What a challenging time to be an international trademark manager.  The trademark world is changing, quite literally, from day to day.  The retroactive price increases have been particularly fun to deal with!
The existence of a reliable, worldwide trademark management (and filing) system is progressing towards reality.  It’s been an exciting several years with several more just like it to come. 

In the first quarter of 2017 alone, I have already received notification on the following sweeping & immediate changes effecting international trademark filings in the following countries:

Venezuela        A price increase of 69.5% to most patent and trademark filings

Egypt               A retroactive price increase on patent filings of over 100%

India                A new law and price increases of 25%-125%

Saudi Arabia   Yet another price increase on various trademark filings, most notably publication

Qatar               Changes to filing practices in classes 42-45 and adopts the Nice Class Codes

Japan               The trademark search database was “hacked” and therefore unavailable for days

USA                New guidelines on sample requirements, including increased fees on most trademark                                services

Singapore        Fee increases on April 1 2017 to trademark services

TMView          Not yet reliable enough to be used for trademark search or management without using                              additional sources

Australia          Has a new look on-line

Canada            Has a new trademark trademark title certificate in honor of 150 years, and has adopted                              the Nice Class Codes

Bahrain            Has launched a new electronic filing system

Cambodia        Joined the TMView (right before the new year)

Windows 10    Causing all sorts of mind boggling problems (including massive data usage) behind the                            scenes

LinkedIn          Has a brand new format
TIPS for Weathering The Bumpy Trademark Seas

1.      Make sure you use multiple trademark search sources (databases)
  • for example, when searching EU, search also the national databases, WIPO, and TMView

2.      Keep abreast of current trends (LinkedIn is a good place)
  • sign up for Groups that interest you and get a weekly news letter summary via e-mail

3.      Use experienced international trademark professionals in every country
  • yes, there are free search databases on-line that are excellent for direct hit searches, but these generally do not provide the variation actually needed to determine if a trademark is register-able (or not)...and, do you have the experience to check those variations ?

4.      Verify rates every 60 days
  • new laws, new electronic systems, new procedures, new documents required..things are changing rapidly...don’t trust what you think you know if your information is more than 60 days            old

5.      Think globally, not nationally
  • because the world is growing smaller every year, in terms of commerce...it is no longer enough to do a country only trademark search with a single database source...search engines and social media for common law...TMView, WIPO, and national databases for trademark rights.

6.      Invest in a solid trademark management tool (a database to keep track of dates, country details and other information)



 
 
The LINK every trademark manager should have in their favourites for 2017 is TMView.
https://www.tmdn.org/tmview/welcome.html

The trademark industry is in massive upheaval at present, with many years of the same still in front of us.  Since 2012 we have seen laws being changed constantly, then implemented, usually with very little advance warning, resulting in the following:

  • Price hikes all over the world (Mexico, Thailand, USA, EU)...some of them being applied retroactively (Kuwait, Bahrain)...sometimes several increases in the same year in the same country (Saudi Arabia) and the ones we can expect soon (Canada, Bangladesh, Saudi, Singapore).
  • Electronic systems are being put into place, resulting in the inevitable learning curve, new class codes, unreliable search engines, and other process glitches (Saudi Arabia, Qatar, China, Canada).
  • Additional documentation requirements are being put into place (China, Saudi Arabia, West Bank, USA)


TMView is the increasingly exciting “worldwide trademark database”.   TMView has been around now for several years, but until January 2017 was only minimally useful and only occasionally available.

Finally fulfilling its promised potential, in the last 2 months the TMView has turned into a valuable tool.  The closest thing we have to a “worldwide trademark database”, the TMView has become increasingly reliable, providing more & better international trademark data with an increasing number of search options.  I have recently included the TMView worldwide trademark search engine as one of my regular search sources for any country.

It is the joint creation of the 5 largest trademark offices in the world (TM5), consisting of: USA, Japan, South Korea, EUIPO, and China.  There was rapid membership growth in 2016 resulting in a current total of over 50 countries as we enter 2017:

  • Malaysia and Cambodia joined in December 2016
  • Georgia & Albania joined in July 2016
  • Brazil joined in February 2016
  • Hungary continues to try to join into 2017

Even WIPO applications were added in September 19, 2016, although I was still fighting to properly access those records just before Christmas...and again last week.

The TMView is still very much a work in progress, but it is evident that eventually this single global search tool can and will be used by global trademark managers to increase their own knowledge and control of their worldwide trademark portfolios without increasing costs.

The world continues to become much smaller commercially, as brands move globally through the Internet, with your without their owners’ permission.  The TMView is a great (free) tool to use in taking that first step towards expanding your brand internationally.  There is no substitute, however, for an experienced international trademark searcher, especially in these turbulent, evolving times.