Nathan Abraham & Mark Studley UK Intellectual Property Office

1. Duration and Renewal or Registration; Relief Measures in case of failure to comply with time limits; and Licenses Nathan Abraham & Mark Studley UK Intellectual Property Office

2. Renewal, Time Relief, and Licenses Three disparate areas of trade mark administration and procedure – all covered by the Singapore Treaty on the Law of Trademarks: • Duration and renewal is addressed by Article 13; • Relief Measures and Time Limit Compliancy is addressed by Article 14; • License issues addressed by Articles 17, 18, 19 and 20.

3. Renewal, Time Relief, and Licenses Presentation will seek to: • Explore and analyse those articles of the Singapore Treaty which set out obligations of contracting parties • Explore and analyse those parts of UK trade mark legislation which correspond to the Treaty • Compare and contrast UK national practice with content of the Treaty

4. Duration and Renewal of Registration Set out in Article 13 of Singapore Treaty, and contains five sub-sections: 13 (1) Minimum requirements for requesting renewal 13 (2) Prohibition of any additional requirements 13 (3) Filing of evidence in support of renewal 13 (4) Prohibition of substantive examination 13 (5) Duration of renewal period

5. Duration and Renewal – Article 13(1)(a) Any Contracting Party may require that renewal be subject to a request, and that such request contains some or all of the following: (i) An indication that renewal is sought (ii) Name and address of the holder • Number of the registration concerned (iv) Filing date or registration date of trade mark

6. Duration and Renewal – Article 13(1)(a) continued (v) Name and address of representative (where applicable) • Address for service, where applicable • If renewal is in respect of part of existing registration, identification of relevant goods / services intended for renewal • Details of ‘other person’ entitled to file renewal

7. Duration and Renewal – Article 13(1)(b) • Any Contracting Party may require that a fee be attached to any request for renewal of a registered trade mark • Once renewal payment has been made, no further payment should be required for maintenance of the registration • But, this does not exclude payment of fees in respect of proceedings, evidence etc.

8. Duration and Renewal – Article 13(1)(c) • Any Contracting Party may require that a renewal request and fee payment is made within a time period fixed by national law • But, time period fixed by national law must be subject to minimum periods set in SP Regulations • Rule 6 of Regulations stipulate that period for paying renewal should start at least six months before renewal date, and end – at the earliest – six months after that date

9. Duration and Renewal – Article 13(2) • For actioning renewals, Contracting Parties should not demand additional requirements other than those already mentioned • For example, no need to re-submit representation of the mark; no need to show that mark has been renewed in any other register or jurisdictions; and no need to furnish evidence demonstrating use of the mark

10. Duration and Renewal – Articles 13(3), 13(4) and 13(5) • Any Contracting Party may request evidence in support of renewal request if grounds to doubt validity [Art. 13(3)] • Contracting Party should not re-examine trade mark as part of renewal process [Art. 13(4)] • Duration of initial registration period, and each period of renewal, shall be 10 years [Art. 13(5)]

11. Duration and Renewal – correspondingUK Trade Mark Legislation UK Trade Marks Act 1994 serves as primary legislation - Sections 42 and 43 set out clear law as regards duration of registration and provisions for renewal: 42. - (1) A trade mark shall be registered for a period of ten years from the date of registration. (2) Registration may be renewed in accordance with section 43 for further periods of ten years.

12. Duration and Renewal – correspondingUK Trade Mark Legislation 43. - (1) The registration of a trade mark may be renewed at the request of the proprietor, subject to payment of a renewal fee. (2) Provision shall be made by the rules for the registrar to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.

13. Duration and Renewal – correspondingUK Trade Mark Legislation 43.- (3) A request for renewal must be made, and the renewal fee paid, before the expiry of the registration. Failing this, the request may be made and the fee paid within such further period (of not less than six months) as may be prescribed, in which case an additional renewal fee must also be paid within that period.

14. Duration and Renewal – correspondingUK Trade Mark Legislation • All aforementioned UK primary legislation relating to trade mark renewal is compliant with Singapore Treaty • UK has streamlined renewals process as much as possible – our trade mark renewal form holds less information that is suggested in the Article 13(1) of the Treaty

15. Duration and Renewal – correspondingUK Trade Mark Legislation Form TM11 (renewal) asks for the following: • Trade mark number Art. 13 (1) (a) (i), and (iii) • Which classes are now registered? No equivalent in Treaty 3. Which classes do you want to renew, if not all? Art. 13 (1) (a) (vii)

16. Duration and Renewal – correspondingUK Trade Mark Legislation Form TM11 continued: 4. Full name of the registered proprietor Art. 13 (1) (a) (ii) 5. Renewal date Alternative to Art. 13 (1) (a) (iv) 6. Amount of renewal fee Art. 13 (1) (b)

17. Duration and Renewal – correspondingUK Trade Mark Legislation Form TM11 continued: 7. Name and address where we should send confirmation of renewal Alternative to Art. 13 (1) (a) (v), (vi), (viii) 8. Signature of applicant No equivalent in Treaty 9. Name and number of person to contact No equivalent in Treaty

18. Duration and Renewal – correspondingUK Trade Mark Legislation So, UK renewal application does not require any of the following: Proprietor’s address; trade mark’s filing or registration date; name or address of representative; proprietor’s separate address for service; listing of specific goods/services subject to partial renewal; details of person delegated to file renewal request

19. Duration and Renewal – correspondingUK Trade Mark Legislation • UK provides only the minimum amount of time for ‘early’ and ‘late’ renewals. Rule 8 of SP Regulations stipulate than the period for renewal should be at least six months before expiry date, and should end at the earliest six months after that date.

20. Duration and Renewal – correspondingUK Trade Mark Legislation • UK attorneys and proprietors are content with UK Office providing periods of ‘six months before’ and ‘six months after’ the effective renewal date. • Provides large enough window of time for renewal to be prepared and submitted. • UK Secondary Legislation also stipulates that renewal reminders shall be sent to all proprietors, 2-6 months prior to expiration (not in Treaty).

21. Duration and Renewal – correspondingUK Trade Mark Legislation • UK Legislation has additional provisions to safeguard renewal claims – in the form of ‘restoration’ • Where six month period has passed without renewal request being filed, applicant has a further six months to apply for restoration

22. Duration and Renewal – correspondingUK Trade Mark Legislation • To apply for restoration, proprietor must pay an extra fee of £100 (UAH 1,290) in addition to standard renewal fee • UK Registrar will then adjudicate on restoration claim • Must be satisfied that restoration is justified – by reference to ‘the circumstances of the failure to renew’. Registrar can refuse application.

23. Duration and Renewal – correspondingUK Trade Mark Legislation • Basic UK renewal fee structure is as follows: • ‘Timely’ renewal is identical to application fee - £200 (UAH 2,580) for single class; £50 (UAH 645) for each additional class

24. Duration and Renewal – correspondingUK Trade Mark Legislation • Additional £50 (UAH 645) if renewal is filed within six month period after renewal date • Additional £100 (UAH 1,290) is request for restoration – 6 to 12 months after effective date of renewal

25. Failure to meet Time Limits - Relief Set out in Article 14 of Singapore Treaty, and contains five sub-sections: 14 (1) Relief measures before expiry of time limit 14 (2) Relief measures after expiry of time limit 14 (3) Exceptions set out in SP Regulations 14 (4) Fees attached to relief measures 14 (5) Prohibition of other requirements

26. Relief Measures – Article 14(1) • Any Contracting Party may provide for extension of a time limit, if that request is filed with the office prior to expiry of the time limit.

27. Relief Measures – Article 14(2) Where applicant has failed to comply with a time limit, the Contracting Party shall provide one or more of the following relief measures (in accordance with SP Regulations), if requested to do so: (i) Extension of time limit (ii) Continued processing of application/registration (iii) Reinstatement of rights, where justified

28. Relief Measures – Articles 14(2)(i) and (ii) Extension of time limit / continued processing Regulations requires that: • Contracting Party shall extend time limit for ‘reasonable’ period • Applicant shall disclose details of mark etc. • Contracting Party should provide period of ‘not less than two months’ for filing a request to extend

29. Relief Measures – Article 14(2)(iii) Reinstatement of Rights Regulations requires that: • Applicant shall disclose details of mark etc. • Applicant shall provide facts and evidence in support of request • Contracting Party should provide period of ‘not less than six months’ for compliance (Restoration)

30. Relief Measures – Articles 14(2)(iv) and (v) Fees / Prohibition of Other Requirements • Contracting Party may require that a fee be paid in respect of any relief measures • Regulations exempt a range of scenarios from enjoying relief, including: - where relief has already been granted - where action is before Appeal Board or equivalent - where period relates to inter partes proceedings

31. Relief Measures – UK legislation • Change to UK Trade Marks Rules 2008 provided opportunity for UK to become compliant with Singapore Treaty • Much UK trade mark legislation was already compliant with Singapore Treaty • However, issue of relief measures brought about biggest change

32. Relief Measures – ‘old’ UK legislation • UK Trade Marks Rules 2000 allowed some time periods to be extended at Registrar’s discretion • But, no extension for time periods relating to inter alia:application deficiencies; opposition filing; delayed renewal; delayed restoration • Excluded periods only extended where Registrar or WIPO was shown to be at fault • Extension request always via a form

33. Relief Measures – ‘old’ UK legislation • Where allowed, request for additional time had to be requested before expiry of time period – “…a request for extension… shall be made before the time or period in question has expired.” • Registrar had discretion to grant retrospective extensions, but it had to be persuaded that it was the just thing to do.

34. Relief Measures – ‘new’ UK legislation • UK Trade Marks Rules 2008 allow some time periods to be extended at Registrar’s discretion • Still a range of time periods which cannot be extended, but a smaller list. Application deficiencies no longer exempt because of compliance with Singapore Treaty • Still the case that excluded periods can only extended where Registrar or WIPO is shown to be at fault BUT…

35. Relief Measures – ‘new’ UK legislation Granting retrospective time extensions – i.e. after expiry of original period – is no longer at the discretion of the Registrar “A request for extension… may be made before or after the time or period in question has expired…” [Rule 77(2)] “The Registrar shall extend a flexible time limit… where… the request is made before the end of the period of two months from the date on which the period expired” [Rule 77(4)(a)]

36. Relief Measures – ‘new’ UK legislation • UK now compliant with Singapore Treaty • But, has only allowed the minimum amount of time for retrospective time extensions to be filed • Articles 14(2)(i) and (ii) of SP stipulate that time period for requesting ‘late’ extensions shall be “not less than two months” • UK Legislation provides two months, but no more

37. Relief Measures – ‘new’ UK legislation Compliancy with Singapore Treaty has benefitted UK Intellectual Property Office • No need for examiners and hearings officers to assess ‘late’ requests and determine their validity. Now an automatic right of the applicant • Speeds up processing time • No requirement that ‘normal’ extensions be requested via a form – so less bureaucracy

38. Licences • An application to register a licensee is filed on Form TM50 (£50 fee = 638 UAH). • It must be signed by or on behalf of the grantor of the licence or security interest, or be accompanied by such documentary evidence as suffices to establish the transaction - (Rule 49(2)(b) of the Trade Mark Rules 2008).

39. Basic requirements • TM number/s • Full name of proprietor • Full name and address of licensee • Start/end dates of licence – usually no time limit • Exclusivity of the licence.

40. Basic requirements • Geographical area to which licence is limited (or state NONE) • Address to which confirmation should be sent • Signature of proprietor or their representative. If they cannot sign the TM50 we need documentary evidence of licence agreement with relevant signatures. If form is signed and completed correctly we do not insist on documentary evidence • Contact name/telephone/reference

41. Comparison to Singapore Treaty • Whilst there are some additional requirements under the Regulations of the Singapore Treaty (Rule 10), e.g. nationality, domicile, etc., in most respects the information required is the same and will only vary according to the licence terms • Unlike the Singapore Regulations, we do not require notarised documents. This will help keep costs down

42. Exclusivity of the Licence • If the licence is exclusive this means that the licensee can use the trade mark/s according to the terms of the licence, to the exclusion of everyone else, including the proprietor (unless part of the terms). It can also mean it is exclusive to certain goods/services or territories

43. Translation requirements • Article 17(4)(ii) of the Singapore Treaty states that a translation may not be required • Similarly, we do not request a translation but, under the Rule 62(1)(b) of the Trade Mark Rules 2008, the Registrar may request one e.g. if we were relying on the documentation for details of the licence

44. Removal of, or amendment to licensee details • Removal or amendment of licence details are filed on Form TM51 (£50 fee = 638 UAH). • Like the TM50, we also require: • Trade mark number/s of licence to be cancelled/amended • Full name of proprietor • Full name of licensee

45. Removal of, or amendment to licensee details • Clear indication whether removal or amendment • Address to which confirmation should be sent • Signature of proprietor or their representative, or supporting documentary evidence with relevant signatures (e.g. termination of licence agreement) • Contact name/telephone number.

46. Removal of, or amendment to licensee details • We do not amend details of the licence itself, only the licensee details i.e. name/address changes or typographical errors. E.g. if the goods or services being licensed were to change, we would ask for a new TM50 form/agreement and cancel the old one via a TM51

47. Licences – Obligatory? • Similarly to the Singapore Treaty, there is no legal obligation to record a licence in the UK. However, once an official form is received, there is an ‘obligation’ on us to record the details • There are advantages to keeping records up to date e.g. where disputes arise it may help the parties to know who will be affected by any decision taken and, in invalidation proceedings, a licensee may bring an action without the participation of the proprietor

48. UK Reference Materials • UK Trade Marks Act 1994 can be found at: www.ipo.gov.uk/tmact94.pdf • UK Trade Marks Rules 2008 can be found at: www.ipo.gov.uk/tmrules2008.pdf • IPO’s Examination Guide can be found at: www.ipo.gov.uk/pro-types/pro-tm/t-law/t-manual.htm

49. QUESTIONS? nathan.abraham@ipo.gov.uk mark.studley@ipo.gov.uk