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Trade marks: International update

Canada’s new trade mark law

A new trade mark law came into force in Canada on 17 June 2019, some important features of which are:

  • Canada is now a member of the Madrid System and hence can be designated in any new International trade mark applications or subsequently designated in any existing International trade mark registrations.
  • The requirement for a trade mark to have been used in commerce before it can be registered has been eliminated and hence there is no longer a need to submit a Declaration of Use in order to obtain a registration.
  • Canada is now a member of the Nice Agreement and hence goods and services must be classified accordingly in:
    • applications published after 17 June 2019;
    • registrations, at the time of renewal with the amount of the renewal fee being dependent on the number of classes that are specified; or,
    • registrations, in respond to an invitation from the Canadian Intellectual Property Office (CIPO).
  • The fees for the number of classes of goods and services is determined at the time of filing so, if the examiner determines a term belongs in a different class to the one claimed, the applicant must pay the additional class fee and there is no option to delete the relevant term in order to avoid the additional fee.
  • Non-traditional marks, such as shape, sounds, taste etc, may now be registered.
  • Lack of inherent distinctiveness may now be raised as a ground of refusal during examination whereas it was previously only a ground of opposition.
  • Applications can now be divided during examination, for example to enable the allowed part of an examination to be registered while examination of the refused part of the application continues.
  • Bad faith has been added as a new ground of opposition and invalidation.
  • Canadian trade mark registrations must now be renewed every ten rather than every fifteen years.

Non-US parties must be represented before TTAB

The United States Patent and Trademark Office (USPTO) has announced that from 3 August 2019 all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board proceedings must appoint a representative who is licensed to practice law in the United States.

This rule has been brought in to increase compliance with United States trade mark law and practice, to improve the accuracy of trade mark submissions to the USPTO and to safeguard the integrity of the United States trade mark register.

Argentina update

On 12 January 2018 it was made compulsory to file a Declaration of Use in relation to an Argentine trade mark registration between the 5th and 6th year following registration.

The declaration consists of a sworn statement and it is not necessary to submit any evidence of use, although submitting the evidence may strengthen the presumption of use.

If the use of the mark has not commenced by end of the period for submitting a Declaration of Use, the term may be extended for a fee for each year the declaration was not filed.  However, declarations may be filed up to 12 January 2020 without the payment of any late filing fees.

Failure to submit a Declaration of Use will not directly lead to the cancellation of the registration, but will lead to a presumption that the trade mark has not been used.  In addition, a Declaration of Use must be submitted before the trade mark registration can be renewed.

If the mark has not been used at all, the registration may still be subject to non-use cancellation action either by the Argentine Trade Mark Office or at the request of a third party.

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