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Key Highlights:

-    Countries around the world have enacted changes to their trademark laws.
-    The US Trademark Modernization Act has shortened the time to respond to an Office Action by the Patent and Trademark Office to two months, but that may be changed.
-    China has amended its trademark law to respond to a large volume of bad-faith trademark registrations.

This article is based on a presentation at the ACC 2021 Annual Meeting, “Trademark Law Changes Around the World in 2021,” by Lindsay Kaplan, Kilpatrick, Townsend & Stockton, LLP, Harris Henderson, Hanesbrands, Inc., and Lindsay Victor, The Home Depot, Inc.

United States 

In the United States, the Trademark Modernization Act (TMA) was enacted on December 31, 2020, with most changes becoming effective by the end of 2021.

The TMA shortened the time to respond to US Patent and Trademark Office’s (PTO’s) Office Actions from six months to two months, and there is a proposal to change that time period to 3 months with an additional 3-month extension for an additional fee of $125. The proposal is expected to go into effect on July 27, 2022.

The PTO had to shorten the response time because of a large number of applications from China in the last few years, many of which have been considered fraudulent. Companies should pay attention to the response date the examiner sets, then watch for the possible enactment of the six-month period.

The TMA provides for letters of protest, which a third party can file, and are intended to provide grounds for refusal to register a trademark. The purpose of a letter of protest is for a trademark owner to respond to fraudulent applications, and the PTO has two months to respond to a letter of protest.

Under the requirements of the TMA, a letter of protest is more informal than a notice of opposition to a trademark application and does not require much proof. A letter of protest is a simple way for a trademark owner to block trademark applications for similar marks.

The TMA also changed the ways the PTO can clear out applications where a trademark is not in use. The PTO is now asking trademark owners whether their trademarks are in use for all goods at renewal time. If a trademark owner is not using a trademark for certain goods, those goods should be deleted before a renewal is filed. 

The TMA provides for two new ex parte procedures (reexamination and expungement), and one new ground for cancellation for non-use.

Reexamination is a challenge to a trademark based on an allegation there has been no use of the trademark. A request for reexamination must be brought within first five years of registration and is not available for foreign-based registrations.

A request for expungement is based on a claim that a trademark has never been used for the products or services for which the trademark was issued. A petitioner can ask for removal of part or all of trademark use and standing is not required. To support an expungement request, a petitioner must make a reasonable investigation of use, such as considering the channels of trade for the product; conduct more than a single search in a search engine; and the burden is on the trademark owner to prove use. 

To defend a trademark from a request for expungement, an owner should not submit the specimen of use from the original application. Co-pending challenges are not permitted. If a trademark registration survives a challenge, it cannot be challenged again.

There also is cancellation for non-use. Formerly, non-use cancellations only applied to registrations in first 5 years, but the TMA changed the period to three or more years with no upper limit.

Canada

Until recently, under Canadian law, a trademark for hotel services could not be used if it was not for a brick-and-mortar hotel located in Canada. When the Waldorf Astoria wanted to register its trademark in Canada, it needed to have a physical presence in Canada to be able to register a hotel services mark but didn’t have any physical hotels in Canada. The Canadian Intellectual Property Office would not allow the Waldorf Astoria to register a trademark without a physical hotel in Canada. 

The Waldorf Astoria’s owner, Hilton Worldwide Holdings, challenged the denial of registration in the Canadian courts, and claimed its world-wide reservations system was sufficient for a presence in Canada. In Miller Thomson v. Hilton Worldwide Holdings LLP (2020 FCA 134) the court agreed that Hilton presented evidence that its hotel reservation system could be used entirely in Canada, which was sufficient to support the registration of a trademark.

China

China enacted a new trademark law at the end of 2019. The purpose of the law is to address bad-faith trademark registrations.

There are several grounds a trademark owner can claim to defend a trademark. A trademark owner can claim a new registration application: 

•    is similar to prior trademarks,
•    is similar to prior copyrights,
•    is similar to well-known trademarks in China, 
•    is similar to famous trade names, 
•    is unregistrable, or 
•    was filed in bad faith.

A lack of prior trademark rights in a particular class is no longer fatal to enforcing rights against a third-party. To protect a trademark without prior registration against a new registration, an owner can claim the mark is well-known, or that the lack of registration only applies to a certain subclass. An owner can claim bad faith on the part of applicant. 

An owner also can claim trademark protection based on a copyright that was obtained prior to the application for the disputed trademark. In that case, the owner must establish that the disputed mark is like the copyrighted work and that the use was unauthorized by the copyright owner. It is easier to get a copyright than a trademark in China. 

European Union and United Kingdom (UK)

At the end of Brexit transition period on December 31, 2020, all pending European Union (EU) trademark applications were allowed to be refiled as new UK applications by September 30, 2021. Now that the UK and EU are separate, trademark applications must be filed simultaneous in the UK and EU. 

Mexico 

In 2020, Mexican law was changed to allow for a petition for non-use of some products or services within a trademark class. Previously, registrations could cover an entire class of products or services, even if there was no use of the trademark in some subclasses. Some products or services could not obtain a trademark for goods in a subclass that were covered by a general trademark, but not used for the subclass. The new law allows for the partial cancellation of a trademark for non-use. 

Myanmar

Myanmar has a new trademark system with the 2019 enactment of a formal trademark law. Previously, the only way to assert a trademark was a declaration of ownership, or cautionary notices. Myanmar is currently allowing parties that have declarations or notices to start the formal application process early. The administration of the trademark law is still being set up.

Learn More:

ReadWell-known Trademarks in the PRC” by ONC Lawyers. 

ReadA Guide to Creating Chinese-Language Trademarks” by Joseph Simone, Partner, and Christopher Smith, Partner, Simone Intellectual Property Services, October 2020.

ReadACC Quick Overview: Opposing Trademark Applications in Canada,” by Kwan T. Loh and Reagan Seidler, Smart & Biggar.

ReadFive Key Considerations for Corporate Counsel Looking to Enforce Trademark Rights in Canada,” by Mark Evans and Graham Hood, Smart & Biggar. 

ReadA Corporate Counsel Guide to Post-Grant Proceedings at the United States Patent & Trademark Office (USPTO),” by Justin L. Krieger, Managing Partner, Denver Office, John C. Alemanni, Mr. Morlock, and David Reed, Kilpatrick Townsend & Stockton (2020).

ReadTrade Secrets: Legal Framework and Best Practices for Enforcement (United States),” by Joel Bush, Partner, Allen Garrett, Partner, and Ben Richardson, Associate, Kilpatrick Townsend & Stockton LLP (2020).

Check out the ACC Resource Library: www.acc.com/resource-library

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Region: Global
Interest Area: Intellectual Property
The information in any resource collected in this virtual library should not be construed as legal advice or legal opinion on specific facts and should not be considered representative of the views of its authors, its sponsors, and/or ACC. These resources are not intended as a definitive statement on the subject addressed. Rather, they are intended to serve as a tool providing practical advice and references for the busy in-house practitioner and other readers.
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