Regime overhauls in the Americas: how to navigate bumps in the road
Shifts in trademark processes are presenting challenges for rights holders in Argentina, Canada, Chile, Mexico and the United States. Many jurisdictions in the Americas are moving away from their entrenched legal frameworks, aiming to modernise and streamline procedures for applicants and trademark professionals. However, despite good intentions, these reforms do not always translate into successful practical implementation.
An analysis of the WTR Americas Trademark Prosecution Review 2024 highlights region-wide uncertainty when it comes to the practical implications of changes to trademark regimes, whether legislative or administrative.
Reform in Argentina has “mixed” practical impact as trademark office adjusts
Trademark professionals and the Argentine Trademark Office (ATO) have been wrestling with a “significant shift from traditional practices” since the country’s IP rights system overhaul, according to Ana Paula Gallardo and Bernard Malone of Baker McKenzie (see “Argentina: Navigating the trademark landscape following regime reforms”).
As part of a broader government initiative to “reduce bureaucracy”, the transformation signals a move away from the courts towards more administrative avenues. The aim is to speed up resolutions and achieve more cost-effective outcomes. However, despite these intentions to enhance the efficiency of administrative processes, the “practical impact on trademark claimants has been mixed”, Gallardo and Malone report. On reviewing ATO decisions issued post-reform, they maintain that “the shift in venue and decision maker has not necessarily translated into the expected improvements”.
Evaluation of the reformed system is ongoing, and it is becoming increasingly clear that its success depends on “the office’s capacity to balance the need for efficiency with the preservation of legal principles and fairness in trademark disputes”, Gallardo and Malone say. The path forward is one of “cautious optimism” as the ATO “grapples with the complexities of legal reform”.
USPTO search platform teething problems and shift in approach to related goods
In November, the USPTO launched a new trademark search platform – but while it was designed to be more user friendly, technical hurdles persist. The USPTO “appears to still be working on resolving functionality issues because the new search platform sometimes yields incomplete results and, in a small number of cases, lists incorrect application and registration status”, say Paula Hopkins, Rebecca Liebowitz and Samantha Moskowitz of Venable (see “United States: Best practices for filing and prosecuting trademarks before the USPTO”). This is presenting challenges for applicants and necessitates a cautious approach when using the platform for trademark searches.
Jurisprudence at the TTAB and the USPTO is also changing. The two authorities are now taking “more expansive views of what goods and services are considered related” when it comes to likelihood of confusion, say Jennifer Lantz, Mark Lerner and Lauren Matturri of Duane Morris (see “Recent USPTO decisions shift understanding of related goods and services”). E-commerce and concentrated retail environments have complicated what qualifies as related goods and services based on third-party evidence.
Applicants are under increased pressure because of this shift. For example, the USPTO has found that third-party evidence can bridge the traditional gap between beverages and restaurant services, note Lantz, Lerner and Matturri, and recent decisions in this industry (eg, In re St Helena Hosp, Jacobs v Int’l Multifoods Corp and In re Giovanni Food Co) indicate that applicants must show “something more” than the mere fact that the goods and services are used together to create a presumption of likelihood of confusion.
In light of this, Lantz, Lerner and Matturri advise practitioners to take an equally expansive view of related goods when advising clients on potential obstacles to registration, and to consider what an examiner may find, “even when goods and services initially seem quite disparate”.
Canada adapts to new application system
Five years since significant amendments were made to Canada’s trademark law in 2019, and the Canadian Intellectual Property Office (CIPO) and local trademark professionals are still working to adapt to the new regime and its associated challenges, Sebastian Beck-Watt, Steven Kennedy and Jennifer McKenzie of Cassels Brock & Blackwell report (see “Canada: Streamlining applications in the face of new IP office and legislative hurdles”).
For example, while distinctiveness had been a “cornerstone of Canadian trademark law for decades”, the amendments introduced an explicit prohibition and empowered CIPO to object to registration of a trademark “if ‘on a preliminary view,’ it is not inherently distinctive”, Beck-Watt, Kennedy and McKenzie note. Such a shift has inevitably caused big waves in the Canadian trademark sphere, but Beck-Watt, Kennedy and McKenzie claim that this new rule is “not absolute”.
Looking ahead, the Canadian trademark community anticipates changes that will require registrants to prove actual use before being able to commence legal action against infringement. Beck-Watt, Kennedy and McKenzie expect these changes to come into force within the next year or two.
Madrid Protocol unsettles rights holders in Chile
In Chile, implementation of the Madrid Protocol continues to stir up uncertainty for rights holders. According to Alvaro Arévalo and Francisco Valverde of Villaseca Abogados, the Chilean Trademark Office (CL TMO) has interpreted the protocol as “self-executing”; thus, it does not require reform to the Chilean IP Law to apply it (see “Chile: Applying IP Law under the Madrid Protocol”).
Under the Chilean IP Law, provisional refusal of an international registration in Chile requires the registrant to appear before the CL TMO and to appoint a Chile-domiciled representative. However, it is now “unclear how or when the holder will become aware of the notification of cancellation, creating uncertainty for both parties”, Arévalo and Valverde state.
“No cases have yet been presented,” they note; therefore, the CL TMO is yet to establish any jurisprudence or criteria. “The CL TMO has run into a practical problem with the implementation of the Madrid Protocol in Chile, as it has only issued general instructions for its staff to apply it in a certain way,” Arévalo and Valverde say.
They insist that, in any case, an amendment to Chilean law reinforcing the need to appoint a local representative is necessary.
Delays in Mexico require practical remedies
In contrast, Santiago Pedroza of Olivares claims that Mexico’s opposition procedure has “undergone changes in the interest of better functioning and better protection of the legal sphere of rights holders and of consumers of goods and services” (see “Mexico: Practical considerations for pursuing oppositions”).
But some issues persist – notably, significant delays. “In almost all cases in which an opposition is unfavourable, the Mexican IP Office proceeds to issue the certificate of registration, but the opposition decision is not issued until after several months later,” Pedroza admits. His firm has adopted a practical remedy to combat this issue – filing briefs before the IP office to expedite the opposition decision and increase efficiency.
The WTR Trademark Prosecution Reviews 2024 cast an expert eye on some of the most pressing issues facing those involved in trademark prosecution in the Americas, Asia-Pacific and Europe, the Middle East and Africa. The Americas review can be read in full here.