Tuesday, 14 July 2009

Darren Olivier

CIPRO (trade marks) - what can be done?

A tweet from Birgit Clark alerted Afro Leo to changes by the UK intellectual property office (UK IPO) in October which include an e-filing discount, a new service called "Right Start application", changes to series marks and an increased fee for filing the Form TM9 (application for an extension of time). Afro Leo stands to be corrected but all of these changes appear to be designed to increase the use of the UK IPO by business (especially by SMEs), assist in removing abuse and promote a paperless/more efficient system. The "Right Start application" is particularly innovative. See link here)

Knowing colleagues in the UK, the changes to the UK IPO procedures will not all be hailed as improvements and will attract their fair share of criticism but they (and other changes) are an attempt by the Office to do things differently, more efficiently and perhaps even help the UK IPO stay in business. For a moment Afro Leo contemplates the trade mark registry in RSA (CIPRO) which is beset by delays, charges for online searches, still uses the antiquated single class filing system (not entirely their fault) and is apparently contemplating increased fees because national filings have fallen - quite the opposite to the incentives the UK IPO is offering to increase filings.

Both Registries are under pressure. In the UK, there is strong competition from the Community Trade Marks Office which has just dropped its fees and the UK IPO sits in Newport which is likely to make recruiting more difficult compared to when it was based in London, simply on the size of the catchment area. The dire state of the UK economy will also play a significant role. In RSA, it does not appear that CIPRO gets the ministerial attention/profile that it deserves or requires in order to fund the training to enable it to become truly world class and help them recruit. Take for example, a story which reached Afro Leo's ears recently that trade mark examiners attended classes for the SAIIPL Trade Mark Practitioner exams but did not sit the exams because CIPRO could not or would not pay for it (again he stands to be corrected).

It was not long ago that the UK IPO took a considerable time period to register a trade mark and yet today it is one of the most advanced registries in the world in terms of its performance. Both the UK IPO and CIPRO deal with around 30000 trade mark applications per year so the comparison is not completely irrational. CIPRO's intentions are good and some of their challenges quite unique. What can be done to assist them improve?

Darren Olivier

Darren Olivier

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Asiimwe Paul
14 July 2009 at 10:47 delete


in a different sort of way, there are concerns here and in Kenya I have heard regarding the impact of Madrid on local applications. Some of the kenyan TM agents i have spoken to have no kind words, saying that direct filings are down over 60%. Although we are being courted by WIPO to accelerate accession to MAdrid, such are not the noises local agents in Uganda are happy to hear.

I am keen to hear a success story of madrid from local practitioners in Africa. Paul