Obtaining a Japanese Trademark Registration
in just 6 Months with a Request for Accelerated Examination
Attorney Le Quang Vinh – Bross & Partners
Email: vinh@bross.vn
Japan is probably one of the countries that has fastest speed of trademark examination in the world.[1] Bross & Partners would like to brief below the highlights regarding fast-track examination and accelerated examination in Japan.
1. Fast-Track Examination and Accelerated Examination
Different from the normal trademark examination procedure as mentioned in Section 2 below, the Japan Patent Office (JPO) is currently applying and implementing 2 mechanisms for expediting trademark application examination. The first one is called Fast-Track Examination and the other is Accelerated Examination.[2]
Fast-Track Examination is a mechanism operated by JPO that allows to speed up a trademark application examination, to shorten about 2 months compared to the normal trademark examination procedure if certain conditions are met. More specifically, upon no request for Fast Track Examination is required, such type of examination would be automatically applicable by the JPO if trademark applications in which goods/services listed on the Examination Guidelines for similar goods and services are designated. Those designated goods/services may be included in one of three sources: (a) the Examination Guidelines; (b) Regulation for Enforcement of the Trademark Act; or (c) International Classification of Goods and Services (Nice Classification). For example, an application in which designated service in Class 41 is “arranging and conducting of seminars” would be unqualified for fast track examination even though it is nearly identical with accepted designation is “arranging, conducting and organization of seminars” as listed on the Examination Guidelines for Similar Goods and Services.
Accelerated Examination is the mechanism that can apply to both procedures for trademark application examination and for trademark appeals or trials, provided that the applicant or complainant meets the following requirements:
(a) A request for accelerated examination is required
(b) An applied-for mark is already used for the designated goods or services, or preparations of the applied-for mark are considerably advanced; and
(c) Designated goods or services subject to the trademark application must be taken from the list of goods and services under the Examination Guidelines for Similar Goods and Services.
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Comparison
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Fast-Track Examination
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Accelerated Examination[3]
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Pendency for first office action
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Approximately six months from the date that the application for trademark registration was filed.
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1.8 months on average from the date that accelerated examination was requested
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Request
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Unnecessary
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Required
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Requirements
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Designated goods or services subject to the trademark application must be taken from the list of goods and services under the Examination Guidelines for Similar Goods and Services
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Two conditions must be met:
1. An applied-for mark is already used for the designated goods or services, or preparations of the applied-for mark are considerably advanced
2. Designated goods or services subject to the trademark application must be taken from the list of goods and services under the Examination Guidelines for Similar Goods and Services
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With our submission of a request for accelerated examination, Bross & Partners successfully assisted its client in obtaining a Japanese trademark registration no. 5914915 for “Ebisumo & device” in class 35 (as shown below) issued by the JPO on January 20, 2017 only after 6 months from the filing date July 26, 2016:
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2. Normal Trademark Examination Procedure
According to the 2019 Annual Report[4] issued by the JPO on July 12, 2019, there were a total of 184,483 trademark applications filed with the JPO in 2018, of which only 17,802 international registrations of trademark through the Madrid System designating Japan. Compared to 190,939 trademark applications filed in 2017, the number of trademark applications in 2018 decreased slightly by about 4%. Take a quick look at JPO's annual statistics below:
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The number of applications by foreigners accounted for about 21.4% with 39,209 applications, in which 4 foreign nationals accounted for the largest number of applications coming from the European Union (EU), the United States, China and South Korea, in which China rose to be the country with the largest number of trademark applications in Japan with over 10,000 applications.
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Thus, according to the JPO statistics, the average time counting from the filing date until the first office action is received is 6.3 months based on the 2017 statistical cycle. According to the cycle of 2018, this time increased to 7.9 months on average, making the average pendency for examination until grant of a trademark registration is 9.3 months.
Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties.
Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.
[1] By comparison, trademark substantive examination reports in most countries are usually completed in between about 12 and 24 months from the filing date. In Vietnam, for various reasons, practice shows that applicants often have to wait for about 22-24 months to receive such notices by the VNIPO, although the time limit prescribed by the IP Law is only about 12 months.
[3] According to the JPO statistics, in 2017 alone, there were 3,441 requests for accelerated trademark applications filed with the JPO compared to 1,503 requests filed in 2011.
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