Guide of Procedures for Filing International Trademark Applications compiled at the Fourth TM5 Annual Meeting among Japan, United States, Europe, China, and Korea
On December 1 and 2, 2015, the Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), the Office for Harmonization in the Internal Market (OHIM), the State Administration for Industry and Commerce (SAIC), and the Korean Intellectual Property Office (KIPO) held the 2015 TM5 Annual Meeting in Alexandria, United States. At this meeting, the JPO took the initiative in compiling useful guide concerning procedures for filing international trademark applications with the TM5 Offices through the international application system for trademark registration. The TM5 Offices approved the guide. Additionally, the TM5 Offices adopted a joint statement based on the current achievements of 13 projects including the agreement to compile example cases from each office in the future regarding so-called “bad faith trademark filings.”
- Background
With the increasing globalization of economic activities and increased ferocity of global competition among companies, it is essential to provide sufficient infrastructure, enabling companies to not only acquire stable trademark rights quickly but also to appropriately protect their trademark rights in each country and region.
Since 2012, the JPO, USPTO, OHIM, SAIC, and KIPO have been working on the development of the TM5, a framework for international cooperation, aiming to establish an environment under which the trademark rights of companies are appropriately protected and utilized worldwide.
At the fourth meeting, the TM5 Offices discussed the 11 existing joint projects and 2 new projects.
- Major Achievements of the Meeting
1) Project to Improve Convenience for Madrid Protocol Applicants by Increasing Information Provision
When filing an international trademark application under the Madrid Protocol, applicants face difficulties in accessing required information because domestic procedures vary among the member countries in which the applicants seek protection for their trademarks and also due in part to their different official languages.
The JPO made the guide concerning procedures of filing international trademark applications to the TM5 Offices, which was approved at this meeting. The TM5 Offices also agreed to publish the guide on the TM5 website and to discuss the possible expansion and useful methods of providing information in the future, such as providing information on countries other than the members of the TM5 in cooperation with the World Intellectual Property Organization (WIPO). This is expected to improve usability for users filing international trademark applications.
2) Continuation/Expansion of Bad Faith Project
The so-called “bad faith trademark filings” have become an international issue. “Bad faith trademark filing” refers to when a trademark is filed for unfair purposes, taking advantage of the fact that another person’s famous trademark, a geographical name, and so on, is not registered in the country/region concerned. At this meeting, the TM5 Offices agreed to compile the latest example cases from each office and hold a seminar to present examples of bad faith trademark filings in Tokyo in March 2016, for the purpose of sharing the latest case examples from each office.
- Future Actions
The JPO will continue to drive international cooperation under the framework of the TM5 toward the development of an environment under which the trademark rights of Japanese companies are appropriately protected and utilized worldwide.
Source of Data:
Japan Patent Office
http://www.meti.go.jp/press/2015/12/20151203001/20151203001.html
Keywords: Japan; TM5; bad faith trademark; international; application