SHIN-EI PATENT FIRM, P.C.
特許業務法人 信栄特許事務所

Agenda





The number of trademark applications in Japan
Average time of FOA
Average ime of trial period
Fast track examination
AI Examiner?
Refusal for non-distinctiveness
Similarity of Trademarks
Similarity of Goods and Services
Amendment of Japanese Design Law (Trade Dress)

The number of trademark
applications in Japan


Nowadays, the number of trademark applications
including international trademark applications (Madridroute) is increasing in Japan.
Year2013

2014

2015

2016

2017

Applications

117,675

124,442

147,283

161,859

190,939

Even if the number of applications in the name of Ikuhiro
Ueda and Best License company are deducted from theabove number, the number of trademark applications areincreasing in Japan.

Average time of FOA

In Japan, the average time for trademark examination isgetting longer.
Year2013

2014

2015

2016

2017

Months

4.3

4.1

4.3

4.9

6.3

As of April 2019, we expect that the average time fortrademark examination in 2019 will be longer than theaverage time in 2017.
We estimate that it will take 8-9 months for examiners toterminate the examination.

Average time of trial period

In Japan, the average time of trial period for trademark
applications is getting shorter.

Year2013

2014

2015

Months

7.1

7.2

6.0

Fast track examination







The “fast track examination” program of the Japan Patent
Office has been available since October 1, 2018.
If applicants designate Japanese standard description
goods/services only, “fast track examination” willautomatically be applied to such applications. However,"fast track examination" is not automatically applied for
applications via Madrid route and applications for nontraditional trademarks.
The examination term is expected to shorten
approximately 2 months if “fast track examination” isapplied.
There are no additional official fees for “fast trackexamination."

AI Examiner ?

Japan Patent Office is now developing AI robots to support theexamination for trademark applications.



If development of AI robots is completed, the Japan Patent
Office will try to make the AI search device marks and examine
for clarity of goods/services.

Refusal for non-distinctivenessJapan Patent Office (JPO) has relaxed the criteria of refusals
based on non-distinctiveness since April 2016. Especially,trademarks for catchphrases are less likely to be refused at
examination stage.
On the other hand, it has been argued that the scope ofprotection becomes narrow due to the relaxation. Therefore, theJPO amended the criteria of refusals based on nondistinctiveness (i.e. the criteria of judgement about whether
applied marks are descriptive or suggestive) on January 2019.
Before the amendment, only if JPO found the fact that the marks
were broadly used in actual, JPO would refuse the applications.
However, after the amendment, even if JPO couldn’t find thefact that the marks were broadly used in actual, JPO can refuse
the applications.

Refusal for distinctiveness(Case study for catchphrase marks)
The following trademarks have been registered without anyrefusals.

TrademarkClassApplicant

Result

For the ocean，For life

3,5,29,30,31,32,3
5,36,39

Maruha Nichiro Corporation

Registered

Just for your best

7,9

JTEKT Corporation

RegisteredInnovation for Culture

1,5

Nissan Chemical Corporation

Registered

EDUCATION FOR LIFE

36

Internationale des Coiffeurs deDames I.C.D. IntercoiffureInterbeauté-MondialRegistered

エコロジーフォーライフECOLOGY FOR LIFE

16Corelex Shinei Kabushiki
KaishaRegisteredSimilarity of Trademarks

Since a few years before, the number of citation refusals
has tended to be decreasing in Japan. The most of citedtrademarks were identical or almost identical trademark.

The criteria of the citation refusal may become slightly
stricter in the near future because some companies claimthat it should be slightly stricter.

However, at present, it seems that the possibility ofcitation refusals is relative lower in Japan than in othercountries.

Similarity of Trademarks

For example, JPO allowed the following trademarks tocoexist (goods and services are similar).

Senior Application

ClassJunior Application

ClassＥＰＯＣＨ
エポック

16

ＥＰＯＣＨ－ＯＮＥ

16,35

9,42

ＣａｒｅＲｉｎｇｓ

9,35,38,42

ｉ Ｒｅｎａｉｓｓａｎｃｅ

9,42ＣＯＳＭＯ

7.

7

モア
ＭＯＲＥ

3Ｂｉ－ｍｏｒｅ

39

Case study for Similarity of Trademarks

With respect to the similarity judgement, JPO tends toweigh pronunciations more than appearances andconcepts. Therefore, if you wish to register trademarks
whose pronunciation is the same as the pronunciation ofprior trademarks, it is difficult to register such trademarks.
However, some trademarks have been registered evenwhen they have a pronunciation that is the same as thoseof prior marks.

Case study for Similarity of Trademarks-Dissimilar cases- (Same pronunciations)Applications

Cited trademarks

ＲＵＣＡ
Class 25

Class 35

Ｑｒｏｓｓ
Class 12Class 12

快音くん
*The pronunciation is KA-I-ON-KUN.
*快 means “comfort”, 音 means“sound” and くん is a post-nominal title.
Class 10
*Goods and services are similar

快温くん*The pronunciation is KA-I-ON-KUN.
*快 means “comfort”, 温 means“temperature” and くん is a postnominal title.
Class 10Case study for Similarity of Trademarks-Similar cases- (Same pronunciations)Applications

Cited trademarks

コータック(“コータック” is pronounced as “KO-TAKU” in Japanese.)Class 1

Class 1

Class 36(“炭家” is pronounced as “SU-MI-KA”in Japanese.)Class 36
*Goods and services are similar

Similarity of Trademarks(Summary)

JPO tends to raise citation refusals if the JPO finds priormarks that have a pronunciation that is same as thepronunciation of the applied trademarks.
In generally, it is relative hard to get registrations fortrademarks whose pronunciation is same as thepronunciation of prior marks.
However, especially, if the applied trademarks are
dissimilar conceptually to the concept of the prior marks,
there may be chance to overcome citation refusals.

Similarity of Goods and ServicesWith respect to the similarity judgement for Goods andServices, the JPO has adopted the goods/services
similarity code system (subclass system).
In other words, if the goods/services are in the same
subclass, Examiners judge that the goods/services aresimilar.
At the examination stage, in general, many arguments
about the dissimilarity of goods which fall under the samesimilarity code are unlikely to be persuasive. However,while unlikely, some arguments can be persuasive at theappeal stage.

Case study for Similarity ofGoods and Services
Goods and Services (subclass)

Goods and Services (subclass)

ResultClass 32 vegetable juices [beverages]（32F04）

Class 30 almond paste（32F04）

Dissimilar

Class 28 pinball machine （24B02）

Class 24 billiard cloth（24B02）

Dissimilar

Class 9 home video games （24A01）

Class 20 cradles （24A01）

Dissimilar

Class 10 gloves for medical purposes （17A04）

Class 25 gloves as clothing （17A04）

Dissimilar

Class 10 electrodes for physiotherapy（10D01）

Class 5 bracelets for medical purposes（10D01）

Dissimilar

Class 10 catheters （10D01）

Class 5 bracelets for medical purposes（10D01）

SimilarClass 21 Wearable containers with tube and suction port (19Ａ04)

Class 21 water bottles(19Ａ04)

Dissimilar

Similarity of Goods and Services(Summary)JPO tends to judge goods and services as being similar if
the goods/services are in the same subclass.

At examination stage, it is hard to overcome the refusal if
the goods/services are in the same subclass.

However, if selling areas, class of consumers, and so on
are different, or the goods are pretty unique, there may
be chance of overcoming the refusal (especially at theappeal stage).

Amendment of Japanese Design Law(Trade Dress)
The Japanese Design Law will be amended. The amended
Design Law will allow registration of an external
appearance and an interior design.
For example, the following interior design will beregistered under the Amended Japanese Design Law.

On the other hand, “trade dress” still can’t be registeredunder the Japanese Trademark Law.

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