December 12, 2019
From December 9 to 11, 2019, the Five Trademark Offices (TM5), namely the Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), the European Union Intellectual Property Office (EUIPO), the China National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO), held the Eighth TM5 Annual Meeting in Maihama, Urayasu City, Chiba Prefecture. At the meeting, TM5 prepared “Case Examples of Bad-Faith Trademark Filings,” a dramatically updated version from the first one released about 2 years and six months ago, by adding more case examples, and agreed to enhance discussions to further sophisticate and make more efficient IT systems for trademark examination practices, as an effort responding to a worldwide increase in the number of applications, and to advance other efforts.
1. Outline of TM5
In 2012, the JPO, USPTO, EUIPO, CNIPA and KIPO jointly inaugurated TM5, as a framework to promote international cooperation in the field of trademarks. Since then, these offices have been advancing international cooperation in order to develop an environment in which trademarks registered by companies worldwide are appropriately protected and utilized.
2. Major achievements of the meeting
Hosted by the JPO, the Eighth TM5 Annual Meeting achieved the following outcomes concerning certain JPO-led projects, e.g., bad-faith trademark filings, IT systems for image search and other functions used for trademark examination practices, and quality management. Moreover, participants held discussions on a wide variety of subjects, including comparison of examination results among the TM5 offices and non-traditional trademarks.
(1) Dramatic update of the Case Examples of Bad-Faith Trademark Filings and future discussions
Recently, trademarks for famous brands and other goods or services have been filed and registered by third parties having no relation to trademark owners without receiving any form of consent from such owners. These cases are collectively called “bad-faith trademark filings” and this still remains a significant concern all over the world.
At the Eighth TM5 Annual Meeting, TM5 offices prepared an updated version of the Case Examples of Bad-Faith Trademark Filings by newly adding, to the 50 case examples of the first version released in 2017, 118 case examples consisting of: 25, of which each TM5 office offered five cases respectively, and 93 from 40 countries and regions other than the TM5 offices collected in cooperation with the International Trademark Association (INTA).*
*Note: The INTA is an organization consisting of over 6,700 members from 190 countries, including government organizations, educational institutes and companies.
Moreover, the TM5 offices agreed to prepare a collection of Mangas to explain the respective TM5 offices’ systems and initiatives that are effective countermeasures against bad-faith trademark filings in an easy-to-understand manner and to further propel efforts for raising awareness among users by taking advantage of these Mangas.
(2) Efforts for addressing a worldwide increase in the number of applications
Intellectual property offices in a variety of countries and regions as well as the JPO have been facing a challenge in a worldwide increase in the number of applications. In this situation, the TM5 offices recognize it as a significant challenge to make examination practices more efficient and to manage their quality.
At this meeting, the TM5 offices agreed to hold discussions on and exchange information on measures for sophistication and enhanced efficiency of: not only image search tools for retrieving figure trademarks but also on all IT systems for trademark examination practices which may contribute to making examination practices more efficient.
Moreover, concerning the field of quality management, working-level officials of the TM5 offices held a Quality Management Experts Meeting in order to share the outcomes of the Quality Management Project, an effort led by the JPO. In addition, the TM5 offices held a user session, bringing together users of the respective TM5 offices and exchanging views with participating users on efforts for quality management and challenges therein.
3. Future actions
The TM5 offices agreed that the USPTO will serve as the host office at the next TM5 meetings in 2020. At an INTA Annual Meeting scheduled to be held in Singapore in April 2020, the TM5 offices and INTA will collaboratively hold a workshop, taking the opportunity of convening the TM5 mid-term meeting.
The JPO will continue to propel efforts by taking advantage of the framework of TM5 as an interface with users and making collaboration among the TM5 offices closer toward the development of an environment under which the trademark rights and brands of Japanese companies are appropriately protected and utilized worldwide.
Division in Charge
Trademark Division, Trademark and Customer Relations Department & International Cooperation Division, Policy Planning and Coordination Department, Japan Patent Office