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The Big Five (or Is It Six?) Are at It Again

February 9, 2016

By H. Samuel Frost

Having created the IP5 and TM5, five of the largest IP offices met recently to form an ID5. The United States Patent and Trademarks Office (USPTO) hosted an inaugural Industrial Design 5 Forum on December 7th, 2015 to discuss improving existing industrial design frameworks (see announcement). The forum consisted of representatives from the USPTO, the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the European Union’s Office for Harmonization in the Internal Market (OHIM) and the State Intellectual Property Office of the People’s Republic of China (SIPO).

The reason for asking whether one should refer to the Big Five or Big Six, is that, in IP matters, Europe is represented by two separate entities: OHIM (Alicante, Spain) for designs and trademarks; and the European Patent Office (EPO), (Munich, Germany), for patents. Further, while the announcement states that “ID5 brings together the world’s five largest intellectual property offices”, an earlier statement referring to “the five largest trademark offices in the world (TM5)” is more accurate; as the EPO is a larger organization than OHIM. (As an aside, effective March 2016, OHIM is to be renamed as European Union Intellectual Property Office [EUIPO].)

Perhaps in part due to OHIM’s involvement, the overall tone of the announcement is to treat designs as a relative or subset of trademarks. Thus it commences: “Representatives from the world’s five largest industrial design offices gather to discuss new ways of improving existing Industrial design framework for trademarks.” Further: “Acknowledging the growing importance of industrial design, the five largest trademark offices in the world (TM5) created the ID5 forum.” It also noted that this inaugural ID5 meeting took place “on the heels of the fourth annual meeting of the TM5”.

While some aspects of Industrial Designs practice are similar to trademark practice, design practice is historically more closely related to patents and copyrights. This is most apparent in the U.S., where design patents, are treated as a subset of patents, and designs, patents and copyright are all rooted in the ‘Copyright Clause’ of Art. 1, Section 8 of the Constitution. US trademark law, on the other hand, is derived from the ‘Commerce Clause’ of Section 8. Trademarks have origins in the common law, and are fundamentally concerned with reputation based on commercial use; designs, like copyright and patents, are an expression of novel creativity and ingenuity existing only by statute, and can exist without any commercial use. It is hoped that this apparent and initial conflation of designs and trademarks will not cause a loss of perspective in respect of the fundamentally different bases of the rights, and the differences in trademarks and designs practice.

In terms of practice, OHIM has done excellent work in developing the European Trade Mark And Design Network which provides TMview and DesignView databases for searching trademarks and designs. But, these do not provide for simple and clear identification of families of marks or designs, or for any dossier information, i.e. file wrappers, from each trademark or designs office (and it must be recognized that to provide dossier information from the large number of offices covered would be a large task). This may not be so significant for trademarks where any concept of a common or ‘absolute’ novelty standard does not apply. The rights to a mark can vary greatly between different jurisdictions. For example, due to language differences, a mark can be unregistrable in one country, but capable of registration in another.

In contrast, for patents, the concept of ‘absolute novelty’ is now well established. It is well recognized that, in any patent office, the best and most thorough examination requires an Examiner to have access to all the prior art found by any patent office. Additionally, due to language issues and the complexity of much technology, it is often difficult for an Examiner to search effectively in a foreign language.

Consequently, for patents the IP5 are focusing on topics of classification, Global Dossier and worksharing and quality. There is now available at the USPTO the Patents Global Dossier, which, in addition to dossier information from the IP5 offices, provides information on other family members in other patent offices. The WIPO CASE system effectively expands the Global Dossier to patent offices in addition to the IP5. It is suggested that all these patent practices are applicable to Industrial Designs. Indeed, as language differences are usually not a factor in review of designs, in some respects it should be easier to assemble and compare dossier information from many different offices.

The standard of examination varies substantially between offices with many offices, including OHIM, only carrying out a formalities examination. Applicants, Examiners, and third parties would all benefit from having a single source to identify a family of designs, and to provide access to dossier information from those Design Offices that do carry out substantive examination. Such a facility should be an effective aid in determining the validity of any registrations not subject to substantive examination.

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H. Samuel Frost H. Samuel Frost
B.A. (Eng. Sci.), M.Sc. (Nucl. Eng.)
905.817.6100  email H. Samuel Frost