Japan IP News

Japan Features in Trademark TM5 Annual Meeting: Multilateral Cooperation Benefits SMEs. November 2022

The Trilateral patent offices focus on SMEs and IP Ecosystem: a continued show of support for that part of the global economy which generates the highest amount of employment and economic growth.

The five trademark offices (TM5) met in a hybrid format for their Annual Meeting 2022 hosted by the EUIPO, marking the tenth anniversary of the establishment of its framework. The TM5 offices are responsible for trademarks in Japan, the United States, Europe, China, and Korea. Looking back on a decade of cooperation, the Partners engaged in a lively discussion regarding the progress of ongoing *16 projects (*see full list at article end)  and future work. Japan’s leading role in Multilateral Trademark Projects benefit SMEs. 

Kimura & Partners writes regularly on notable updates to Japanese IP law and related developments. Our focus is on Patent and Trademark law of relevance to the global SME market seeking strong IP protection in applications and infringement defense. We have a long history of supporting SMEs in Japan, and multi-jurisdictionally, with our unique approach to client relationships and “fighting on the IP Battlefield”.  

Japan’s leadership of key Cooperative Multilateral Trademark Projects is noteworthy: along with the JPO’s leadership globally, it is clear that Japan is helping to drive future advancement in IP cooperation globally. 

Those cooperative projects include “User Involvement”, “Bad Faith Trademark” and ” IT Support for Trademark Examination” all of which the JPO serves as (co)leading office. 

Project 1. User Involvement

Link to User Involvement Website

The aim of the project is to establish a coherent and consistent user involvement in the TM5 forum, notably through the involvement of users in TM5 Midterm and Annual Meetings, workshops and collaboration projects. Users involvement benefits imply increased awareness of the TM5 work, the user perspective being integrated into TM5 projects/ initiatives for increased efficiency, and better addressing issues of global interest with users.

Useful links for SMEs







Project 2. Bad Faith Trademarks

A comprehensive set of meeting materials, case studies and other resources useful for SMEs can be found here at the TM5 website:

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. 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)) have lead international cooperation towards solutions.

Project objectives are to a) share information among partner offices on (1) laws and regulations, (2) examination practices, and (3) issues regarding bad-faith trademark filings, and to b) to raise user awareness on ways they can respond to bad-faith trademark filings.

Outcomes from the project include a) The Report on  “Laws and Examination Guidelines/Practices of the TM5 Offices against Bad-Faith Trademark Filings”, and b) Case Examples of Bad-Faith Trademark Filings

Project 3.  IT Support for Trademark Examination

Link to the IT Support for Trademark Examination Website

1. Description of project;

Phase 1 of this cooperative project, “Image Search Project,” was adopted in the Annual Meeting of the Expanded Trilateral (December, 2011) so as to solve the problem of reducing the burden of search for figurative trademarks by conducting joint research and information exchange with the aim of promoting future development of more precise/accurate image search systems.

Through the project, each TM5 Partner achieved a certain result such as developing and testing its own image search system. On the basis of this achievement, the JPO became convinced of the merit of information exchange, thus proposed and Partners agreed in the 2019 Annual Meeting to expand the project scope and add a Phase 2 to address general IT tools which support trademark examination.

Phase 2 of this cooperative project is to conduct an exchange of information regarding TM5 Partners’ IT tools for supporting trademark examination with a view to help each TM5 Partner improve its own IT tools or system for efficient trademark examination. Also, it aims at storing information among TM5 Partners so that each TM5 Partner can and will make effective use of them as referenced now and in the future when individually introducing or improving an IT tool or system.

 Partners had in-depth discussions on the following 16 TM5 projects: 

• Trademark Protection in Opposition and Appeal (review) Procedure (CNIPA and EUIPO): the Partners agreed to extend Phase 1 and aim to finalise the study before the end of this year. 

• Trademark Archives Management and Administration (CNIPA): the Partners agreed to extend the project timeline until the 2023 Midterm Meeting. 

• TMview (EUIPO): The Partners agreed that the project enters active continuous status subject to revision and review of the project brief. The EUIPO will present the new TMview image search functionality at the 2023 Annual Meeting. 

• Priority Rights (EUIPO): the Partners agreed that with the completion of the objectives of phases 1 and 2 the project enters accomplished (monitoring) status with the view of possible future cooperation on priority document exchange with new technologies. 

• User involvement (EUIPO & JPO): the Partners approved JPO’s proposal to hold the 7th Joint Workshop on “Proving use of trademarks in TM5 offices” at the INTA Annual Meeting which will be held in Singapore in May 2023.The Partners acknowledged the addition of new information resources to the SME Info Corner of the website and will continue preparatory and study work on SME Welcome Kits for overseas applicants. 

• Joint Communication Action (EUIPO and KIPO): the Partners support the initiatives of the Lead Offices to communicate to the public about TM5 and in particular welcome the publication of the “10 Years TM5 Anniversary Booklet”. 

• Common Statistical Indicators (EUIPO): the Partners welcomed the addition of new interactive charts on the website which show the summary report in the form of virtual tables. 

• Risk Management (EUIPO) the Partners agreed that the project enters into accomplished (monitoring) status. 

• Bad Faith (JPO): the Partners approved the revised project brief and agreed to hold the next bad faith seminar in the Philippines. They also welcomed the upgraded bad faith report and digest version of case examples (partial) which will be published after the Annual Meeting. 

• IT support for Trade Mark Examination (JPO): the Partners approved the project brief of the new project to hold IT expert meetings which builds on and carries forward the work of the old “Image Search” project. They also welcomed the idea of holding another expert meeting next year. 

• Combatting Infringement (KIPO): the Partners approved the revised project brief with the new Phase 2 focusing on online infringement. 

• TM5 Website (KIPO): the Partners welcomed the enhancements made by KIPO and look forward to further enhancements on the website in 2023. 

• Fraudulent Solicitations (USPTO and EUIPO): the Lead Offices provided a brief update on the status of the project and proposed a new mapping exercise focusing on cases of irregular trade mark filing practices or other procedural abuses. 

• Common Status Descriptors (USPTO): the Lead Office provided a brief update on the status of this project’s expansion to other IP offices. The Partners welcomed WIPO’s implementation of the status descriptors and look forward to more information on the implementation of interested EU Member States national offices who have signalled interest. 

• ID List (USPTO): the Lead Office provided a brief update on the status of the ID List, which now has over 22,400 pre-approved identifications of goods and services that are acceptable in all 5 Partner Offices and 45 trademark offices globally. 

• Non-traditional Marks (USPTO): the Partners noted the recently published searching guide on the TM5 

Japan’s leading role in Multilateral Trademark Projects benefit SMEs.

All information for this article is sourced from the JPO and the TM5.  Here are additional links from the meeting.

By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.