A trade mark submarine?

There is such a thing as a “submarine trade mark”, otherwise known as a “stealth trade mark”.

They are trade marks filed in a way to be secret and undetected (at least in the short term) and are used by companies keen to ensure they get a priority date for an important brand they want to launch, but don’t wish to file in a territory like the US or UK where it would become immediately available knowledge to competitors and consumers and destroys the marketing potential of a big launch. For this reason, it’s most popular with tech companies.

I prefer stealth to submarine, but submarine seems to be the more accepted term out there, including in a report by WIPO. Despite their secret nature, it is well known within the profession that this practice is adopted.

What is a submarine filing in more detail?

They are trade mark applications that are not disclosed to the public because a) publication of an application for opposition purposes often takes many months and b) the Registers are not available online. As such, the filing activity is kept secret.

It’s a way of securing priority date protection for a trade mark without others knowing. This strategy involves filing trade mark applications at Intellectual Property Offices (“IPOs”) where information is not easily accessible.

As you may expect, this therefore sees the use of IPOs mostly in the developing world. The WIPO report linked above analyses submarine filings in Honduras, Jamaica, Liechtenstein, Mauritius, Saint Lucia, Swaziland (now Eswatini), Tonga, and Trinidad and Tobago. However, other countries in Africa and the Caribbean are also used for submarine purposes.

It works because most of these territories are members of the Paris Convention and priority can be claimed from corresponding applications filed elsewhere, provided they are filed within six months.

File in, say, Jamaica (a popular submarine jurisdiction) and your trade mark is likely to be under the radar and you can file in your usual commercial markets (the UK, the US, etc) within six months. By this time, you have had your big launch, but you have safeguarded your trade mark rights because they can be backdated to the Jamaican filing date.

What makes a good submarine jurisdiction?

If you decide a submarine filing is appropriate for you when choosing a submarine jurisdiction, you may wish to consider the following:

• A jurisdiction that does not reflect new trade mark filings for a period of time. It might not be until marks are published for opposition purposes that they become (easily) available.
  
  
• A jurisdiction that does not have an online database accessible to the public. It’s worth mentioning that the EUIPO (through TMview) and WIPO (through the Global Brand Database) are helping many jurisdictions make their trade mark data far easier to locate. WIPO also assist developing nations rolling out to them their IPAS system. This is a computerised way of managing trade mark applications and registrations, which can only facilitate the digitisation of trade mark data for the wider public.
  
  
• While not all Registers are online, applications can typically be found through an in-person manual search of trade mark records to identify new filings. A monthly search by the applicant Apple in the Jamaican Office could reveal any submarine applications filed by them there. Nevertheless, it is hardly practical to search all of these submarine Offices and, as a regular filer of submarine applications, Apple will like to vary their submarine jurisdiction.
  
  
• Think about the priority filings. The UK, the US, the EU – indeed a lot of the Western world – and filing through the International system, will not typically require Certified Copies of priority applications. However, if you’re filing in other territories which will require priority documents, it will likely be more helpful and will save or ease translation costs if they are issued in English. To meet (often non-extendible) priority substantiation deadlines, you would also want to ensure that priority documents are issued in a timely fashion.

Things change. Be wary that a trade marks jurisdiction’s data accessibility may improve over time and keep an eye on this if this is a regular filing strategy.

Alternative strategies

Alternatively, you could continue to file in the more commercially important countries by ‘hiding’ the true owner through filing in the name of a shell company.

The downside to this is the need to record assignments at a later stage. If you do this regularly, you’ll need to set up a different shell company each time or someone will likely spot a previous chain of title and realise the true owner.

There are also some issues in territories where there is a need to declare a bona fide intent to use the mark in an application. This is acute in the US. There is a similar provision in the UK, although with less risk as the intention to use only needs to be with the applicant’s consent.

If you’re going global…

If you have a brand that’s going to be worldwide in scope (e.g. this could be a rebrand of a corporate house mark) and you’ll likely need protection across the world, don’t forget that some territories do not allow for priority claims. In these, the risk of filing (and possibly disclosing) the new trade mark must be weighed up with ensuring applications are filed at least the day before the big launch.

Conclusion

At Stobbs, we have a dedicated team with good contacts with IPOs and local agents on the ground in submarine jurisdictions to facilitate these filings in a cost-effective way. We can also help manage subsequent filings after a big launch and within a priority deadline.