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Home > JPO Activities > Accelerated Examination and Accelerated Appeal Examination > Outline of Accelerated Examinations and Accelerated Appeal Examinations for Trademarks

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Outline of Accelerated Examinations and Accelerated Appeal Examinations for Trademarks

September 2018

The accelerated examination/accelerated appeal examination system for trademarks at the Japan Patent Office (JPO) is a system under which the JPO, based on certain requirements and requests from applicants or demandants, conducts accelerated examinations/accelerated appeal examinations on trademark applications for applicants or demandants who have certain needs to acquire rights sooner than normal. The JPO recommends such applicants or demandants to use this system that is provided at no additional cost.

* Since 2017, in order to further respond to the needs of applicants who need to acquire trademark rights earlier than normal, such as business proprietors who deal in goods and/or services that have short shelf-lives, the JPO has increased the types of applications eligible for accelerated examinations. The additional applications are those in which “the filed trademarks are either already in use, or have been prepared to a considerable extent to be used on certain designated goods/services, and the designated goods and /or services are only those in the Examination Guidelines for Similar Goods and Services or other publications.” Since applications that meet these new requirements* are highly unlikely to fall under reasons for refusal involving designated goods and services, applicants can hope that the average length of time it takes until the JPO makes final decisions (This total period of time is called “total pendency”,) can be significantly shortened. The JPO hopes that more applicants will use the system.

* For details on the requirements, please refer to “3. 3-1. Case(3)”.

1. Overview

The following provide more detailed information on the system of accelerated examinations/accelerated appeal examinations, although they are available in Japanese only:

2. Advantages of Requesting Accelerated Examinations/Accelerated Appeal Examinations

  • Compared to regular examinations/appeal examinations, applicants or demandants can obtain the results of their examinations earlier.
  • In 2017, the time it took the JPO to issue its first office action under the accelerated examinations system was 1.8 months on average from the date that accelerated examination was requested. This period of time is called the first-action pendency (FA pendency), and refers to the period of time it takes after applicants request accelerated examinations until the time when the JPO issues its first notices of examination results. The FA pendency at the JPO was significantly shorter for accelerated examinations than for regular applications.
  • In addition, in 2017, the time it took the JPO to issue its appeal decision was 2.7months on average from the date that accelerated appeal examination was requested and appeal proceeding became possible.

3. Accelerated Examination System for Trademarks

3-1. Trademark Applications Eligible for Accelerated Examinations

Trademark applications that fall under any of Cases (1) to (3) below are eligible for accelerated examinations, and this includes applications that have been already filed at the JPO. However, in order for applications that fall under (1) to (3) below to qualify, applicants (licensees) must be already using, or must have already prepared to a considerable extent to use, their filed trademarks for their designated goods and/or services in Japan.

Please note that, for the time being, applications for non-traditional trademarks, which are “motion trademarks,” hologram trademarks,” “color trademarks (trademarks consisting solely of colors),” “sound trademarks,” and “position trademarks,” are not subject to accelerated examinations at the JPO, in order to ensure a high level of examination quality due to the special nature of examinations required on these types of trademarks.

In addition, for the time being, applications for international application (designating Japan) are also not subject to accelerated examinations at the JPO.

Case (1): Applications in which the applicants (licensees) are already using, or have already prepared to a considerable extent to use, their filed trademarks for designated goods and/or services and who have an urgent need to acquire trademark rights.

* Applications deemed to have an urgent need to acquire trademark rights are those that fall under any of a) - e) below:

  • a) It is obvious that third parties are, without permission, either actually using or have prepared to a considerable extent to use, either the filed trademarks or trademarks that are similar to the filed trademarks of the applicants (licensees) on the applicants’ designated goods and/or services or on goods and/or services that are similar to the applicants’ designated goods and/services;
  • b) Applicants have received warnings from third parties in regard to the use of filed trademarks;
  • c) Third parties request to acquire the associated licensing rights;
  • d) Applicants have filed applications to register their trademarks at IP offices or governmental organizations other than the JPO; and
  • e) The trademarks filed by applicants are trademarks that are described in basic applications filed to register trademarks internationally under the Madrid Protocol System.

Requirement 1 and Requirement 2

Case (2): Applications designating only the goods and/or services on which the applicants (licensees) are already using their filed trademarks; or have prepared to a considerable extent to use their filed trademarks.

* If applicants have any goods and/or services on which the filed trademarks are not being used, or on which the filed trademarks are deemed not to have been prepared to a considerable extent to be used, the applicants are required to submit amendments to delete such goods and/or services from their applications either before or at the time when they request accelerated examinations. At latest, the applicants are required to submit amendments before selection of eligible applications for accelerated examinations.

Designated goods

Case (3): Applications in which applicants (licensees) are already using, or have prepared to a considerable extent to use, their filed trademarks for designated goods and/or services* and all designated goods and/or services are listed in the Examination Guidelines for Similar Goods and Services or in the other publications**.

* If the applicants have any designated goods and/or services that are not listed in the Examination Guidelines for Similar Goods and Services, or in the other publications listed below, the applicants are required to submit amendments to delete such goods and/or services from their applications either before or at the time when they request accelerated examinations. At latest, the applicants are required to submit amendments before selection of eligible applications for accelerated examinations.

** The publications eligible are the Examination Guidelines for Similar Goods and Services, the Regulations of the Trademark Act, and the International Classification of Goods and Services (Nice Classification)

Designated goods

3-2. Procedures for Requesting Accelerated Examinations

When applicants request accelerated examinations on their trademarks, they need to submit documents in writing, explaining their reasons and needs for accelerated examination.

Applicants are required to submit these documents in Japanese. If these documents are in other languages, the applicants need to attach Japanese translations thereof them.

  • (1) Who: Applicants or their representatives
  • (2) How: Either online or by submitting paper documents
  • (3) Timing: Any time on or after the date when they filed trademark applications
  • (4) Fees: None

Please refer to the following for further details, although they are available in Japanese only:

4. Number of Applications for which Accelerated Examinations Were Requested

(1) Changes in Number of Applications for which Accelerated Examinations Were Requested

Chart

(2) Number of Requests by Industrial Field (in 2017)

Chart

5. Accelerated Appeal Examination System for Trademarks

To appeal against examiners’ decisions of refusal, demandants are to submit documents in writing, explaining the reasons and needs for requesting accelerated appeal examinations. After the JPO conducts checks on appeals that are deemed to be eligible for accelerated appeal examinations*, a panel will start conducting appeal examinations immediately and advance appeal proceedings, in order to review and decide on the validity of examiners’ decisions of refusal.

* The following are not eligible for accelerated appeal examinations: oppositions to trademark registrations, trials for invalidation, and trials for rescission.

5-1. Appeals Eligible for Accelerated Appeal Examinations

Appeals against examiners’ decisions of refusal, which fall under any of cases (1) to (3) below, are eligible to undergo accelerated appeal examinations. This does not include cases in which registered trademarks cited in decisions to refuse trademark rights are involved in other appeal or trial cases pending at the JPO. However, in any of cases (1) to (3), demandants (licensees) are required to be already using, or have already prepared to a considerable extent to use, their filed trademarks for their designated goods and/or services in Japan.

Please note that, for the time being, appeals for non-traditional trademarks, which are “motion trademarks,” hologram trademarks,” “color trademarks (trademarks consisting solely of colors),” “sound trademarks,” and “position trademarks,” are not eligible for accelerated appeal examinations at the JPO, in order to ensure a high level of examination quality due to the special nature of examinations required on these types of trademarks.

In addition, for the time being, applications for international application (designating Japan) are also not subject to accelerated appeal examinations at the JPO.

Case (1): Appeals in which demandants (licensees) are already using, or who have prepared to a considerable extent to use their filed trademarks on designated goods and/or services; and who have an urgent need to acquire trademark rights.

* Appeals deemed to have an urgent need to acquire trademark rights are those that fall under any of a) - e) below:

  • a) It is obvious that third parties are, without permission, either actually using, or have prepared to a considerable extent to use, either the filed trademarks or trademarks that are similar to the filed trademarks of demandants or licensees, on the designated goods and/or services or on goods and/or services that are similar to the designated goods and/services;
  • b) Demandants have received warnings from third parties about the use of filed trademarks;
  • c) Third parties requested to acquire the associated licensing rights;
  • d) Demandants have filed trademark applications at IP offices or governmental organizations other than the JPO;
  • e) The trademarks filed by demandants are trademarks described in basic applications filed to register trademark internationally under the Madrid Protocol System.

Case (2): Appeals designating only goods and/or services on which demandants (licensees) are already using the filed trademarks, or have prepared to a considerable extent to use the filed trademarks.

* If the demandants have any designated goods and/or services on which the filed trademarks are not in use or have not been prepared to a considerable extent to be used, demandants are required to submit amendments to delete such goods and/or services from their applications either before or at the time when they request accelerated appeal examinations. At latest, the demandants are required to submit amendments before selection of eligible applications for accelerated appeal examinations.

Case (3): Appeals in which demandants (licensees) are already using, or have prepared to a considerable extent to use, their filed trademarks for designated goods and/or services* and all designated goods and/or services are listed in the Examination Guidelines for Similar Goods and Services or other publications noted below**.

* If demandants have any designated goods and/or services that are not listed in the Examination Guidelines for Similar Goods and Services or other publications, demandants are required to submit amendments to delete such goods and/or services from their applications before or at the time when they request accelerated appeal examinations. At latest, the demandants are required to submit amendments before selection of eligible applications for accelerated appeal examinations.

** The publications are: the Examination Guidelines for Similar Goods and Services, the Regulations of the Trademark Act, and the International Classification of Goods and Services (Nice Classification).

5-2. Procedures for Requesting Accelerated Appeal Examinations

When demandants request accelerated appeal examinations for appeals against examiners’ decisions of refusal, they need to submit documents in writing, explaining their reasons and needs for accelerated appeal examination.

Demandants are required to submit these documents in Japanese. If these documents are in other languages, the demandants need to attach Japanese translations thereof them.

  • (1) Who: Demandants or their representatives
  • (2) How: Online or by submitting paper documents
  • (3) Timing: At any time on or after the dates when appeals against examiners’ decisions of refusal were filed
  • (4) Fees: None

* For more details about the procedures, please refer to Guidelines for Accelerated Examinations/Accelerated Appeal Examinations (PDF: 1,307KB), although it is available in Japanese only.

[Last updated 25 September 2018]

Contact

For accelerated examinations:

Policy Planning and Research Section, Trademark Division,

Trademark and Customer Relations Department,

Japan Patent Office

E-mail :PA1400@jpo.go.jp

 

For accelerated appeal examinations:

Trial and Appeal Policy Planning Office (Trademarks), Trial and Appeal Division,

Trial and Appeal Department,

Japan Patent Office

E-mail :PA6B00@jpo.go.jp

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