by JC Heinbockel (law clerk)

On Monday, representatives from 12 countries along the Pacific Rim, including the US, Canada, Mexico, Australia, and Japan, announced that they had reached agreement on a trade agreement known as the Trans-Pacific Partnership. The agreement has been in the works for years, and has been subject to criticism for its both its content and the secretive nature of the negotiations. The agreement will soon head to Congress for scrutiny, and although the final draft of the agreement will not be made public for another month or so, leaked drafts of the agreement indicate that intellectual property will be a large portion of the new deal.

How can we expect this deal to affect trademark law?

The TPP is unlikely to introduce any big changes to existing US law. Instead, the deal is more likely to harmonize trademark laws among the 12 signatories and introduce US trademark laws and principles to our trading partners.

  • Lanham Act style laws: The TPP will require signatories to expand the scope of trademark protection beyond current international standards, in-line with US standards under the Lanham Act. For example, countries will be no longer be able to deny registration on the grounds that the mark is not visually perceptible (meaning sound and scent marks will become registerable in TPP countries).
  • Stronger anti-counterfeiting measures: Although a prior anti-counterfeiting agreement (known as ACTA) failed several years ago under pressure from interest groups, the TPP is likely to include many of ACTA’s anti-counterfeiting provisions and require signatories to implement measures for seizure of counterfeit goods and criminal penalties for counterfeiters. The TPP will also require signatories to implement customs and border control measures to prevent counterfeiting and civil remedies.
  • Domain names and Cybersquatting: The TPP urges signatories to implement a UDRP-style system for country code domain names (ccTLDs).
  • Well-known marks: The TPP will have signatories implement laws concerning well-known marks, enabling greater protection for big and famous brands. These provisions will remove formalities, meaning that a famous mark will not need to be registered to receive protection.
  • Geographic indications: GIs are currently at the heart of a lot of controversy in international trademark laws (see summary of USPTO’s frustrations with GIs expressed at the most recent TPAC meeting). Under the TPP, signatories will treat GIs more like trademarks than a separate form of protection. This means GIs will be registerable as trademarks, and similarly will be prohibited where they are likely to cause confusion with existing trademarks.

It bears repeating that this is all largely speculative until the final agreement is released to the public. By and large, these anticipated changes do not appear likely to radically change anything for most US trademark owners, but we will have to wait and see all the details before we know for certain.

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