JAPAN: New Fast-Track Examination System Applies Automatically to National Trademark Applications

Published: November 1, 2018

    International Classification of Goods and Services (a list of goods and services published by the World
    Intellectual Property Organization (WIPO));
b. Is not subject to any amendments of goods and services until an examiner has performed substantive
    examinations;

c. Has an actual filing date of October 1, 2018, or later;
d. Files direct with the JPO, not via an international application; and
e. Seeks to register a traditional mark(s).

The JPO does not require an extra government fee for Fast-Track Examination. Applicants should expect to receive a First Notice of Examination two months earlier than with the standard procedure, which typically takes eight months. The JPO will implement the Fast-Track Examinations system on an experimental basis, with a view to running it routinely.

The Expedited Examination option also remains available at an applicant’s request. If an application to register a trademark falls into one of the following categories, Expedited Examination may be requested:

Type 1: The Trademark Requires Prima Facie Urgency

Requirements:

Test A. You or a licensee are using a trademark, or have almost completed preparations to use a trademark (i.e. use will begin within three months in Japan) in connection with some goods/services claimed in the application; and
Test B. You or a licensee require “prima facie urgency”to register the trademark for some goods/services designated in a national application; and
Test C. You can prove prima facie urgency. For instance:

  • A third party is using or preparing identical or similar trademarks;
  • You or a licensee have received a cease and desist letter from a third party in connection with a trademark filed in Japan; or
  • A third party approaches you to obtain a license for a trademark filed in Japan.
Type 2: Claiming Exact Goods/Services in Use or in Preparation for Use

Requirements:

Test A. You or a licensee are using a trademark, or have almost completed preparations to use a trademark (i.e., use will begin within three months in Japan); and
Test B. You designate goods/services in a national application which are substantially or literally the same as those used or prepared for use in Japan.

Type 3: Specifications Claimed Are Identical to National Specification

Guidelines:
  
Test A. You or a licensee are using a trademark, or have almost completed preparations to use a trademark, (i.e., use will begin within three months in Japan) in connection with some goods/services claimed in the application; and
Test B. Your designated goods/services are identical to the descriptions which are illustrated in the Guideline of Examinations, the Rules to Implement Trademark Act, or the International Classification of Goods and Services.

The Expedited Examination process, like the Fast-Track Examinations, apply to national applications filed directly with the JPO, and for registrations of traditional marks.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association

Verifier

Ken Nakayama Sugimira & Partners Tokyo, Japan

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