Global View

Canada

A date has been set for the implementation of Canada’s new trademark law, with the long-awaited legislation due to come into force 17 June 2019. This date was announced on 14 November 2018, with the publication of the new Trademark Regulations in the Canada Gazette, Part II (which is part of the process to enact new legislation in Canada).

China

A trademark protection office designed to provide Chinese brands with legal support and know-how as they move into international markets has been established in Shanghai. Located in the city’s Xuhui district, the office will provide guidance on the registration of trademarks internationally, build up an overseas rights protection platform and offer legal services.

Colombia

A new option is available in Colombia to reduce the prosecution time for trademark applications. It is now possible to skip the formal examination of the products/services covered by the application before its publication in certain circumstances. The fees applicable to this new accelerated procedure will be the same as those for regular applications.

Malawi

The Malawian Trademarks Bill 2017 officially became law on 1 October 2018 in the form of the Trademarks Act 2 of 2018. The new act introduces a raft of changes, including a much broader definition of ‘trademark’ and the possibility of obtaining protection for services.

Malaysia

In Pathmanathan v Portcullis (Singapore) Pte Ltd the Court of Appeal has held that while the ‘first user’ principle is useful when determining issues relating to the use of trademarks by unrelated competitors, such an approach is not suitable in cases involving related entities. In doing so, the court has deviated from a long line of cases, including a decision issued by the apex court.

Mexico

The EUIPO has confirmed that the Mexican Institute of Industrial Property (IMPI) is now using the list of goods and services from its harmonised database in both TMclass and IMPI’s own ClasNiza tool. The move means that users can now search for harmonised goods and services across 31 IP offices around the world.

Moldova

Moldova’s State Agency for Intellectual Property has announced some amendments relating to the Madrid Protocol. The amendments will ensure compliance with new rules relating to the protocol and will enter into force on 1 February 2019.

Philippines

The Philippines’ National Committee on Intellectual Property Rights (NCIPR), led by the IP Office of the Philippines, captured a record-breaking haul in counterfeit goods in 2018 and surpassed its previous annual record. In the year to September, the NCIPR had seized P17.9 billion ($34,206,253) in fake goods - representing a year-on-year growth of 840%.

Serbia

On 12 July 2018 the Serbian Supreme Court of Cassation confirmed that parallel imports constitute trademark infringement, revoking the first and second-instance decisions of the Commercial Court and the Commercial Appellate Court. This ruling is notable because even though parallel imports have been prohibited since amendments to the Serbian trademark law entered into force in 2013, court decisions against parallel importers have been rare and inconclusive.

United States

The Supreme Court has granted a petition for a writ of certiorari in Mission Product Holdings v Tempnology. In In re Tempnology the First Circuit decided that a debtor-licensor can reject a trademark licence in bankruptcy, after which the licensee has no further right to use the licensed marks. That decision reinforced the confusion surrounding the use of licensed marks after bankruptcy, the discrepancy between circuits regarding the fate of trademark licensing agreements having been identified by INTA as “the most significant unresolved legal issue in trademark licensing”. The question has now made its way up to the Supreme Court in a bid to end this circuit split.

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