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Japan Patent Office The Fifth TM5 Annual Meeting Held A symposium concerning bad-faith trademark filings held in China

On October 28 and 29, 2016, the Fifth TM5 Annual Meeting was held in Kunshan, China, bringing together the officials of the Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), the European Union Intellectual Property Office (EUIPO), the State Administration for Industry and Commerce (SAIC), and the Korean Intellectual Property Office (KIPO). At the meeting, which was held for the first time in China, a symposium was held for trademark users, and the offices made presentations respectively focusing on the subject of bad-faith trademark filings. In addition, the offices agreed that they will cooperate in finalizing the “Case Examples on Bad-Faith Trademark Filings.”

1. Background

With increasingly globalized economic activities and increasingly ferocious competition among global companies, it is essential to provide sufficient intellectual property infrastructure, enabling companies to not only acquire stable trademark rights quickly and to appropriately protect their trademark rights in each country and region but also to utilize such rights in a secure manner.

Against this backdrop, since 2012, the JPO, EUIPO, KIPO, SAIC and USPTO have been working toward the development of the TM5, a framework for international cooperation, aiming to establish an environment under which the trademark rights of companies are appropriately utilized and protected worldwide.

At the fifth meeting, hosted by China for the first time, the TM5 Offices discussed a variety of joint projects. In addition, a symposium and other events were also held focusing on bad-faith trademark filings, a subject of strong interest for China.

2. A symposium concerning bad-faith trademark filings

In recent years, trademark users worldwide have been facing the problem of bad-faith trademark filings in which a third party, in bad faith, files and registers a trademark that a business is already using but has not registered. The TM5 Offices have shown strong interest in this issue and have already agreed to cooperate in taking countermeasures.

At this meeting, based on the proposal by the host office SAIC, a symposium was held focusing on the subject of bad-faith trademark filings for an audience of approximately 200 people who were mainly trademark users in China.

At the symposium, officials from the TM5 Offices made presentations concerning specific cases, examination and verification practices and provisions which act as the bases for rejecting bad-faith trademark filings, and following that, proactively engaged in a question-and–answer session. In addition, academic experts introduced examples of “successfully” filed and registered bad-faith trademarks, while participants from companies made presentations concerning their efforts for eliminating such trademarks.

3. Major achievements of the meeting

1) New project focusing on quality management

At the meeting, the JPO explained the outline and schedule of a new project focusing on quality management, in light of the growing importance of further quality management measures to address the fact that the total number of annual trademark filings continues to increase worldwide. The TM5 Offices considered the significance of sharing quality management procedures to further improve the quality of examinations and to enhance the transparency and predictability of examinations, and based on this consideration, they agreed to advance coordination toward the inauguration of the new project.

2) Continuation/Expansion of Bad Faith Project

At the meeting, the offices agreed to finalize the “Case Examples on Bad-Faith Trademark Filings” by March 2017, and, with the aim of providing a broad range of trademark users with the finalized “Case Examples on Bad-Faith Trademark Filings,” to hold a joint workshop in collaboration with the International Trademark Association (INTA)* and will publish the collection on the TM5 website.

*Note: International Trademark Association (INTA) consists of over 6,700 members, including governmental and educational organizations and companies from 190 countries.

4. Future actions

The TM5 Offices agreed that the EUIPO will serve as the host office at the TM5 mid-term meeting and the sixth TM5 annual meeting in 2017.

The JPO will continue to proactively advance international cooperation and other efforts under the framework of the TM5 toward the development of an environment in which the trademark rights of Japanese companies are appropriately utilized and protected worldwide.

Release date

November 1, 2016

Division in Charge

Trademark Division, Trademark and Customer Relations Department & International Cooperation Division, Policy Planning and Coordination Department, Japan Patent Office

Ministry of Economy, Trade and Industry1-3-1 Kasumigaseki, Chiyoda-ku, Tokyo 100-8901, Japan Tel: +81-(0)3-3501-1511
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