The trademarks field is a rapidly evolving area, subject to the innovation of new products and their accompanying IP rights. With technological developments changing how practitioners and clients alike consider and manage IP, the law is having to undergo a similar shift to stay abreast of the market.
Over the course of our research we have interviewed lawyers from across the globe, and individuals from a range of jurisdictions have highlighted changes in the legislation governing trademarks. In Canada, the new Trade-marks Act entered into force in June 2019, and is the product of Canada’s efforts to bring laws into conjunction with global approaches to trademarks. The new law has important ramifications for trademark owners as it includes the simplification of registration processes and the opening of applications for non-traditional marks. It also joins Canada to the Madrid Protocol, thereby allowing Canada to file marks with World Intellectual Property Organization (WIPO) and benefit from the global coverage WIPO provides. Practitioners in the jurisdiction are hard at work in assisting clients to understand these changes and what steps their companies will need to take to adapt. Sources note that legislation will make it “easier and cheaper to register”, but add: “The flipside is that there will be an increase in opposition and cancellation proceedings due to trademark squatters.”
In Argentina, there have been similar efforts to update the legislation, with decrees coming into force in April 2019 that work to contemporise laws relating to non-traditional marks. These strengthen the powers of the domestic Trademark Office (TMO) and shift the burden of proof in opposition proceedings to the opponent. Commentators affirm that the changes are positive for trademark owners, noting, “In the past, when an applicant faced an opposition proceeding, there was no settlement procedure. Now the TMO will hear the cases.” However, other practitioners perceive the changes as causing confusion, and state that the “new system is coming in and it is causing a lot of delays”. Our interviewees also voice concerns around the possibility of deadlock in the courts as the new rules on opposition proceedings start being implemented.
Perhaps the largest-scale update of legislation is taking place in the EU, where member states have recently harmonised a directive whose steps include the abolition of the graphical representation requirement, simplification of translation requirements and changes to presentation-of-evidence requirements in proceedings. Generally, practitioners report that the changes prompted by the new legislation aren’t too life-changing, but are nonetheless important. As one individual says, “There isn’t exactly turmoil – but definitely some changes.” Generally, lawyers feel confident about the smooth implementation of the legislation and look forward to positive changes it will have for clients, in terms of simplifying processes and opening applications up to more exotic marks.
Perhaps the most evident common thread across these three examples of trademark legislation is a diversification of the space, in that newer and more non-conventional marks are being applied for, and efforts to simplify the procedures are engaging with more and more potential applicants. The downsides of this are clear to practitioners, and many report seeing an increase in oppositions and squatters. However, lawyers see a silver