Naresh Kilaru reports on FICPI’s  participation at the December TM5 meeting and the efforts of the world’s main trade mark Offices to harmonise global trade mark policy.

On December 9-10 (2019), the TM5 Partners: the Japan Patent Office (JPO), the China National Intellectual Property Administration (CNIPA), the European Union Intellectual Property Office (EUIPO), the Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO), met in Tokyo for their 8th annual meeting.  The World Intellectual Property Organization (WIPO) also participated as an observer.

Given the passage of China’s new trade mark laws, which became effective on November 1 (2019), a discussion around the impact of the new laws was front and centre. China’s trade mark laws were first introduced in 1982, with various amendments being made in 1993, 2001 and 2013.  The latest amendment in 2019 makes it significantly easier for trade mark owners to oppose applications on bad-faith grounds. Specifically, trade mark owners no longer need to prove that their marks are well-known in China (which was a high standard) in order to oppose on grounds of bad faith. Rather, they must simply prove that they are the true owner of the mark and that the mark has acquired some reputation in China.

In conjunction with the passage of the new law, CNIPA also announced that it is taking additional steps to improve the quality and timeliness of examination, including recruiting additional examiners and simplifying procedures and document requirements. The current examination time for trade mark applications in China is around 5 months.

KIPO and JPO announced that they will start accepting consent agreements in situations where a trade mark owner’s application has been refused based on a prior third party registration. However, for consumer protection reasons, a consent agreement will still not be accepted if the marks/goods are identical. 

Significant developments during 2019 

Lastly, the TM5 Partners discussed the progress of 14 collaborative projects.  Projects that had significant developments in 2019 are summarised below:

ID List
  • This project provides a list of pre-approved identifications of goods and services that are acceptable in all TM5 Offices. As of January 10 (2020), the TM5 ID List contained 20,090 harmonised identifications (terms approved by all five Partners).
  • In addition to the TM5 Partners, the Trade Mark Offices of Colombia, Chile, Canada, the Philippines, Singapore, Mexico and the Russian Federation have joined the project. 
  • The Intellectual Property Offices of EU member states, which are part of the EU Harmonized Database, also benefit from and use the ID List. Thus, ID List terms are acceptable in the national Offices of Austria, Benelux, Bulgaria, Croatia, Cyprus, Czech Republic, Demark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden and the United Kingdom. Additionally, Mexico, Bosnia and Herzegovina, Costa Rica, Moldova and Monaco all accept the ID List terms by dint of  their participation in the Harmonized Database. At the 2019 TM5 Annual Meeting, the TM5 Partners agreed to invite formally Bosnia and Herzegovina, Costa Rica, Moldova and Monaco to join the ID List.
  • Invitations to participate in the ID List have also been extended to a number of other countries, including Australia, New Zealand, Vietnam, Peru, Brazil, Brunei Darussalam, Cambodia, Indonesia, Laos, Malaysia, Thailand, Morocco, Algeria, United Arab Emirates, India, South Africa, OAPI, ARIPO, Argentina, Paraguay and Jordan. South Africa has so far declined to participate.
Information on describing product names for users
  • This project aims to assist users in drafting identifications in accordance with Partner guidelines when goods/services do not appear on the ID List. The TM5 Partners have published a report on ID practices and completed a large-scale study in 2019.  The results of the study are due to be published sometime in 2020. 
  • At the 2019 TM5 Annual Meeting, the Partners agreed to evaluate 50 additional identifications.
Common status descriptors
  • This project aims to show the status of trade mark applications and registrations using the same set of status symbols in all TM5 Offices. The USPTO implemented the full set Common Status Descriptors into its Trademark Status and Document Retrieval (TSDR) tool in April 2016, followed by EUIPO in November 2016, JPO in April 2017, CNIPA in May 2017 and KIPO in March 2018.
  • The Common Status Descriptors will also be incorporated into TMview in the near future.
  • At the 2019 Annual Meeting, the TM5 Partners agreed to invite Canada, Morocco, Russia and Tunisia to participate in this project.
Non-traditional trade marks
  • This project explores how Offices search and describe non-traditional marks in order to harmonize practices.  The TM5 Partners are currently working on a guide for searching non-traditional marks and will be focusing on colour marks in 2020. 
TMview
  • This is an online searchable database of trade mark applications and registrations in 65 trade mark Offices. It was announced that CNIPA’s data should be included in 2020.
Bad faith project
  • This project studies how trade mark offices and rights holders can address the problem of bad faith trade mark filings.
  • At the 2019 TM5 Annual Meeting, JPO presented the ‘Updated Case Examples of Bad-Faith Trademark Filings’ (PDF).  In 2020, the Partners will create a booklet about bad faith filings and counter-measures.
Image search
  • This project aims to develop automated trade mark image search systems.  The project began in 2011, before artificial intelligence was widely used.  At the 2019 TM5 Annual Meeting, the Partners agreed to expand the project to include artificial intelligence IT tools that support trade mark examination beyond image search and intend to hold a meeting of experts in 2020. 
Comparative analysis on examination results
  • The purpose of this project is to increase user convenience by enabling international applicants to understand the registrability of marks in TM5 Partner Offices.  To date, the Partners have completed reviewing 100 cases and are in the process of analysing this information. At the 2019 TM5 Annual Meeting, the Partners agreed to evaluate an additional 50 cases.

FICPI’s view and involvement

FICPI has been pleased to attend the TM5 Annual Meetings for several years and give its members the opportunity to weigh in on global trade mark policy developments. FICPI has voiced the views of its members in this important forum on numerous issues, including bad faith trade mark filings, non-traditional trade marks and harmonization of examination practices.

Through meeting reports, committees, newsletter, blog and events, FICPI ensures timely insights from key meetings are provided to the FICPI community who benefit from the worldwide membership to gain wider perspective. 

Next steps

  • Get involved with FICPI’s Work & Study Committee – CET 1 (Trade Marks), which focuses on harmonisation of trade mark laws at the international and national levels
  • All CET 1 members have an opportunity to weigh in on TM5 activities in the form of questions or comments; all questions and comments are raised directly with the heads of the TM5 Partner offices
  • Get involved before the next TM5 meeting in April 2020