Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

–They can be obstacles for the registration of your trademark

1. Practice of verification of "Intent-to-Use"

A trademark can be registered by "intent of use" under Japanese Trademark Law.
The JPO had not required applicants to submit evidence of use of the trademark before April 2007, so you may sometimes find a registered trademark designating all the goods/services in one class.

The JPO changed the practice of verification of  "actual use" or "intent to use" in April 2007.

If a Statement of Use or Declaration of intent-to-Use is not submitted along the application in the following cases of 1) and 2), the applicant will automatically receive an office action from JPO on the ground that the designation is considered to be a "broad scope".

1) An application designates goods or services belonging to 8 or more similar goods in one class*1,
2) an application designates retail services or wholesale services in the specific cases where,
  2-1) the application filed by an individual designates so-called "general retail services or wholesale services,
  2-2) the application filed by a corporation designates so-called "general retail services or wholesale services but the fact finding of providing services by the applicant under the examination by the examiner's authority fails, or
  2-3) the application designates plurality of retail soervices or wholesales services deal in "specific goods" which are categorized into two or more similar codes.

*1: Our previous post explains about the similarity code. Please refer to the following page for further information: "Identification of similar goods and services in trademark examination practice"
*2: Regarding the cases of 2), please refer to our previous post: "Interested in obtaining a trademark right for retail services or wholesale services?"

2. Ways to overcome the obstacles to register your trademark

A tendency to designate all the goods/services in one class seems to have been diminished due to the new practice.

However, because no evidence of use of a trademark is required at renewal of registration under Japanese Trademark Law, quite a few registered trademarks designating all the goods/services in one class will continue to exist. These registered trademarks can be prior trademarks (cited trademarks) in an office action against your trademark application if your tradmark is (substantially) identical with the prior trademarks.

Here are potential ways to overcome the office action:
1) filing a trial for cancellation of the trademark registration not in use,
2) assignment of the right of the registered trademark from the right holder*3, and
3) others ( filing a trial for invalidation of the trademark registration due to non use, filing an argument etc. )

One estimation on basis of questionnaire survey by JPO shows that 60% of the registered trademarks have not been used, and the number would be the ten time considering the portion of the designated goods or services has not been used in relation with the registered trademarks.  Therefore, cancellation due to non-use is commonly-used strategy and success rate on the side of the requesters is about 80% because the right holder has to submit evidences or proofs of use of the trademark.

More detail information is provided on page 6-7 of the following PDF
http://www.jpaa.or.jp/english/trademark/pdf/TRADEMARK_PRACTICE.pdf

*3: Please note that consent agreements are not taken into account for examinations under Japanese Trademark Law and ineffective to overcome the office action.


End of report

HIROTA, Miho
AIGI Intellectual Property Law Firm