2021.12.28

Are you in a hurry to obtain a trademark right in Japan?

TRADEMARK

Are you in a hurry to obtain a trademark right in Japan?

1. Introduction
Can’t you wait for the outcome of the examination of your trademark application? Do you want to expedite the examination? If this is the case, we believe that the below information will be useful.

According to the statistics of the Japan Patent Office ("JPO") (https://www.jpo.go.jp/resources/statistics/nenji/qa.html), the number of trademark applications in the recent 10 years is increasing as shown below (although it slightly rises and falls in the recent 4 years).

[Number of Trademark Applications in Japan]

Accordingly, the examination at the JPO takes a longer and longer time as shown below.

[Average Term of Examination at the JPO]

If it is too long for you to wait for the outcome of the examination, you may consider using the "Accelerated Examination" or "Fast Track Examination" system. At present, however, these are not applicable to the Japanese designation of international registration.

2. Accelerated Examination System
Please note that the "Accelerated Examination" system makes the JPO to issue the first Office Action within about 2 months from the requesting date of the accelerated examination. Such request can be made at the time of filing a trademark application or at a later stage, i.e., at any time while the application is pending. It should be noted, however, that it can be requested only where the subject application falls under one of the following three cases.

Case 1

A) The applicant or its licensee is already using, or has already prepared to use to a considerable extent, the mark in relation to at least a part of the designated goods/services; and
B) There is an urgent need to obtain the trademark registration.

The term "has(ve) already prepared to use to a considerable extent” within this context means, for example, cases where the applicant has already ordered catalogues bearing the mark to a printing company or the media has already covered the planned use of the mark. Just planned product packages or planned website images are not sufficient.

The “urgent need to obtain the trademark registration” is found in either of the following cases:

a) It is obvious that a third party is, without permission, actually using or has prepared to use to a considerable extent, a mark identical or similar to the applicant’s mark in relation to the designated goods/services or those similar thereto;
b) The applicant has received a warning or cease-and-desist letter from a third party in relation to the use of the applicant’s mark;
c) A third party has requested the applicant to grant a license to use the mark;
d) The applicant has filed applications for the same mark in foreign countries or areas; or
e) The applicant is planning to file a trademark application internationally under the Madrid Protocol System, based on the subject trademark application.

Case 2
The applicant designates only goods/services for which the applicant or its licensee is already using the mark or has prepared to use it to a considerable extent.

If the applicant has not yet started using, or has not yet prepared to use to a considerable extent, the mark in relation to a part of the designated goods/services, it is necessary to delete such goods/services before or at the time of filing a request for the accelerated examination.

Case 3

A) The applicant or its licensee is already using, or has already prepared to use to a considerable extent, the mark in relation to at least a part of the designated goods/services; and
B) All the designated goods/services in the trademark application are listed in the Examination Guidelines for Similar Goods and Services (https://www.jpo.go.jp/e/system/laws/rule/guideline/trademark/ruiji-kijun/index.html); the Regulations of the Trademark Act (only the Japanese texts are available); or the International Classification of Goods and Services (Nice Classification) (https://www.jpo.go.jp/e/system/trademark/gaiyo/bunrui/kokusai/kokusai_bunrui_11-2021.html, or https://www.wipo.int/classifications/nice/nclpub/en/fr/).

If the applicant designates goods/services NOT listed in any of the above, it is necessary to delete such goods/services before or at the time of filing a request for the accelerated examination.

3. Fast Track Examination System
Another option to accelerate the examination is using "Fast Track Examination" system. This system will make the outcome of the examination available in about 6 months from the filing date. If the requirements below are met, all trademark applications automatically fall under this system and no separate request is required.

A) All the designated goods/services in the trademark application are listed, at the time of filing, in the Examination Guidelines for Similar Goods and Services, the Regulations of the Trademark Act, or the International Classification of Goods and Services (Nice Classification) (refer to the requirement B) in Case 3 above); and
B) No amendments of goods/services have been made until the examination starts.

The important point to note is that, for this purpose, it is not allowed to amend the designated goods/services even though it is minor. If the designated goods/services are amended or some designated goods/services are not listed in the above certain documents, the "Fast Track Examination" will not be applicable and the trademark application will be examined at a normal speed.

4. Summary and Practical Tips
For ease of understanding, we summarize below the above two options to accelerate the examination in Japan.


* Alternatively, the mark is being prepared to be used to a considerable extent.
** The Examination Guidelines for Similar Goods and Services (https://www.jpo.go.jp/e/system/laws/rule/guideline/trademark/ruiji-kijun/index.html); the Regulations of the Trademark Act (no English texts are available); and the International Classification of Goods and Services (Nice Classification) (https://www.jpo.go.jp/e/system/trademark/gaiyo/bunrui/kokusai/kokusai_bunrui_11-2021.html, or https://www.wipo.int/classifications/nice/nclpub/en/fr/).

If you wish to obtain a trademark registration sooner, it is recommended to pick up the goods and/or services, at the time of filing a trademark application, from the "Examination Guidelines for Similar Goods and Services" or the "International Classification of Goods and Services (Nice Classification)." As a result, the trademark application will enjoy the benefit of the "Fast Track Examination" system. In addition, if you can prove use of the mark in Japan for some designated goods/services, the "Accelerated Examination" system (Case 3 above) will also be available.

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