Five things you need to know – North America

Canada

The Canadian government has deposited its instrument of accession to the Madrid Protocol with WIPO, with the country becoming the 104th member of the Madrid System, which now covers 120 countries. WIPO Director General Francis Gurry also received Canada’s instruments of accession to the Nice Agreement and the Singapore Treaty from Canadian Ambassador Stephen de Boer, permanent representative to the World Trade Organisation. He commented: “This is a true reflection of Canada’s engagement with WIPO and its commitment to multilateralism.” The protocol will enter into force on 17 June 2019.

United States

US President Donald Trump has issued a Memorandum on Combating Trafficking in Counterfeit and Pirated Goods, with the stated aim of expanding and enhancing existing federal government efforts to address “the scale, scope, and consequences of counterfeit and pirated goods trafficking”. The memorandum seeks to facilitate data gathering on the extent of counterfeit trafficking through online third-party marketplaces and to create a coordinated approach between the government (and its law enforcement agencies), private industry and third-party intermediaries (including online third-party marketplaces, customs brokers, payment providers and others involved in international transactions). A report with further recommendations is expected later this year.

United States

Amazon has unveiled its Project Zero programme, which the company claims “combines Amazon’s advanced technology, machine learning, and innovation with the sophisticated knowledge that brands have of their own intellectual property” in a bid to “drive counterfeits to zero”. The project has three dimensions. The first focuses on automated protections to use machine-learning technology to scan its stores and remove suspected counterfeits. The second tool is a self-service aid which allows brands to remove counterfeit listings themselves. The final component of the project is a product serialisation service designed to allow Amazon to individually scan and confirm the authenticity of products that are purchased in its stores. Launched on an invite-only basis, brands are able to join a waiting list on the Project Zero website.

United States

Two interlocutory attorneys at the TTAB – Elizabeth A Dunn and Christen M English – have been promoted to administrative trademark judges. In addition, Jonathan Hudis has joined the board from his position as a partner with Quarles & Brady.

United States

The USPTO’s proposed changes to the Federal Trademark Law would require foreign-domiciled trademark applicants, registrants and parties to TTAB proceedings to use an attorney who is licensed to practise law in the United States. In addition, US-licensed attorneys representing clients before the USPTO would be required to confirm that they are an active member in good standing of their bar and to provide their bar membership information. The move is designed to challenge head-on the problems posed by “foreign trademark applicants who purportedly are represented pro se (ie, one who does not retain a lawyer and appears for themselves) and who are filing inaccurate and possibly fraudulent submissions that violate the Trademark Act and/or the USPTO’s rules”.

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