Registering a trade mark on foreign land could be as easy as it can be difficult. Although harmonising bodies and regulations exist in Intellectual Property circles across the world, each country has their idiosyncrasies. Filing an application in specific nations, from Burma to New Zealand, requires a diverse list of considerations. This article aims to touch on a few of those.

Dependent Territories  

Influenced by historic events, some nations are dependent on others for certain aspects of their governance. When concerned is a trade mark application, a dependent jurisdictions may require registration in another country. For example, a registration in France can extend to cover the French Plynesia (a collection of more than 100 islands including Tahiti and Bora Bora). Some nations will automatically extend the registration to their dependent territories as is the case with Australia and its dependencies: the Christmas Island and the Norfolk Island. Others require for a double registrations, a ‘main’ and a ‘local’. The latter applies to dependent territories in the US, China, Netherlands and New Zealand. Some local intellectual property offices will necessitate for a certified copy of the main application before they are to accept a local application.

Local expertise on procedures in these territories are therefore vital for appreciating the unique relationships between jurisdictions and how that reflects on the trade mark registration and maintenance process. Local agents, who are usually qualified lawyers registered with a Trade Mark Office, will also assist in foreign registrations by having the application translated in the local language and/or by providing a local address for service.
Type of Marks

An interesting type of mark, found in countries like Australia, Japan, Hong Kong and the British Virgin Islands, is the defensive mark, which affords a broader scope of protection to well-known trade marks. Trade marks owned by Adidas, Nike and Channel, for example, are registered as defensive marks in the ‘Japanese Well-known Trademark’ database. Such registrations do not require for the mark to be used in the region but rather aim to prevent others from using it with the intent of gaining an unfair advantage.

Notably, Europe and the UK provide for the registration of special (non-conventional) marks such as colour, smell, sound, texture, taste and motion marks, as well as holograms and 3D marks. Marks of this kind, however, are perceived as new notions with plenty of uncertainty around their practical application. They are not commonly accepted around the world. Japan and Brazil, for example, are two jurisdictions that do not accept the registration of any marks that do not constitute a visible mark. Then in countries like Bulgaria, Brazil, Paragua, Egypt, Japan and China, a colour per se cannot amount to grounds for a trade mark registration, unless it is combined with other permissible types of marks such as figures, signs or 3D shapes. Conversely, countries like Denmark, Portugal and Sweden provide for the registration of a colour as the sole subject of an application. Meanwhile, Australia is one of the countries that goes even further, by permitting the registration of smells, or also know as olfactory marks. At the most flexible end of the spectrum are countries, like the US, which do not exclude any type of category. Yet US judicial courts had previously expressed the opinion that flavour (for the purpose of registering distinctive tastes) is a functional attribute and therefore cannot amount to a trade mark. [1]

In line with technological developments, the EU had recently reformed its regulatory provisions to accommodate for non-conventional marks by removing the fundamentally hindering requirement for a mark to be capable of being ‘graphically represented’. The EU IPO, moving forward, is going to accept digital sound and video files when considering applications for sounds, and moving images.

Lastly, service marks, concerned with the performance of services rather than the manufacture of goods (carrying the ℠ symbol), are also a kind of marks that are not available in all countries, namely the Bahamas, Fiji, Malawi, Northern Cyprus, Sierra Leone, Suriname and Zambia. In those countries, as an alternative, owners opt to register their services under Class 16 for ‘printed matter’ as a way of enabling marketing for their businesses.

Classification

For identifying the array of goods and services to be represented by a trade mark, widely accepted across most national trade mark regulations is the International Nice Classification System [2], the latest 11^th edition of which came into force on January 2017. The System provides for 45 Classes, where Classes 1 to 34 cover different type of goods, while Classes 35 to 45 are concerned with different type of services.

Yet although widely accepted, the Nice Classification can vary in its national implementation. For example, GCC member states like Kuwait, Lybia, Qatar, Sudan, Yemen and Iraq are yet to adopt the most recent edition of the classification system, while using the 7^th, 8^th or 9^th edition. Furthermore, cultural practices may also prohibit the registration of some Classes, namely those related to pork meat, alcohol and gambling.

Meanwhile, as one of the few countries that has no classification system, Canada’s current practice involves the applicant listing the goods (referred to as wares) to be covered by the application. Having said that, Canada is soon to adopt the Nice Classification System.

[1] New York Pizzeria, Inc., v Ravinder Syal, et al, CASE No. 3:13-CV-335.

[2] https://www.gov.uk/government/publications/how-to-classify-trade-marks/trade-mark-classification-list-of-goods-and-services