Lead Office
JPO1. 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”.
2. Project objectives
- Share 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
(1) Upgraded Report on “Laws and Examination Guidelines/Practices of the TM5 Offices against Bad-Faith Trademark Filings”(2022)
[ Chapter1-3 ] PDF
- Chapter 1 : Outline of Systems and Practices of the TM5 Offices against Bad-faith Trademark Filings
- Chapter 2 : Extracts of Related Articles of the TM5 Offices against Bad-faith Trademark Filings
- Chapter 3 : Comparison Tables
[ Appendix ]
(2) Report on “Laws and Examination Guidelines/Practices of the TM5 Offices against Bad-Faith Trademark Filings”(2015)
[ 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
- Chapter 3 : Comparison Tables
[ Appendix ]
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 DF
- JPO: Tackling Bad Faith Trademark Filings in Japan PDF
4. Case Examples
(1) Digest version of Case Examples PDF
TM5 has created a digest version of the Upgraded Case Examples of Bad-Faith Trademark Filings.
This version summarizes some of the cases collected in full cooperation with the TM5 Offices and the International Trademark Association (INTA). Herein, you can learn more easily about case examples of bad-faith trademark filings. (Some data will be added later.)
(2) Upgraded Case Examples of Bad-Faith Trademark Filings PDF
Ⅰ. Introduction
Ⅱ. Case Examples
Ⅲ. APPENDIX
– List of the Contributors
– Bad Faith Case Summaries of Other Countries/Regions
The previous Case Examples consisted of 10 cases each from the TM5 offices, for a total of 50 cases. In this version, five more cases each from the TM5 offices have been added. These are listed as examples No.11 to 15 in each office’s section in Chapter II. In addition, cases from other countries and regions were collected from Asia, North America, Central and South America, Europe, and Africa, in full cooperation with the International Trademark Association (INTA). In this version, 93 additional cases were selected and listed.
(3) Case Examples of Bad-Faith Trademark Filings PDF
Ⅰ. Introduction
Ⅱ. Case Examples
Ⅲ. APPENDIX
– Related Articles of each countries
– Comparison Tables
5. TM5 Manga Booklet For Counter Measures Against Bad-Faith Trademark Filings
TM5 has published Manga Booklet to disseminate countermeasures against bad-faith trademark filings.
You can learn useful systems of each TM5 office that can be utilized when you try to counter bad-faith trademark application or try to invalid those already registered.
6. Seminars
- October 2013 : The first seminar on bad-faith trade mark filings (Tokyo)
- May 2014 : The second seminar on bad-faith trade mark filings (Hong Kong)
- March 2016 : The third seminar on bad-faith trade mark filings (Tokyo)
- January 2022 : TM5 Online Workshop with the DGIP on Bad Faith
- February 2023 : TM5 Workshop with the IPOPHL on Bad Faith
