Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

1. Introduction of the trademark system for retail services or wholesale services

A trademark that is used for retail services or wholesale services can be registered due to the amendment of Japanese Trademark Law in April of 2007.

The JPO provides the main points for filing an application regarding retail services or wholesale services.  They provide the information regarding how an applicant can designate the services in the application.

See below for more detail:
http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/notice_services.htm

In addition to the basic information in the above PDF, we would like to draw your attention to the following two points:

 

2. Requirements for Use or Intent-to-use

If a Statement of Use or Declaration of intent-to-Use is not submitted along the application, the applicant will automatically receive a Office Action from the JPO in the following cases:
　1) where an application filed by an individual designates so-called "general retail services or wholesale services*1",
　2) where an application filed by a corporation designates so-called "general retail services or wholesale services*1" but the fact finding of providing services by the applicant under the examination by the examiner's authority fails,
　3) where an application designates plurality of retail services or wholesales services dealing in "specific goods" which are categorized into two or more similar codes.

Submitting a Statement or Declaration of intent-to-Use will overcome the Office Action.
Regarding the case 3), deleting the services is also available.

*1: As mentioned in the above PDF, an applicant can designate the retail services or wholesale services dealing in either a variety of goods or specific goods in Class 35 (See 1.(1) and (2) in the above PDF). 
　Services dealing in a variety of goods in each field of clothing, food and beverages, and livingware, and these goods are carried in a single business establishment (e.g. Retail services provided by a department store). 
   
*2: To avoid the Office Action, the Statement or Declaration is to be submitted along with the application.

 

3. Retail services or wholesale services deal in “specific goods”

Regarding the application designating services or wholesale services dealing in specific goods, the JPO conducts a search not only among the applications of which similar codes are the same, but also on the basis of a cross reference between the trademark for retail services or wholesale services dealing in “specific goods” and the trademark for the goods which are similar or identical to the “specific goods”.

For example, when an application on the trademark “ABC” designates “retail services for confectionary, bread and buns” in Class 35., this application will be rejected due to the prior filed or registered trademark “ABC” designating “confectionary, bread and buns” as goods in Class 30.

End of report

HIROTA, Miho
AIGI Intellectual Property Law Firm