Eye on North America: INTA’s 2022 Policy Priorities and Key Activities

The United States and Canada share the largest trading relationship in the world, similar values, an enormous border, and strong economic ties. INTA’s advocacy efforts in North America build upon these natural alliances of cooperation and seek to enhance the protection of trademark and complementary intellectual property in both countries.

Although INTA assists the U.S. and Canadian governments in many ways, two advocacy issues stand out at this time.

In December 2021, INTA’s Board of Directors adopted a resolution regarding the SHOP SAFE Act, a bill currently pending in the 117th U.S. Congress that would establish liability for online marketplaces when a third party sells harmful counterfeit products online. The bill incentivizes platforms to engage in best practices for vetting sellers and goods, addresses repeat sellers of counterfeits, and ensures that consumers have access to relevant information at the time of purchase.

INTA is working closely with U.S. Congressional staff and other stakeholders, consistent with the Board resolution. The Board adopted the resolution after intensive analysis from four committees, including the U.S. Subcommittees of the Legislation and Regulation Committee and the Trademark Office Practices Committee (TOPC), as well as the Internet Committee and the Enforcement Committee.

INTA supports, in principle, enactment by the U.S. Congress of the SHOP SAFE Act as reported by the Judiciary Committee of the U.S. House of Representatives if amendments are made to address ambiguous and overbroad provisions, and unclear text.

Turning to Canada, the Association continues to support the ongoing efforts of the Canadian Intellectual Property Office (CIPO) to address its severe examination backlog.

The long wait time to examination is the result of a confluence of factors, including the COVID-19 pandemic, the introduction of a new Trademarks Act, and the accession to three new treaties—the Madrid Protocol, the Nice Treaty, and the Singapore Treaty—to harmonize global trademark practices.

CIPO’s current senior policy officials have worked tirelessly to implement new practices and procedures to address the delay. January 2022 marked the first notable reduction in the volume of applications awaiting examination, and the wait time is expected to decline further when CIPO introduces additional measures in March 2022.

At INTA, the TOPC Canada Subcommittee has worked closely and collaboratively with CIPO to help address the delays in prosecution by:

• Drafting recommended updates to CIPO’s Trademarks Examination Manual on guidelines for assessing distinctiveness and providing other feedback on various Practice Notices;
• Educating brand owners and other stakeholders on the new Expedited Examination policy and voluntary steps available to applicants through CIPO’s Timeliness Practice Notice to reduce the wait time to examination by utilizing CIPO’s pre-approved list of Goods and Services when filing, and, importantly, by amendment of a pending application; and
• Collaborating with CIPO policy officials on further improvements to CIPO operations, including:
  • A planned increase in examination staff, streamlined processes, and increasing the scope of entries in the pre-approved Goods and Services Manual (Manual);
  • A new Practice Notice on Expedited Examination due to online infringements and Customs and anticounterfeiting needs;
  • New telephone examination procedures for specific requirements and the soon-to-be-introduced utilization of artificial intelligence to identify applications which can be voluntarily amended to fix classification; and
  • Using goods/services statements to decrease the wait time to examination and which would increase the prospects for approval by nearly 70 percent.

As a result of its efforts, CIPO has turned the corner. Now, CIPO’s pre-approved Manual includes 40 percent of the United States Patent and Trademark Office’s Trademark Identification (ID) Manual and a significant portion of approved TM5 statements. Use of this Manual currently improves examination timelines by 13 months over other applications, and that benefit is expected to continue to improve.

INTA’s Washington, D.C., Representative Office advocates the Association’s policy positions in Canada and the United States. To learn more about INTA’s activities in the region, please contact INTA Director of Government Relations Jennifer Simmons.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2022 International Trademark Association