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Japan Patent OfficeTM5 Agreed to Enhance the Cooperation in the Trademark Field Focusing on UsersAnnouncement of the Results of the Second TM5 annual meeting

On December 5 and 6, 2013, the second TM5 annual meeting was held in Seoul, the Republic of Korea, with officials from the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM), the State Administration for Industry and Commerce (SAIC), and the United States Patent and Trademark Office (USPTO) (hereinafter collectively referred to as the “TM5”) attending. At the meeting, participants discussed 12 joint projects.

The JPO proposed a new project that will develop an approach to information provision concerning each office’s trademark system as well as related procedures so as to improve user-friendliness for applicants who intend to file trademark applications along with expanding their business overseas, and the partner offices welcomed JPO’s proposal.

In addition, the partner offices agreed that the JPO will host the third TM5 annual meeting.

1. Background

The TM5 is a framework to develop an environment in which enterprises in each country are able to appropriately protect and utilize their own trademarks and designs in other countries, through cooperation among the TM5. Applications for trademarks filed with the TM5 account for around 50% of the total number of trademark applications, and those for designs account for 80% or more of the total number of design applications.

2. Outline of the second TM5 annual meeting

At the meeting, the JPO proposed a new project aiming to improve user friendliness, which was agreed to conduct additional discussions by the partner offices. At the same time, representatives from various user associations in member countries attended the meeting, including the Japan Intellectual Property Association, Japan Patent Attorneys Association, and Japan Trademark Association as representatives of Japan. At the user session, views on joint projects, trademark systems, and the operation of such systems in their countries are exchanged.

3. Major results

1) Trademark field

[i] New project to improve convenience of applicants of the Madrid Protocol by enriching information provision

The number of applicants who use a filing procedure according to the Madrid Protocol,*1 through which applicants are able to file a single application with multiple offices, has been increasing year after year. For example, in 2012, the number of Madrid Protocol applications filed from Japan with other offices increased by 37.5% from the previous year. However, as each office adopts a different legal system and procedure for acquiring trademark rights in overseas countries, including a time limit for responding to an office action, and due to language and other barriers as well, it is difficult for applicants to access necessary information.

To solve this issue, at the meeting, the JPO proposed a new project to provide information that users seek in a user-friendly manner through cooperation among the TM5. Based on this proposal, the partner offices will provide views to the JPO, and the JPO will submit its specific proposal to the next TM5 mid-term meeting scheduled for May 2014.

*Note 1: Madrid Protocol
The Madrid Protocol allows an applicant who intends to file an application with multiple overseas offices through a single application procedure by filing an international application with the World Intellectual Property Organization (WIPO) based on the basic application or registration in the office of origin and then designating the contracting parties in which he/she seeks registration of the trademark.

[ii] Continuation/expansion of bad faith project

It is a global issue that a third party who is in no way related to the right owner of a trademark, such as a famous region or brand name, files an application for the trademark and registers it in other offices overseas without the owner’s consent. This is so-called bad faith trademark filings.

At the meeting, participants highly appraised the JPO-led seminar on bad faith trademark filings held in Tokyo in October 2013, which provided users with an opportunity to access information on trademark systems in TM5 countries/region, and the partner offices agreed to hold a second seminar in Hong Kong at the annual meeting of the International Trademark Association (INTA) in May 2014.

[iii] Cooperation in goods and services identifications

When filing an application of a trademark, an applicant must indicate the identifications of goods or services, such as “cosmetics” or “clothing”, for which the trademark is/will be used. However, acceptable identifications vary from country to country.*2 To solve this problem, the TM5 has been endeavoring to compile a list of the identifications of goods and services commonly accepted by each of the partners from the viewpoint of user-friendliness. At the meeting, the TM5 agreed to encourage ASEAN regions to participate in the project.

*Note 2:
For example, the identification “computer programs” is accepted by the JPO, KIPO and OHIM, while it is not accepted by the USPTO since the U.S requires applicants to indicate the use of the goods in a specific manner. In the U.S., applicants should indicate the goods such as “computer game programs” specifically in their applications.

2) Design field*3

Discussion of disclosing a catalogue on comparing drawing and view requirements for design registration

From the viewpoint of improving user-friendliness for enterprises that intend to file international applications, the TM5 agreed to decide whether and how a design drawing and view catalogue is shared with users no later than the next TM5 Mid-term Meeting.

*Note 3:
Expert meetings in the design field were held by four offices, namely, the JPO, USPTO, OHIM and KIPO.

4. Future efforts

The JPO will strive to support enterprises expanding their business overseas by promoting international cooperation focusing on users through the TM5 framework established by the JPO, KIPO, OHIM,SAIC and USPTO.

Release Date

December 6, 2013

Division in Charge

International Cooperation Division, Policy Planning and Coordination Department, Japan Patent Office;
Trademark Division, Trademark and Customer Relations Department, Japan Patent Office;
Design Division, Patent and Design Examination Department (Physics, Optics, Social Infrastructure and Design), Japan Patent Office

Ministry of Economy, Trade and Industry
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