Read All About It: The TM5 Subcommittee

23-05-2017

Naomi Jeffreys

One of INTA’s youngest subcommittees covers the TM5, a cooperative effort between five major trademark offices. The subcommittee’s Chair, Elisabeth Escobar, speaks with Naomi Jeffreys about its importance.

When it comes to international collaboration, there is one INTA committee that is working overtime—the TM5 Subcommittee, which falls under the Trademark Office Practices Committee.

Five trademark offices, known as the TM5—the Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), European Union Intellectual Property Office (EUIPO), China’s State Administration for Industry and Commerce (SAIC), and U.S Patent and Trademark Office (USPTO)—work on joint projects and exchange information on trademark-related matters. 

Elisabeth Escobar (Marriott International, USA) is Chair of the TM5 Subcommittee, which was formed just last year.  

“INTA had a Presidential Taskforce to study its committee structure a couple of years ago, and the recommendations included proposals for a number of new committees and subcommittees,” Explains Ms. Escobar.

The formation of a subcommittee focused on the TM5 was one of those adopted. 

“Our mission is twofold: first, to facilitate INTA’s increased involvement in the TM5 process, and second, to raise awareness among INTA’s membership regarding the TM5 and their good work.

“INTA recognized, rightly, that to have serious involvement in the TM5 process and to be effective, we needed a dedicated subcommittee.” 

Each of the TM5 projects is led by a member office. Currently, the TM5 has 13 active projects underway and it is considering a proposal by KIPO for a fourteenth project on how TM5 members describe goods and services.  

One of the longest running TM5 projects, she says, is the ID List Project.

According to the TM5 website (www.tmfive.org), this project is an attempt to enable rights owners seeking protection in multiple jurisdictions to enjoy benefits from the use of pre-approved identifications (IDs)—descriptions of the goods and services that each trademark identifies. 

“It is expected that the project may result in a ‘unified’ list of IDs that are acceptable not only to the IP offices of each of the five TM5 partners, but to IP offices in other jurisdictions as well,” it says. 

Ms. Escobar explains that over 17,000 IDs have been approved by the TM5 to date. 

“For a global filer like my company, that is tremendously helpful,” says Ms. Escobar, who is Vice President and Senior Counsel, intellectual property, at Marriott International. 

TM5 at the Annual Meeting 

On Sunday, May 21, the TM5 hosted an event at the INTA Annual Meeting called TM5 Workshop Presentation of the Compilation of Case Examples of Bad Faith Trademark Filing. 

The session, which was open to all conference attendees, was led by the JPO, and government officials and trademark users from the European Union, Japan, South Korea, China, and the United States made presentations on bad-faith trademark filings. 

Ms. Escobar is keen to get across the importance of the TM5 Subcommittee to INTA members. 

“It’s important that we build on the knowledge of the members’ involvement with the TM5, and have consistency and continuity going from year to year,” she says. 

“The Subcommittee’s members have developed good working relationships with the TM5 contacts at the individual offices and they occasionally ask for our input, which we are happy to provide.

“INTA is excited to work with the TM5 and each office and to support their projects. We think they’re very valuable.”

INTA17, TM5, Elisabeth Escobar, trademark, JPO, KIPO, EUIPO, SAIC, USPTO

WIPR