Presenting TM5: An Interview With The Korean Director Of Trademark And Design

Seong-Joon Park is the director general of the Trademark & Design Examination Bureau at the Korean Intellectual Property Office (KIPO). He sat down this week with Intellectual Property Watch‘s Catherine Saez to present TM5, a joint global initiative on trademark and design with four other IP-intensive offices, and his vision for trademark and designs in South Korea. As part of the initiative, KIPO is holding a weeklong series of events on trademark and designs in December.

Intellectual Property Watch (IPW): What is TM5?

Seong-Joon Park (SJP): At the beginning [in 2001], this framework was initiated by three countries: the Japan Patent Office (JPO), the European Office for Harmonization in the Internal Market (OHIM), and the United States Patent and Trademark Office (USPTO) and was called the Trademark Trilateral. KIPO joined in 2011 and the State Administration for Industry and Commerce of the People’s Republic of China (SAIC) in 2012. KIPO was already participating in the “IP5”, a cooperation between the United States, Japan, China, Korea and the European Patent Office, but [that] effort is focused on patents. TM5 is a similar effort for trademark and designs.

The countries of TM5 represent together approximately 70 percent of all trademark and designs applications in the world, and over 90 percent of all design applications.

We can consult each other for technical problems, for example the standard for our data, and we also have a project to develop a common status indication. At the moment, the procedures in all five partner countries are slightly different and the expression for each status is also different. Users trying to check their application find it difficult to understand the different systems. So we are trying to set up a common indication and are trying to build up a system where we can check status of applications in each TM5 office.

In WIPO [the World Intellectual Property Organization], we discuss many things about trademark and designs. Sometimes we discuss legal issues and sometimes political issues, but from the perspective of users and industry, they need more practical information for using the international application system. We initiate consultations to provide such information to our industry and users. The examiners and the staff in each IP office can also benefit from the said information.

IPW: Is there a TM5 internet platform?

SJP: We developed a website for the TM5 and it will be accessible from December. It will be used to share information among the five offices. One suggested option is to link TMview [a system to follow trademark and design applications] to this website so it could be accessible by the public.

IPW: TM5 members have a number of ongoing projects, can you give us some examples?

SJP: At TM5 annual meetings, projects are selected and each partner IP office takes one of those projects as a lead country and they prepare a study on the project and share information at the next meeting.

[Discussing the so-called Bad Faith Project led by Japan:] Trademark law is territorial, which means that each applicant has to apply and get registration in each country. Many people are trying to file in a given country trademarks that are not known in that country. They are filing the application for a trademark that is already known and used in another country. The bad faith project is trying to share information about this problem between TM5 members. We are not trying to push other members to harmonise on this issue. We think it is premature and also not appropriate to have such a harmonised rule because trademark issues are related to national markets and consumer recognition. But the exchange of practice will be useful so applicants can have expectations about the outcome of their application.

The TMClass project, led by OHIM, is a classification tool of goods and services for trademark applications. TMClass provides names of goods that are acceptable in each TM5 IP offices and also provides translations. If applicants file an application using those names it will eliminate the risk of a notice of rejection based on the name of goods. [Note: TM5 brings together the classification databases of each participating office to facilitate the process of classifying goods and services.]

Yet another project is TMView, originally developed and led by OHIM. It is a system which shows the application and registration of a mark in each state. It is useful for applicants to see which trademark is registered, in which country, and for which products. [Note: TMView is a free online consultation tool allowing any user to search the trademarks of all participating official trademark offices at the national, international and EU levels.]

TM5 IDList, led by USPTO, is creating a list of names of goods that are acceptable in the TM5 countries. It was originated by the USPTO and is not limited to TM5 countries.

IPW: What is the main interest of KIPO in joining TM5 from national perspective?

SJP: We share the common goals of those four other offices. We try to help our users trying to file applications in those countries. We can discuss some new issues that we have to resolve and those discussions are more effective because they gather trademark experts.

IPW: Are you trying to include other IP offices?

SJP: Not at the moment. KIPO and SAIC just joined the system so we might need to develop more active programmes between those five offices first.

IPW: As you were recently appointed, do you have a new vision for the department?

SJP: I was appointed last May. In Korea, we have a new president and she initiated a creative economy, encouraging people to be more creative and have more IP rights. We now are highlighting the importance of IP, but in my view this effort is more focused on patents. I think trademark and designs are also very important for such a creative economy. So I am trying to show the people how to use the trademark and design system for their innovative and creative vision.

For example, I am trying to advertise the economic advantages that can arise from trademark and designs, and internally I am trying to make the standards for examination clearer for the benefit of the users. The international cooperation might help us to create clearer standards for examination.

END

Korea Trademark & Design Week

South Korea will host the second TM5 annual meeting in December in Seoul and has designated the first week of December as Korea Trademark & Design Week. Several events are planned during the week.

From 29 November-2 December, KIPO will hold a trademark-design right exhibition. On 3 December, KIPO will hold the second Seoul International Trademark-Design Conference. On 4 December, a symposium will be organised by KIPO and WIPO on the The Hague System for the International Registration of Industrial Designs and the Madrid Agreement Concerning the International Registration of Marks.

The annual TM5 meeting will take place on 5-6 December. A brochure on the event is here.