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The Anguilla Intellectual Property Office continues to make every effort to improve the IP protection regime in the jurisdiction. Anguilla continues to be a British Overseas Territory and one of those jurisdictions where UK trademark registrations can be extended for registration. In addition, local registrations can be filed under the existing trademark legislation.
The local Intellectual Property Office (‘IP office’) continues to make every effort to improve the services it provides to establish and enforce an effective system where brand owners and inventors can protect both patents and trademarks. There are key points to keep in mind when filing at the Anguilla Intellectual Property Office to ensure timely and effective processing of trademark applications both pre-registration and post-registration.
Applications based on a UK registration
The Anguilla IP office issued guidelines regarding filing an application based on a UK registration and has specifically pointed out the importance of consistency with the details on the application to what is on the UK certificate. Furthermore, for post-registration applications, the UK registration details and the details on the application submitted to the Anguilla IP office must be consistent with each other and must be consistent with what is on the Anguilla IP office files.
"If the status of the trademark noted on the Anguilla IP office files is not consistent with what is noted on the UK registration, this will result in an objection."
To ensure that this is done, so the application relying on the UK registration is processed, the following are a few filing tips:
1. IP practitioners must be vigilant when submitting applications to the Anguilla local IP office and ensure that ownership details noted on the application filed at the Anguilla IP office, including the registered address, legal name of the owner and residency status, mirror exactly what is noted on the UK registration and match what is noted on the registry’s files. The Anguilla IP office has stated that where there is a discrepancy, it relies on what is noted in its files and not on the UK registration extract.
2. The status of the Anguilla registration must match the current status of a UK registration in order for post-registration applications to be processed. Filing an original or certified true copy of a UK registration extract with the Anguilla IP office that details the status of a trademark is a requirement. If the status of the trademark noted on the Anguilla IP office files is not consistent with what is noted on the UK registration, this will result in an objection to the application and a request by the examiner to bring the Anguilla registration in line with the UK application.
a. Therefore, any recordals of changes in ownership details such a change in the owner’s name or address must be also recorded on the Anguilla registration prior to requesting the renewal of a mark that is based on a UK registration.
b. Given that the examiner requires proof of the status of the UK registration at the time a request for renewal is filed, the examiner will compare all details related to the mark prior to proceeding with the renewal.
Local trademark applications
The strict examination standard is equally applied to local applications and to facilitate brand owners and their agents. The Anguilla IP office has taken the extra step to appoint staff specifically designated to address documents being filed, issues with applications and filing issues.
For example, documents filed such as the Power of Attorney (POA) are being strictly examined. The IP office demandsthat a POA filed with all new registrations must contain the brand owner’s full and current address before their marks can be published in the Official Gazette.
In this jurisdiction, the original POA is required, and it must be notarised. When agents are changed, the details on the registry’s file should be provided to the new agent taking over the file as the Anguilla IP office insists that the new agent must have this information, as consistency is mandatory when filing post-registration applications. A search of the registry’s file for the details can be accommodated for a fee. All searches must be made via email request and all searches will attract a fee.
Other important details to note regarding service at the Anguilla IP Office:
1. Errata or corrigenda will not be issued for non-registry mistakes. Instead, a Correction of Mistakes Form must be filed along with the required official fee.
2. All changes to the register must be accompanied by the required forms and the prescribed official fee.
3. Renewals will not be processed until all outstanding renewals or late fees have been paid.
Keesha Fleming Lake is a registered US attorney and Caribbean attorney. She can be contacted at: firstname.lastname@example.org
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