02nd November, 2018
On 1-2 November 2018, the Korean Intellectual Property Office hosted the seventh annual TM5 Annual Meeting in Seoul. The TM5 is a gathering of the five largest trademark offices in the world (Korea, Japan, China, the European Union, and the United States), which collectively account for over 70% of the world’s trademark applications. As in years past, the TM5 Partners gathered to continue their discussions regarding harmonizing global trademark practices. The second day of the meeting consisted of a user’s session, which FICPI and other bar associations from around the world attended.
One of the questions submitted by FICPI in advance of the meeting had to do with the continued increases in fraudulent trademark filings from China-based applicants, particularly in the United States. FICPI asked China for an update on the efforts to control the subsidies being provided to applicants, which appears to be the primary reason for the dramatic rise in fraudulent applications coming from China. The China Trademark Office responded that the subsidies are being provided by the local governments, which it says it cannot control.
FICPI also asked the U.S. Patent and Trademark Office for an update on the USPTO’s efforts to address this issue, including (1) whether the pilot program to report fake specimens has been effective, and (2) whether the USPTO is considering requiring that U.S. applications be filed only by U.S. attorneys. With respect to (1), the USPTO responded that many of the reports of fake specimens have been denied because of the lack of objective evidence. With respect to (2), the USPTO indicated that after considering this issue, it has decided to implement a rule change requiring that U.S. applications be filed only by U.S. attorneys. In addition to noting that such rule would bring the U.S. in line with the policies of most other countries, the USPTO said the rule is necessary to stem the rising tide of fraudulent trademark applications being filed by foreign parties. The rule is expected to take effect sometime in mid-2019.
The TM5 Partners also discussed the progress of 16 cooperative projects and announced some new projects. The major points of interest are summarized below.
A. Ongoing Projects:
(1) ID List (led by USPTO): The objective of this project is to assist trademark owners seeking protection in multiple jurisdictions by creating a common list of acceptable goods and services. As of October 18, 2018, this pre-approved list contains 19,194 terms approved by all TM5 offices (see http://euipo.europa.eu/ec2/tm5), with new terms being added every month. Invitations have been sent to more than 10 non-TM5 countries to adopt the list, but the decision-making process in these countries has been slow as the offices need to review the entire list. Recently, Argentina agreed to adopt the list and it is hoped that more countries will adopt the list in the future. The China Trademark Office has now also provided a Chinese translation of the ID list.
(2) TMview (led by EUIPO): The objective of this project is to create a global search portal (https://www.tmdn.org/tmview/welcome). Currently, TMview contains nearly 50 million trademarks from 66 participating IP offices around the world. This year, TMview’s visual search facility was extended to cover Spain, Bulgaria, Lithuania, and Greece, and nearly 7 million trademarks can now be searched visually. China is also taking steps to join TMView, but an estimated timeline was not provided.
(3) Bad Faith Project (led by JPO): The objective of this project is to collect case law examples on bad faith trademark filings in each TM5 office, exchange information on the system/practices regarding bad faith trademark filings in each office, and raise user awareness on ways they can respond to bad-faith trademark filings. In 2017, 50 bad faith cases from different countries were analyzed and presented at the INTA meeting in Barcelona. While JPO had intended to conclude the project at that time, it decided to continue the project after seeing the positive response. The JPO is currently in the process of reviewing additional case examples submitted by each of the TM5 offices, as well as 170 cases submitted by INTA. The new report on these cases is expected to issue at the INTA meeting next year in Boston.
(4) Comparative Analysis of Examination Results (led by KIPO): The objective of this project is to study how the TM5 offices treat international applications that are filed in each partner office. KIPO has completed the analysis of 109 Madrid applications and plans to publish its findings soon (no specific date was given).
(5) Image Search (led by JPO): The objectives of this project are (1) to define issues and possible solutions for the development and implementation of an effective image search system for figurative trademarks at each of the TM5 offices; and (2) to create and share successful achievements. The offices have agreed to consider possible uses of AI technology in image searches, although they recognized the need for careful discussions about the role sharing between AI and human activity in conducting trademark examinations. One of the major issues is defining what the standards of similarity should be in such searches.
(6) Fraudulent Solicitations: This project addresses scams occurring worldwide where trademark users receive misleading or fraudulent solicitations offering trademark services. The TM5 partners aim to exchange information, best practices, coordinate efforts, and raise public awareness about these scams. The project also seeks to create a central source of information on the TM5 website with a multi-national database of questionable solicitations. This project is in progress.
(7) Indexing of Non-Traditional Trademarks (led by USPTO): The goal of this project is to improve and potentially harmonize the TM5 partners’ methods of searching and retrieving non-traditional marks, to assist those who search national trademark registries in multiple jurisdictions. This project is in progress.
(8) TM5 Website (led by KIPO): Improvements continue to be made and new functions have been added, including a feature where users can send a message to any TM5 office. The goal is to enhance communication between users and the offices.
(9) User Association Involvement (led jointly by EUIPO and JPO): The aim of this project is to involve users in TM5 either through user participation or providing information to users (e.g., workshops). The JPO will hold a workshop later this year and also next year in Boston during INTA.
B. Concluded Projects
(1) Common Status Descriptors: The goal of this project was to show the status of trademark applications and registrations using a common set of symbols across all TM5 offices. It was announced that all TM5 offices have now implemented the full set of Common Status Descriptors (both icons and terms). The icons may also be adopted by WIPO, and non-TM5 offices have been encouraged to adopt them as well.
(2) Taxonomy and TMclass (led by EUIPO): The EUIPO announced that the deliverables of this project (i.e., placing identifications of goods in a hierarchical tree structure) have been reached, and that the project will go into operational mode by the end of the year.
C. New Projects
KIPO announced a new project beginning in 2019 concerning trademark infringement. The goal of the project is to publish illustrative trademark infringement cases on the TM5 website and to hold seminars on trademark infringement. The objective is not to harmonize laws, but simply to exchange information to strengthen cooperation among the TM5 partners, recognizing that trademark infringement manifests itself in various forms with the convergence of new technologies.
The China Trademark Office discussed issues concerning examination speed and quality control. The examination time for applications is currently around 6 months in China, which will be shorted to 4 months by 2020. There are now 6 trademark examination centers in China to help the China Trademark Office examine trademark cases, and in total there are 1200 trademark examiners in China. As to quality control, the China Trademark Office indicated that it has devoted significant resources to supervising the quality of applications. In addition to providing regular training for new and existing examiners, the office has established a random check system and the results of the random checks are being linked to the examination centers’ budgets.
Finally, the EUIPO confirmed that a representative office in the EU is still needed to represent a party in EU filings.
Author: Naresh Kilaru & Lena Shen