Formal examination and substantive examination
When you apply for trademark registration, a formal examination will be conducted first.If there is an important defect such as the absence of the applicant’s name, the date of application will not be certified.In Japan, which adopts the first-to-file principle of first-come-first-served basis, it is very important to have the application date certified.
However, since it is an electronic application recently, important items, etc. are checked by the application software before filing, and the application itself is not possible, so there are few defects that are not certified on the filing date.
When the filing date is certified, formal matters such as whether the items are properly stated or whether the necessary prescribed fees are paid are reviewed, and the applicant is notified of an amendment order if an amendment is necessary.
If the formal requirements are satisfied, the substantive examination will be conducted by the JPO examiner approximately 6 to 9 months after the application to determine whether the applied trademark meets the requirements for registration.
What is substantive examination?
In the substantive examination, the JPO examiner checks the matters described in Article 15 “Examiner’s decision of refusal” of the Trademark Law and determines whether the trademark filed should be registered. If it is determined that it violates Article 15, the applicant will be notified of the reason for refusal.
The following describes the “reasons for refusal” as set forth in Article 15.
Requirements for trademark registration (Article 3)
Trademark used for the business of an applicant (Article 3 (1) column)
Article 3,1 contains the ” Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark “. It is stipulated that you will not be able to register unless you have a trademark that you use for your business.
For example, the following is not allowed to be used for your own work:
(1)In cases where it is obliged to have the national qualifications stipulated in laws and regulations in order to carry out the business related to the designated service, the applicant shall be responsible for the designated service from the name of the applicant, etc. described in the application. When it is impossible to confirm that the company is a legal entity that can perform business or that it has the national qualifications
(2)If the applicant does not intend to start using the trademark within 3-4 years after the application (until the time corresponding to 3 years after registration)
Is there distinctiveness (Article 3 item 1)
It is said that registration is not possible unless it has so-called “distinctiveness” as a trademark registration requirement in Article 3.1 of the Trademark Law.
The following are stipulated in Article 3.1 as not having “distinctiveness”.
| No. 1 the common name of the goods or services in a common manner |
| No.2 customarily used in connection with the goods or services |
| No.3 Descriptive Trademarks |
| No. 4 name of a juridical person |
| No.5 very simple and common mark |
| No. 6 a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person. |
Trademarks that have become prominent by use (Article 3, Paragraph 2)
As a result of the use of the trademark,if consumers are able to recognize the goods or services as those pertaining to a business of a particular person,it may be registered.
Unregistrable trademarks (Article 4 (1))
The examiner determines whether the trademark falls under the trademark that cannot be registered in Article 4(1).
These trademarks are broadly classified as follows.
■ Trademarks contrary to public interest
■ Trademarks that are confusing with other people’s trademarks
The specific items are as follows.
| No. 1 National flag, chrysanthemum emblem, etc. |
| No.2 Trademarks that are the same or similar as those specified by the Minister of Economy, Trade and Industry in the Coat of Arms of allies of the Paris Convention, etc. and other emblems |
| No.3 Trademarks the same or similar to those designated by the Minister of Economy, Trade and Industry in the representation of the United Nations and other international organizations |
| No. 4 Trademarks that are identical or similar to red cross marks |
| No. 5 A seal or symbol for the supervision or certification of the government or local public entity of a party to the Convention |
| No. 6 Trademarks that are the same or similar to those of prominent countries, etc. |
| No. 7 Trademarks that is likely to cause damage to public policy |
| No. 8 Trademarks including portraits, names, and prominent names of others |
| No. 9 Trademarks identical or similar to exposition awards |
| No. 10 A trademark that is the same or similar to a prominent trademark and is the same or similar to its designated goods. |
| No.11 Trademarks that are the same or similar to others’ registered trademarks |
| No.12 Trademarks identical to a registered defensive mark of another person |
| No. 14 Trademarks that are the same or similar to the name of the variety registered |
| No. 15 Trademarks that may cause confusion with goods and services of other people’s business |
| No. 16 Trademarks that is likely to mislead as to the quality of the goods or services |
| No.17 A trademark used for wine, etc. produced in a region other than the one in question |
| No. 18 A trademark consisting of only features of products, etc. that are specified by cabinet order. |
| No. 19 A well-known trademark in Japan or abroad that is used for illegal purposes |
Other reasons for refusal
Violation of regional collective trademarks registration requirements (Article 7-2, Paragraph 1)
In the case of a regional collective trademark application, the examiner will determine whether the application falls under the requirements for registration of a regional collective trademark, and if not, the examiner will notify the applicant of the reason for refusal.
Violation of requirements of prior application (Article 8, Paragraphs 2 and 5)
Article 8, Paragraph 2, “Article 8 (2) states “ Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on different dates, only the applicant who filed the application for. trademark registration on the earlier date shall be entitled to register the trademark in question. It is stipulated that only applicants who have applied for the application can receive registration.
In addition, if the first applicant cannot be determined by consultation in paragraph 5, “Only one applicant for trademark registration determined by a lottery in a fair manner performed by the Commissioner of the Patent Office may receive trademark registration.
If the trademark is filed in violation of these, the examiner will notify the applicant of the reason for refusal.
Violation of re-application period after cancellation of trademark registration (Article 51 (2), 53 (2))
Unless five years have passed from the date on which the decision to cancel the trademark registration is finalized, the registered trademark or similar service for the designated goods or designated services related to the trademark registration or similar goods or services ,you may not register your trademark or similar trademark.
If the trademark is filed in violation of these, the examiner will notify the applicant of the reason for refusal.I
Violation of the rights of foreigners (Article 77, Paragraph 3)
If a person who is not a foreign national who does not have an address or residence in Japan (for a corporation, a sales office) and does not have the right to file a trademark application in Japan has filed an application, the examiner will notify the applicant of the reason for refusal.
Those that cannot register trademarks under the provisions of the Convention (Article 15 (2))
In the case of an application for a trademark that cannot be registered in accordance with the provisions of the Convention is made,the examiner will notify the applicant of the reason for refusal.
Whether the trademark is specified (Article 5 (5))
If you intend to register a trademark for a special trademark, you must identify the trademark specifically as stipulated in the Ordinance of the Ministry of Economy, Trade and Industry.
If the trademark is not specifically identified, the examiner will notify the applicant of the reason for the rejection.
Single trademark on each application (Article 6)
An application for trademark registration shall be filed for each trademark and designate one or more goods or services in connection with which the trademark is to be used.(One-application multi-classification system )
In addition, the designation must be made in accordance with the goods and services classes specified by the Cabinet Order.
If the trademark is filed in violation of these, the examiner will notify the applicant of the reason for refusal.
Reference material
Trademark Law
(Examination by an examiner)
Article 14 The Commissioner of the Patent Office shall direct the examination of applications for trademark registration by an examiner.
(Examiner’s decision of refusal)
Article 15 Where an application for trademark registration falls under any of the following items, the examiner shall render a decision to the effect that the application is to be refused:
(i) the trademark pertaining to an application for trademark registration is not registrable pursuant to the provisions of Articles 3, 4(1), 7-2(1), 8(2), 8(5), 51(2) (including the case of its mutatis mutandis application under Article 52-2 (2)), 53(2) of this Act or Article 25 of the Patent Act as applied mutatis mutandis under 77(3) of this Act;
(ii) the trademark pertaining to an application for trademark registration is not registrable pursuant to the provisions of a relevant treaty; or
(iii) the application for trademark registration does not comply with the requirements provided in Article 6 (1) or 6(2).
(Requirements for trademark registration)
Article 3 (1) Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:
(i) consists solely of a mark indicating, in a common manner, the common name of the goods or services;
(ii) is customarily used in connection with the goods or services;
(iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;
(iv) consists solely of a mark indicating, in a common manner, a common surname or name of a juridical person;
(v) consists solely of a very simple and common mark; or
(vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
(2) Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person.
(Unregistrable trademarks)
Article 4 (1) Notwithstanding the preceding Article, no trademark shall be registered if the trademark:
(i) is identical with, or similar to, the national flag, the imperial chrysanthemum crest, a decoration, a medal or a foreign national flag;(ii) is identical with, or similar to, the coats of arms or any other State emblems (except national flags of any country of the Union to the Paris Convention, member of the World Trade Organization or Contracting Party to the Trademark Law Treaty) of a country of the Union to the Paris Convention (refers to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at the Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958 and at Stockholm on July 14, 1967; the same shall apply hereinafter), a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty designated by the Minister of Economy, Trade and Industry;
(iii) is identical with, or similar to, a mark indicating the United Nations or any other international organization which has been designated by the Minister of Economy, Trade and Industry;
(iv) is identical with, or similar to, the emblems or titles in Article 1 of the Act Concerning Restriction on the Use of Emblems and Titles of the Red Cross and Others(Act No.159 of 1947) or the distinctive emblem in Article 158 (1) of the Act Concerning Measures to Protect Japanese Citizens During Armed Attacks and Others (Act No.112 of 2004);
(v) is comprised of a mark identical with, or similar to, an official hallmark or sign indicating control or warranty by the national or a local government of Japan, a country of the Union to the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty which has been designated by the Minister of Economy, Trade and Industry, if such a trademark is used in connection with goods or services identical with, or similar to, the goods or services in connection with which the hallmark or sign is used;
(vi) is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest;
(vii) is likely to cause damage to public policy;
(viii) contains the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned);
(ix) is comprised of a mark identical with, or similar to, a prize awarded at an exhibition held by the national or a local government (hereinafter referred to as the “Government, etc.”) or by those who are not the Government, etc. but designated by the Commissioner of the Patent Office, or at an international exhibition held in a foreign country by the Government, etc. of the foreign country or those authorized thereby (except those used by the recipient of such a prize as part of his/her own trademark);
(x) is identical with, or similar to, another person’s trademark which is well known among consumers as that indicating goods or services in connection with the person’s business, if such a trademark is used in connection with such goods or services or goods or services similar thereto;
(xi) is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark(referring to goods or services designated in accordance with Article 6 (1) (including cases where it is applied mutatis mutandis pursuant to Article 68 (1)); the same shall apply hereinafter), or goods or services similar thereto;
(xii) is identical with a registered defensive mark of another person (referring to a mark registered as a defensive mark; the same shall apply hereinafter), if such a trademark is used in connection with designated goods or designated services relating to the defensive mark;
(xiii) is a trademark of another person (excluding those which had not been used by the said person for a period of one year or longer from the date the trademark right became extinguished) the right to which has been extinguished for a period of shorter than one year from the date of the extinguishment of the said trademark right (or the date on which a ruling to the effect that the trademark registration is to be rescinded or a trial decision to the effect that the trademark registration is to be invalidated is rendered; the same shall apply hereinafter) or a trademark similar thereto, if such a trademark is used in connection with the designated goods or designated services in connection with the trademark right of such other person or goods or services similar thereto;
(xiv) is identical with, or similar to, the name of a variety registered in accordance with Article 18 (1) of the Plant Variety Protection and Seed Act (Act No. 83 of 1998), if such a trademark is used in connection with seeds and seedlings of the variety or goods or services similar thereto;
(xv) is likely to cause confusion in connection with the goods or services pertaining to a business of another person (except those listed in items (x) to (xiv) inclusive);
(xvi) is likely to mislead as to the quality of the goods or services;
(xvii) is comprised of a mark indicating a place of origin of wines or spirits of Japan which has been designated by the Commissioner of the Patent Office, or a mark indicating a place of origin of wines or spirits of a member of the World Trade Organization which is prohibited by the said member from being used on wines or spirits not originating from the region of the said member, if such a trademark is used in connection with wines or spirits not originating from the region in Japan or of the said member;
(xviii) consists solely of a three-dimensional shape of goods or their packaging which is indispensable for such goods or their packaging to properly function; or
(xix) is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter) (except those provided for in each of the preceding items);