Minutes - TRIPS Council - View details of the intervention/statement

H.E. Ambassador Dagfinn Sørli
United States of America
57.   The Trademark Modernization Act (TMA), signed into law on 27 December 2020, gives the United States Patent and Trademark Office (USPTO) and trademark owners additional tools to reduce trademark clutter and better protect the integrity of the US trademark register. The federal trademark register must be accurate as to claims of use to be helpful to entrepreneurs, innovators, and brand owners as they make marketing and branding decisions. In recent years, the USPTO has received an increasing number of trademark filings with questionable and sometimes bogus claims of use, raising concerns about invalid registrations which cause clutter and "deadwood" on the register. To address these concerns, the USPTO has launched several initiatives to better protect the accuracy and integrity of the US trademark register, including the initiatives found in the Trademark Modernization Act. The TMA provides new tools that can be used to challenge applications or registrations containing inaccurate or false claims of use. 58.   Some of these tools include letters of Protest which allows third parties to submit evidence to the USPTO, prior to registration, relevant to a ground for refusal in examination. This also provides for Expungement and Reexamination: The legislation provides new registration cancellation mechanisms, namely Expungement and Reexamination, so that third parties or the USPTO Director may challenge registrations that are not in use as required by our statute. In particular, these new post-registration procedures provide powerful tools to contest trademark registrations obtained or maintained through inaccurate claims of use that currently cannot be cleared from the trademark register except through costly, time-consuming cancellation. 59.   Under the new ground of expungement for Trademark Trial and Appeal Board (TTAB) cancellation proceedings: Parties may now request the cancellation of a registered trademark through the USPTO's TTAB, specifically that a registered trademark has never been used in commerce. The TMA and its implementing regulations provide other changes to existing procedures, for example: a. Shortening deadlines which allow applications to move more quickly through the system; b. Fraudulent designation of an attorney that may not be recognized; and c. Court orders concerning registrations: The final rule codifies the USPTO's longstanding procedures concerning action on court orders cancelling or affecting a registration. 60.   Regulations implementing the Trademark Modernization Act of 2020 (TMA) went into effect on 18 December 2021 and we will be happy to provide any additional explanation or information regarding this Act.
12. The Council took note of the notifications and the statements made.
4. The Chair invited the Secretariat to update delegations on the notifications under various provisions of the TRIPS Agreement that had been submitted since the meeting in October 2021, to then offer the floor to delegations wishing to introduce their notifications.
5. The representative of the Secretariat said that the Council had received the following notifications, under Article 63.2 of the TRIPS Agreement:
a. Australia had notified amendments to its Designs Act that implemented recommendations from a review of its designs systems, providing more flexibility to designers in the early stages of getting registered design protection;
b. Japan had notified revisions to its Design Act, Patent Act, Trademark Act and Copyright Act;
c. The Russian Federation had notified amendments to its laws permitting compulsory licensing with regard to patents, industrial designs, and layout-designs, and introducing provisions that allow compulsory licensing of pharmaceutical products for export;
d. The Kingdom of Saudi Arabia had notified has notified a Law on Commercial Courts that established rules and procedures for commercial courts that included claims and violations arising from the implementation of intellectual property laws;
e. The United Arab Emirates had notified a new law on the Regulation and Protection of Industrial Property Rights encompassing patent, utility model, industrial design, integrated circuit layout design, as well as undisclosed information;
f. The United States had notified its Trademark Modernization Act of 2020, which provided, inter alia, new procedures to challenge Federal applications and registrations with bogus or inaccurate claims of use;
g. Trinidad and Tobago had notified a consolidated version of its Trade Mark Act, which modernized numerous aspects of the trademark regime, including definitions, well-known marks, registry organization and border enforcement protection against counterfeit trademark goods;
h. The United Kingdom had notified a Trade Mark and International Mark Amendment Regulation 2021, addressing questions of retained European Law pertaining to trademarks; and two Orders amending the 2016 Copyright and Performances Order extending further protections to certain countries' nationals in order to implement recent free trade agreements signed by the United Kingdom and in response to countries recently joining the WIPO Performances and Phonograms Treaty;
i. Switzerland had notified amendments and regulations related to: patents and the Federal Patent Court; drugs and medical devices; Protection of Trademarks and Indications of Source; protection of designations of origin and geographical indications for agricultural products; use of Swiss indications for foodstuffs; copyright and related rights; designs protection; as well as on the protection of the coats of arms of Switzerland, the Swiss Red Cross, and the Names and Emblems of the United Nations Organization and other Intergovernmental Organizations; and
j. Brazil had notified amendments to its Industrial Property Act, its Plant Variety Protection Law, and several other laws and regulations in order to promote the ease of doing business.
6. The Chair invited delegations that had provided new or revised notifications to the Council to introduce those notifications. The representatives of Australia; Brazil; Trinidad and Tobago; Japan; Switzerland; the United States; the United Kingdom; the Kingdom of Saudi Arabia; and the Russian Federation took the floor.
7. The Chair invited the Secretariat to introduce the "Annual Report on Notifications and other information flows" (document ).
8. The representative from the Secretariat took the floor.
9. The Chair thanked delegations for the information provided on their notifications and welcomed the information provided by the Secretariat. He noted that notifications to the Council were not keeping up with the actual development of laws and regulations relating to TRIPS and emphasized that Article 63.2 of the TRIPS Agreement was not a one-off requirement. It was a core element of the TRIPS transparency arrangements, and a central part of the Council's substantive work. The "Annual Report on Notifications and Other Information Flows" (document ), which had been introduced by the Secretariat provided a Member-by-Member overview of each Members' most recent notifications and a number of Members had not notified any of their legislative changes for, sometimes, over ten years.
10. He urged Members to keep up-to-date their notifications by submitting any new or revised laws or regulations to the Council, as well as completing their initial notifications in case any material was still outstanding. The same applied to the Checklist of Issues on Enforcement which had been established by the Council as an element of Members' notification obligations. In this regard, he commended Switzerland for the submission of updates to its responses. However, most of the responses by other Members had not been updated for the last 20 years. Detailed information on individual Members was available from the Annexes of the Annual Notification Report.
11. The Chair recalled that all these notifications could be made through the e-TRIPS Submission System. The Secretariat was available to respond to any question in that regard.
12. The Council took note of the notifications and the statements made.
IP/C/M/104/Add.1, IP/C/M/104/Rev.1, IP/C/M104