TM5 Holds 13^th Annual Meeting

December 27, 2024

The 13th Annual Meeting of the Five Trademark Offices (TM5)^*1 was held in Hakone-machi, Ashigarashimo-gun, Kanagawa Prefecture from December 9-11, 2024. Commissioner ONO attended the meeting from the Japan Patent Office (JPO), together with Director-General MOROTA from the JPO Trademark and Customer Relations Department.

A total of 15 cooperative projects and one newly-proposed project are presently being implemented in order to harmonize and improve trademark procedures in their respective countries while also enhancing services for users. This meeting provided an opportunity for the TM5 offices to review the outcomes in this regard, as well as to discuss future steps. The TM5 offices also confirmed that they would continue to cooperate in order to address new trademark issues under emerging technologies such as AI (artificial intelligence), as well as changing business practices.

With respect to the projects being led by the JPO, the TM5 offices agreed to hold a TM5 Joint Workshop during the International Trademark Association (INTA) Annual Meeting in May 2025, which will focus on the topic of distinctiveness acquired through use with respect to the User Involvement Project^*2.

Regarding the "Bad Faith Trademark Project^*3", the TM5 Offices agreed to hold an online workshop for the staff of IP offices in Albania, Bosnia-Herzegovina and North Macedonia, as well as to prepare a report on the laws and regulations related to bad faith trademarks within ASEAN countries.

Furthermore, the TM5 offices agreed to again hold expert meetings next year regarding the IT Support for Trademark Examination Project^*4, which were also held this year. In addition, it was confirmed that each office would compile a report on the use of IT tools in the trademark field.

The three projects led by offices other than the JPO were concluded at this meeting, as the project goals had been achieved through the activities carried out thus far^*5.

In addition, discussions will continue at the TM5 mid-term meeting next year regarding the adoption of a new project proposed by CNIPA to create a user guide summarizing information such as trademark application procedures at the TM5 offices.

The TM5 User Session was held on the final day of the meeting for user representatives from industry groups and agent organizations. In addition to reports from the TM5 offices on the latest statistics and measures, user representatives also gave presentations on the topic of Bad Faith Trademark Filings, wherein participants held discussions and exchanged opinions.

The TM5 Offices reached a consensus that the USPTO would host the TM5 Meeting in 2025, and that the JPO will continue to help promote the appropriate protection and utilization of trademark rights through TM5 initiatives.

*1: The TM5 meeting is held annually, comprising the five major trademark offices of the Japan Patent Office (JPO), United States Patent and Trademark Office (USPTO), European Union Intellectual Property Office (EUIPO), China National Intellectual Property Administration (CNIPA), and Korean Intellectual Property Office (KIPO). The meetings are hosted on a rotating basis, with the JPO hosting this year. In addition, the World Intellectual Property Organization (WIPO) participates as an observer.

*2: The JPO leads the TM5 joint workshops in cooperation with the INTA to disseminate information to users.

*3: The TM5 offices aim to exchange information on their respective laws, regulations and operational practices regarding bad faith trademark filings, as well as to provide users with information in this regard.

*4: The TM5 offices aim to exchange information on IT tools/systems for the purpose of optimizing trademark examinations.

*5: The Staff Exchange Project and TM View Project led by the EUIPO, and the Common Status Descriptors Project led by the USPTO, were concluded during this meeting.

Representatives from TM5 offices and WIPO

(From left: Mr. David MULS, Senior Director, Madrid Registry, Brands and Designs Sector, WIPO; Mr. David GOODER, Commissioner for Trademarks, USPTO; Mr. Andrea DI CARLO, Deputy Executive Director, EUIPO; Mr. ONO Yota, Commissioner, JPO; Mr. MOROTA Akihiko, Director-General, Trademark and Customer Relations Department, JPO; Ms. YUAN Qi, Inspector level Ⅰ (Director General level), International Cooperation Department, CNIPA; Mr. Choonmoo LEE, Director General, Trademark & Design Examination Bureau, KIPO)

Opening Remarks by Mr. ONO, Commissioner, JPO

Participants from the TM5 Offices and WIPO

2024 TM5 Annual Meeting

Presentation by Japanese user representatives at the User Session

(From left: Mr. OTANI Koya, Vice President, Brand Legal Management, Global, Kao Corporation; Mr. SAITO Koji, SHOBAYASHI INT’L PATENT & TRADEMARK OFFICE; Mr. SARUYAMA Jumpei, Japan Patent Attorneys Association)

Links

• The Five Trademark Offices (TM5)
• TM5 Website "User Involvement" (External link)
• TM5 Website "Bad Faith Trademark" (External link)
• TM5 Website "IT Support for Trademark Examination" (External link)

[Last updated 27 December 2024]