Technology Has the Potential to Make Trademark Processes Easy Peasy

Singapore’s New Trademark App

The Intellectual Property Office of Singapore has recently launched an app called ‘IPOS GO’ available on the Apple App Store and the Google Play Store. The app provides various on-the-go trademark services, which include even direct filing of trademark applications (making this the world’s first mobile app for enabling the filing of trademark applications). 

The various functions that the app can perform are:

“Use IPOS Go to:

• Apply for and renew trademark registrations in Singapore*
• Search for similar trademarks and other registrable IPs in Singapore
• Be notified of application status updates and read correspondences from IPOS*
• View and manage portfolio of previous applications*
• Save and retrieve drafts of trademark applications*”

 All the functions that have an asterisk symbol require users to login through either a ‘Singpass’ or a ‘Corppass’ account. While the Singpass (for personal accounts) appears to be available only to Singapore citizens/ permanent residents, certain identified pass holders or a work permit holder, the Corppass appears to extend to foreign registered entities as well.

The IPOS has also made a short animated video available here, which briefly shows how the app works and how the process of filing a trademark is now easy peasy, lemon squeezy! The person applying for a trademark just needs take a picture of the proposed trademark, upload it on the app and then select the industry and relevant goods / services. The app then shows the applicant a list of potentially similar marks, on the basis of which the applicant can either modify her mark or proceed to submit her application. The app also notifies the applicant of the progress of the mark.

The search function does not require users to login and is very easy to use. The user only has to upload an image (in case of a device mark) or enter the proposed word mark and in a matter of seconds, the app generates results of similar trademarks (in all the classes or only in those classes specified by the user). The search results provide details of the mark, description of the goods / services, name of proprietor, events in relation to the mark and the address of service.

The press release states that the app integrates AI to enhance searches for similar trademarks on the IPOS register, which can prevent applicants from filings trademarks that are too similar to existing ones.

As per new reports, IPOS Go reflects IPOS’ commitment to advance Singapore’s Smart Nation agenda by offering digital innovations that will serve citizens and businesses better.

Trademark Application Process in India

The Trade Marks Rules, 2017 permit applicants to directly file trademark applications. However, in order to apply for a trademark online, the trademark applicant is required to comply with various requirements and engage with poor technology.

The e-filing system only supports specific operating systems i.e. Windows 7 and above and does not support Mac / Linux OS. In order to directly file an application, the applicant needs a digital signature certificate. This certificate is required to authenticate the submission of any form on the e-filing system. Applicants are required to obtain (on paying the prescribed fees) either a class II or class III (issued only on physical verification) digital certificate from a designated certifying authority. There are currently eight such certifying authorities that have been authorised under the Information Technology Act, 2000.

Before filing the application, in order to assess whether there are applications / registrations for similar marks, the applicant has to spend a substantial amount of time conducting a trademark search on the public search tool available here. Each proposed trademark has to be searched in each relevant class, separately. For device marks, the applicant is first required to classify the device into the appropriate Vienna Code and then search each code in each relevant class. There are 29 Vienna Codes with numerous sub-codes and several times, one device mark can fall within 7 to 10 (or more) different Vienna Codes, requiring 7 to 10 separate searches in each relevant class making the process tedious. Also, since this process is time consuming and requires some prior knowledge (in terms of conducting searches in the right classes, the right Vienna codes), applicants either hire trademark agents / attorneys to conduct searches (which increases business costs) or sometimes choose not to conduct any searches (leading to unnecessary objections / oppositions at a later stage).

When it comes to the actual filing, while the form is simple enough, for a business owner / innovator filing an application directly, the process may not be completely intuitive since there are no pre-defined prompts that help applicants define the description of the goods / services to fit within the NICE classification and applicants desiring to file directly may not always be aware of these requirements and may face issues at later stages of their application.

Further, e-filing forms on the website requires patience as the platform works slowly, refreshes if not kept alive for few minutes, the preview and uploading of forms involves navigating through various dialogue boxes etc. which makes the simple process of filing forms unnecessarily time consuming.

Apart from the trademark application process, the general soundness of office actions including objections that are issued by trademark examiners, is questionable, which may be partly due to the complicated search tool. Further, since such office actions involve repetitive actions, an improvement in technology could result in fewer and more relevant objections / oppositions and consequently lesser backlog.

 Technology and the Indian IP Office

The Trade Marks Office has started engaging with technology in the recent past, even if such engagement is limited to recognizing ‘email’ as an actual mode communication for serving notices / examination reports / oppositions, issuing electronic registration certificates and sending email prompts for renewals. The TMR has also introduced hearing through video conferencing and apparently has a mobile app (which doesn’t seem to work). However, the technology used for searches, filings, as well as repetitive administrative functions such as examination of applications and renewals are not user friendly or streamlined.

The Controller General of Patents, Designs and Trademarks appears to be receptive to using AI and has in the past (in August 2018) issued a request for an ‘expression of interest’ for AI and other technologies in patent processing (also blogged about here). However, it has been more than a year but a vendor has not yet been selected, let alone the project being implemented! As of December 2018, there were 10 bidders that were shortlisted (here) and as of August 30, 2019, the IPO has extended the date for submission and other clarifications with respect the RFP and other selection events to later this year.

I had previously co-authored a post with Shamnad on the need to ease trademark and other IP e-filing processes here.

AI Being Used by IP Offices in Other Countries

This article here, provides a summary of how IP offices in other countries use artificial intelligence. The WIPO, for instance, launched a new image search option on its WIPO Global Brand Database. The search technology is powered by AI and appears to be similar to the search tool on the IPOS GO app. However, as reported, the new tool is able to identify combinations of concepts in addition to shape and colour to identify similar trademarks.

China’s National Institute of Intellectual Property and the Norwegian Industrial Property Office have also started using AI-image search tools. The Instituto Nacional de Propiedad Industrial, in Chile, has been using AI in trademark examinations. Japan is currently considering different ways in which AI can be adopted to ease the trademark prosecution process.

Technology used in India for its trademark prosecution processes stands in contrast to the processes implemented in Singapore and to technologies that have been adopted in other countries. It is time for India to start adopting better technology for streamlining administrative and other repetitive processes.