International Activities

Trademark Committee attends TM5 Annual Meeting

A session was held with users at the TM5 annual meeting attended by the trademark offices of Japan, the U.S., the European Union, China, and South Korea, in Barcelona, Spain on October 31, 2012. This was the third session with users. The first session was held in Japan in 2011 as the first devoted to the subject of trademarks, based on the resolution adopted at the ninth annual meeting of the trademark trilateral in 2009. The aim of the session was to allow the exchange of information and straightforward views between users and offices, and to promote the concepts of user-friendliness and harmonization and thereby lead to improvement of the trademark system and its practices.

Participants included representatives from each office, (JPO, USPTO, OHIM, KIPO, and SIAC) from WIPO, and from three associations from Japan (i.e. JPAA, JTA, and JIPA), two from the U.S. (i.e. AIPLA and INTA), two from Europe (i.e. ECTA and EFPIA), and one from South Korea (KPAA). Mr. Matsudaira, the Vice Chairman of the Trademark Committee attended on behalf of JIPA.

The following projects led by the TM were discussed at the session.

1. ID Project

* Participating offices: JPO, KIPO, OHIM, and USPTO.
The ID Project aims to develop a list of identifications of goods and services (an ID list) which is mutually acceptable to the participating offices in the examination, as identifications (IDs) to be used for goods and services designated in the trademark applications. This project has been established as the successor to the ID list used in the trademark trilateral project. The members of TM5 and other intellectual property offices have signed a memorandum on cooperation and are participating in this project.
Currently, Canada, Singapore, the Philippines, Mexico and the Russian Federation are among the participating countries.

2. Common Statistical Indicators

* Participating offices: JPO, KIPO, OHIM, SAIC, and USPTO
Common statistical indicators refers to activities related to updating the data on each office on a regular basis based on common, agreed upon statistical indicators and examining said common statistical indicators.

3. Common Status Descriptors

* Participating offices: JPO, KIPO, OHIM. SAIC, and USPTO
Under this program, descriptors on the status of trademark applications (e.g. application status, such as pending, registered or final decision rendered) which can be easily understood by general users and used between partner offices shall be considered.

4. Bad Faith Project

* Participating offices: JPO, KIPO, OHIM, SAIC, and USPTO.
The bad faith project is aimed at enhancing the knowledge of each office on bad faith trademark filings and finding solutions to problems faced by the participating offices through the exchange of information and views on such problems and on laws and regulations and the application thereof by the offices.

5. Image (Design) Search

* Participating offices: JPO, KIPO, OHIM, SAIC, and USPTO
Under this project on image searches for figurative trademarks, a joint study is being carried out to clarify the problems with the current system with the aim of promoting the development of an image search system. This is based on the fact that the current image search system, which was introduced with an aim of reducing the burden of searches of figurative trademarks, is insufficiently precise to be useful in searches for figurative trademarks.

6. Taxonomy and Euro Class Link

* Participating offices: JPO, KIPO, OHIM, and USPTO
Euroclass is an OHIM classification tool for goods and services used for trademark registration. In this project, the classification data provided by the participating offices shall be integrated to facilitate the classification of goods and services. Taxonomy refers to a new hierarchical structure for the identification of goods and services based on the Nice Classification, with broader concepts at the top and specific identifications at the bottom.
The introduction of Taxonomy into the Euroclass enables immediately understandable searches. Specifically, users will be able to find the appropriate identification in each category by going down the classification tree. In the future, the database on Euroclass will be improved, and Euroclass and the current ID project will be linked to Taxonomy.

7. User-friendly Access to Trademark Information (TM View)

* Participating offices: JPO, KIPO, OHIM, and USPTO
TM View refers to an OHIM search tool in which searches of registered trademarks within the EU can be conducted and inquiries regarding detailed information on such trademarks can be submitted. Under this system, which came into operation in April 2010, OHIM accesses each office’s trademark database using a search engine shared within the EU and provides information. The offices’ participation in the use of this tool shall be considered.

8. Website

* Participating offices: JIPO, KIPO, OHIM, SAIC, and USPTO
Creation of a website for TM5 to share information.

9. Session with users

* Participating offices: JPO, KIPO, OHIM, SAIC, and USPTO
This session aims to generate discussion of the improvement of systems and practices by exchanging views with users. In this regard, JIPA in particular requested that the offices strengthen their collaboration on the ID Project mentioned in 1 above and on the Taxonomy and Euroclass Link mentioned in 6 above, which share common issues. Further, JIPA encouraged the offices to develop a scheme whereby a method of specifying designated goods, etc. or designated class(es) which are not included in the ID list can be decided based on discussions between the five offices led by the main office, instead of being decided separately by each office.

The next session with users at the TM5 annual meeting is scheduled to be held in 2013 at KIPO.

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