Five things you need to know – North America
The Canadian Intellectual Property Office has implemented changes to registration fees as of 17 June 2019. A new charge-per-class model will be used – renewals will cost C$400 for a single class and any additional renewals will cost C$125. This is a marked rise from the previous blanket renewal cost of C$350 for any number of classes. Initial filings are also now under the new system, with the original blanket rate of C$250 upped to a C$350 filing rate for a single class and an additional C$100 required for every additional class registered.
New plain-packaging regulations will come into force on 9 November 2019. Canada will adopt the drab brown packaging for all tobacco products placed on the market, with retailers given until 7 February 2022 to sell off their remaining branded stock. The move is intended to bring down tobacco use from 17% to 5%. Canada is the 29th country or territory to move forward with plain packaging for tobacco – a trend that has now spread across at least one nation in every continent.
The Supreme Court has ruled in the highly anticipated Iancu v Brunetti that the Lanham Act’s prohibition on the registration of “immoral [or] scandalous” trademarks violates the First Amendment. Matal v Tam was referenced by the court for its agreement that if a trademark registration bar is viewpoint based, it is unconstitutional. The court found that the “immoral or scandalous” bar similarly discriminates on the basis of viewpoint, putting it at odds with its First Amendment doctrine.
In the event of a trademark licensor’s bankruptcy, the Supreme Court has ruled 8-1 that the licence is breached but not entirely rescinded, putting a circuit split to rest in Mission Product Holdings v Tempnology LLC. Now, a bankrupt debtor’s rejection of an executory contract under 11 USC §365 is equivalent to a breach of that contract outside bankruptcy – this rejection cannot rescind rights that the contract previously granted. Therefore, licensees can continue to use their bankrupt licensor’s trademarks for the remainder of the pre-bankruptcy agreed period.
The USPTO has taken steps to ensure the integrity of its trademark register, issuing a rule requiring all foreign-domiciled applicants, registrants and parties to TTAB proceedings to be represented by a US licensed attorney. Effective from 3 August 2019, the requirement is designed to tackle the unauthorised practice of law and the glut of applications filed with fake specimens of use.