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Guest post: A smoother road thanks to TM5 harmonisation efforts

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In a guest post, USPTO Commissioner for Trademarks Mary Boney Denison explains the TM5 ID List Project

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Mary Boney Denison

It’s exciting to be in Beijing this month attending the latest meeting of the TM5, an organisation of the world’s five largest trade mark offices. This is the first time we’ll be gathering in China since the country became a TM5 partner. In meeting with representatives from the European Union, Japan, South Korea, the People’s Republic of China, and the United States, I’m representing the USPTO in advancing our agency’s mission to cooperate and coordinate with other TM5 members to create a more user-friendly and, if possible, interoperable international trade mark system. I’ll be updating the attendees of this mid-term meeting on the status of the TM5 ID List Project. What is that? An effort aimed at transforming the global trade mark system by offering applicants a global, harmonised pick-list of identifications of goods and services when preparing trade mark applications. A more consistent trade mark application process results in fewer problems due to inconsistencies in terminology and classification from country to country. As part of this effort, a TM5 working group in Beijing is discussing how to leverage IT to better display TM5 ID List entries, thus improving the user experience for everyone exploring this shared database.

Pick-lists

"If a trade mark applicant chooses an ID from a national pick-list, it is unlikely that the pre-worded ID will be questioned by the office receiving the application."

Applicants who seek trade mark registrations from national IP offices must provide those offices with descriptions – IDs or identifications – of the goods or services associated with the trade marks. Applicants typically prepare these IDs in one of two ways: they either craft the IDs on their own, or they select an ID, or a combination of IDs, from pick-lists maintained by the national IP offices.

If a trade mark applicant chooses an ID from a national pick-list, it is unlikely that the pre-worded ID will be questioned by the office receiving the application. These pre-approved IDs also contain pre-approved classifications – now 34 categories of goods and 11 categories of services – provided under terms of the WIPO Nice Agreement and used by 150 national offices.

Because such pre-approved IDs with pre-approved classifications create efficiencies for both national IP offices and trade mark applicants, the Madrid System features an online tool called the Madrid Goods & Services Manager. This is a pick-list that applicants can consult when selecting an ID for international trade mark applications.

TM5 ID List Project

Over the past decade, the TM5 has been developing the TM5 ID List, a global, harmonised pick-list of identifications of goods and services for trade mark applications. The USPTO leads this project, under which the TM5 partners propose and vote on identifications of goods and services and their classification under the Nice Agreement. The advantage for trade mark applicants is that if a harmonised ID is entered in an application for registration in any of the member TM5 offices, it will be accepted without a refusal.

We continue to work aggressively with our international partners in expanding the entries and their translations, as well as recruiting more countries to join the TM5 ID List. To date, the TM5 has already developed more than 16,500 pre-approved IDs for applicants to use in trade mark applications, and more are added every month. Seven observer countries are also participating in this harmonization effort, including two new additions, Chile and Colombia. Like the TM5 partners, the observer countries can propose IDs for inclusion in the list and are responsible for translating each of the IDs into their office’s national language.

Resolving inconsistencies

"In reality, the Nice Committee process is slow and frequently does not embrace big changes to the system due to the IT implications on national databases."

In the process of developing the TM5 ID List, the TM5 partners found discrepancies in national practices regarding where a particular good or service should have been classified under the Nice Classification System. In theory, any discrepancy should be reconciled by the Nice Committee of Experts, which meets once a year to review proposals to transfer goods/services from one class to another or to make other changes to the Nice System’s alphabetical list of goods and services. In reality, the Nice Committee process is slow and frequently does not embrace big changes to the system due to the IT implications on national databases. Thus, many of these inconsistencies in classification have been left unsettled, and Madrid applicants in particular can face refusals because of inconsistent classification.

With the TM5 ID List, the TM5 is seeking to resolve these problems by means of discussion and, ultimately, consensus among the five partner trade mark offices and participating observer national IP offices.

Global benefits

The incorporation of the TM5 ID List into the Madrid Goods & Services Manager is one example of how TM5 cooperation benefits applicants. In short, trade mark applicants filing through the Madrid System can now experience a smoother application process that saves both time and money if they use an ID that has been pre-approved, pre-classified, and pre-translated as part of the TM5 ID List project. The benefits of TM5 cooperation for applicants can be amplified if the most recent TM5 initiatives are adopted into the Madrid System.

One of the things I hear frequently in my discussions with stakeholders is the value they place on consistency and efficiency in the trade mark application process. The TM5 ID List is one of our responses to this feedback. The bottom line is that it is a big step toward a world of timely examination and registration of high-quality trade marks around the world. More and more pre-approved IDs are becoming available for use by global trade mark applicants, who also enjoy certainty that the appropriate classification of goods and services will also grow.

For more information on TM5 and its current projects, visit its website. The TM5 ID List can be accessed at http://euipo.europa.eu/ec2/tm5.

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