Trademark Service Japan
The JPO bids the summer farewell with some mid-year resolutions: The office announces its vision of becoming an organization with enthusiastic people who can flexibly and quickly respond to changes in the IP environment.
This is going to be interesting …
The Japanese Patent Office (JPO) has lately published the most recent trademark statistics. In 2008, 119,185 applications were received. This is the lowest number in five years. The number of applications is equivalent to 83% of the volume received during the previous year. 100,243 trade marks were registered which is an increase of 4% compared with 2007.
The 2008 Revised Patent Act, Design Act and Trademark Act included the extension of the period for filing an appeal against an examiner’s final decision of rejection of an application. The new periods have become effective starting on April 1, 2009.
The revision extended the period for appeals against the rejection of patent, design and trademark applications, as well as the period for filing an appeal against an examiner’s final decision of rejection for a dismissal of an amendment for Japanese design and trademark applications for Japanese applicants from 30 days to three months.
For non-Japanese applicants the changes are the following:
1. For patents, according to the old law, the period for filing an appeal against an examiner’s final decision of rejection is a maximum of 90 days (a basic 30-day period with an option for a 60-day extension) plus another 30 days to file an amendment after the request for an appeal has been made. The total timeframe to file an amendment was 120 days (90 days + 30 days).
The revised provision extends this period from 90 days to four months (three months with an option for a one month extension). Applicants should take note that under the previous law the applicant could submit an amendment 30 days after the appeal was made. The new regulation however requires that the amendment is submitted concurrently with the request for an appeal within the four month period.
2. Regarding designs and trademarks the period for filing an appeal against an examiner’s final decision of rejection was 90 days (basic 30-days plus a 60-day option for an extension). The new provision provides a period of three month, which is not extendable.
The Japanese Patent Office (JPO) did not accept geographical names as trademarks until 2006, when the Trademark Act was amended to allow for the registration of regional collective trademarks denoting the geographical origin of products. According to figures recently published, 873 regional trademarks have been registered since. The system seems to be widely unknown among foreign applicants, as only four out of 873 trademarks belong to foreign applicants (”Canada Pork”, “Indian Darjeeling”, “Jamaican Blue Mountain Coffee” and “Parma Prosciutto”).
A Japanese regional collective mark of reknown is Kobe beef from the Hyôgo prefecture. Other examples for recently registered regional collective trademarks are Sendai Miso Paste or Yokohama China Town.
Under Japanese law, geographical names can be registered as collective marks for certain goods, if those goods are well known products of a distinct geographical area.
Considering the fact that Japanese consumers attach great importance to the quality and origin of products, there seems to be a lot of unused potential for marketing regional specialty food.
The Accelerated Examination System was introduced on September 1, 1997 in Japan. It is designated to protect the interest of an applicant in cases when an urgent registration of the trademark is required for certain reasons (e.g. conflicts with third parties).
Statistics show that in 2007, a typical trademark application took 6.9 months to be registered. In cases where the Accelerated Examination System is applicable, the time is shortened to an average of 1.3 months.
However, the requirements for an Accelerated Examination System were quite strict:
The applicant had to already use the applied trademark or had to be in preparation to use the trademark, and — more importantly — there had to be a specific necessitiy for the accelerated examination. The latter was assumed in cases where a third party had already begun using the applicant’s trademark without permission, or if a third party had warned the applicant against using this trademark and similar cases.
As a result, the Accelerated Examination System was only applied to a very limited number of cases (about 0.3% of all trademark applications in 2007).
A revised system will be implemented starting on February 1, 2009 by dropping the second requirement. Now the Accelerated Examination System is applicable to trademarks which are already being used by the applicant, or when considerable preparations for such use have already been made.
