Five things you need to know – North America

Canada

The Canadian government has implemented plain packaging on tobacco products sold in retail stores as of 7 February. In a column for local press outlet The Star, the CEO of the Canadian Cancer Society, Andrea Seale, described it as a “landmark achievement”, which followed “a long battle with the tobacco industry”.

United States

Corsearch has acquired Pointer Brand Protection. The move represents a continuation of Corsearch’s growth strategy following its sale to Audax Private Equity in January 2018 and follows the acquisition of Yellow Brand Protection in November 2019. Pointer Brand Protection offers anti-counterfeiting services, which include online-to-offline investigations, test purchasing services, dedicated brand protection analysts and a proprietary software platform for the removal of infringements.

United States

A new act introduced in the US House of Representatives aims to make e-commerce sites more liable for counterfeit products traded by third parties on their platforms. The SHOP SAFE Act 2020 is sponsored by a bipartisan congressional group and lays out a selection of best practices to which e-commerce platforms will have to adhere in order to escape liablity for contributory infringement over the sale of counterfeits. These include using technology to screen for counterfeits before a seller’s goods appear on the platform, implementing a timely takedown process for the removal of listings for counterfeit products and terminating seller accounts that have listed or sold counterfeit goods at least three times.

United States

A total of 4,367 trademark litigation actions were filed at district court level in the United States last year, according to the latest information from Lex Machina. The figure represents a four-year high and means that, for the second consecutive year, more trademark cases were filed than patent cases. In terms of case numbers, the US District Court for the Northern District of Illinois was the top forum.

United States

On 14 February 2020 the USPTO issued a revision to its new examination guide in an effort to address user concerns over an applicant email address requirement. The initial guide stated that new applications “must include an email address for each applicant”, even if there is an appointed attorney. This address would need to be regularly monitored by the trademark applicant and could not belong to outside counsel or a foreign law firm. After users expressed concern, the office issued revised guidelines, which removed the requirement for an applicant represented by counsel to regularly access and review the email account. Further, it clarified that trademark owners that are represented by counsel may provide an email address of their choice in the ‘trademark owner’ email field of the application, including one created for this purpose by themselves or their attorney.

Get unlimited access to all WTR content