Bad Faith Trademark
- Lead Office : JPO -
The JPO presented the upgraded case examples and the Partners agreed to post it on the TM5 Website at the 2019 TM5 Annual Meeting. We published the upgraded version below. In 2020, the JPO and the partners will create a booklet about bad faith information and measures in the form of manga and update the report on “Laws and Examination Guidelines/Practices of the TM5 Offices against Bad-Faith Trademark Filings” which was published in 2015.
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. 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. And the 3rd seminar was held in Tokyo on March 1 2016, focusing on the latest examples of bad faith trademark applications in each TM5 offices. The seminars were well received by participants and successful.
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 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. Case Examples of Bad-Faith Trademark Filings PDF
Ⅱ. Case Examples
- Related Articles of each countries - Comparison Tables
5. Upgraded Case Examples of Bad-Faith Trademark Filings PDF
Ⅱ. Case Examples
- 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.
6. TM5 Manga Booklet For Counter Measures Against Bad-Faith Trademark Filings PDF
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.