In brief 2 min read
There have been significant, and proposed, trade mark law developments across the globe which are likely to inform trade mark portfolio strategy. Lawyer Tess Kirkinis provides an 'around the world' snapshot of these developments.
Proposed amendments to the Trade Mark Regulations 1995 will enable international trade mark registrations designating Australia (IRDA) to be divided into divisional IRDAs (see Draft Regulations). Australia is a contracting party to the Madrid Protocol and these proposed developments arise as a result of changes to the Common Regulations.
The consequence of this is that holders of IRDAs pending before the Trade Marks Office can request an IRDA be divided for some goods and/or services. This will allow acceptance of trade marks relating to goods and/or services which are not subject to an objection by the Trade Marks Office. Once enacted, these changes will align divisional filing strategy of IRDAs with that currently available for national applications (see Explanatory Statement).
IP Australia announced it 'will propose the regulations for making in due course' – so, watch this space!
On 17 June 2019, amendments to Canada's trade marks legislative framework will come into effect to allow Canada to accede to the Madrid Protocol, the Singapore Treaty on the Law of Trademarks and the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks. By acceding to the Madrid Protocol, businesses will be able to file international trade mark registrations designating Canada. By acceding to the Nice Agreement, Canada will formally adopt the 45 general classes used to categorise goods and services across member states, making it easier to search and assess trade marks (particularly as part of an international review), albeit at the cost of additional filing fees.
In late April 2019, the Standing Committee of the National People's Congress amended the Trademark Law which is expected to come into effect on 1 November 2019. In relation to 'bad faith trade mark registrations without intent to use', amendments to the Trademark Law will, among other things, penalise such registrations and invalidate trade marks that have been registered in bad faith. Furthermore, there will be greater penalties for 'malicious' trade mark infringements. These amendments demonstrate a noticeable commitment to enhanced trade mark enforcement in China.
On 1 May 2019, the US Patent and Trade Mark Office issued Guidelines indicating that trade marks relating to goods derived from hemp may now be eligible for federal trade mark protection. This comes after enactment of the 2018 Farm Bill on 20 December 2018, which removed 'hemp' (tetrahydrocannabinol concentration of ≤0.3%) from the definition of 'marijuana', meaning hemp is no longer regulated under the Controlled Substances Act. Accordingly, for trade mark applications filed on or after 20 December 2018 in relation to goods encompassing cannabis derived from 'hemp', the 2018 Farm Bill potentially removes the Controlled Substances Act as a ground for refusal. However, such goods must also be lawful under other laws, including the Federal Food Drug and Cosmetic Act.