Trademark Office Updates

WIPO: Digital Access System Exchanges Grow Rapidly

Published: October 6, 2021

Bruce Longbottom Eli Lilly and Company Indianapolis, Indiana, USA Chair, Designs Committee—Design Law and Practice Subcommittee

Verifier

James Michael Faier

James Michael Faier Faier & Faier P.C. Chicago, Illinois, USA Designs Committee—Design Law and Practice Subcommittee

The five leading intellectual property (IP) offices of industrial designs, known collectively as “the ID5” (consisting of China, the European Union, Japan, South Korea, and the United States), adopted the Digital Access System (DAS) in 2018 for the exchange of industrial design priorities. In 2020, more than 17,000 design priorities were exchanged. These numbers continue to grow rapidly. In the first seven months of 2021, more than 30,000 design priorities have already been exchanged. 

Created by the World Intellectual Property Organization (WIPO), the DAS allows priority and similar documents to be provided to participating offices without the need to obtain and send certified paper copies of an application. Instead, users ask the office where they are claiming priority (“Office of Second Filing” or accessing office) to obtain a copy of the document directly from a digital library, normally held by or on behalf of the office where the earlier application was filed and from which priority was originally claimed (“Office of First Filing” or depositing office). 

For designs, 19 offices currently participate in the DAS: Australia, Austria, Canada, Chile, China, Colombia, European Union, Georgia, India, Israel, Japan, Mexico, Norway, South Korea, Spain, and the United States (both depositing and accessing); and Brazil, France, and Italy (depositing only). The most recent country to join for design filings is Brazil, which joined in August 2020. 

For trademarks, currently only six IP offices have declared some level of participation in the DAS: Australia, Austria, Brazil, France, Italy, and Norway. However, no trademark documents have yet been submitted. WIPO is looking forward to more countries using the DAS for their trademark filings. 

“If the TM5 offices adopt the DAS for the exchange of trademark priorities, we can expect the same rapid increase in usage as we have for patents and designs,” according to William Meredith, director of WIPO’s IP Office Business Solutions Division. “The more offices to adopt the system, the more it becomes attractive for applicants and other offices to use it, creating a kind of positive network effect. Although there may be new technologies that are more fashionable, the DAS is very simple and easy for applicants and offices to use. A unified system for patents, designs, and trademarks would be beneficial for both applicants and offices.” 

Author’s Note 

On July 28, 2021, WIPO officials met with representatives of the TM5 to discuss those trademark offices possibly joining WIPO’s DAS for priority and similar trademark documents. During the upcoming 2021 Annual Meeting Virtual+, the TM5 will host a Users’ Group Meeting from 7:00 am–9:00 am (EST) on Tuesday, November 16, and the Japan Patent Office will host a TM5 workshop from 7:00 am–9:00 am (EST), on Wednesday, November 17, covering common trademark application mistakes that can lead to registration refusals and how to avoid them. 

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2021 International Trademark Association

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