Ueda: the world’s most prolific trademark filer

Japanese trademark practitioners first spoke out about a mysterious individual who had been filing thousands of trademark applications at the JPO in 2015. Since then, Ueda has been responsible for almost 140,000 filings at the office – and shows no signs of slowing.

Attention was first sparked in 2014 when Ueda’s whopping 6,376 applications displaced many leading brands from their perches at the top of the country’s annual top filer list. Rough calculations suggested that, at the time, Ueda had racked up over $1 million in filing fees, although he had managed to avoid paying them by filing divisional applications to keep cases pending.

In 2016 Japan’s Ministry of the Economy, Trade and Industry (METI) called for measures to combat so-called ‘IP trolls’. By that point, Ueda was responsible for an extraordinary 10% of all trademark applications at the JPO and was becoming increasingly notorious among the Japanese trademark community.

One spokesperson for the Japan Patent Attorneys Association told local media that Ueda’s activities were “clearly contrary to the spirit of the trademark system”, with METI describing them as “a serious problem” that required new legal regulations.

But the rate of filings using the applicant name ‘Ikuhiro Ueda’ and Ueda’s legal entity name ‘Best License’ only increased. In fact, Ueda accounted for 18.5% of all trademark applications before the JPO in 2017.

In an effort to quell the rate of unpaid filings, on 9 June 2018 the Trademark Law Revision Act came into force. This sought to prevent applicants with fraudulent intent from repeatedly dividing their applications in lieu of paying the official fees.

Yet despite a dip in applications in 2018, the revision was not enough to permanently slow the number of mass filings.

By December 2018 applications by Ueda-related entities had significantly picked up again. In the first two months of 2019, Ueda was responsible for just over 31% of all applications in Japan. “Nearly one-third of the JPO’s resources for incoming applications was dedicated to handling his work,” stated Robert Reading, director of government and strategy at CompuMark.

Compared to Gleissner, Ueda was in a league of his own. In 2019 WTR discovered that numerous well-known brands had been the target of his activity and set about collating a fully searchable database of more than 30,000 applications to reveal the staggering scope of his portfolio-building exercise.

According to Reading, Ueda is the first individual in history to have filed over 100,000 trademark applications. “The activity is absolutely unique,” he told us. “In a world dominated by major global companies and brands, Ueda as an individual has filed applications on a scale that has never been seen before.”

Although the rate of filings slowed between 2019 and 2020, Ueda had still added another 35,000 applications to his portfolio by the end of 2020.

To put this activity into context, if you compare the number of filings by the world’s largest companies between 2014 and 2020, Ueda is comfortably out in front – filing over six times as many applications as second-place Johnson & Johnson (see Table 1).

Not only is the size of Ueda’s application portfolio unmatched, so too is his registration rate – although presumably not in the way that he would like.

As of February 2021, more than 130,000 Ueda applications have been cancelled. Only two have ever reached registration: verbal elements SMART and WEARABLE. These were filed in 2013 and registered in January 2015. However, both have also now been cancelled.

Had Ueda’s applications been for innocuous terms, his activity would likely have been viewed merely as a time-consuming curiosity. But WTR’s database – The Ueda Files – reveals a portfolio that often targets well-known brands.

On 3 January 2018 alone, Ueda applied for APPLE, APPLE COMPUTER, APPLE WATCH, APPLE MUSIC, IPAD and IPHONE, as well as other Apple-related terms. In fact, by mid-2019 there were at least 335 Ueda applications featuring the term APPLE. What is more, APPLE MUSIC and APPLE WATCH are among his top 10 most frequently applied-for marks.

Other brand-related applications have included ALIBABA, ANDROID, GOOGLE, INSTAGRAM, PANASONIC, POKEMON, SUPREME, TESLA, TWITTER and UBER.

However, it is the sheer scale of the portfolio that is breath-taking. At the time of writing, Ueda has applied for approximately 25,000 terms through 139,704 filings, with the most common falling across multiple industries.

This has had a tangible impact on brand strategy. According to local media, in January 2018 Ota City in the Gunma prefecture in Japan announced that it would no longer use the name “Ota Bito” for a museum and library complex that was due to open later that year. The reason: Ueda had filed a trademark application for the term first. While this had not reached registration, it nevertheless caused a rethink. It is unclear how many other entities have had to rebrand due to fears over his applications.