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Results of the Third TM5 Annual Meeting

On December 1 and 2, 2015, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market (OHIM), the State Administration for Industry and Commerce (SAIC), and the United States Patent and Trademark Office (USPTO) held the 2015 TM5 Annual Meeting in Alexandria, VA, U.S.A. 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, and 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.”

Major achievements of the meeting

1) Project to Improve Convenience for Madrid Protocol Applicants by Enhancing 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.

*Note: Outline of the international application system for trademark registration
The system allows an applicant to file an international trademark application with WIPO through an office in any participating country, and obtain trademark protection of his/her trademark after examination under the laws of the designated countries in which the applicant seeks protection of his/her trademark.

2) Continuation/Expansion of Bad Faith Project

So-called “bad faith trademark filings” in which a trademark is filed for unfair purposes, taking advantage of the fact that another person’s famous trademark is not registered in the country/region concerned, have become an international issue. At this meeting, concerning bad faith trademark filings, 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 with a wide range of users.

*The official Website of the TM5 Seminar on Bad Faith Trademark Filings

Joint Statement

Joint Statement (PDF:199KB)

[Last updated 29 January 2016]

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