Perspectives

“It appears likely that Canada will need to implement legislation to permit the registration of ‘collective marks’, and in relation to enforcement of marks, the country will need to implement a system that provides for ‘pre-established damages’ in civil trademark proceedings that ‘shall be in an amount sufficient to constitute a deterrent to future infringements and to compensate fully the right holder for the harm caused by the infringement’. This will be welcomed by brand owners as Canada has been long overdue in implementing statutory damages for trademark infringement.”

Mark K Evans, partner at Smart & Biggar/Fetherstonhaugh, reflects on the likely effect of the United States-Mexico-Canada Agreement (3 October 2018)

“While Mr Archambeau’s appointment inaugurates a new chapter in the EUIPO’s story of success, we trust that his previous role as the EUIPO Deputy Executive Director will bring continuity to the Office’s work and strategy, and that the EUIPO will strive to continue delivering quality services, based on a close, transparent, and open collaboration with users. For this, it is key that users and their needs continue to be at the center of any strategy, and that the office maintains focus on its core function: the efficient, unburdensome registration of trademarks and designs.”

Tish Berard, president of INTA, reacts to the news that Christian Archambeau will take the reins permanently as executive director of the EUIPO (2 October 2018)

“The credibility of the Notorious Markets report depends on ensuring that the list differentiates between enterprises that were conceived to promote illicit trade and those that are legitimate marketplaces. As we said in our submission last year, the fact that legitimate online marketplaces like Alibaba, Amazon, and eBay can be abused by bad actors who seek to steal the IP of others does not render those marketplaces illegitimate or ‘notorious’.”

Eric C Pelletier, vice president, head of international government affairs, makes the case for the removal of Alibaba platforms from the Office of the US Trade Representative’s Notorious Markets List (1 October 2018)

“The role of the IP office has changed a lot. [IP offices] still have to deal with increasing numbers of trademark filings, but at the same time, they have been reducing their backlogs. In turn, they have streamlined their processes and improved the quality of their decisions. Ultimately, technology is changing everything and has had an impact in every aspect of the functioning of the IP offices as well as in the users of the system.”

Outgoing national director of the Chilean National Institute of Industrial Property, Maximiliano Santa-Cruz, reflects on the changes that he has observed while in the role (27 September 2018)

“Over the past six years, the number of trademark applications from China has risen almost 1,100 percent. This has presented increased issues with the unauthorised practice of law from individuals outside the US. In light of this and other issues, we are considering a possible notice of proposed rulemaking that would require foreign trademark applicants and registrants to be represented by a US licensed attorney to file trademark documents with the USPTO.”

USPTO Director Andrei Iancu delivers remarks at the Intellectual Property Owners Association 46th Annual Meeting (24 September 2018)

“Technology is an agent of change, and major technological innovations have resulted in paradigm shifts in the way business is conducted. At the ARIPO Office we are utilizing ICT tools to establish our presence in global intellectual property and to foster creativity and innovation for economic growth and development in Africa.”

African Regional Intellectual Property Organisation (ARIPO) Director General Fernando dos Santos celebrates the launches of ARIPO’s regional IP database, which offers access to information on over 400,000 trademark applications and 1,500 designs across 13 different offices (10 September 2018)

“Things have become much more difficult with GDPR coming into force. Much of the WHOIS data we used to have access to, and which would help us to enforce our rights, is now unavailable…. ICANN is trying to work on some solution for brand owners, but for the moment GDPR has made brand rights enforcement online much more difficult. Ideally, I would like the information back to what we used to get, but I am not sure whether they could make that work under the GDPR framework.”

ESPN’s Allison Cantor voices frustration over the effect that the EU General Data Protection Regulation (GDPR) has had on access to WHOIS data (7 September 2018)