About 100 users attended the session, including trademark owners and representatives. Two of the issues they raised during open exchanges with the panel were tight deadlines in China and strict classification requirements in Korea. Both China and Korea have seen remarkable increases in international designations since joining the Madrid system in 1989 and 2003 respectively. In 2007, China was the most designated country, while designations in Korea grew by more than 73%.
During his presentation, Wen Xue, a senior examiner in the examination division of the Trademark Office in the State Administration for Industry and Commerce in Beijing said that only 15 days are allowed to file a review of provisional refusals of decisions on international designations at the Trademark Review and Adjudication Board although in practice foreign applicants can benefit from longer times. He described this as a “comparatively short” time and added: “It’s particularly important to keep close contact with your Chinese agent.” However, in response to questions, he said the 15-day time limit might be extended under planned revisions to the trademark law.
In Korea, the main issue for international applicants is the need for specificity in the description of goods or services, and some users noted that broad descriptions can be refused without alternative suggestions being offered. Kyung-Ohk Kim, a trademark examiner in the international trademark examination team at the Korean Intellectual Property Office (KIPO), confirmed that the “majority of refusals” in Korea are due to the vagueness or broadness of the goods or services description. For example, she said descriptions such as “colorant” or “cream” would likely be refused as too vague.
However, Kim added that the rules on descriptions at KIPO are being reviewed, and a decision could be made later this year to allow broader descriptions or class headings.
A number of those in the audience also queried delays in providing information on the status of designations to users. Alan Datri, senior counselor in the office of the assistant director general at WIPO (pictured), noted that the International Bureau is developing a number of tools to provide more information more quickly to users and to increase electronic communication with national offices. WIPO now sends information electronically to 49 out of 82 offices, and receives applications electronically from six offices.
Users’ tools that have been recently introduced include notification by registered email for all communication except the registration certificate, e-renewal, online payment of the fee balance by credit card or current account and free access to the ROMARIN database (which contains information regarding all international marks recorded under the Madrid System). Information on tacit-acceptance of designations is due this year and the Gazette is set to be fully searchable in 2009.
More radical reforms, such as abolishing the requirement for a basic mark and introducing the possibility of self-designation, may be discussed at Working Group meetings later this year. Any such changes, even if agreed by the Madrid Union, would be a long way off but Datri said the fact they were being considered demonstrated that Madrid “has become a global system, catering for different countries.”
Ernesto Rubio, assistant director general at WIPO, told users: “It is inevitable that we will use more and more web pages, web databases and email.” Therefore, he said, meetings such as that held yesterday were important in maintaining “personal contact” between WIPO and users.
