TM5 is a multilateral cooperation forum that is comprised of the five main trademark offices in the world. The forum was originally created in 2001 by three principal international IP Offices, namely, the Japan Patent Office, the Office for Harmonization in the Internal Market (now EUIPO), and the United States Patent and Trademark Office. The Korean Intellectual Property Office and the State Administration for Industry and Commerce of the People’s Republic of China joined the forum in 2011 and in 2012, respectively.
With the introduction of a new project management methodology approach in 2012, TM5 started to accelerate the development and implementation of collaboration projects which aim to contribute to increasingly user-friendly trade mark. Currently there are 13 ongoing projects.
At the TM5 Mid-Term Meeting in Barcelona on 22 May 2017, the EUIPO proposed to launch a new TM5 Project on the subject of Priority Rights Documents for TM5 Offices. The Partners agreed to the importance of establishing a comparative study on the practices of the TM5 Partner Offices.
Priority claims are one key feature in the international conventions dispositive aiming at a good articulation between IP rights systems, across jurisdictions.
To support such a claim, the Trade Mark applicant needs to file supporting documents, according to the rules and practice of the IP Office receiving the priority claim.
The certified copy of the previous application or registration needs to be obtained from the IP office of the earlier application, under a specified format (e.g. paper format, “apostle”)
Some formalities can become burdensome when translation and further legalization are required, for both the IP offices involved and for the User. This field is a natural one for TM5 cooperation.
Several cooperation projects have addressed this issue (e.g. under a similar ID5 project).There is an opportunity to enhance users’ experience when filing Trade Mark applications with an international dimension.
Volume: every year, more than 3.000 documents are legalized by EUIPO to be used as priority documents in other jurisdictions.
- Pursuing the idea of exploring ways to reduce the number of legalization of documents related to Priority claims, it is proposed:
- In a first stage, to establish a Comparative overview of the practices of TM5 offices regarding the acceptance of priority right documents for TM,
- in particular whether electronic format documents without legalization are accepted.
- A set of lists would be established of conditions to fulfill for foreign priority documents to be accepted, with a more detailed focus on documents sourced from the TM5 Partners.
- Another deliverable will be a user friendly catalogue to be published on TM5 website, presenting the results of the Comparative study.
- In a second stage, it is proposed to aim at assessing the conditions of a convergence of partners practices, on requirements linked to the acceptability by other partners of priority rights documents.
Please find the result on phase one in the link here:
TM5 Priority Rights User Friendly Summary