2015 TM5 Annual Meeting
The United States Patent and Trademark Office (USPTO) has always been committed to working closely with other trademark offices worldwide to exchange each other’s best practices. On December 1-2, 2015, the five largest trademark offices (TM5) hold an annual meeting at the USPTO headquarters. The five largest trademark offices (TM5) include the USPTO, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market (OHIM), and the State Administration for Industry & Commerce of the People’s Republic of China (SAIC). The annual meeting has resulted in many progresses on numerous cooperative projects. Voting has also been conducted in the meeting to expand invitations to other countries to join the “ID list” project which is led by the USPTO.
The USPTO, the JPO, and the OHIM have first established a cooperative framework in 2001. The KIPO and the SAIC have later joined the framework in 2011 and 2012, respectively. The five largest trademark offices framework is hence called TM5. The TM5 framework allows the partner offices to exchange information regarding trademark-related matters between each office as well as organize activities to improve their own trademark protection systems and procedures. The 2015 annual meeting has included sessions with users. The purposes of the sessions are to understand feedbacks from users regarding existing efforts, create new ideals, and discuss future works.
The main task of the TM5 is to improve user’s interactions with national trademark offices and the World Intellectual Property Organization (WIPO) through cooperative projects. These projects include, minimizing bad faith filing, TMview, common status description, ID list, comparison of examination results, and Madrid Protocol Procedure.
Minimizing Bad Faith Filings
In general, bad faith filing (trademark squatting) is an act of registering other people’s original trademarks as their own, taking advantages from the real trademark owners. The TM5 partners hope to provide users more transparent information to minimize the number of bad faith filings globally by exchanging each office’s best practices. The TM5 has published a report, which summarizes each office’s best practices. In the 2015 annual meeting, the TM5 has agreed to organize seminars with users and other national trademark offices constantly to find possible solutions to this global issue. The next seminar will be held in Tokyo, Japan, on March 1, 2016.
TMview
To make it easier for applicants to access trademark-related information and conduct trademark global search, a project named “User Friendly Access to Trademark Information” also called “TMview” which is led by the OHIM is now underway. TMview allows users to conduct a single search of several databases provided by the OHIM, WIPO, and 43 trademark offices (which includes USPTO, JPO, and KIPO). Data provided from the SAIC is expected to be added to the TMview search system in 2016. TMview also provides a link for users to acquire trademark prosecution history and all relevant information (if the national office provides that information). TMview link: https://www.tmdn.org/tmview/welcome
Common Status Descriptor
To ensure users can understand search results generated from TMview and TM5 partner offices more easily, a project called “Common Status Descriptor” (CST), which is led by USPTO, is now underway. This project aims to allow multiple national offices to use a set of uniform terms and icons to show the status of trademark registrations and applications. Once the CST project is complete, there will be of great benefit to users.
ID List
Applicants who are applying or registering trademarks need to provide descriptions (IDs or identifications) of their goods or services that are associated with their trademarks to trademark offices. In order to improve global trademark applications, the USPTO leads a project to develop a “list”, which comprises preapproved and pre-classified IDs, called “TM5 ID List”. All TM5 partners take part in this project, together with the national trademark offices of Canada, the Philippines, Singapore, Mexico, the Russian Federation, Colombia, and Chile. ID List is now searchable and available online: http://euipo.europa.eu/ec2/tm5/. Applicants who seek to register their trademark can directly select one ID or include IDs in their descriptions from the ID List instead of making their own descriptions. In this way, applicants can make sure the national trademark offices will accept their ID. They can avoid the situation when the national trademark offices find that the ID is unacceptable and delay the processing of the trademark filing and the issuance of a registration. Another important decision has also been made in this annual meeting to expand the “TM5 ID List” project to other countries. Hence, the ID List will be a truly global tool for national trademark offices around the world to use.
Comparison of Examination Results and Madrid Protocol Procedure
To better understand each TM5 partner’s practices and policies, TM5 partners are now comparing examination results for trademark applications. The trademark applications, which are under reviewed, are filed to all of the partner offices through the Madrid Protocol. Such analysis would provide users and partner offices helpful information related to trademark registration. In addition, the JPO leads a project to standardize information regarding designations related to the practices and procedures provided by TM5 partners under the Madrid System. Once this project is complete, it will be much easier for global users to navigate or search prosecution in various TM5 partners when filing through Madrid Protocol.
Source:
http://www.uspto.gov/blog/director/entry/five_largest_trademark_offices_hold
kyeword: TM5, TMview, ID List, Madrid Protocol