Results of the Fifth TM5 Annual Meeting

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.”

In addition, the TM5 Offices agreed that the 6th TM5 Annual Meeting will be hosted by the European Union Intellectual Property Office (EUIPO).

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.

(3) Joint Statement

Joint Statement (PDF:268KB)

Symposium under the theme of 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.

[Last updated 17 January 2018]

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