Exciting changes to trade mark regimes in China and Canada are afoot in 2019 which is good news for global brand owners. Changes in China will help with the enforcement of existing rights, while changes in Canada should streamline the trade mark application process.
China has long been a challenging jurisdiction for brand owners, particularly in facing bad faith applications, and infringing products. However recent changes to the law indicate a more optimistic future. In our last edition of Brand Matters we reported on a new e-commerce law requiring e-commerce platform operators to deal with IP rights infringements. An amendment to intellectual property laws, coming into force on 1 November 2019, deals with a number of issues, including bad faith applications. In particular, a trade mark application will be considered to have been filed in bad faith if it was made without an intention to use the mark.
This means there will now be three stages at which a bad faith application can potentially be stopped. First, the Trademark Office of National Intellectual Property Administration will not allow applications made without an intention to use to proceed to registration. Second, should an application proceed past this initial review stage to publication, owners of earlier trade mark rights can raise an objection on the basis of bad-faith. Third, if the application reaches registration, a third party can apply to invalidate the registration on the grounds of bad faith.
The amended law will also increase the maximum amount for statutory damages (which apply where the loss/profit is difficult to determine) from RMB 3 million to RMB 5 million, and the penalty for malicious trade mark infringement from three times the actual loss suffered by the earlier rights owner to five times this amount or the profits of the infringer.
These changes should be helpful to brand owners seeking to protect their trade mark rights in China.
Until recently, Canada has been something of an outlier when it comes to trade mark application procedure. However, on 17 June 2019 a number of changes came into force, with Canada acceding to a number of international treaties and making significant reform to its trade mark laws.
Joining the Madrid Protocol means that trade mark protection can be sought in Canada by making a single application (for a single fee) at WIPO for an International Registration. Canada can now be designated under such an application alongside any of the other 121 countries covered by the Protocol. Notably Brazil has also joined the Madrid Protocol this year, with the system coming into force for Brazil on 2 October 2019.
Canada has also joined the NICE Classification System, which requires applicants to classify the goods and services covered by their trade mark application. This change will introduce a pay-per-class fee model. This should streamline the application process and make it easier to identify potentially confusing marks already on the register.
Third, rules in respect of registering non-traditional trade marks such as colours, tastes, sounds, moving images, holograms have been clarified. This will align the Canadian trade mark regime with the EU's approach to non-traditional marks are registrable (the first moving multimedia mark has just been registered at the UKIPO).
A number of important procedural changes to the application process have also been introduced. The requirement to prove prior use of a trade mark to obtain a registration will be removed. Instead, trade mark owners will need to prove use of a trade mark in any action for infringement or depreciation of goodwill brought within the first three years. In addition, trade marks will be granted for a period of ten years, rather than the existing fifteen year term, and trade mark applications can now be challenged on the basis of bad faith.
These changes will be helpful to global brand owners looking to protect their marks in Canada as procedure will now more closely align with other prominent filing jurisdictions.
Global brand owners need to consider the impact of the above developments on their existing trade mark portfolios and any new applications made after the implementation dates.