With the ever increasing ubiquity of technologies improving everyday tasks in personal life, it is little wonder that such technologies are also offering efficiencies and advantages in the work context. Phrases such as process automation, data mining, machine learning and actionable intelligence are no longer far-out themes, but instead are being used regularly (and with great benefit) across multiple industries – including those outside of the tech space.
In lawyer language, these concepts translate into one previous seemingly impossible (and very valuable) commodity: the ability to buy-back time. But don’t be fooled – introducing technologies into legal firms is not an invitation for lawyers to retire on redundancy packages just yet. Instead, these technologies provide a new opportunity to focus on legal expertise skill sets while relying on computer aids to perform administrative tasks in a more efficient and accurate way than ever before.
In this article, we focus on the benefits available to intellectual property lawyers while both managing global client portfolios and working to commercialise client intellectual property rights.
Managing global intellectual property portfolios
Most intellectual property lawyers will tell you of the professional satisfaction and enjoyment of being provided with the opportunity to strategically advise clients on the management of IP portfolios – from gaining insight into innovative goods and services offerings, to seeing new brands being developed and evolve. But it is the less strategic (and let’s face it – more mundane) tasks which don’t spark as much joy. Enter technology – to takeover on the mundanity and open up time for the joy!
The three core areas in which new technologies are currently improving the performance of intellectual property portfolio management services include (1) prosecution and maintenance processes, (2) infringement and counterfeit management and (3) globalisation and watching activities.
IP portfolio prosecution and maintenance processes, including filings, recordals and renewals, are streamlined, with platforms now allowing communication between the managing agent and multiple foreign associates at the click of a button. Foreign associate responses are centralised and data input automated, eliminating the previously experienced inefficiencies and input errors due to multiple data entry steps. Deadlines are automatically monitored and actioned, documents and information are shared easily with authorised recipients, and learnings result from data collected.
In the context of infringements and counterfeits, while movement towards improved legal structures in “problem jurisdictions” is now being seen (such as the proposed changes in China for “abnormal trade mark applications” discussed here), unless such unauthorised uses/infringements can be easily identified, the legal structures are of little help. Thanks to new technologies however, monitoring for such unauthorised use is easier than ever on a global scale. Platforms are available to monitor market activity and send alerts where individual infringements or counterfeiting networks are identified. Market activities can be automatically monitored in multiple languages across online marketplaces, social media platforms, websites, mobile messaging applications, 3D printing websites and mobile application stores. In certain instances, automated take-down processes are even initiated where computer-monitored technologies identify unauthorised use of intellectual property rights.
Finally, watching activities on a global scale are streamlined and automated, eliminating the need for junior practitioners to endure the painstaking task of manually reviewing trade mark journals. For firms and clients alike, the resulting cost savings are immense. AI technologies and algorithms enable an automatic comparison of trade marks, reporting of results in order of relevance and altogether removal of results which aren’t remotely similar. These technologies even offer watching capabilities across languages, and also across foreign character translations and transliterations.
Commercialising intellectual property rights
Legal work focused on the commercialisation of intellectual property rights are similarly benefiting from the introduction of technologies into the legal space. Tasks such as (1) tracking the creation of IP within companies, (2) drafting commercial documents and (3) managing contractual lifecycles, obligations and liabilities are easier than ever before.
Tracking the creation of IP within organisations is a notoriously difficult task due to the ubiquity of IP, fast moving nature of IP creation and number of contributing authors. As technologies improve however, so too does the ability to better perform this task. New technological offerings are experiencing great interest as they offer the capacity to create automated registries of IP created and easier exploitation of such IP. Obvious efficiencies are provided to companies which would otherwise need to manually update IP registers or conduct periodic IP audits.
Drafting efficiencies also continue to be experienced as technologies improve. Precedent documents have always existed as a starting point for contract automation, but with technological development, this has been taken much further. AI technology now exists to collect basic information necessary to create a draft document, to automatically input such information into contractual frameworks and to identify key legal issues. Machine learning continues to improve these technologies, as computers pick up on lawyers’ interaction with documents to improve upon future performance. As with the portfolio management efficiencies described above, time is then freed for lawyers to focus on legal expertise skill sets, rather than mundane data input tasks.
In the context of contract management, technologies now exist which automatically flag legal obligations or liabilities on an ongoing basis, avoiding pitfalls experienced where contracts are simply forgotten about and obligations not actioned. Blockchain contract management solutions may even be a future possible focus for IP rich industries, with the possibility for royalty payments, licence fees, renewals, sublicensing or sample approvals to become part of a ledger for each IP asset’s digital ID.
So why do the lawyers need to stick around?
What is clear from these technologies is that they are providing immense improvements to the legal landscape. In addition to the contexts discussed, technologies are also available to mine litigation data and make decisions surrounding available legal avenues, likely performance of legal firms and even predictions for judicial decision outcomes. Automated technologies also exist to provide input for new branding, taking into account branding clearance considerations across multiple languages.
So with all of these automated capabilities, lawyers squirming in their seats and fearing for their continued employment may begin to question, “what I am needed for?”. Well do not fear – your jobs are safe (for now)!
The human touch is a commodity which cannot be underrated. Without emotional intelligence and the ability for critical thinking, computer technology can only get so far. Due to the subjectivity often involved in applying the law, the interplaying factual complexities which always exist and the unavoidable need for client management, human involvement cannot yet be discounted. Further, we are not yet equipped to deal with the ethical dilemmas which arise when things go wrong. From an ethical perspective, who is at fault when a computer is performing the legal work? And what regulations exist to keep checks on computer performance?
So as the heart palpitations decrease for lawyers at large, it is clear that human involvement in legal work will be necessary for some time to come. But the advantages which technologies can provide in contributing to legal services is clear, and from these authors’ perspectives, should continue to be promoted and exploited as the ever increasing improvements in legal supporting technologies come to light.
On March 4, 2019, the U.S. Supreme Court settled a split between federal appeals courts in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC, regarding when a copyright owner may sue for copyright infringement in court. The Court unanimously held that an infringement lawsuit based on alleged copyright in a work is prohibited until the work is federally registered with the U.S. Copyright Office, rather than when the author submits the application to the Copyright Office. (See opinion of the Court.)In the U.S., federal law, 17 U.S.C. § 411(a), states that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.” The dispute in this case centered on the meaning of “registration . . . has been made.” Interpreting this language, some courts previously allowed copyright owners to sue for copyright infringement as soon as an application for copyright was filed with the Copyright Office, while others permitted the lawsuits only after the Copyright Office reviewed and registered the copyright.
Justice Ruth Bader Ginsburg, writing for the Court, held that the “registration approach,” instead of the “application approach,” “reflects the only satisfactory reading of §411(a)’s text.” The Court discussed the plain language and legislative intent of the statute. The Court acknowledged the delays in Copyright Office’s registration processing time, and suspected it was likely not what Congress envisioned when it set up the relevant statutory scheme. Nevertheless, the Court maintained the unfortunate administrative lag “does not allow [it] to revise §411(a)’s congressionally composed text.” Instead, the Court suggested that Congress could authorize more staff for the Copyright Office, to help with the applications backlog.
The Court also clarified that even though copyright infringement claims cannot be brought in federal court prior to registration, upon registration a copyright owner may recover for infringement occurred both before and after registration. Additionally, even under the unanimous rule announced by the Court, there are limited circumstances where a copyright owner is allowed to sue for infringement before registration. One of these limited situations is where the copyright owner obtains a preregistration for its work of “a type vulnerable to predistribution infringement,” such as a movie or musical composition. Another exception involves live broadcasts. However, even though a copyright owner may sue for infringement of a live broadcast before the broadcast is registered, the copyright owner faces dismissal of her suit if she fails to register the broadcast within 3 months of its first transmission. The Court emphasized “[e]ven in these exceptional scenarios,  the copyright owner must eventually pursue registration in order to maintain a suit for infringement.”
The Court’s opinion brings more clarity to future copyright owners and courts involved in copyright infringement lawsuits, and further highlights the importance of obtaining registration with the Copyright Office in an expeditious fashion. However, the retroactivity of this holding is unclear. Copyright owners who currently have an application and a lawsuit pending should consider strategies in the face of dismissal motions or decisions.
As a “first-to-file” system is adopted in China, where no intention to use or evidence of use is required as part of the trademark application process, so Chinese squatters can easily file applications for trademarks which are identical or similar to foreign brands. Squatters have been making a tidy profit “selling” these pre-emptively registered marks to the owner of the brand when they enter the Chinese market. If the squatter has not had any prior dealings with the brand owner, it can be difficult to allege traditional “bad faith” on the part of the squatter, and such pre-emptively registered marks can rarely be removed based solely on the existing opposition or invalidation grounds available. This has caused a real headache to foreign brand owners.
In response to this, the China National Intellectual Property Association (“CNIPA”) published draft Regulations on regulating “abnormal trademark applications” on its official website for public consultation in February 2019. Some of the features of the draft Regulations are highlighted below:
Definition of the ‘Acts of Abnormal Trademark Applications’
Article 3 of the draft Regulations sets out eight acts which are considered as “acts of abnormal trademark applications”:
Copying trademarks which are widely recognized by the relevant public and riding on the goodwill of other parties;
Pre-emptively applying for trademarks which have been used by other parties and have attained a certain extent of influence, and riding on the goodwill of other parties;
Pre-emptively applying for the same or similar trademarks where the applicant knew or should have known of the other party’s prior rights;
Filing trademark applications repeatedly with a clearly improper intention;
Applying for a large number of trademarks in a short period of time which obviously exceeds the reasonable limit;
Applying for trademarks without a real intent to use and actual need;
Other acts of filing trademark applications which violate the principle of good faith, infringe against the legitimate rights and interests of other parties or disrupt the market order;
Assisting others or acting as a trademark agent in the aforementioned situations.
There are existing laws and regulations in place to tackle some of these “bad faith” behaviors. According to the draft Regulations, the acts of “repeated filings”, “large number filings” and “filing applications without real intent or actual need” will be considered as “abnormal” and can themselves be a ground of rejection. Furthermore, the draft Regulations also capture the acts of trademark agents who assist in filing such abnormal trademark applications.
Article 4 of the draft Regulations provides that the ‘acts of abnormal trademark applications’ may be dealt with as follows:
(1) The Chinese Trademark Office (“CTMO”) may require the applicant to submit evidence and explanations for filing the abnormal trademark application. Under the current regime, as the “first-to-file” principle is adopted, there is no need for the trademark applicant to file any evidence or explanations as part of the application process. With this power in place, this should certainly increase the costs on squatters and possibly discourage them from filing large volumes of squatting applications.
(2) The CTMO may invalidate abnormal trademark registrations. Under the current regime, any party may file invalidations against any trademark registrations within five years of its registration where it is deemed to have been filed “improperly”. That said, from our experience, it can be difficult to invalidate those marks unless there is traditional bad faith evidence. The draft Regulations extend the scope for rejecting trademark registrations to situations where bad faith is not so obvious.
(3) The CTMO may reject applications for assignment of “abnormal” registrations, on the ground that their transfer would create “adverse effects” under the Trademark Law. This provision should be helpful to reduce squatters simply transferring rights to another “cleaner” shell company.
(4) Trademark agents who have assisted in filing abnormal trademark applications may be sanctioned and a note recorded in the agent’s “credit file”, and its business license may even be cancelled where the circumstances are serious. It appears the CNIPA is planning to take more active steps to tackle bad faith and abnormal trademark applications. The draft Regulations are quite high level, and so it remains to be seen how these Regulations will be implemented and whether they do discourage squatters from filing pre-emptive trademark applications. The consultation period concludes on March 14, 2019 and we shall await to see what CNIPA announces thereafter.
As we have reported previously, the Canadian Trade-marks Act is set to undergo significant changes as of June 17, 2019.
As Canada is finally adhering to the Nice Classification system, one of the most significant changes that trademark owners will notice is that government fees for filing and renewal will go up – significantly for some! – for multi-class applications and registrations:
currently CAD $250, filing fees for an application covering a single class will increase to CAD $330, with fees of CAD $100 for each additional class
currently CAD $350, renewal fees for a renewal covering a single class will increase to CAD $400, with fees of CAD $125 for each additional class
In view of these imminent changes, we are strongly recommending that trademark owners review their current portfolios in Canada and consider both:
Filing multi-class applications now to avoid additional filing fees
As Canada is also eliminating the requirement to use a mark anywhere in the world prior to registration, we encourage brands to consider expansive filings prior to June 17, 2019
Requesting renewal now on multi-class actions to avoid additional class fees and defer the costs of classification
After June 17, all goods and services covered by a registration will need to be classified into Nice classes, which for some existing registrations is expected to be a timely and potentially expensive endeavor – by renewing now, brand owners can defer the cost of such classification until the next renewal deadline, in addition to the up-front class fee savings
To note that renewing early will not affect the registration term, which will be reduced from 15 to 10 years for all renewals coming due after June 17, 2019
We will be continuing to provide more information and recommendations on the upcoming changes in the months to come.
If you have any questions about early renewal, or any other aspects of the upcoming changes, please contact a member of our Canadian trademarks team.
Advertising Standards Canada (“Ad Standards”) is a not-for-profit self-regulatory body that provides competitors with a confidential forum for the resolution of advertising disputes as an alternative to a court action. The process for dispute resolution with Ad Standards is governed by the Advertising Dispute Procedure (the “Dispute Procedure”). The Dispute Procedure is intended to provide a quick, pragmatic and cost-effective process to resolve advertising disputes and facilitate the expeditious amendment or withdrawal of advertising that contravenes the Canadian Code of Advertising Standards (the “Code”).
On February 11, 2019, Ad Standards significantly amended its Dispute Procedure as a result of the consultations it had conducted over the course of 2018. In addition to consulting members, Ad Standards considered the dispute procedures of self-regulating advertising agencies in other jurisdictions, including the National Advertising Division in the United States and the Advertising Standards Authority in the United Kingdom, to optimize its Dispute Procedure.
Below is an overview of the key changes to the Dispute Procedure.
Complainants must show good faith attempt to resolve the dispute prior to filing a complaint
In order for a complaint from an advertiser to be accepted by Ad Standards, the complainant must satisfy Ad Standards that it has made a good faith attempt to resolve the disputed issues, but without success.
Resolution meetings are now voluntary
Prior to the recent amendments to the Dispute Procedure, parties to a dispute were required to participate in at least one resolution meeting conducted by Ad Standards for the purpose of reaching a mutually agreeable resolution of the issues in dispute. Although either party can now request a resolution meeting, attendance is no longer mandatory.
No oral hearing; written submissions only
If the parties are not able to come to a mutually acceptable resolution of the issues in dispute, the parties may make written submissions to an adjudication panel. However, the Dispute Procedure no longer includes an opportunity for oral submissions.
Downsized Adjudication Panel
Under the new Dispute Procedure, the adjudication panel has been downsized from a five-member panel to three-member panel. The panel is chaired by a lawyer experienced in advertising and marketing law, joined by two panellists drawn from the advertiser, communication/advertising agency, media and industry sectors.
Discretion regarding the timing of the remedial action
Under the previous Dispute Procedure, a defendant advertiser would be required to withdraw or amend the offending advertisement in accordance with the adjudication panel’s decision based on a fixed timeline. Under the new Dispute Procedure, the adjudication panel has the discretion to set an appropriate time in rendering a decision for the defendant advertiser to amend or withdraw an offending advertisement. The timeline for the implementation of corrective actions will depend on the media within which the advertising appears and the ease or difficulty with which the requisite corrective action can be accomplished.
No right of appeal
The new Dispute Procedure, unlike its predecessor, does not allow an unsuccessful party to appeal the decision. The decision of the adjudication panel is therefore final.
Publication of case summaries
The Ad Standards dispute resolution process remains entirely confidential under the new Dispute Procedure. That said, Ad Standards will publish summaries of the decisions rendered, but will not disclose the identity of the parties and of the members of the adjudication panel. However, Ad Standards may publish the identity of the parties where the defendant advertiser fails to fully implement the remedial action outlined in a decision.
Shorter “Start-to Finish” timelines allow for significantly lower fees
Ad Standards estimates that the entire advertising dispute resolution process can be completed in 32 to 37 business days. Having greatly simplified its Dispute Procedure, Ad Standards is now able to offer its dispute resolution service at significantly lower fees than those under the old Dispute Procedure.
The hope is that these streamlined procedures provide a more effective alternative for resolving advertising disputes.
In our recent post (click here to access), we confirmed that for EU trade marks which are registered at the withdrawal date, either 29 March 2019 (no-deal scenario) or 31 December 2020 (deal scenario), new UK national rights will be cloned onto the UK register, automatically, without charge and retaining all relevant dates. The new UK rights will be known as “comparable trade marks”. Owners will be able to opt-out and may wish to do so if a comparable trade mark results in unnecessary duplication on the UK register.
This post deals specifically with EU trade mark renewals in the event of a no-deal Brexit on 29 March 2019.
if the renewal date is on or before 29 March 2019 and the renewal is attended to beforehand, then the UK comparable trade mark will be created as a renewed mark; however
if the renewal date is after 29 March 2019 then the EU and the UK comparable trade mark, will need renewing separately. This is because even if steps have been taken to renew EU trade marks early and the register has been updated, EU renewals only take effect from the day following the date on which the existing registration expires (Article 53(6) EUTMR 2017/1001).
Take steps now to renew any EU trade marks which fall due on or before 29 March 2019, to avoid late payment and separate UK renewal fees.
If the renewal date falls after 29 March 2019, then factor in the renewal and the additional cost of the UK comparable trade mark, subject to checking beforehand if a possible opt-out looks to be relevant.
This information will help businesses plan and budget for renewals in the event of a no-deal Brexit.
If you would like further information, or have questions, please contact:
In our last post, we confirmed that for EU trademarks which are registered at the withdrawal date (either 29 March 2019 (no-deal scenario) or 31 December 2020 (deal scenario), new UK national rights will be cloned onto the UK register, automatically, without charge and retaining all relevant dates.
The UK IPO confirmed yesterday that each newly created cloned trademark (known as a “comparable mark”) will be distinguished from existing UK trademarks by the application of a prefix, UK009, to the last eight digits of the original EU trademark (EUTM). The UK IPO confirms that comparable marks “will be fully independent UK trademarks and can be challenged, assigned, licensed or renewed, separately from the original EUTM”.
The following examples show how comparable UK trademarks will be numbered:
Existing EUtrademark Comparable UK trademark
This information will help businesses and record keepers in preparations to update their trademark databases accordingly.
If you would like further information, or have questions, please contact:
On January 14, 2019 new trademark laws came into force in the UK, to implement the EU Trademark Directive 2015/2436. The changes will be familiar since they were implemented into EU law in January 2016, but access our “Ten things to know” about the changes and how they affect businesses, which include:
the removal of the requirement that trademarks need to be represented graphically opens the doors for filing sound or motion marks in MP3 or MP4 format;
the UK IPO will no longer notify expired trademarks in its search reports and so before filing, note needs to be taken of recently expired marks which may still be renewed or restored to the register;
changes to proof of use periods in opposition and invalidation periods; and
new infringing acts mean that action can be taken: when fake or counterfeit goods are shipped through the UK; against those who prepare packaging, labels and other materials destined for counterfeit goods (or services); if a registered trademark is used as a company name. The “own name defense” now only applies to use of personal names by individuals.
If you would like further information, or have questions, please contact:
It won’t be news to you that there is still a great deal of uncertainty around Brexit and, with the March 29, 2019 looming, we do not yet know if the UK will exit in an orderly fashion (with a deal and with a transition period), obtain an extension of the negotiating period with a view to agreeing terms, crash out without a deal or, reverse the process altogether. With negotiations set to continue down to the wire, it makes sense to prepare now for the worst case scenario – a no-deal Brexit.
Notwithstanding the above, IP rights owners can take some comfort from the fact that the withdrawal terms relating to trademarks and designs are unlikely to change and so there is already a good deal of certainty as to what will happen, even if the timetable is unclear, depending on whether there is a transition period or not.
Access our “Ten things to know” about Brexit and its implications for IP as well as things to do in preparation.
In short, registered EU rights will cease to have effect in the UK after the withdrawal date. This date will either be March 29, 2019 (non-deal scenario) or December 31, 2020 (deal scenario).
Following the withdrawal date, points to note include:
for EU trademarks and designs plus International registrations designating the EU which are registered at the withdrawal date, new UK national rights will be cloned onto the UK register, automatically, without charge and retaining all relevant dates;
for pending EU trademarks and designs plus International registrations designating the EU which are pending at the withdrawal date, owners will have a window for refiling in the UK, paying the relevant fees, if the key dates are to be maintained;
a new UK Supplementary Unregistered Design Right to augment current UK design right protection to mirror the protection currently available for Unregistered Community Design;
the agreed position on exhaustion of rights is that rights conferred by an intellectual property right which were exhausted both in the EU and in the UK before the end of the transition period shall remain exhausted both in the EU and in the UK. In the event of no-deal the UK has confirmed it will continue to recognize exhaustion of rights in the UK and the remaining EU countries; and
proceedings which are ongoing before the EU IPO at the withdrawal date will continue through to completion with no change of representation required.
If you would like further information, or have questions, please contact:
In January 2019, IP Australia released a draft of proposed amendments to the Trade Marks Regulations 1995 for public consultation. The changes are designed to enable overseas businesses using the Madrid Protocol system to divide any Australian designations of International applications, the same way that national applications can currently be divided.
The proposed changes contain:
(1) regulations allowing for ‘divisional applications’ of International Registrations Designating Australia; and
(2) minor changes that clarify existing regulations in relation to the protection of international trademarks.
Division of IRDAs
Currently the applicant of a national Australian trademark application, is able to divide the application into two or more applications, should they chose to do so. For instance, if you file a trademark application covering three classes, and the trademark is acceptable for registration in respect of two of the classes but has hit a problem in one of the classes, then the applicant can divide the application so the two accepted classes proceed to registration, and the one ‘problem’ class is dealt with separately. At present, an applicant that files an International Registration Designating Australia (IRDA) through the WIPO/Madrid system, is not able to divide the IRDA in the same way.
The proposed amendments to the regulations would allow those who have filed for an IRDA to divide a pending application in much the same way as applicants of locally filed Australian applications can divide their application.
As indicated above, a divisional application essentially splits an initial (‘parent’) trademark application into two separate applications. The benefit of a divisional application over re-filing, or filing a subsequent designation, is that a successful divisional application retains the same priority date as the parent application (i.e. the date on which the parent application was filed), regardless of when the divisional application was filed.
The proposed process for dividing a pending IRDA application lodged with WIPO is:
(1) a holder of the pending IRDA applies to IP Australia to divide its application and pays the relevant IP Australia fees;
(2) IP Australia checks that the request for division is acceptable and complies with Australia’s national IP laws;
(3) if the divisional application does not meet requirements, the applicant is given time to address any issues;
(4) if the divisional application is acceptable, IP Australia passes the request to WIPO;
(5) the applicant will then be required to pay the relevant WIPO fees; and
(6) WIPO will process and create the divisional IRDA and notify IP Australia of the same.
Once the divisional IRDA is created by WIPO, the application will go through the same process as any other application and will be examined by IP Australia.
The benefit of the proposed changes is that applicants of International filing would have the same options available to them as applicants of national filings. International applicants would have the ability to obtain a registration of their trademark in respect of uncontested goods and services without delay, without having to delete the objected goods and services entirely, and without either the parent or the divisional applications losing their priority date, something which can be most valuable to a business.
Other proposed amendments
The proposed draft regulations also include other minor and technical amendments, such as in relation to the ability to correct an error of reference and to make the Trade Marks Regulations clearer and more compliant with current practices.
Timings to note
Submissions in relation to the draft regulations can be submitted until 1 March 2019. The draft regulations are proposed to be introduced sometime in 2019. If the proposed changes are accepted, applicants of IRDAs would be able to file applications for divisional IRDAs 6 months after the regulations are registered.
If you would like more information or advice in relation to International or Australian trade mark applications please contact one of our team.