A Unified Approach


A Unified Approach

While there may be challenges facing trademark owners, the Trademark 5 has outlined projects to help protect brands’ rights.

Developing a unified approach in protecting users against fraudulent solicitations is a priority for the Trademark 5 (TM5) moving forward.

It was one of the key issues discussed yesterday at the session TM5 Users Meeting, moderated by Ki-joong Song, Deputy Director of Trademark Examination Policy Division at the Korean Intellectual Property Office. The session looked at a number of projects recently initiated by the TM5, such as the Fraudulent Solicitation to Trademark Owners Project.

Fraudulent solicitation “is where private companies that are not connected at all with the national IP offices are sending out advertisements and solicitations for various trademark services,” said Sharon Marsh, Deputy Commissioner for Trademark Examination Policy at the United States Patent and Trademark Office (USPTO).

When the USPTO first heard about fraudulent solicitations a few years ago, the agency posted information on its website. However, it recognized that not everyone would think to look at the website, so it sent out additional warning letters.

“We had a roundtable at the USPTO and invited other trademark agencies that have the mission and resources to work on this kind of problem,” she said. “It was very helpful, and we exchanged a great deal of information. As a result of that, we are sending out some staff members to the U.S. Department of Justice to help with investigations.”

Dimitris Botis, Deputy Director of Legal Affairs, International Cooperation and Legal Affairs Department for the European Union Intellectual Property Office (EUIPO), added that an EU network was developed three years ago to help identify these scammers.

“When it comes to defensive actions it is very important that we protect our data in a way that ensures they cannot be scraped by scammers.”

Another focus for the EUIPO, according to Mr. Botis, is to raise awareness and provide information to other national government agencies via working groups. “We hope this will become a global alliance,” he said.

One of the other ideas that was recently launched is the Outline of Quality Management Project, designed to synchronize trademark management initiatives across the TM5 partners.

“This is a project that has been directly proposed by the Japan Patent Office (JPO) and the EUIPO,” said Kanako Aya, Deputy Director, Trademark Division at the JPO.

While the project doesn’t propose any specific new initiatives, “its main purpose is to share information with practices and offices,” she said, which “will enhance our mutual understanding.”

José  Izquierdo, Deputy Director at the EUIPO, added that, while the Outline of Quality Management Project is still in the first phase, “phase two is to try and identify in which areas the partners can deploy synergies in order to employ different quality management systems”.

Finally, the meeting discussed the Priority Rights Project, which has the purpose of mapping the different practices in relation to priority rights documents, such as filing priority documents online.

TM5, Trademark 5, trademark, INTA, INTA 2018, fraudulent solicitation, Korean Intellectual Property Office, trademark examination, USPTO