Trade Marks 2020

Trade Marks 2020 features 21 jurisdictions. Trade Marks outlines types of trade marks, assignment and licensing, opposition procedure, infringement, costs, ADR, trial, settlement and appeal.

Last Updated: February 26, 2020

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Kirkland & Ellis LLP is one of the world’s leading law firms, with approximately 2,500 lawyers practising from 14 offices in the United States, Europe and Asia. The firm's clients and experience cut across every major industry and discipline. Clients across the globe call upon Kirkland to handle their most important and complex corporate, litigation, intellectual property and restructuring matters.


Trade Marks: Trends and Developments

As there is a continued recognition of the value and importance of trade marks, trade mark law around the world continues to develop. This year, we wanted to focus our summary on recent trends in trade mark prosecution. It is more important than ever for trade mark counsel to play chess on a worldwide stage in order to maximise their clients’ interests. As the United States tightens its polices for the continued validity of trade mark registrations, other countries have seemingly relaxed registration standards. These changes require focus not only on the domestic filings of clients, but also on how to offensively and defensively be aware of changes that could impact trade mark protection.

USPTO Trade Mark Audit Program

In November 2017, the United States launched a program to audit registrations on the Federal Trademark Register to ensure that any registered mark is in use with the goods and services included in the registration. In July 2019, the USPTO released some of the results of the wide-scale implementation of its program, originally piloted in 2012, to audit trade marks and determine whether claimed uses in registration maintenance filings were accurate. The USPTO looked at filed Section 8 or Section 71 renewal declarations for registrations which included either one class with four or more goods or services, or at least two classes with two or more goods or services. Since the full-scale audit program went live in November 2017, the USPTO executed deletions of goods or services on nearly 50% of all 1(a) registration renewals, and over 60% of renewals of registrations based on Sections 44(e), Section 66(a) and combined registrations under Sections 1(a) and 44(a). The USPTO had executed approximately 5,500 registrations as of July and plan to audit 5,000 more per year.

In addition to the audit program, the USPTO has also enacted a new rule requiring foreign applicants and registrants to be represented by a licensed, US attorney. This change comes after increasing concern about the filing of fraudulent trade marks and specimens, many of which were done with the advice of individuals inexperienced or unfamiliar with US trade mark law or USPTO rules. This change brings the USA in line with other Madrid Protocol nations, which require local counsel in order to file trade marks.

In order to prepare for the steady increase in audits, brand owners should work closely with their attorneys to file accurate renewal declarations of use with clear indications of use for the classes, goods and services for which the mark is registered. The USPTO has provided a helpful guide on filing these renewal declarations, but brand owners should keep a close eye on their trade mark portfolios to determine what marks are still actually being used in commerce before starting steps to renew their marks. Moving forward, brand owners and their counsel should consider creating a strategy to identify every good and service for which they have a registration and document each current use of that good or service with photographs, web pages and any other supporting evidence that clearly shows the mark being used in commerce.

Changes in International Registration Requirements

While each of the  chapters focusing on individual countries will provide developments on a more detailed level, Canada exemplifies some of the sea changes that are happening in worldwide trade mark law. As of June 2019, the Canadian Intellectual Property Office has enacted a substantial change in the trade mark laws which affect the registration process and international registration. Prior to June 2019, parties were required to provide a date of first use for applications, based on actual use, and a declaration of use for applications based on an intent to use the mark in the future. With the change in the law, however, the Canadian trade mark office no longer requires a claimed date of first use, or any declaration of use, for a registration to issue. Thus, this creates a marked deviation from Canada’s North American neighbor, the United States, where intent to use reservations are allowed but such applications will not continue to registration without a valid statement of use. As part of the same statute revision, Canada joined the United States and over 90 other countries in becoming a member of the Madrid Protocol, allowing for a more streamlined application process across international borders.

It is unclear what the results of this change will be, but it could lead to entities trying to take advantage of this new system with broad trade mark applications in the hopes that the trade marks will eventually be valuable to another party. As early as December 2017, in anticipation of this new law, these broad applications were on the rise in Canada where parties were filing “all-class” applications in the Canadian database. Without the requirement of a declaration of use for pending applications, such “all-class” applications could mature to registration.

The decision to drop the use requirement brings Canada in line with many jurisdictions throughout the world, including countries like China and many European jurisdictions (eg, such Germany and France).

New Trade Mark Systems and “Submarine” Marks

Another development is the steady increase in countries implementing online registration systems. In January 2019, Myanmar finally enacted its new, long-awaited trade mark law that would provide a new, comprehensive registration system. As of December 2019, it was beginning to implement a new online e-filing system under which all previous Myanmar registrants would have to re-register in order to maintain protection for the marks that were registered under the country’s old system. The new online system could allow for much faster and easier searches of registered trade marks, which could have implications for the increasingly popular strategy of filing trade marks abroad in countries without searchable databases prior to registering the trade mark in the USA under the Madrid Protocol.

These “submarine” filing techniques have become a popular strategy for companies seeking to keep an upcoming product release secret from the press while retaining an early priority date. Popular countries for these kinds of filings include Trinidad and Tobago and Jamaica, where the trade mark offices still require paper filings and have no online database that can be searched. As more countries turn to the internet to house their trade mark systems, however, companies will need to consider the implications of the “submarine” filing strategy moving forward.

Authors



Kirkland & Ellis LLP is one of the world’s leading law firms, with approximately 2,500 lawyers practising from 14 offices in the United States, Europe and Asia. The firm's clients and experience cut across every major industry and discipline. Clients across the globe call upon Kirkland to handle their most important and complex corporate, litigation, intellectual property and restructuring matters.