USA
TTAB British Virgin Islands entities can claim §44(d) Priority Basis
In CandyVerse, LLC v. Zeeth Ltd., the Trademark Trial and Appeal Board (“TTAB”) addressed an issue of first impression, holding entities organized in the British Virgin Islands are entitled to claim priority under Section 44(d) of the Trademark Act even though the Virgin Islands is not party to a treaty with the United States that confers a right of priority. The decision provides important guidance on evaluating reciprocal priority rights in jurisdictions that are not parties to international trademark treaties with the United States. CandyVerse, LLC v. Zeeth Ltd., No. 91289595, slip op. at 2 (T.T.A.B. Nov. 24, 2025) (precedential).
Applicant, a company organized and located in the British Virgin Islands, sought registration of the mark CANDYVERSE for confectionery goods, drink goods, and retail store services for those goods in International Classes 30, 32, and 35 under Section 1(b) of the Trademark Act. The application was filed on May 27, 2022, and claimed a priority date of December 2, 2021, based on a first-filed European Union trademark application pursuant to Section 44(d). Opposer alleged prior rights in the CANDYVERSE mark dating back to at least March 4, 2022, and relied on two trademark applications it filed on January 26, 2024. Id. at 3.
To prevail in the opposition, Opposer needed to establish both priority and a likelihood of confusion. It acknowledged, however, that it could only succeed if Applicant’s claim to priority under Section 44(d) failed because Applicant’s asserted priority date preceded Opposer’s alleged first use and application filing dates. Id. at 7.
To obtain a priority filing date under Sections 44(d), (i) the U.S. application must be filed within six months of the first-filed foreign application; (ii) the application must include a verified statement of bona fide intent to use the mark in commerce; and (iii) the applicant’s country of origin and the country where the foreign application was filed must either be parties to an international treaty with the United States that provides a right of priority or be parties that extend reciprocal priority rights to U.S. nationals. Id. at 9-10.
The TTAB found that Applicant satisfied the first two requirements and acknowledged that the European Union, the country of filing for the first-filed application, is a party to the Paris Convention. However, because the British Virgin Islands is not itself a party to an international treaty or agreement that extends priority rights to the United States, the dispositive issue was whether the British Virgin Islands extends reciprocal priority rights to U.S. nationals. Id. at 10.
Opposer argued that Section 1002.03 of the Trademark Manual of Examining Procedure (“TMEP”) precluded juristic entities from the British Virgin Islands from asserting priority under Section 44(d). Id. at 11. This section instructs Examining Attorneys on evaluating Section 44(d) priority claims. It also explains that individuals, but not juristic entities, from British overseas territories and Crown Dependencies, including the British Virgin Islands, can consider the UK as a country of origin for 44(d) priority purposes. Opposer argued that this language bars British Virgin Islands entities from claiming priority under Section 44(d). The Board rejected that interpretation, emphasizing that “the TMEP does not have the force and effect of law,” that the provision “merely explains the distinction between individual persons and juristic persons,” and that the TMEP does not address whether the British Virgin Islands extends reciprocal priority rights to United States nationals. Id.
To resolve whether the Virgin Islands Trade Mark Act (“VITMA”) provides reciprocal priority rights to U.S. nationals, the Board emphasized that reciprocity does not mean that the British Virgin Islands must have an identical statutory scheme for priority, but rather that “[r]eciprocity requires only that U.S. nationals have the same opportunity” to claim priority as the United States offers under Section 44(d). Id. at 12, 14. Section 43 of the VITMA provides that any party filing a trademark application in the British Virgin Islands may claim a priority date within six months of a first-filed application that is filed in a Paris Convention country or WTO member country. The TTAB therefore held that the VITMA extends priority rights to U.S. nationals that are reciprocal to those extended to foreign nationals under Section 44(d) of the Trademark Act. Id. at 14. The Board granted Applicant’s motion for summary judgment on priority, subject to the applicant ultimately demonstrating constructive use upon issuance of the registration. Id. at 17.
By focusing its analysis on reciprocity rather than formal treaty status, the TTAB confirmed that foreign applicants should not be categorically excluded from claiming Section 44(d) priority based solely on their place of organization. The decision also underscores that provisions of the TMEP cannot override the statutory framework governing priority and that reciprocity determinations must be grounded in foreign law.
Takeaways: Entities organized in the British Virgin Islands can claim priority under Section 44(d) of the Trademark Act despite the British Virgin Islands not being party to a treaty with the United States that confers priority. Determining whether a country offers a reciprocal right of priority to the U.S. does not require an identical legal structure to the U.S. Lastly, the TMEP lacks the force and effect of law and does not override the statutory framework for determining whether applicants from a foreign country can claim priority under Section 44(d).
Fifth Circuit holds termination of transfers under Copyright Act has cross-border application, upending settled copyright law and practice
Cyril E. Vetter and Donald Smith wrote the song “Double Shot (of My Baby’s Love)” in the summer of 1962. The next year, they transferred all of their worldwide copyright interests in Double Shot to Windsong Music Publishers, Inc., in an assignment agreement. Smith died in 1972, but his heirs and Vetter renewed the copyright before its initial term ended. Because Vetter was alive during the renewal term, his renewal rights transferred to Windsong. But Smith’s heirs (rather than Windsong) obtained his renewal rights because Smith died before the start of the renewal term. Smith’s heirs later assigned Smith’s renewal copyright to Vetter Communications Corporation (“Vetter Corp.”) (with Vetter, the “Vetter Plaintiffs”). As a result, Windsong and Vetter Corp. each owned 50% of the renewed copyright.
In March 2019, Vetter sent Windsong a notice of termination under 17 U.S.C. § 304(c) stating that, effective May 3, 2022, Vetter was terminating all rights conveyed by Vetter to Windsong in 1963. Also in 2019, Windsong was sold to Robert Resnick and Resnick Music Group (together, “Resnick”).
In 2022, after the effective date of Vetter’s notice of termination, TV broadcaster ABC requested an expanded license (worldwide digital broadcasts and on-demand streams) to use Double Shot in a television episode. The Vetter Plaintiffs provided a quote, telling ABC they were the sole and exclusive owners of Double Shot throughout the world.
Resnik, however, continued to claim ownership rights in Double Shot. In response, the Vetter Plaintiffs filed a complaint in the Middle District of Louisiana against Resnik in 2023, claiming they were the sole owners. The court granted the Vetter Plaintiffs’ motion for summary judgment, finding that Vetter recaptured his portion of copyright in Double Shot throughout the world as a result of his notice of termination and, further, that Vetter Corp. owned the other 50% of the renewed copyright (i.e., the Smith heirs’ share) throughout the world.
On appeal to the U.S. Court of Appeals for the Fifth Circuit, Resnik argued the district court’s holding that Vetter is the sole owner of 50% of copyright in Double Shot throughout the world was incorrect for three reasons. First, he asserted that Vetter’s notice of termination did not affect rights outside the United States based on the plain language of 17 U.S.C. § 304(c)(6)(E), which provides that “Termination of a grant under this subsection affects only those rights covered by the grant that arise under this title, and in no way affects rights arising under any . . . foreign laws.” Second, he argued the district court’s interpretation of the statute contradicted case law on the statutory termination. Third, he contended the decision conflicted with U.S. treaty obligations.
In response to Resnik’s first argument, the Fifth Circuit observed that the plain language of Section 304(c)(6)(E) covered copyrights granted under the U.S. Copyright Act and that because Vetter’s rights “arise under” the Copyright Act, the notice of termination was effective as to all of his copyrights, including those outside the U.S. The court went on to note that even if the phrase “arise under” were ambiguous, the result would be the same because the U.S. Supreme Court previously considered the phrase “lawfully made under this title” in the copyright context and held that the phrase favored a “non-geographical” interpretation. The court also concluded that this interpretation is consistent with the purpose of the Copyright Act, public policy, and music industry norms.
Second, the court considered, but declined to follow, case law on statutory termination of foreign rights from other circuits, in part because those decisions relied heavily on nonbinding treatises. In particular, Nimmer on Copyright posited that a grant of copyright through the world was “terminable only with respect to uses within the geographic limits of the United States.” In support of this argument, Nimmer pointed to decisions holding that acts of infringement occurring outside the United States were not actionable under the U.S. Copyright Act. But the Fifth Circuit found this line of cases to be inapposite because they did not address copyright ownership, assignment, and termination.
Third, the court concluded that the holding does not conflict with principles of national treatment and territoriality under the international treaties of which the U.S. is a member. Resnik’s arguments were based principally on the theory that the U.S. Copyright Act and the implementing legislation of other member countries create multiple and separate copyright interests in each country rather than one overarching, international copyright honored in each country. The court specifically rejected Resnik’s argument that because the foreign rights in Double Shot did not arise under the Copyright Act, but under the domestic laws of each country, the termination rights cannot affect those foreign rights. Instead, the court agreed with the Vetter Plaintiffs’ argument that because the case is about ownership, rather than infringement, any presumption against extraterritoriality carries less weight than in a case involving the application of domestic law to foreign parties engaged in conduct outside the U.S.
Resnik also argued that the district court incorrectly held that Vetter Corp. owned the Smith heirs’ share of copyright in Double Shot throughout the world. Among other things, Resnik argued that the district court’s holding cannot be reconciled with Section 24 of the Copyright Act of 1909 (the renewal provision). The Fifth Circuit disagreed with Resnik. Rather, it affirmed the district court’s ruling that Section 24 represented a completely new set of rights unburdened by any rights Smith granted to Windsong during the original copyright term, including any prior grant of rights arising under foreign copyright law. The renewal provision, the court held, “makes no mention of geographic limitations to the scope of renewal rights, and the provision itself does not contain any ambiguity.” In this regard, the court again rejected the view expressed by Nimmer because the treatise relied on the presumption against extraterritoriality, which the court held only applied in the context of infringement rather than copyright ownership and renewal.
The Fifth Circuit’s decision concerning termination of transfers under Section 304(c) directly contradicts the language of the Copyright Act and holdings of the U.S. Courts of Appeals for the Second and Ninth Circuits. As a result, the court’s decision creates legal and marketplace uncertainty: it may affect catalog valuation, foreign publishing structures, and long-standing assumptions underlying acquisition models, and may destabilize international expectations for authors and rightsholders.
Takeaway: The Fifth Circuit’s decision in Vetter v. Resnik concerning termination of transfers under Section 304(c) contradicts the language of the Copyright Act and goes against longstanding practice and holdings of the U.S. Courts of Appeals for the Second and Ninth Circuits. It also emphasized that the presumption against extraterritoriality applies more strongly in cases about infringement than in cases about ownership. This holding will create legal and marketplace ambiguity as lawyers and businesses adjust their expectations.
Seventh Circuit reverses preliminary injunction: PIZZA PUFFS for All
The case began in June 2024 when Plaintiff Illinois Tamale Company, d/b/a Iltaco, brought state and federal infringement claims against Defendants Little Caesars Enterprises and LC Trademarks. Iltaco markets and sells a variety of calzone-like prepared foods, such as tortillas wrapped around pizza toppings, under PUFF-based trademarks, such as PIZZA PUFF, GYRO PUFF, and SAUSAGE BREAKFAST PUFF. Relevant to the appeal, Iltaco owns a 2009 registration for PIZZA PUFF. Iltaco alleged that Little Caesars began infringing its PUFF trademarks when Little Caesars restaurants began selling small, baked pizza dough cups filled with pizza toppings under the marks CRAZY PUFF and 4 HAND-HELD PIZZA PUFFS in March 2024.
Iltaco moved for a preliminary injunction against Little Caesars’ use of CRAZY PUFFS, PIZZA PUFF, and PUFF. Following an evidentiary hearing, the district court granted the injunction in part, enjoining Little Caesars only as to the PIZZA PUFFS mark.
Both parties appealed. Finding errors in the genericness and fair use analyses, the Seventh Circuit reversed the injunction against the use of PIZZA PUFFS.
Genericness
To prevail on its motion, Iltaco had to show that it was likely to succeed on its infringement claims, including that its PIZZA PUFF mark was protectable. Iltaco’s registration for PIZZA PUFF had become incontestable—more than five years of continuous use had passed since registration in 2009—and, thus, presented a strong presumption of protectable rights. However, a generic term—i.e., a term commonly used as a name for a kind of good—cannot be protected, even by an incontestable registration. Although Little Caesars argued PIZZA PUFF was generic, the district court found that Little Caesars had failed to overcome the strong presumption of validity given to incontestable marks. The Seventh Circuit disagreed.
“Primary significance,” not “exclusive descriptor,” is the proper test of genericness.
The district court applied the wrong test. Under the Lanham Act, whether PIZZA PUFF is generic turns on its “primary significance . . . to the relevant public.” 15 U.S.C. § 1064(3).
Rather than apply the primary significance test, the district court concluded PIZZA PUFF was not the “exclusive descriptor” of the Iltaco’s stuffed sandwiches. The district court drew the “exclusive descriptor” test from the prior Seventh Circuit opinion in Ty Inc. v. Softbelly’s Inc. In Ty, the appeals court had cautioned that a mark is not ordinarily held to be generic “until the trademark has gone so far toward becoming the exclusive descriptor of the product that sellers of competing brands cannot compete effectively without using the name.” 353 F.3d 528, 531 (7th Cir. 2003). With this in mind, the trial court reasoned, other brands could compete effectively with terms such as Hot Pockets, Pizza Rolls, and Toaster Pop-Ups, meaning PUFF was not generic. Yet, this was an error, says the Seventh Circuit: Ty did not set out an “exclusive descriptor” test of genericness; in fact, the opinion elsewhere stated that “the legal test of genericness is ‘primary significance.’” 353 F.3d at 530-31.
The distinction between “primary significance” and “exclusive descriptor” is a critical one. As the court of appeals explained, a class of goods may have more than one generic name — but none are allowable as trademarks. “A generic term is not made less generic by the availability of other terms.” Slip Op. at 12.
The evidence of genericness did not support an injunction.
The record also did not support the district court’s determination that PIZZA PUFF is likely protectable and not generic. The appellate court highlighted three pieces of evidence:
- A Teflon survey found 83.3% of consumers of “dough-based, pizza-ingredient-filled foods” consider “pizza puff” to be a common/generic term.
- Definitions of “pizza puff” from crowd-sourced dictionaries supported a finding of genericness. Iltaco argued that, because anyone could edit them, such dictionaries were unreliable. The appeals court disagreed, distinguishing between relying on such dictionaries for the “correct” definition of a term versus the public’s understanding of the term—the critical issue under the “primary significance” test.
- Third parties had used “pizza puff” generically in other USPTO filings.
The Seventh Circuit found that this evidence, when considered under the “primary significance” test of genericness, meant that Iltaco was not likely to succeed in demonstrating protectable rights in the PIZZA PUFF mark, and issuance of the injunction was reversible error.
The district court also erred in its fair use analysis.
The Seventh Circuit found the injunction reversible on Little Caesars’ fair use defense, too. To prevail, Little Caesars ultimately must show that (1) it used “pizza puff” in a non-trademark manner, (2) the term is descriptive of its goods, and (3) it used the term “fairly and in good faith” only to describe its goods. 15 U.S.C § 1115(b)(4). The district court reasoned that Little Caesars was not likely to meet the second element because its product “looks like a mini-pizza or a pizza muffin” such that “[i]t is not apparent what part of the . . . product is a puff.” This was an error: Little Caesars was not required to prove that “pizza puff” was descriptive of the product itself, but that it was descriptive of a characteristic or quality of the product. “This evidence fairly shows that ‘Pizza Puff’ describes a Crazy Puff, which is a puffy and airy muffin containing pizza ingredients.”
For these reasons, the Court of Appeals reversed the grant of a preliminary injunction.
Takeaway: With the right kind of evidence, even a trademark protected by an incontestable federal trademark registration can be lost to genericness.
DATA PRIVACY
“We’ve got a special price for YOU!” – Surveilling Surveillance and Algorithmic Pricing
With an affirmative nod toward global Data Privacy Day, which falls on January 28, the Office of the California Attorney General (“OAG”) announced on January 27, 2026 that it had launched an investigative sweep aimed at “surveillance pricing,” the use of consumers’ personal information, such as location or browsing data, to set targeted, individualized prices for products and services. Employing surveillance pricing based on consumer data allows businesses to offer consumers different prices for the same product or service at the same time, generally without consumers’ knowledge of this practice.
As part of its announced sweep, the California OAG has sent letters to significant businesses in the retail, grocery, and hotel sectors, requesting details about how they use consumers’ browsing history, purchase history, location, demographics, inferences drawn from personal data collected by the businesses, and other data to set individualized prices of goods or services. The California OAG’s letters requested additional information about:
- Policies and public disclosures regarding personalized pricing,
- Any pricing experiments undertaken by companies, and
- Measures companies are taking to comply with algorithmic pricing, competition, and civil rights laws.
California’s interest in surveillance pricing arises from the “purpose limitation principle,” present in the California Consumer Privacy Act (“CCPA”) regulations and certain other states’ comprehensive privacy laws. This principle limits a company’s use of personal information to purposes consistent with consumers’ reasonable privacy expectations. By using consumer data in unexpected ways, such as setting individualized prices, businesses that engage in surveillance pricing without providing clear disclosures about this secondary use of such data may violate the CCPA.
Surveillance pricing may also violate the CCPA’s non-discrimination provisions, which prohibit disparate treatment of consumers who choose to exercise their data privacy rights, including the right to opt out of collecting or sharing data for targeted advertising. For example, consumers whose personal data is no longer available to a company based on opt-outs may miss certain benefits that customers whose data is available may receive, such as discounts offered on items that are left in consumers’ online shopping carts.
California is not alone in scrutinizing and regulating targeted pricing based on consumers’ characteristics. While New York does not yet have a comprehensive data privacy law, on November 10, 2025, New York’s Preventing Algorithmic Discrimination Act (the “NY Act”), the first dynamic pricing statute of its kind, took effect. Algorithmic pricing typically does not employ the same granular personal data (such as browsing or purchase history) as surveillance pricing; rather, it involves using data across less specific, but still personal, categories of consumer characteristics to set prices. For example, a business may choose to charge higher prices for the same item to consumers whom they identify through personal data as living in a higher-income zip code. The NY Act requires businesses that engage in algorithmic pricing to display a clear and conspicuous disclosure, stating: “THIS PRICE WAS SET BY AN ALGORITHM USING YOUR PERSONAL DATA.” Violations of the NY Act may result in civil penalties of up to $1,000 per violation.
While algorithmic pricing may be the modern-day equivalent of marketing techniques that retailers have followed without notable issues for decades or more, heightened consumer and regulatory scrutiny of the use and misuse of personal data has brought this practice into the spotlight. Consequently, businesses applying surveillance or algorithmic pricing in their marketing campaigns or pricing structures must evaluate their current practices for potential violations of applicable laws and, where required, disclose that prices offered have been set using algorithms using personal data.
Takeaway: Regulatory authorities in California and New York are paying close attention to surveillance pricing and algorithmic pricing, which may violate certain provisions of California’s CCPA and New York’s recent algorithmic pricing statute. Other regulators, both state and federal, are sure to follow before too long. To avoid regulatory complications related to individualized pricing, businesses should (i) take inventory of any individualized pricing mechanisms implemented across relevant departments; (ii) determine whether website privacy notices, marketing content, and related consumer-facing materials require updates and disclosures about how personal data is used; and (iii) establish processes to evaluate compliance with applicable laws, vet the categories of personal data used for pricing decisions, assess the potential effect of individualized pricing on consumers, and document these efforts to ensure a thorough, transparent response to any regulatory inquiries.
INTERNATIONAL
United Arab Emirates – Close timing and legalized evidence considerations in the UAE
Those wishing to grow their UAE trademark portfolios or take swift action against infringers may welcome the speedy timelines. However, time pressure can easily mount in situations where legalized documents and evidence must be submitted quickly, such as in defense of non-use cancellation actions (14-day deadline) and in appeals before the Trademark Office and before the courts (30-day deadline). Brand owners are advised to have legalized Powers of Attorney in place proactively, to gather and legalize evidence of use of their marks (including license agreements if applicable), and to refile for their marks if evidence of use is not available.
Legal proceedings in the United Arab Emirates are speedy, perhaps causing some brand owners to be caught unaware of approaching deadlines, legalization requirements, and evidentiary burdens. Here, we discuss these issues in the context of non-use cancellation actions and appeals.
Non-use Cancellation Actions
If a UAE-registered trademark has not been used for five consecutive years, any interested party may seek to cancel it for non-use by filing a petition before the Trademark Office. To defend such an action, the trademark owner will need to gather at least the following, all specific to the UAE:
- Revenue figures pertaining to the mark
- Advertising expense figures pertaining to the mark
- Statistics regarding the number of clients/customers/members who have encountered the mark
- Statistics regarding the number of visits/stays/bookings/leases/contracts/purchases involving the mark
- Website hit statistics
- License agreements, if the local user is a licensee of the trademark owner, or other evidence of authorization
There is no requirement for an affidavit summarizing the evidence, but all evidence issued outside the UAE must be legalized.
The law does not prescribe a fixed statutory deadline for responding to a non-use cancellation action. However, in practice, the Trademark Office only grants a period of about 14 days from notification to submit a response. Additional materials can be submitted after this initial response period, provided that no final decision has yet issued.
If evidence of use is not available and the brand owner wishes to refile for the vulnerable mark instead, this is not expressly prohibited by local law. However, in practice, refiling for the identical mark with identical goods/services may result in objections by the Trademark Office. Adjustments can be made to the coverage to try to avoid these objections. In addition, the brand owner may wish to refile with stylization and/or design elements, and/or with changes to the layout. Local counsel will need to be consulted prior to filing to confirm whether use of the mark in its original format will count as use of the mark in the new format for purposes of protecting the new registration from possible non-use attack in the future.
Appeals
If a brand owner loses a trademark infringement action in the UAE court system and wishes to file an appeal to a higher court, the appeal must be filed with a fully legalized Power of Attorney. A scanned copy will not suffice. The deadline to file an appeal is 30 calendar days from the date of decision. The appeal can be filed in a relatively simple manner to meet the deadline, and then detailed arguments and evidence can be submitted at the first hearing. However, the first hearing is typically scheduled five to eight business days after the appeal is filed. This accelerated timing is rather unusual in litigation and can catch litigants off guard.
In the context of a brand owner wishing to appeal the refusal of a trademark application, a legalized Power of Attorney is required for this step as well, and the 30-day deadline is also applicable. This applies as well to trademark applications filed through the Madrid system (International Registrations) designating the UAE.
Nice Classification of Goods and Services
Effective January 27, 2026, the UAE officially adopted the 13th Edition of the International Nice Classification.
Takeaways: The UAE is becoming an increasingly important commercial jurisdiction for many brand owners. Given the accelerated timing of legal proceedings there, as well as strict legalization and evidentiary requirements — not to mention the costly nature of proceedings in this country — the following recommendations are noted:
- Brand owners should have legalized Powers of Attorney in place with trusted local counsel, even before a lawsuit, refusal, or non-use cancellation action is anticipated.
- The Power of Attorney should grant the broadest authorizations palatable to company stakeholders, so that legalization must only occur once. Depending on where the POA is signed and notarized, legalization can take several weeks.
- Brand owners should review their UAE trademark portfolios to determine which registrations are, or soon will be, subject to the use requirement. If evidence of use is available, it should be gathered and legalized. If evidence of use is not available, refilings should be considered in the event of future non-use attacks.
China – The Supreme People’s Court weighs in on evidence required in non-use actions
On December 22, 2025, the Supreme People’s Court (SPC) overturned both the first and second-instance decisions in which a mark was cancelled for non-use. (Supreme Court No. 507.) The case involved a registration owned by an individual named Niu for LIU YU in Class 33 covering “fruit wine,” granted by the China National Intellectual Property Administration (CNIPA) in 2010. Twelve years later, an entity named Henan Gengtian Youdao Trading Company sought cancellation of this registration before the CNIPA for failure to use the mark for the covered goods during the relevant three-year user period. Niu had submitted evidence of use, including licensing agreements, sales invoices, and images of the products, which was rejected as insufficient both on appeal to the Beijing IP Court and to the Beijing High People’s Court. On further appeal to the SPC, Niu argued that the lower courts erred because the evidence was not considered as a whole but rather piecemeal. The SPC agreed, reasoning that the evidence as a whole created a sufficient chain of use during the relevant period. The high court observed that the purpose of the user requirement is to encourage active use of registered marks and “not . . . . to punish trademark owners,” demonstrating a more flexible standard than the stricter approach imposed by the CNIPA and lower courts.
Takeaways: Thanks to this SPC case, it is possible that the stricter evidentiary standards adopted by the CNIPA in 2025 may no longer hold up. However, while the decision may provide a certain level of guidance to the CNIPA and lower courts in such cases, it is not necessarily binding in all cases. Accordingly, as we advised in our last edition of the FZLZ Minute, rights holders should still take care to monitor and document genuine use of their marks in China to avoid the cost of defending costly challenges and appeals.
Sierra Leone – New Trademark regulations have come into force
The Trade Marks Regulations introduced in 2024, governing, inter alia, applications, contested Trade Marks Office proceedings, assignments, renewals, and Madrid Protocol implementation, became effective on January 1, 2026. The Regulations also provide clarity with respect to deadlines for examination, opposition and counter-statements, renewal, restorations, and reinstatement of lapsed rights, as well as evidentiary requirements and Madrid Protocol procedures. Key changes include provisions for service marks, Nice classifications, and mandatory registry availability searches by the Registry. In addition, a new fee schedule has been implemented.
Takeaways: To avoid loss of rights, applicants and rights holders are advised to familiarize themselves with these new Regulations, as we expect they will be strictly enforced. In addition, it may take some time before Madrid extension procedures have been clearly established. Accordingly, to be safe, for now, local filings are still recommended.
Australia – Changes to trademark regulations took effect towards the end of 2025
On November 18, 2025, the Trade Marks Amendment (International Registrations, Hearings and Oppositions) Regulations 2025 took effect, implementing several timed changes to trademark practice in Australia. Among the changes (and effective dates) are:
- Effective November 19, 2025
- Filers may extend the option to replace local registrations for any eligible mark with a Madrid extension as a partial or full replacement;
- A new ground for rejection of an IR extension is available, based on provisions of the Autonomous Sanctions Act 2021 or the Charter of the United Nations Act 1945;
- The Registrar may now revoke acceptance of an IR extension, provided it gives the owner an opportunity to defend, though still preserving the 18-month protection upon notification period.
- Effective December 19, 2025
- The deadline to file a notice of intention to defend an opposition is extended from one month to two months; and
- Filers are permitted an automatic deferral of acceptance once a hearing is requested.
Takeaways: Rights holders with existing national registrations should take note of the changes relating to Madrid Protocol extensions to Australia, as well as the (welcome) extension to two months of the deadline to respond to an opposition.
Tanzania – Country suspended from the African Regional Intellectual Property Organization (“ARIPO”)
The African Regional Intellectual Property Organization (“ARIPO”) was established in 1976 as a centralized IP system to register patents across multiple African countries. In 1997, trademark registration was also added as a component of ARIPO.
In September 2025, the Court of Appeal of Tanzania, the country’s highest court, held that Tanzania was not properly adopting trademark protocol and, as a result, the ARIPO trademarks were unenforceable. The next month, ARIPO announced that, due to the Court’s decision, Tanzania is suspended from ARIPO and trademarks filed through ARIPO will no longer be considered valid in Tanzania. In addition, trademark owners can no longer designate Tanzania as a country for new ARIPO filings.
Owners also cannot convert existing ARIPO registrations designating Tanzania to national trademark registrations, nor can they claim priority from the filing date of a prior ARIPO registration designation in a new national filing in Tanzania.
Because existing ARIPO trademarks designating Tanzania are unenforceable, if trademark owners are engaged in an ongoing trademark action or anti-counterfeiting action based on an ARIPO trademark registration designating Tanzania, these actions will need to be reviewed for the validity of the trademarks at issue.
ARIPO patents and utility models designating mainland Tanzania are not affected by this change – they remain valid and enforceable.
There are currently 21 other member states of ARIPO: Botswana, Cabo Verde, Ghana, Kenya, Kingdom of Eswatini, Kingdom of Lesotho, Liberia, Malawi, Mauritius, Mozambique, Namibia, Rwanda, Sao Tome and Principe, Seychelles, Sierra Leone, Somalia, Sudan, The Gambia, Uganda, Zambia, and Zimbabwe.
Takeaways: For trademark protection in Tanzania, you must file for new national trademark registrations with the Trademark Office in Mainland Tanzania, not through ARIPO. Consider also whether any ongoing actions are based on trademark filings with Tanzania ARIPO designations, as these will need to be reviewed and refiled.