The Partial Revision of the Examination Guidelines for Trademarks (10^th Revision) concerning the Handling of an Application for Trademark Registration Consisting of National and Overseas Geographical Names

November 2012

Trademark Examination Standards Office

Japan Patent Office

In the first meeting of the Working Group on Trademark Examination Standards, Trademark System Subcommittee of Intellectual Property Policy Committee under the Industrial Structure Council (held on May 25, 2012), it was discussed on the handling of an application for trademark registration consisting of national and overseas geographical names. As the result, a draft revision of the Examination Guidelines for Trademarks was made, and public comments on it were invited from July 20, 2012 to August 19, 2012.

Afterwards, in the second meeting (held on September 27, 2012), the subcommittee discussed the issue based on the comments made by the public, and approved the revising of the Examination Guidelines for Trademarks concerning the handling of an application for trademark registration consisting of national and overseas geographical names. According to its approval, the Examination Guidelines for Trademarks are partially revised.

Partially revised Examination Guidelines for Trademarks (10^th revision; partially revised) have been applied to the examinations conducted after November 1, 2012)

• The Examination Guidelines for Trademarks concerning partially revised Article 3(1)(ⅲ) of the Trademark Act (PDF:44KB)
• The Examination Guidelines for Trademarks concerning partially revised Article 3(1)(ⅵ) of the Trademark Act (PDF:39KB)

(For Reference) The Outline of the Draft Revision of the Examination Guidelines for Trademarks

The Draft Revision of Examination Guidelines concerning Article 3(1)(ⅲ)

1. Provisions are revised to clarify the examination operation of refusing cases where a trademark consisting of “national and overseas geographical names” generally reminds us of “production or sales region” or “a place to provide service” on the ground that such cases fall within the category of Article 3(1)(ⅲ).
2. Provisions are revised to clarify the cases, in the Examination Guidelines, which shall fall within the category of “national and overseas geographical names” prescribed in the Trademark Examination Manual.

The Draft Revision of Examination Guidelines concerning Article 3(1)(ⅵ)

3. Provisions are added to clarify that a trademark consisting of a geographical name to show the place where a business was established, or the one which is generally recognized as the place where a business was established and so on, shall, in principle, fall within the category of Article 3(1)(ⅵ), even if such case does not fall within the category of Article of 3(1)(ⅲ)
4. Provisions are added revised to clarify the examination operation that in cases where a trademark, which falls within a category of Article 3(1)(ⅵ), can prove its distinctiveness from other goods and services after being used, such trademark shall be regarded as not falling within the category of Article 3(1)(ⅵ).

[Last updated 30 January 2014]

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