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The Third TM5 Annual Meeting was Held-Agreements were concluded to enhance the international cooperation toward creating user-friendly trademark systems-

From December 3 to 5, 2014, the Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), the Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM), the State Administration for Industry and Commerce (SAIC), and the Korean Intellectual Property Office (KIPO) held the 2014 TM5 Annual Meeting in Tokyo. At the meeting, TM5 offices mainly discussed reports for [i] systems and practices on the so-called bad faith trademark filings in the TM5 offices, in which a third party who is in no way related to the owner of a trademark, such as a famous region or brand name, files an application for the trademark and registers it with other offices overseas without the owner’s consent; and [ii] possible challenges in a new approach to retrieving images of registered trademarks and measures for overcoming the challenges, and approved reports. Following the discussions, they issued a joint statement, containing the results and progresses of the 12 projects.

1. Background

Amidst economic activities that are becoming more globalized, and global competition becoming even fiercer, the strategic use of trademark rights by companies has been steadily growing in importance and becoming an effective means for them to establish and protect their highly valuable, internationally recognized brands. In order to support companies in expanding their business activities to abroad, it is essential to provide a sufficient infrastructure that not only enables companies to acquire stable trademark rights quickly but also enables them to appropriately protect their trademark rights as well in each country and region.

Against the backdrop of this situation, since 2001, the JPO, OHIM and USPTO, has been tackling the development of the international cooperation under the framework of the trademark trilateral offices, aiming to organize the environment under which the trademark rights of worldwide companies are appropriately protected and utilized. In addition, in 2012, KIPO and SAIC joined the initiative, and since then, the participating offices have been advancing the cooperation under the new framework called the “TM5.” At the third meeting, TM5 offices discussed nine joint projects and new projects concerning the cooperation.

2. Major achievements of the meeting

1) Trademark field

[i] Continuation/Expansion of Bad Faith project

So-called “bad faith trademark filings,” in which 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 with other offices overseas without the owner’s consent, have been an international issue.

At the meeting, a report, titled “Laws and Examination Guidelines/Practices of the TM5 Offices against Bad Faith Trademark Filings,” which was compiled by the JPO, was highly appraised because of the report’s potential contribution to information sharing and provision among and with the offices concerning the worldwide trademark systems and practices. The report is scheduled to be publicized. Moreover, the offices agreed to hold regular seminars concerning bad faith trademark filings so as to develop the research for such filings and study the measures for addressing them.

[ii] Image Search(Joint Research on Figurative Trademark Search) Project

The JPO compiled the results of the joint project, including the challenges in retrieving images of trademarks with similar features and the measures for overcoming the challenges, an approach to introducing an image-search system, and other achievements, into a report. The offices highly appraised the report due to its potential contribution to the development of a system for retrieving images of trademarks with similar features. The report is scheduled to be publicized. Furthermore, the offices agreed to continue the joint project.

[iii] Project to Improve Convenience of Madrid Protocol Applicants by Enriching Information Provision (newly created)

Under the international application system for trademark registration, by filing a single application with a member office, an applicant is able to enjoy the effect of simultaneously filing it in multiple member offices that he/she designates. However, the domestic systems and procedures for acquiring a trademark right under the international application system vary among member offices, and this situation makes applicants face difficulties in accessing required information, also due in part to the different official languages. At the meeting, the offices agreed that the JPO, in cooperation with the WIPO, will lead an initiative to provide the offices with information, in a user-friendly format, on such domestic systems and procedures adopted by designated countries with which applicants file an application, aiming to encourage applicants to use the system.

[iv] Others

On December 5, 2014, during the period of the meeting, a trademark user session was held for public users, with many people, such as people from enterprises, patent attorneys, and lawyers, attending. At the session, participants reported measures conducted in the trademark field, e.g., the latest revision of laws and regulations in a variety of countries. They also made a presentation and held a panel discussion concerning certain issues, including the introduction of case examples about non-traditional trademarks registered in each office, such as sound marks and motion marks, for which the JPO will start accepting applications around the spring of 2015.

2) Design field*

Acknowledging the growing importance of industrial design collaboration, the TM5 offices have been conducting active discussion on the creation of a new multilateral forum to discuss issues on designs. And, at the Meeting, the TM5 offices agreed to separate the design matters currently covered by the TM5 collaboration into this new industrial design forum, called “ID5.” The Design Session, which was held by four offices, namely, the JPO, USPTO, OHIM, and KIPO, will expand to include SIPO as a new member under the framework of ID5.

The offices confirmed that, under the new framework of ID5, they will consecutively exchange information on common issues among the offices, including operational practices of international design filings at the offices, the maintenance, management and operations of the design classification systems, and examination quality review systems.

*Note: The Design Sessions of the TM5 Meetings have been held by the four offices, i.e., the JPO, USPTO, OHIM and KIPO.

In addition, they agreed that the USPTO will host the next 2015 TM5 and ID5 meeting.

3. Future actions

The JPO will advance the international cooperation under the framework of the TM5 offices toward the development of an environment under which trademark rights of Japan’s companies are appropriately protected and utilized worldwide, thereby endeavoring to support such companies in developing their businesses overseas.

Release date

December 5, 2014

Division in charge

  • Trademark Division, Trademark and Customer Relations Department, JPO
  • Design Division, Patent and Design Examination Department (Physics, Optics, Social Infrastructure and Design), JPO
  • International Cooperation Division, Policy Planning and Coordination Department, JPO
Ministry of Economy, Trade and Industry
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