GlobalReport

Global Report: North America
Interview continued from page 33
INTA. In recent years, we’ve been having the
attachés go to our regional offices as well,
now that we have them. And we’ve also been
including them in IP association meetings—at
the INTA Annual Meeting we had a panel of
attachés, for example. And then, of course, we
disseminate information through the website.
Do other countries have similar programs?
They do. Japan was actually the first country to
have an IP attaché—they started at the WTO in
Geneva and since then they’ve expanded. A lot
of countries see IP protection and enforcement
as a global issue, and some are also following
our lead, because they’ve seen the good work
our attachés do. Korea, the EU, France, UK,
and Italy have all placed IP attachés and we
see that as a very positive development. Our
attachés are able to work with other attachés
in the countries where they’re posted. They can
collaborate and cooperate and help each other
lighten their load and share information.
What does the future of the program hold?
One thing we keep looking at is whether we
should expand further. At the moment we have
pretty broad coverage, but we do keep looking
at whether expansion would be useful, so we
welcome any input from INTA members. We
are also trying to facilitate more cross-regional
collaboration between attachés—both our
own and attachés of other countries—because
we see more and more cross-regional issues
We need high quality
attachés to make sure
the program continues
to be as successful as it
has been to date.
arising, especially in the enforcement space
with counterfeit goods that can flow across
one country’s borders into others’. We are also
formalizing our procedures and policies more
because the program has been in existence for
more than ten years now, so it has matured.
And then, last but not least, we are very interested
in continuing to ensure a pipeline of
good candidates for these positions. As you
can imagine, given the nature of the job, we
need people who are not only experienced and
knowledgeable IP lawyers, but who are able
to be excellent diplomats as well, and that’s a
range of skills not everyone has. Of course, the
attachés also have to deal with all types of IP
issues. So what we’ve been trying to do is to
educate the public about the program, and to
make sure everyone at the USPTO is fully aware
of it, so we get good candidates from within our
ranks as well as the broader U.S. government.
We need high quality attachés to make sure
the program continues to be as successful as it
has been to date.
Who should INTA members contact for more input?
The first point of contact should be Dominic
Keating at Dominic.Keating@uspto.gov, the
Director of the program. They’re also welcome
to email me directly at Shira.Perlmutter@
uspto.gov. We’d be delighted to hear any
suggestions.
In the News
CANADA: Benefit Now from Using the Nice
Classification
Canadian Intellectual Property Office (CIPO)
The Canadian Intellectual Property Office
(CIPO) is working on modernizing its IP system
to be better aligned with international best
practices. Part of this modernization process is
the amendment of the Trade-marks Act.
Once the newly titled Trademarks Act comes
into force, applicants will be required to classify
their goods and services according to the
Nice Classification. To make things easier, the
CIPO Goods and Services Manual’s (GSM’s)
pre-approved list of goods and services, which
are compliant with Section 30(a) of the Trademarks
Act, has been updated to include the
appropriate Nice classes. This list of terms
deemed acceptable by CIPO should be used
when filing a new or revised application.
Use it Now
Using the pre-approved list with Nice Classification
provides efficiencies in examination
of your application and may result in quicker
processing time to approval. Further, once the
Using the pre-approved list
with Nice Classification
provides efficiencies in
examination of your application
and may result in
quicker processing time to
approval.
new Trademarks Act comes into force, renewal
will be dependent on the inclusion of Nice Classification
for the goods and services.
With Canada’s introduction of the Madrid
Protocol, Canadians who wish to register a
trademark in other countries using the Madrid
System and the pre-approved GSM terms, will
know their goods and services are compliant
with World Intellectual Property Office (WIPO)
standards and will already designate the appropriate
class.
Provide Your Suggestions
Some discrepancies can occur between countries
in the classification of goods and services.
Canada has taken the position to closely follow
the classification methods of WIPO according
to the latest edition of the Nice Classification.
The CIPO GSM is an evolving document. It was
updated during August 2016 to add 5,000 new
acceptable entries; and it was updated again in
January 2017 to align itself to the 11th edition
of the Nice Classification, adding even more
entries. We expect that by the end of March
2017, a minimum of 20,000 additional entries
will have been included in the GSM, bringing
the total to 65,000.
We encourage you to provide suggestions for
additions to the GSM by filling out the CIPO
feedback form found on the GSM webpage of
the CIPO website and include the subject reference:
Trademarks Goods and Services Manual.
Requests will be reviewed to ensure compliance
with Section 30(a) of the Trade-marks Act
before they will be added to the GSM.
34 INTA Global Report, February 2017