Any request for territorial extension to Japan under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks shall be deemed to be an application for trademark registration filed on the date of international registration or subsequent designation under the Japanese Trademark Act. Therefore, the request should be examined by the Japan Patent Office (JPO) in the same way as a national application is examined under the Act. If the request falls under any reasons for refusal under the Act, the JPO will issue a total provisional refusal.
For the benefit of holders of International Registrations, the JPO provides the following information regarding the most commonly issued grounds of provisional refusals and the unique procedures before the JPO.
1．Indications of goods and services
3．Trademark System for Retail and Wholesale Services in Japan
6．Second Part of the Individual Fee
7．Links to the Japanese Trademark Act / Examination Guidelines
1．Indications of goods and services
The JPO does not accept the indication of goods and services if the scope is considered to be too vague in Japan, even if the indication is registered in the International Register or included in the alphabetical list of goods and services under the NICE Agreement.
Please see “List of Goods and Services in the IPDL (Industrial Property Digital Library)”at http://www1.ipdl.inpit.go.jp/SH1/sh1e_search.cgi?TYPE=000&sTime=1237790178943 for acceptable indications of goods and services in Japan.
2．Indications of goods and services appearing in the class headings of LIST OF CLASSES OF GOODS AND SERVICES WITH EXPLANATORY NOTES under the NICE Agreement
The JPO does not accept the indications of goods and services in the left column of the following table because the scope of the goods and services is considered too vague.
Class |
Unacceptable goods and services |
Acceptable goods and services |
|---|---|---|
1 |
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry |
Chemicals used in industry; chemical preparations for scientific purposes (other than for medical or veterinary use); chemical preparations for use in photography; agricultural chemicals, except fungicides, weedkillers, herbicides, insecticides and parasiticides; horticulture chemicals, except fungicides, herbicides, insecticides and parasiticides; chemicals for forestry, except fungicides, herbicides, insecticides and parasiticides |
6 |
Ironmongery, small items of metal hardware |
Bolts of metal; bottle caps of metal; boxes of common metal; buckles of common metal [hardware]; cattle chains; chests of metal; clothes hooks of metal; ice nails [climbing irons]; junctions of metal for pipes; keys; memorial plates of metal; money boxes of metal; statuettes of common metal |
6 |
Goods of common metal not included in other classes |
Pipes of metal; metal materials for building or construction; metal joinery fittings; safes; metal hardware; prefabricated building assembly kits of metal; reservoirs of metal; industrial packaging containers of metal; loading and unloading pallets of metal; road signs of metal (not luminous nor mechanical); beacons of metal (non-luminous); wire nets and gauzes; wire ropes; tool boxes of metal; metal stepladders and ladders; water tanks of metal for household purposes |
7 |
Machines and machine tools |
Metalworking machines and tools; mining machines and apparatus; construction machines and apparatus; fishing machines and instruments; chemical processing machines and apparatus; textile machines and apparatus; food or beverage processing machines and apparatus; lumbering, woodworking, or veneer or plywood making machines and apparatus; pulp making, papermaking or paper-working machines and apparatus; printing or bookbinding machines and apparatus; agricultural machines and implements; packaging or wrapping machines and apparatus; plastic processing machines and apparatus |
9 |
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments |
Apparatus and instruments for scientific research in laboratories; nautical apparatus and instruments; surveying apparatus and instruments; photographic apparatus and instruments; cinematographic apparatus and instruments; optical apparatus and instruments; weighing apparatus and instruments; measuring apparatus; luminous or mechanical signals; electric monitoring apparatus; life-saving apparatus and equipment; teaching apparatus |
12 |
Vehicles |
Aircraft; automobiles; bicycles; motorcycles:rolling stock for railways; ships; |
12 |
Apparatus for locomotion by land, air or water. |
Aircraft; automobiles; bicycles; motorcycles:rolling stock for railways; ships; |
14 |
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes |
Precious metals, unwrought or semi-wrought; key rings [trinkets or fobs] of precious metal; jewellery cases [caskets] of precious metal; shoe ornaments of precious metal |
16 |
Paper, cardboard and goods made from these materials, not included in other classes |
Paper, boxes of paper, table cloths of paper, table napkins of paper, cardboard and cardboard articles |
17 |
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes |
Raw or semi-worked rubber; gutta-percha; raw or partly processed gum; asbestos; raw or partly processed mica |
20 |
Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics |
Furniture made from wood or substitutes for wood; bands of cork or substitutes for cork; screens of reed or substitutes for reed; chairs of cane and wicker or substitutes therefor; statuettes of wood, wax, plaster or plastic; boxes of plastic; packing boxes and containers made of plastic; plastic and wooden sculptures |
24 |
Textiles and textile goods, not included in other classes; |
Fabrics; face towels of textile; sheets [textile]; table napkins of textile; table linen [textile]; tapestry [wall hangings] of textile |
31 |
Agricultural, horticultural and forestry products and grains not included in other classes |
Barley; grains (cereals); seeds; natural flowers; plants; seedlings; trees; fresh fruits and vegetables |
36 |
Financial affairs |
Financial consultancy; financial evaluation [insurance, banking, real estate]; financial management |
36 |
Monetary affairs |
Capital investments; exchange money; fund investments; securities brokerage; stocks and bonds brokerage |
37 |
Repair |
Repair of automobiles; repair of medical machines and apparatus; repair of metalworking machines and apparatus; repair of office machines and apparatus; repair of telecommunication machines and apparatus; repair of computers |
40 |
Treatment of materials |
Cloth treating; leather staining; metal treating; water treating |
41 |
Sporting and cultural activities. |
Sporting activities; organization of exhibitions for cultural or educational purposes; zoological gardens; reference libraries of literature and documentary records; art exhibitions; gardens for public admission |
42 |
Scientific and technological services and research and design relating thereto |
Scientific and technological research and development; computer software design; industrial design |
44 |
Agriculture, horticulture and forestry services |
Aerial and surface spreading of fertilizers and other agricultural chemicals; gardening; tree surgery; weed killing; vermin exterminating (for agriculture, horticulture and forestry) |
45 |
Personal and social services rendered by others to meet the needs of individuals |
Clothing rental; crematorium services, detective agencies; marriage agencies |
3．Trademark System for Retail and Wholesale Services in Japan
The trademarks for so-called "retail or wholesale services" can be protected in Japan, providing that the date of international registration or subsequent designation is on or after April 1, 2007. Please refer to the “Notice regarding Trademark System for Retail and Wholesale Services” on the JPO Website at http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/notice_services.htm
4．Principal paragraph of Article 3 (1) under the Japanese Trademark Act prohibiting registration of trademarks that will not be used
A trademark which falls within the category of trademarks registrable under the Trademark Act is a trademark which is used now or which is intended to be used in the near future. The veracity of use or intention of use of the trademark in regard to all the designated goods and services is doubted if the range of the goods and services listed in one class is too wide. Therefore, such an application does not conform to the requirements as provided in the principal paragraph of Section 3(1) of the Trademark Act.
This practice applies to international registrations which are registered or subsequently designated on or after April 1, 2007.
Please see the JPO Website at http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1303-061_3_6.pdf for the examination guideline corresponding to the Principal Paragraph of Article 3 (1) of the Trademark Act.
5．Amendment or Limitation of goods and services to respond to the NOTIFICATION OF PROVISIONAL REFUSAL
Holders of an international registration who seek to overcome the grounds for provisional refusals by limiting/amending the list of goods and services have two options indicated below.
(i) Filing a request for an amendment with the JPO
The request for an amendment of the list of goods and services is a formal procedure according to Article 68-28 of the Japanese Trademark Act. The JPO does not require a payment of fees to file a request for an amendment. The list of goods and services may be amended by filing a written request for amendment with the JPO. The request must be presented to the JPO through the intermediary of a representative domiciled in Japan within three months from the date of pronouncement of the NOTIFICATION OF PROVISIONAL REFUSAL. Please consult your attorney in Japan for details since the procedures and the format for requesting an amendment must be in the Japanese language only.
Please note that the request for an amendment of the list of goods and services cannot be submitted directly to the JPO via fax or e-mail.
(ii) Filing a request for a limitation with WIPO
The request for a limitation of the list of goods and services is a formal procedure according to Rule 25 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The list of goods and services may be limited by presenting a written request for limitation with the prescribed fee to WIPO. Please note that the request must be filed with WIPO directly using the official form (MM6).
A limitation shall have effect when it is registered in the International Register. The limitation recorded in the International Register is effective in respect of the designation of Japan as long as the case is pending before the JPO. A case is considered to be pending before the JPO:(a) not only the period of three months from the date of pronouncement of the NOTIFICATION OF PROVISIONAL REFUSAL but also until the pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION (b) even after the pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION subject to the fact that the holder has made a request for an appeal examination to the JPO within three months from the date of pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION.
However, the examiners of the JPO will not be aware of the fact that a request for a limitation has been filed with WIPO until the JPO receives the notification of recording a limitation from WIPO. In such cases, it is possible that the examiners of the JPO may issue the DECISION TO REFUSE A TRADEMARK REGISTRATION or the STATEMENT OF CONFIRMATION OF PROVISIONAL REFUSAL. Therefore, in order to avoid such a situation, please inform the examiner in charge as soon as possible via fax of the fact that the holder has filed a request with WIPO.
Please contact WIPO for details about the request for a limitation.
Please see WIPO Web site at http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/common_regulations.pdf for Rule 25 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement and http://www.wipo.int/edocs/formdocs/form-madrid/en/form_mm6.doc for the official form for a limitation.(MM6)
6．Second Part of the Individual Fee
The JPO has adopted an individual fee consisting of two parts in accordance with Rule 34 (3)(a) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. Please refer to the instructions indicated in the NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE which is transmitted from the International Bureau with the STATEMENT OF GRANT OF PROTECTION or the STATEMENT OF WITHDRAWAL OF PROVISIONAL REFUSAL for the payment of the second part of the individual fee. Please note that the International Registration in the International Register shall be cancelled with respect to Japan where the second part of the individual fee is not paid within the period indicated in the NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE according to the Rule 34 (3)(d) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement.
Please refer to Rule 34 (3) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement on the WIPO Web site at http://www.wipo.int/export/sites/www/madrid/en/legal_texts/pdf/common_regulations.pdf
7．Links to the Japanese Trademark Act / Examination Guidelines
(i) Trademark Act
http://www.cas.go.jp/jp/seisaku/hourei/data/TA.pdf
(ii) Examination Guidelines for Trademarks
http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/tt1302-001.htm
- <Contact Information>
- Trademark Division
- TEL:+81-3-3581-1101 ex2806
- FAX:+81-3-3595-2747
[Last updated 24 April 2009]
