kingdom

07-31-2012
Squire Patton Boggs (UK) LLP, London, United Kingdom

07-25-2011
Cam Trade Marks & IP Services, Cambridge, United Kingdom  
Squire Patton Boggs (UK) LLP, London, United Kingdom



HSM IP Ltd.



Sophie Davies

Sophie Davies
68 Fort Street, George Town
KY1-1207 Grand Cayman
Cayman Islands (KY)
Tel +1 345 949 4766
Fax +1 345 946 8825
info@hsmoffice.com
www.hsmoffice.com

HSM IP Ltd. provides worldwide intellectual property services. Based in the Cayman Islands and independently owned and operated, our experienced team of attorneys and paralegals deliver first class service to a broad client base which includes major Fortune Global 500 brand owners, international law firms and other specialist IP practices. Our broad perspective, practical approach and international experience allow us to offer clients a unique insight into IP issues internationally. The success and growth of our firm is due to our keen understanding of our clients’ needs for a comprehenisve “one-stop shop” which encompasses a wide range of services from the initial consultation process to searches, registrations, annuity payments and monitoring and renewals. We offer a competitive schedule of fixed fees, inclusive of both disbursements and official fees, which means we can provide clients with an accurate estimate of their project costs before embarking on a global filing programme for their portfolio. We have a wealth of knowledge and specialise in the Caribbean, Central and Latin America and other off shore jurisdictions. Our staff regularly contribute to leading IP publications and we also publish a range of country-specific IP Client Guides which are available on our website.

Cam Trade Marks & IP Services



Roman Cholij

Roman Cholij
St John's Innovation Centre, Cowley Road
CB4 0WS Cambridge
United Kingdom (UK)
Tel +44 (0)1223 353299, +44 (0)845 873 4960
Fax +44 (0)845 873 4961
camtm@camtrademarks.com
www.camtrademarks.com

Cam Trade Marks & IP Services is a boutique full service trade mark attorney firm based in the ancient university town of Cambridge UK. Through its associate partnerships and other commercial arrangements, the firm has a presence in the USA (Los Angeles), Switzerland, with direct access to WIPO in Geneva, Latvia, a springboard to all of Eastern Europe, and Australia and New Zealand.

Cam Trade Marks & IP Services prides itself on the quality of work, professionalism and experience of its members. The firm is also able to keep its overheads low, offer competitive and flexible prices, and provide a truly unique, personalised and independent service.

As a trade mark attorney firm, we work with national and international clients in all aspects of trade marks, including availability searches, filing, prosecution, opposition, monitoring and renewals. We work with the UK Intellectual Property Office, OHIM (OAMI), WIPO and national offices around the world. We also offer design protection services world-wide and consultancy on other Intellectual Property (IP) matters such as copyright, patents and licensing.
The firm was founded by Dr. Roman Cholij, a registered and regulated UK and European Trade Mark and Design Attorney, also authorised to practise before the Irish Trade Mark Office. Roman is a committee member of the International Trademark Association, (INTA), co-chair of the Brands committee of the Licensing Executives Society (LES) Britain & Ireland and also a lecturer and writer on trade marks for the Institute of Trade Mark Attorneys (ITMA), having in 2010 presented a key address on well known marks at the ITMA international conference in London.

UK Intellectual Property Office (UKIPO)
Concept House
Cardiff Road, Newport
South Wales NP10 8QQ
Great Britain
Tel +44 16 33 81 4000
Fax +44 16 33 81 77 77
Mail enquiries@ipo.gov.uk
www.ipo.gov.uk

European Union Intellectual Property Office (EUIPO)
Avenida de Europa, 4
03008 Alicante
Spain
Tel +34 965 139 100
Fax +34 965 131 344
Mail information@euipo.europa.eu
www.euipo.europa.eu


World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int