Notorious Markets List

On Monday, October 11^th, the IACC filed formal comments with the United States Trade Representative (USTR), in connection with the agency’s annual Special 301 Out-of-Cycle Review of Notorious Markets.

The IACC submitted recommendations in connection with 17 physical marketplaces across 14 countries, and 11 global e-commerce platforms, highlighting the broad range of challenges faced by rights-holders seeking to enforce their IP rights around the world.

Our comments are drawn from members’ feedback, and we were pleased to receive input from a broad cross-section of industry sectors in support of this year’s filing. As in past years, we’ve sought to highlight markets for which IACC members have expressed a consensus viewpoint.

Although the Notorious Markets Review can be a contentious one, we view it as an important tool to facilitate open dialogue with a key component of the distribution chain, an opportunity to draw the attention of the U.S. government and other key stakeholders to the difficulties experienced by trademark owners in policing their IP rights.

Our past submissions have been helpful in jumpstarting discussions with a number of e-commerce platforms, and we’re hopeful that this year’s submission will similarly lead to constructive discussions with those markets we’ve provided comments on.

We’d like to thank all of the members who provided input during this year’s process.

IACC Calls on Chinese Government to Consider Practical Impact of Proposed E-Commerce

Law Amendments

The IACC filed comments on October 13^th with the General Administration on Market Supervision, in response to the Chinese Government’s request for input as it considers proposed amendments to the country’s E-Commerce Law.

Under the process currently in place, when an e-commerce seller has disputed a rights-holder’s allegation of infringement (i.e., a takedown notice submitted by the rights-holder to an e-commerce platform); the rights-holder is expected to institute legal proceedings against the alleged offender within 15 days. An amendment proposed by the State Administration for Market Regulation and circulated for comment would expand the window during which the rights-holder may provide notice of their commencement of a legal action from 15 to 20 days.

The IACC’s comments to the Chinese government stressed the practical realities faced by rights-holders in pursuing litigation from abroad, including typical timelines for obtaining notarizations and legalizations required to avail themselves of the legal process. We also highlighted illicit sellers’ attempts to exploit those and other practical constraints faced by rights-holders in order to game the current process, and urged the government to provide e-commerce platforms with the flexibility needed to resolve alleged infringements directly, and without the need of formal court proceedings.

IACC Joins Amicus Brief Urging U.S. Supreme Court to Weigh-In on Divergent Approaches to

Trade Dress Protection

The IACC joined the Industrial Designers Society of America and Swissmem as amicus curiae in support of a petition for certiorari filed by Sulzer Mixpac, seeking review of a Second Circuit decision, and urging the Supreme Court to weigh-in on the divergent approaches adopted by various Circuit Courts in assessing functionality, as it applies to the protection of trade dress.

At present, most circuits apply a multi-factor test to consider whether or to what extent functionality may preclude protection of a product’s trade dress. As discussed in the amicus brief, we believe the approach taken by Second Circuit (and the Third Circuit in a separate case) runs contrary to decades of precedent as established by the Supreme Court, and the nuanced analysis of such issues undertaken by numerous other courts. If upheld, we believe the Second Circuit’s ruling would greatly diminish the availability of trade dress protection, while also resulting in considerable uncertainty as to the protection of trade dress afforded by the Lanham Act.