NEW RULES IN THE UNITED STATES FOR FOREIGN TRADEMARK FILERS
Effective August 3, 2019, the U.S. Patent and Trademark Office (USPTO) will now require all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney licensed in the United States. We are able to assist with representation before the USPTO, and can answer any questions you may have on U.S. trademark filings.
CANADA JOINS THE MADRID PROTOCOL
In a move anxiously anticipated by brand owners for many years, Canada has finally joined the Madrid Protocol. Owners of International Trademark Registrations can now designate Canada, and protect their marks one of the world’s largest economies. As of June 17, 2019, trademark owners can file an application to extend their rights to Canada, in addition to the other 120 countries which are covered by the Madrid System.
If you are interested in international trademark protection in Canada or any other jurisdiction, please contact us at dstewart@gtilaw.com, and we can provide you with any information and fixed fee quotations you need to move forward in protecting your valuable intellectual property rights.
Coming Soon to the Madrid Protocol…Brazil and Malaysia!
CHINA: NEW AMENDMENTS TO TRADEMARK LAW PROVIDE BETTER PROTECTION FOR BRAND OWNERS
China has recently made changes to its Trademark Law which provide brand owners more protection. With effect from November 1, 2019, China will no longer allow the registration of trademarks filed in bad faith by those with no actual intent to use the marks. Until now, it has been possible for a third party to register a trademark and hold onto it for the sole purpose of selling it to the actual brand owner at a high price. The new changes to the law also increase the amount of punitive damages awarded in cases involving bad faith or other serious circumstances.
While the changes to the law do provide increased protection to brand owners, it is always highly advisable to register your mark in China, in both the original language as well as for the Chinese language version. It is not uncommon for unscrupulous individuals to register the Chinese language version of a mark, and hold the registration hostage until the true brand owner agrees to purchase the registration at a very high price. In addition to registering their trademarks, brand owners would be wise to record their trademarks with Customs. Upon recordal of the registration with Customs, officials will have the ability to notify brand owners of any suspected infringing or counterfeit goods, as well as to detain those goods during the investigation into the alleged infringement.
If you are interested in international trademark protection in China or any other jurisdiction, please contact us at dstewart@gtilaw.com, and we can provide you with any information and fixed fee quotations you need to move forward in protecting your valuable intellectual property rights.