January 16, 2025
New Year, new international IP developments
New Year, new international IP developments

What does 2025 hold for the protection of intellectual property rights globally? We're here to give you a whistle stop tour of some select highlights.

 

US fee changes

Later in January, we will see a significant revamp of the US fees for trade marks. Fundamentally, the costs are not increasing significantly, but they are introducing some financial disincentives to adopting certain approaches.

In the words of the United States Patent and Trademark Office (“USPTO”):

We’re introducing additional fees for applications that are incomplete or contain custom identifications of goods or services. These fees aim to encourage more complete applications, which will improve examination efficiency and help reduce pendency.

What this means in practice is that there will be additional fees, you could call them fines, that will need to be paid to move an application forward for:

  • Insufficient information – this could include information related to the applicant e.g. if their legal form is not provided correctly.
  • Using a free-form text box to enter the specification of goods and/or services rather than from their pre-approved terms.
  • Long specifications – anything over 1,000 characters will incur additional fees.

It is the specification requirement that will take some getting used to for many practitioners. However, the USPTO’s pre-approved terms that are contained in their ‘ID Manual’ are very comprehensive. Of course, that does not mean they cover everything e.g. if you file a trade mark that needs to cover a very new kind of technology then this might not be there. The USPTO will also consider suggestions from members of the public for new terms to be added to the Manual. We can anticipate they may start to receive more of these requests then they have done previously.

At Stobbs, we’ll be ready to craft specifications that meet the USPTO’s immediate approval and we won’t shy away from making suggestions to the USPTO on new terms to add to their Manual.

 

Canada's pilot scheme relating to non-use cancellation actions

North of the border, the Canadian Intellectual Property Office (“CIPO”) will shortly begin a pilot scheme relating to non-use cancellation actions. In Canada, a trade mark registration is vulnerable to cancellation on the grounds of non-use if it is not used for a continuous period of three years.

These cancellation actions, known as Section 45 proceedings locally, can be brought ex officio by the Canadian Registrar. We understand their plan is to select 100 registrations at random in January (with another 100 by the end of the quarter) to face Section 45 proceedings and their owners will need to submit proof of use to maintain their registrations. The rationale is to remove deadwood (unused) trade marks from the Register.

We always encourage trade mark owners to retain records of their use of a mark in a specific territory in case a third-party files a non-use cancellation. The risks of facing this kind of action have now increased slightly in Canada as the CIPO will also proactively instigate these.

 

New trade mark legislation for Bermuda, Hong Kong, the Bahamas, Fiji and the Maldives

In February, Bermuda will introduce more modern trade mark legislation that should improve the registration process, broaden the categories of marks available and provide a more robust enforcement regime. The new Act contains provisions for Bermuda to become a party to the Madrid Protocol, the International trade mark system. I don’t anticipate that happening in 2025, but it's another positive step for the future.

A more likely accession to the Madrid Protocol in 2025 is Hong Kong. Being a Special Administrative Region of China, it will need to be the Chinese Government that accedes on their behalf, but this is in the pipeline along with the necessary legislative amendments required. An interesting quirk I anticipate is Hong Kong businesses won’t be able to designate (mainland) China in an International application, and vice-versa.

In terms of more modern trade mark legislation, new laws are drafted for the Bahamas and Fiji. These do away with the antiquated former British classification system, with them being one of the last two countries using this. I’m not convinced they’ll come into force in 2025 but they will be welcomed when they do as both trade mark systems are old fashioned and slow.

We may also see trade mark legislation introduced in the Maldives. Bar an unusual registration system only open to local business, trade mark protection has typically been sought in the Maldives through the publication of Cautionary Notices, newspaper adverts that put third parties on notice of trade mark rights. Last year, the Maldives Government consulted on a new trade mark law – could things move quickly and this may well be introduced in 2025.

The world of trade marks doesn’t tend to stand still and it looks like 2025 will be no different.

Tags
Trademarks /  IP basics

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