Bad Faith Trademark

Bad Faith Trademark

- Lead Office : JPO -

Current Activities;

To enrich the contents of the Collection of Case Summaries, JPO is working on collecting additional cases from each TM5 office and other jurisdictions, and assigning new bad faith categories to all case summaries. The upgraded version will be published at the TM5 Annual Meeting in Japan in December 2019.                                                                                                                                                                                                                                                                        

1. Description of project;

The issue of “bad-faith trademark filings” is a common problem in the world. “Bad faith filings” could refer, for example, to trademark filings by third parties to register the identical or similar trademarks of others in order to take advantage of the fact that the genuine trademark owners have not registered them. In order to take measures against these bad-faith trademark filings, the Trademark Trilateral Offices (the Japan Patent Office (JPO), the Office for Harmonization in the Internal Market (EUIPO) and the United States Patent and Trademark Office (USPTO)), in collaboration with the State Administration for Industry and Commerce of the People’s Republic of China (SAIC), held seminars in 2010 and 2011. At these past two seminars, the Trilateral Offices and the SAIC exchanged information on laws and regulations that can be applicable to bad-faith trademark filings. They also exchanged information on operational practices at each office. It was agreed at the TM5 mid-term meeting in May 2012 that the activities designed to deal with bad faith trademark filings would be defined as a TM5 project called “Continuation/Expansion of Bad Faith Project”. The first seminar on bad-faith trade mark filings was held in Tokyo on October 22, 2013, focusing on the comparative analysis of TM5 members laws and practices. And The 2nd TM5 Seminar on Bad-faith Trademark Filings was held in Hong Kong on May 13 2014, focusing on legal systems and practices for bad-faith trademark filings by TM5 partner offices. Both of the seminars were well received by participants and successful.

2. Project objectives;

    • žShare information among partner offices on (1) laws and regulations, (2) examination practices, and (3) issues regarding bad-faith trademark filings.
    • Raise user awareness on ways they can respond to bad-faith trademark filings.

3. Report on  ”Laws and Examination Guidelines/Practices of the TM5 Offices against Bad-Faith Trademark Filings”

 [ Chapter1-3 ]   PDF
  • Chapter 1 : Outline of Systems and Practices of the TM5 Offices against Bad-faith Trademark Filings
  • Chapter 2 : Comparison and summary on Systems and Practices of the TM5 Offices
    • Compare and summarize each Office’s systems and practices according to the questionnaire items.
  • Chapter 3 : Comparison Tables
    • Tables summarizing comparisons of systems and practices in each Office
[ Appendix ]
  • Questionnaire on TM5 Bad Faith Filing Project PDF
  • Responses of each Office to the Questionnaire PDF
  • Materials of the Second TM5 Seminar on Bad-faith Trademark Filings (Presentation materials of each office)
    • USPTO: Fighting Bad Faith Trademark Filings in the United States PDF
    • EUIPO: Second Seminar on Bad Faith TM Filings PDF
    • KIPO: Bad-Faith Trademark Fillings under Korean Trademark Act PDF
    • SAIC: Chinese Legal System of Coping with Bad-faith Filing of Trademark PDF
    • JPO: Tackling Bad Faith Trademark Filings in Japan PDF

4. Collection of Case Summaries of Bad-Faith Trademark Filings PDF 

  Ⅰ. Introduction
  Ⅱ. Case Summaries
   - Related Articles of each countries
   - Comparison Tables

“Bad-Faith Trademark Filings”