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Home > Obtaining IP Rights > Trademarks > Information about designating goods and services

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Information about designating goods and services

November 2013

Trademark Division

Trademark and Customer Relations Department

Japan Patent Office

At the time of filing an application to register a trademark, the applicant should write a detailed and specific description of the goods and/or services in accordance with the classification as the designated goods and/or services. Moreover, the trademark should be either currently in use or to be used in future with regard to the designated goods and/or services.

It is found that a majority of the “reasons for refusal” sent by examiners in trademark examination involves problems with the descriptions of the designated goods and/or services. The typical reasons for refusal are the cases in which (1) goods and/or services are not designated in accordance with the classification of goods and services specified by cabinet order (Paragraph 2 of Article 6 of the Trademark Act); (2) the content and scope of designated goods and/or services are not clear (Paragraph 1 of Article 6 of the Trademark Act); or (3) the current use or the intention to use of a trademark needs to be confirmed with regard to the designated goods or designated services claimed in applications (Principal Paragraph of Article 1(3) of the Trademark Act). In fact, 70% of the reasons for refusal in regard to applications filed by foreign applicants were due to reasons (1) to (3) above.

We would like to provide the following information, in order to support the applicants to acquire rights smoothly, since in many cases, these reasons for refusal (unclear description of designated goods and services, etc.) can be avoided if proper information is available for the applicants in advance.

Note 1: At the time of filing an application with the JPO, the designated goods and designated services should be written in Japanese language.

Note 2: If the applicant wishes to file an international application to Japan through the Madrid Protocol, please also refer to “Information for Holders of International Registrations Seeking Extension of Protection to Japan under the Madrid Protocol.”

1. Designating goods or services in accordance with the classification of goods and services specified by cabinet order (Paragraph 2 of Article 6 of the Trademark Act)*

Goods and services are divided into 45 classes according to the International Classification under the Nice Agreement.

At the time of filing an application, the applicant should indicate the designated goods and/or services for which the trademark has been used or is planned to be used, and the class(es) to which those goods and/or services belong in the application form, respectively.

If you wish to designate goods and/or services that belong to more than two classes in one application, you can describe them respectively in accordance with their corresponding classes.

(Examples of good and/or services that are not in accordance with the class of goods and services specified by cabinet order)

“Class 9: Watches”

(In this case, since watches are goods belonging to Class 14, the applicant must indicate “Class 14: Watches” instead of “Class 9”.)

“Class 36: Representation of magazine advertising” (In this case, “representation of magazine advertising” is a service belonging to Class 35, so the applicant must describe this service as “Class 35: Representation of magazine advertising”.)

If you wish to know which goods and/or services belong to what class(es), please refer to the examination guideline for similar good and services and International Classification List of Goods and Services in 2. “Examples of indications of specific goods and services belonging to each class ”.

2. Ensuring that the content and scope of designated goods and/or services are clear (Paragraph 1 of Article 6 of the Trademark Act)

Since designated goods and /or services stipulate the scope of rights in the same way that trademarks do, their content and scope must be very clear.

Good and/or service need to be designated individually and specifically and those having unidentifiable indications cannot be registered, therefore, a considerable amount of prior searching on your part is highly recommended.

(Examples that the indication of designated goods and/or services is unclear)

(Example) Goods or services belonging to one class which are indicated in the following way :

“Class 2: All goods”

(Because there are many goods that belong to one class other than those published as examples under the said class, this indication is too unclear as to what type of goods in the said class the applicant intends to acquire a right. Therefore, it is necessary to describe the specific goods.)

“Class 39: Transport by a freight car and other services belonging to this class”

(Like in the case of the above-mentioned example, because “other services belonging to this class” includes many other services which are other than those published as examples under this class, this indication is too unclear as to what types of services are to be acquired as a right. Therefore, it is necessary to describe specific services.

(Example of a refusal based on the reason that the application does not comply with the requirements in Paragraph 1 and Paragraph 2 of Article 6)*

“Class 7: Machinery and instruments”

(This case is unclear as to what type of goods is to be acquired as a right. In some cases, depending on the types of machines and instruments, there are some goods, which may belong to other classes, have been included in this indication the specific goods in line with the specific class that correspond to them.)

Reference 1

Operational procedures of examinations conducted on unclear designated goods or designated services (The Trademark Examination Manual 46, Article 6 of the Trademark Act:46.01 Administration of Examinations of Unclearly Designated Goods or Services (PDF:159KB))

The following examination guidelines and list, provide examples of clear indications as to which specific goods and services belong to which specific classes. When you file an application to register a trademark, please designate the goods or services after you have made enough searches by utilizing these reference materials.

(Examples of indications of specific goods and services belonging to each class)

In addition, in the “Searching Goods & Services ( External link )” in the Japan Platform for Patent Information (J-PlatPat), you can search the “Examination Guidelines for Similar Goods and Services,” the “International Classification of Goods and Services (Nice Classification),” the “TM5 ID List”, “WIPO Madrid Goods and Services Manager” and the “Goods and Services accepted at examination(Japanese or English only)” by entering the terms for the goods and services that you want to designate.

In addition, you can search indications of adoptable goods and services in the “Madrid Goods & Services Manager( External link )” provided by the WIPO.

At the same time, you can check Japanese translations of indications of adoptable goods and services.

When you file an application to register a trademark, please be sure to designate your goods and services after you have used these tools and made enough searches.

Reference 2

Example of a search made in the “Searching Goods & Services” found under the heading of “Trademark” in the Japan Platform for Patent Information (J-PlatPat).

search result

For example, if you type and enter “Processed vegetables” as the name of the “Goods and Services” and click “Search,” you can obtain the search result shown above. Then, if you click “Search results’ number” or “View list” in the above search result, the “List” will be given, which is shown as follows.

list

When you need an example of a notification of reasons for refusal, please see “Article 6 of the Examination Guidelines for Trademarks” (Single trademark on each application) (PDF:62KB)”.

3. Case when trademarks that are currently in use or are planned to be used have been filed for designated goods or designated services (Principal Paragraph of Article 3(1) of the Trademark Act)

The types of designated goods and designated services that can be described in applications are limited to only goods and services described in the applications and which are currently in use or are planned to be used in the future.

Therefore, whenever the scope of designated goods or designated services described in applications covers too broad a range within any one class, the JPO will have reasonable doubt as to whether the applicants who filed those applications have any intent to use or any plan in the future to use the trademarks. As a result, it may become necessary for the JPO to confirm the actual use of a trademark or the applicant’s intent to use the trademark. This will be confirmed in writing by using a notification based on the Principal Paragraph of Article 3(1) of the Trademark Act. The following can be used as a criterion to confirm this. One example is when, in principle, eight or more similar goods or services are designated within a class for a group of similar goods and services. If you are asked to confirm whether you currently use or plan to use the trademark for the designated goods or designated services, you will need to submit documentation such as catalogues or pamphlets proving your intent.

For more details, please see the Examination Guidelines for Trademarks and the Trademark Examination Manual.

Reference

To see examples of groups of similar goods and services, please refer to here.

* Please note that the class(es) of goods and services designated by an international application filed for the international registration under the Madrid Protocol are decided by the International Bureau of WIPO.

[Last updated 12 December 2016]

Contact

Trademark Division, Japan Patent Office

For inquiries on Examination Guidelines and Examination Practices on Trademarks

FAX: +81-3-3580-5907

E-mail: PA1T00@jpo.go.jp

 

For inquiries on classes of designated goods and designated services

FAX: +81-3-3580-5907

E-mail: PA1T90@jpo.go.jp

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