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Japan Patent OfficeThe JPO Extensively Reviews and Revises the Trademark Examination Guidelines for the First Time in 45 Years

The Japan Patent Office (JPO) extensively reviewed and revised the contents and structure of the Trademark Examination Guidelines, which serve as the guidelines for trademark examination, in order to respond to societal changes and to enable applicants to more accurately predict the results of trademark examinations, and to make trademark examination clearer and more understandable for users.

1. Trademark Examination Guidelines

The basic concepts (including interpretation and operation) of the application of the Trademark Act in the performance of practical duties in trademark examination are summarized in the Trademark Examination Guidelines, which are classified as general guidelines for trademark examination and are broadly used in order to deepen trademark applicants’ and the applicants’ representatives’ understanding of the practical duties performed at the JPO.

The current Trademark Examination Guidelines have been partially revised many times since the first version of the Guidelines was issued in 1971, in order to respond to matters such as revisions of laws, societal changes, and changes in the needs of users. However, extensive overall reviews and revisions of the Guidelines had not been made. Also, recently, users have been requesting that the Guidelines be made clearer and more understandable, and the environment surrounding commercial transactions has been changing substantially. Therefore, an overall review and revision of the Guidelines has been deemed important, and the JPO is making efforts for such reviews and revisions under a two-year plan for FY 2015 and 2016.

2. Key points of the reviews and revisions

The JPO has repeatedly held discussions on the revision of the Trademark Examination Guidelines at meetings of the Working Group on Trademark Examination Standards, which was established under the Trademark System Subcommittee of the Intellectual Property Policy Committee under the Industrial Structure Council, and has made the following revisions based on the results of such discussions.

  • 1) It was clearly specified that cases where applicants are required to hold national qualifications, including those specified in laws and regulations in order to use their trademarks and it is obvious that the applicants do not hold such qualifications, fall under the principal paragraph of Article 3 (1) of the Trademark Act. (Principal paragraph of Article 3 (1) of the Trademark Act)
  • 2) Concerning titles of publications including books, specific approaches to cases where trademarks make consumers recognize matters such as the contents of such goods were clearly specified. (Item (iii) of Article 3 (1) of the Trademark Act)
  • 3) Specific approaches to matters such as cases where trademarks only make consumers recognize that the trademarks indicate advertisements for goods or services, company philosophies, or management policies in a common manner were clearly specified. (Item (vi) of Article 3 (1) of the Trademark Act)
  • 4) Concerning the distinctiveness of trademarks acquired through the use of the trademarks, matters such as the identification of trademarks with goods and services were clearly specified in light of recent judicial precedents. (Article 3 (2) of the Trademark Act)
  • 5) Examples of and the criteria for making decisions on the handling of trademarks that are identical with, or similar to, famous symbols of entities including the national government or local governments were clarified. (Item (vi) of Article 4 (1) of the Trademark Act)
  • 6) Other
    • (i) Examples of cases that fall under each of the items of Article 3 (1) of the Trademark Act were changed in light of recent judicial precedents.
    • (ii) The terminology was made consistent.

3. Release and effective date of the revised version

The revised Trademark Examination Guidelines have been released on the JPO website.
http://www.jpo.go.jp/torikumi/t_torikumi/shinsa_kijun_kaitei.htm (in Japanese)
Also, the revised Guidelines are to be applied in trademark examinations conducted on April 1, 2016 and thereafter.

Release date

March 22, 2016

Division in Charge

Trademark Examination Standards Office, Trademark Division, Trademark and Customer Relations Department, JPO

Ministry of Economy, Trade and Industry1-3-1 Kasumigaseki, Chiyoda-ku, Tokyo 100-8901, Japan Tel: +81-(0)3-3501-1511
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