METI
Font Size Change
S
M
L
Easy Web Browsing tool

Scope of Applications for Trademark Registration Entitled to the Accelerated Examination and Accelerated Appeal Examination Systems to be Expanded

The Japan Patent Office (JPO) hereby announces that it has revised the Guidelines for Accelerated Examination and Accelerated Appeal Examination for Trademarks and expanded the scope of applications entitled to those examination systems. On February 6, 2017, the JPO will start the acceptance of requests for the accelerated examinations or accelerated appeal examinations of entitled applications.

1. Background

In September 1997, the JPO introduced the operation of the accelerated examination and accelerated appeal examination systems targeting applications filed for trademark registration to meet the public needs for swiftly acquiring a decision on the applications involving counterfeits or infringements, and to address the globalization of economic activities. Under these systems, applicants are entitled to file a request for accelerated examinations or accelerated appeal examinations, e.g., through a submission of the Explanation of Circumstances Concerning Accelerated Examination. In response, following the check as to whether or not such applications satisfy requirements of entitlement, the JPO quickly starts the proceedings for accelerated examinations or accelerated appeal examinations of entitled applications in priority to other applications filed under the normal examination system and advances the subsequent proceedings without delay.

The JPO hereby announces that under the revised systems, it has added the following two types of applications to the scope of applications entitled to such examinations, aiming to meet users’ diverse needs for examination proceedings and also to expand the opportunities for using the operation of these systems.

2. Newly entitled types of applications

1) Basic applications filed for international registration under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol)*

As a requirement for a successful international registration of a trademark under the Madrid Protocol, applicants need to file international applications with the International Bureau of the World Intellectual Property Organization (WIPO) based on the first applications filed with the JPO (basic applications) or based on the trademarks that have already been registered (basic registration). Concerning such basic applications, the JPO will expand the scope of applications entitled to the accelerated examination system or accelerated appeal examination system to newly include basic applications “scheduled” to be filed as international applications.

Previously, the accelerated examination and accelerated appeal examination systems covered basic applications that “had already been filed” as international applications. However, as the number of applications filed under the Madrid Protocol is increasing year after year, the needs of the Madrid Protocol users are growing for early notice from the JPO of the examination results concerning basic applications scheduled to be filed as international applications. To address this situation, the JPO decided to expand the scope of applications entitled to the systems.

2) Applications designating only goods or services listed in the Table of the Ordinance for Enforcement of the Trademark Act, the Examination Guidelines for Similar Goods and Services or other rules

In filing an application for trademark registration, applicants are required to designate certain goods or services concerning which the trademark involving the application is used. The JPO provides lists of representative goods and services in the Table of the Ordinance for Enforcement of the Trademark Act, the Examination Guidelines for Similar Goods and Services, and the Nice Classification—an international classification system for goods and services— to exemplify such goods and services (hereinafter referred to as “listed example goods”). Concerning this requirement of designation, the JPO will expand the scope of applications entitled to the accelerated examination and accelerated appeal examination systems to include the applications designating listed example goods alone, since such applications explicitly designate certain goods or services.

Under the former accelerated examination and accelerated appeal examination systems, applicants who had filed applications designating listed example goods alone were required to explain an urgent need for acquiring a trademark right or to describe the current use of or the progress in preparation for use of all designated goods or services. However, under the revised systems, the JPO will approve the entitlement of the applications designating listed example goods alone, regardless of such urgent need for acquiring a trademark right or current use of all designated goods or services, aiming to meet users’ diverse needs for examination proceedings.

*Note: To acquire the entitlement to the accelerated examination and accelerated appeal examination systems, applicants who intend to file any applications covered by either Item 1) or 2) above should satisfy a requirement that “at least one of the designated goods or services should be one that the applicants have been using or concerning which the applicants have been advancing preparations for use to an appropriate degree.”

3. Future actions

The JPO will endeavor to revise the operation of these systems as necessary while accurately ascertaining users’ needs for examination proceedings.

Appendix

Release date

February 6, 2017

Division in Charge

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
Copyright Ministry of Economy, Trade and Industry. All Rights Reserved.