TOPC Committee Addresses Global Developments in Bad-Faith Trademark Filings

Published: May 1, 2019

Susan Crane Wyndham Hotels & Resorts, Inc. Parsippany, New Jersey, USA

Mary Baril McGuireWoods LLP Richmond, Virginia, USA

INTA’s Trademark Offices Practice-TM5 Subcommittee is furthering its mission of promoting user-friendly trademark systems through its highly relevant programming at INTA’s 2019 Annual Meeting, where registrants will learn about global strategies to address the pernicious issues of bad-faith filing and warehousing.

Overview of the TM5 and TOPC TM5 Subcommittee

The TM5 is a partnership framework of the world’s five largest trademark offices: CNIPA (China), EUIPO (the European Union), JPO (Japan), KIPO (Korea), and the USPTO (the United States). The TM5’s mission is to promote cooperation and collaboration with partner offices, and encourage increasingly user-friendly-and, if possible, interoperable-trademark systems, through the exchange of information on practices and programs, as well as through common projects aimed at the harmonization or improvement of trademark procedures.

The TM5 furthers its mission through a series of projects, each led by a specific partner office. The partner offices invite selected representatives of recognized trademark user associations to attend the TM5 annual and mid-year meetings to participate in interactive presentations.

The TOPC TM5 Subcommittee consists of INTA members from each of the TM5 countries. One or more members of the TOPC TM5 Subcommittee is delegated to attend the TM5 annual and mid-year meetings, as well as trademark User Sessions. In addition, representatives of the TM5 partner offices meet directly with the TOPC TM5 Subcommittee during the INTA Annual Meeting and Leadership Meeting to obtain more direct feedback.

TM5 at INTA’s 2019 Annual Meeting

At a joint TM5-INTA workshop titled “A TM5 Workshop: Global Developments and Research on Bad-Faith Trademark Filings,” INTA 2019 Annual Meeting registrants will learn about the latest developments in bad-faith filing and warehousing, as well as strategies being implemented globally to address these issues. The session, which takes place May 20, 1:30 pm-3:30 pm, includes presentations and insights by officials from TM5, other intellectual property (IP) offices, INTA, and other trademark user associations.

TM5 will also be holding a TM5 Users’ Meeting on May 19, from 1:30 pm-3:30 pm at INTA’s Annual Meeting.

Find out more about these sessions, and register here.

TM5 Projects

The User Association Involvement project, led by the EUIPO and JPO, is specifically aimed at increasing user involvement in the work of the TM5. Its work has resulted in the implementation of several actions to increase interaction with trademark user associations such as the International Trademark Association.

In addition to the User Association Involvement project, other significant projects include the TM5 ID List project, the TMView project, and the Bad-Faith Filings project.

The TM5 ID List project, led by the USPTO, is a collaboratively developed set of more than 19,000 goods and services identifications that are acceptable to all five partner offices. The TM5 has invited other national IP offices to similarly accept the TM5 ID list. At present Canada, Colombia, Chile, Mexico, the Philippines, the Russian Federation, and Singapore have agreed to participate in the ID List.

Perhaps more familiar to INTA members, the TMView project, led by the EUIPO, aims to increase the scope of TMView, the free multinational trademark rights database. The current focus of the TMView project is the incorporation of Chinese trademark registration data into the database. The technical feasibility study is complete and the parties are working to establish a time frame for full integration of Chinese trademark data.

One of the more active user participation projects is the Bad-Faith Filings project led by JPO. Through this project, the partner IP offices share information, and have undertaken a comparative analysis of laws and regulations regarding bad-faith filings. The findings of the project team are regularly shared with users through workshops conducted by JPO. Several Bad-Faith Filings workshops have been held in conjunction with INTA Annual Meetings.

Additional TM5 active projects include the following:

  • TM5 Website Project (KIPO): Developing the website, in which the partners share information about TM5’s activities with users.
  • Comparative Analysis of Examination Results (KIPO): Comparing examination guidelines and practices, trademark laws, and cases in TM5 partner countries.
  • Describing Goods and Services (KIPO): Comparing and analyzing how the partner offices describe goods and services and providing this information to users.
  • Taxonomy and TMclass Link (EUIPO): Creating a database of classification terminology from the TM5 offices.
  • Priority Rights (EUIPO): Comparing rules and practices of the five offices with respect to priority rights.
  • Image Search (JPO): Defining issues and solutions for searching marks containing figurative elements.
  • Quality Management (JPO/EUIPO): Comparing the quality management practices of the five offices.
  • Common Status Descriptors (USPTO): Compiling a list of common status descriptors and assigning them accompanying icons, which are displayed in the partner office database search results.
  • Indexing Non-traditional Trademarks (USPTO): Compiling a list of best practices to search and describe nontraditional marks.
  • Fraudulent Solicitation (USPTO/EUIPO): Attempting to develop solutions to fraudulent solicitation communications sent to trademark applicants and registrants.

The TOPC TM5 Subcommittee is looking forward to discussing these and other new initiatives with the representatives of the TM5 partner offices at its subcommittee meeting, and welcomes input from INTA members on the ongoing projects and any other issues that may be appropriate for future projects of the TM5.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association