Legal updates

South Africa
OAPI adopts 11th edition of the Nice Classification
The Trademarks Registry of the African Intellectual Property Organisation (OAPI) announced recently that all new trademark applications which are filed at the OAPI Registry need to conform to the latest (11th) edition of the Nice Classification system on the registration of trademarks. OAPI has acceded to a number of international treaties aimed at creating a modern and dynamic framework and to harmonise administrative procedures in the registration of titles.
United States
TTAB clarifies test for deceptiveness in registration context
In a precedential decision in In re Tapco International Corporation, the Trademark Trial and Appeal Board recently clarified the test for determining whether a mark is deceptive. The term must be misdescriptive of the character, quality, function, composition or use of the goods, purchasers must be likely to believe that the misdescription actually describes the goods and the misdescription must be likely to affect the purchasing decision of a significant portion of the relevant consumers.
Canada
Oh Canada! New regulations bring welcome changes
The Canadian Trademarks Office has released a first draft of the proposed regulations to support new trademark legislation in Canada. The regulations establish the framework for blending the common regulations under the Madrid Agreement with the Canadian regulations in effort to treat Madrid Protocol applications and domestic applications equally, and reflect a welcome modernisation of Canadian practice to accord with international standards.

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22 Jun 2017
Most used counterfeit trade routes revealed as pressure on enforcement authorities continues to rise
New research has revealed that counterfeiters are using Hong Kong, the United Arab Emirates and Singapore as their main global trading hubs, importing containers of fake goods which are then sent on by post or courier in smaller consignments. While providing useful intelligence for rights holders and enforcement officials, the report also highlights a worrying conundrum facing Customs authorities.
21 Jun 2017
“We are the online leader in anti-counterfeiting”: Alibaba’s Jack Ma talks tough as company seeks to woo US SMEs
This week Alibaba is hosting a two-day conference designed to highlight to a range of US-based small and medium-sized enterprises the lucrative business opportunities available in China (and how the e-commerce giant can help them tap into the market). In an on-stage interview, executive chairman Jack Ma took the opportunity to talk up the company’s anti-counterfeiting activities. By making brand protection a central part of its pitch to new customers, the responsibility to provide a truly trusted environment is increasing.
21 Jun 2017
The search to prove that trademark dilution exists; new study casts “serious doubt” on validity of current evidence
Trademark dilution is an often-used legal concept by rights holders of well-known brands, and has been at the centre of a number of well-publicised court battles. Nonetheless, it is also an elusive concept and a new study – which sought to shine further light on the phenomenon – has concluded that there are “serious doubts” on the validity of all current evidence of its existence.

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Grappling with the nuances of trademark law

Decisions focused on administrative proceedings, oppositions, infringement and the use of official marks kept Canadian courts busy in 2016, with a number of critical learnings for counsel
Laurent Carrière reports

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