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Japan Patent Office The JPO Extensively Reviewed and Revised the Trademark Examination Guidelines under a Two-year Plan

This fiscal year, as in the preceding fiscal year, the Japan Patent Office (JPO) extensively reviewed and revised the contents and structure of the Trademark Examination Guidelines 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 their 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 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. In recent years, 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 FY2015 and FY2016.

2. Key points of the reviews and revisions

The JPO has repeatedly held discussions on the full revision of the Trademark Examination Guidelines, in light of the changes in the environment surrounding commercial transactions and the needs of users, as well as the trends in recent judicial precedents, 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. In terms of the contents, definitions, explanations, and case examples are added in each provision.
  2. In terms of the structure, titles are added and terminology is made consistent throughout the guidelines.

Specific revisions are as follows.

  1. With regard to public interest organizations (Article 4, paragraph (1), item (i) to item (v) of the Trademark Act), registered varieties (Article 4, paragraph (1), item (xiv) of the Trademark Act) and places of origin of wines, etc. (Article 4, paragraph (1), item (xvii) of the Trademark Act), examples of subject marks are indicated, criteria for determining similarity are added and corrected, and interpretation of expressions in the provisions are clarified.
  2. With regard to violation of public policy, types of cases falling under Article 4, paragraph (1), item (vii) of the Trademark Act and case examples are clearly indicated by reference to judicial precedents.
  3. With regard to names of other persons, the scope of other persons applicable in Article 4, paragraph (1), item (viii) of the Trademark Act and the criteria for determining the famousness of another person's name, etc. are clearly indicated by reference to judicial precedents.
  4. With regard to the determination concerning the similarity (similarity in appearance, pronunciation and concept; similarity concerning goods and services; similarity concerning combined trademarks; and, consideration of transaction status), basic ideas are indicated, criteria for making determination on each element of appearance, pronunciation and concept are clarified and case examples are added and reviewed.

    Furthermore, it is clearly stated that when the applicant and the right holder for the cited trademark have a controlling interest and the right holder has given consent for the registration of the relevant trademark, such cases should be handled in a different manner from that prescribed in Article 4, paragraph (1), item (xi) of the Trademark Act.
  5. With regard to well-known trademarks of other persons (Article 4, paragraph (1), item (x) of the Trademark Act), confusion in connection with the goods or services (Article 4, paragraph (1), item (xv) of the Trademark Act), trademarks identical or similar to another person's well-known trademark used for unfair purposes (Article 4, paragraph (1), item (xix) of the Trademark Act), the purport of the criteria is clarified and the structure of these provisions is reviewed.
  6. For improving convenience in the management of trademark rights, it is newly prescribed that when the same person files an application for the same trademark, only in the case where all of the designated goods or services pertaining to said application are the same as the designated goods or services pertaining to the prior application (or prior registration), a notice should be given to explain the grounds for rejecting the newly filed application as "being in violation of the purport of Article 3 of the Trademark Act."

3. Release and effective date of the revised version

The revised Trademark Examination Guidelines are released on the JPO website. External Site Link(in Japanese)

The revised Guidelines are to be applied to trademark examinations to be conducted on or after April 1, 2017.

Release date

March 28, 2017

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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