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Home > Obtaining IP Rights > Trademarks > Notice about Examination of Trademark Applications, which Are Filed After Applications with Procedural Defects Have Been Filed

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Notice about Examination of Trademark Applications, which Are Filed After Applications with Procedural Defects Have Been Filed

June 21, 2017
Japan Patent Office

Recently, the JPO has been experiencing a large number of trademark applications that are being filed by applicants who do not include payments for their application fees. These applications filed without payments are referred to as “applications with procedural defects.”

As a general rule, applications with procedural defects, which are not made whole, are dismissed in four to six months from the filing date.

In the case that the JPO confirms the later filed applications themselves do not have any procedural defects, as a general practice, the JPO conducts substantive examination on later filed trademark applications, i.e., applications filed later for the same or similar trademarks, without waiting for the previously filed applications with procedural defects to be dismissed.

In the course of the JPO’s substantive examination, the JPO might send the notifications of reasons for refusal to applicants of the later filed applications before the duration that prior applications are dismissed. However, once examiners have confirmed that the prior applications have been dismissed, they will render decisions to register the trademarks of the later filed applications, as long as there are no reasons for refusal.*1

As a result of this situation, the JPO henceforth has changed its operating procedures and from now on will explicitly state in the notifications of reasons for refusal the fact that as soon as the JPO has confirmed that the prior applications with procedural defects have been dismissed, the trademarks in the later filed applications will be granted registrations.

Therefore, applicants will no longer need to wait for prior applications with defects to be dismissed, even if the prior applications with procedural defects are filed by others.

Furthermore, when the JPO can confirm that applications with procedural defects no longer have any procedural defects (for example, the applicants paid the filing fees), the JPO will examine such applications as usual in accordance to the Trademark Act.

However, no trademarks will be registered when the JPO deems that such trademarks (1) will not be used in connection with goods or services pertaining to the business of the applicants, as stipulated under Article 3 (1) of the Trademark Act);*2 (2) are other entities’ famous trademarks that have been filed in advance; and (3) are third parties’ famous publicly known trademarks, as stipulated under Article 4 (1) of the Trademark Act.*3

 


  • *1: Operating procedures for conducting substantive examination on trademark applications filed after applications with procedural defects have been filed

    Operating procedures for conducting substantive examination on trademark applications filed after applications with procedural defects have been filed

  • *2: When individuals or companies file large numbers of trademark applications exceeding the scope of use normally deemed as reasonable for the subject trademarks, such trademarks may not be registered, since the probability of such trademarks being used for actual business purposes is extremely low. As a result, such trademarks fall under reasons for refusal, as stipulated under Article 3 (1) of the Trademark Act.
     

    Article 3 (1), Trademark Act
    Trademarks used in connection with goods or services pertaining to the businesses of applicants may be registered, unless any of the following circumstance pertain to such trademarks.

  • *3: Any trademarks that are already in use by other entities and which have been filed in advance; and any trademarks that are filed which are famous, publicly known trademarks of national and local governments, and which are filed by disinterested third persons, will not be registered since they fall under reasons for refusal as stipulated under Article 4 of the Trademark Act.
     

    Article 4 (1) (i), Trademark Act
    Regardless of the preceding article, no trademarks shall be registered if the trademarks:
    (omitted)
    (vi)
    are identical with, or similar to famous marks representing (1) national or local governments or agencies thereof; (2) non-profit organizations undertaking business activities for the public interest; or (3) non-profit businesses working for the public interest;
    (vii)
    are likely to disrupt public order or violate public morality;
    (viii)
    contain portraits, names, famous pseudonyms, professional names, or pennames of persons (or any famous abbreviations thereof), except when the actual persons portrayed have approved the registration of such trademarks;
    (omitted)
    (x)
    are identical with, or similar to, other entities’ trademarks that are well known among consumers as those indicating goods or services in connection with the other entities’ businesses, or if such trademarks are used in connection with such goods or services or similar goods or services;
    (omitted)
    (xix)
    are identical with, or similar to, trademarks that are well known among consumers in Japan or abroad as those indicating goods or services pertaining to businesses of other entities, and such trademarks are used for any unfair purposes such as for unfair personal gain and profits or for willfully causing damage to the other entities, or for any other unfair purposes, the same shall apply hereinafter, except whenever stipulated in any of the preceding Items;

[Last updated 21 July 2017]

Contact

Trademark Division, Trademark and Customer Relations Department

Japan Patent Office

E-mail: pa1400@jpo.go.jp