The Japan Patent Office (JPO) announced in March that some revisions would be made to the Trademark Examination Manual on 2 April, 2018.
Main points of the revision are as follows:
- Changing the criteria for issuance of an office action relating to intention of use.
- Revision of the examination criteria for non-traditional trademarks (To make the practice more clear).
- Revision of treatment of the marks consisting of signs with historic, cultural or traditional value.
- Revision of the requirement to be an applicant of a regional collective mark.
Among these four, the first will have the biggest impact on pending and future applications.
Until 31 March, 2018, if goods or services in more than seven sub-groups are designated in one International Class, an office action was issued and the applicant was required to show intention of use of the mark. Moving forward, such an office action will be issued only when there are goods or services in more than twenty two sub-groups other than for retail services in Class 35. As a result of this change, it is unlikely that an office action relating to the intention of use will be issued. For retail services in Class 35, however, an office action will be issued if retail services in two or more sub-groups are listed.
The revised criteria will apply to all pending applications and applications filed in future.
The revisions made to points 2-4 further clarify some criteria in the Examination Manual. For example, a mark consisting of or containing a famous picture will be rejected based on Article 3 Section 1 Paragraph 3 or 6 (descriptiveness), or Article 4 Section 1 Paragraph 7, 10, 15 or 19 (bad faith or likelihood of confusion) depending on the situation.
We will monitor the implementation of these revisions.