4

Desirable Examination System for the Registration ofTrademarks for Retailing as Service Marks and theIntroduction of the Consent System

A research study committee was formed to discuss the "introduction of the consent system," "registration of
trademarks for retailing as service marks," and "necessity to make a specific review of the current examination
guidelines" in relation to the former two issues in Japan. As for the introduction of the consent system, aconclusion was reached as follows: (1) a quasi-complete type consent system should be introduced by operation;(2) consent should be allowable only regarding Section 4(1)(xi) of the Trademark Law; (3) it is necessary toreview the Examination Guidelines for Similar Goods and Services and reinforce the application of theprovision of the principal sentence of Section 3(1). As for the registration of trademarks for retailing as service
marks, a conclusion was reached as follows: (1) the Trademark Law should be revised so as to provide thatretail services shall be treated as services under the Trademark Law; (2) retail services should be defined asoffering consumers the convenience of purchasing goods, such as provision and display of an assortment ofgoods, excluding sale of goods; (3) starting protection only in respect of "general retail services" should beconsidered; (4) along with the enforcement of the ninth edition of the Nice Classification, the registration of
trademarks for retailing as service marks should be put into force in respect of applications filed on January 1,
2007 and thereafter.

Ⅰ Background for the Discussionof the Introduction of the Consent
System and the Registration ofTrademarks for Retailing as
Service Marks
Creating brand values has become an
important task in corporate activities. The
Trademark System Subcommittee of theIntellectual Property Policy Committee of theIndustrial Structure Council is discussing adesirable form of the trademark system as awhole that is aimed to protect trademarks as ameans to present brand values symbolically. In
this discussion, careful consideration is required
for studying the "treatment of trademarks forretailing as service marks" and "introduction of
the consent system in the examination of
trademarks that are to cause similarity andlikelihood of confusion," which are closely related
to the current examination process.
A research study committee was formed to
discuss the registration of trademarks forretailing as service marks, the introduction of theconsent system, and the necessity to make aspecific review of the current examination
process.

Ⅱ Discussion on the Introductionof the Consent System
1

Issues to Be Discussed Regarding theIntroduction of the Consent System:

What should a desirable consent system inJapan be?

IIP Bulletin 2005

[1] Introduced by law(a) What right should consent be based on?
(b) Where a trademark is registered with theconsent of the owner of the earlier registeredtrademark, is it registered despite its similarity to
the earlier registered trademark or is it
registered as being not similar to the earlier
registered trademark?
(c) Is consent allowable regarding relative
grounds for refusal other than those provided in
Section 4(1)(xi)?
(d) Is a trademark identical to the earlier
registered trademark registrable?
(e) Is it required to record in the register thatconsent has been given?
(f) What is the relationship between the consent
and the examiner's decision?
(g) Is any person other than the trademark
owner who has given consent also prevented fromfiling an opposition or demanding a trial forinvalidation on the basis of the trademark cited in
the notification of grounds for refusal?
(h) Is the trademark owner who has given
consent or third party who has given consent
allowed to file an opposition or demand a trial forinvalidation on the basis of other trademarks of
his own?
(i) Supposing that the consent system is
introduced only under Section 4(1)(xi), if a
trademark is registered with the consent of theowner of the earlier registered trademark, will it
be allowable to file an opposition or demand a trial
for invalidation by citing that earlier registeredtrademark based on other grounds for refusal?
(j) Where X owns a registered trademark A andY owns another registered trademark A' with X's● 24 ●

consent, what will the consequences be if X or Y
uses a trademark similar to their own registeredtrademark?
(k) Where X owns a registered trademark A andY owns another registered trademark A' with X'sconsent, if X files an application for registration ofa trademark A'' that is similar to both A and A',
will the application for registration of A'' berefused for the reason of A'?
(l) Where X owns a registered trademark A andY owns another registered trademark A' with X'sconsent, if Z intends to register a trademark A''
for which the application is refused for the reason
that A'' is similar to both A and A', will Z need toobtain consent from X and Y?
(m) Where X owns a registered trademark A andY owns another registered trademark A' with X'sconsent, will X need to state that X shall not
exercise his exclusive right to prevent Y fromusing his registered trademark and vice versa?
(n) Is it possible to give consent at anytime?
(o) Is it possible to withdraw consent while theapplication is pending or after the registration is
made?
(p) What measures can be taken to cope with theissue of "compensation"?
(q) Should we consider specific measures toprevent an adverse effect of the concurrent
registration of similar trademarks due to theintroduction of the consent system?
(r) Upon the introduction of the consent system,
will it be necessary to give consideration toindustries that are negative about the
introduction of the system?
(s) Isn't it quite possible to introduce a
substantially complete type consent system byoperation?
[2] Introduction by operation(a) When registering a trademark with theconsent of the owner of the earlier registeredtrademark, is it appropriate to construe thetrademark as not being similar to the earlier
registered trademark?
(b) Is it possible to respect the consent of theowner of the cited trademark to the greatest
extent in the examination process?
[3] Others(a) How should a written consent be treated?
(b) What if a written request is submitted todefer the examination for the reason that consent
negotiation is underway?
(c) Should we take measures to review the
Examination Guidelines for Similar Goods andServices and cope with registered trademarks not
in use by refusing applications designating allclasses?
(d) How should we treat the request for easing
the requirements for making amendment tochange the gist of the trademark for which
registration is sought?
(e) What measures should be taken against
trademark brokers?
2

Opinions on Discussion Items(1) Opinions of the Trademark Committee of
the Japan Patent Attorneys Association(JPAA)[1] Introduced by law(a) Consent should be based on the exclusive
right of the proprietor of the earlier registeredtrademark.
(b) In accordance with the provision of Section
4(1)(xi), the trademark to be registered with theconsent of the owner of the earlier registeredtrademark should be construed to be "similar to
the earlier registered trademark but not liable tocause confusion with it." Consequently, legal
revision will be necessary.
(c) Consent should be allowable regarding
trademarks that fall under any relative grounds
for refusal.
(d) A trademark that is identical to the earlier
registered trademark and is used in respect of thegoods or services covered by the earlier
registered trademark shall not be registeredbecause it is liable to cause confusion.
(e) The existence of consent should be disclosed
in gazettes and recorded in the register.
(f) Even if a trademark is registered with theconsent of the owner of the earlier registeredtrademark, the examiner should, in order toclarify the necessity of consent, determine
similarity between them and carry out theexamination based on such determination.
(g)-(i) Filing an opposition and demanding a trial
for invalidation is allowable.
(j) X may exercise his exclusive right on Y andvise versa.
(k) The application for registration of trademark
A'' will be refused for the reason of registeredtrademark A'.
(l) The application for registration of trademark
A'' will be refused unless consent is obtained fromboth X and Y.
(m) There is no such necessity.
(n) Consent should be allowable anytime.
(o) Consent cannot be withdrawn after thedecision of registration is made.
(p) Whether or not compensation may be
demanded should be determined according to thebusiness practices.
(q) We should consider applying the provisionsof Section 24-4 and Section 52-2.
(r) There is no such necessity.
(s) It is impossible to introduce a complete typeconsent system by operation.

● 25 ●IIP Bulletin 2005

[2] Introduction by operation(a) The trademark should be registered as being
not similar to the earlier registered trademark.
(b) Though it is possible to require such respect
under the Examination Guidelines, the issue iswhether or not such operation will be completely
performed.
[3] Others(a) Consent should be given in writing with thesignature and seal of the authorized person.
(b) The examination may be deferred only for alimited period. It should be provided that consent
will be valid if it is obtained by the time ofregistration.
(c) Efforts should be made to review the
Examination Guidelines for Similar Goods andServices and consider how to describe thedesignated goods or services, separately from theissue of the consent system.
(d) The requirements should be reviewed.
(e) This issue depends on morality andappropriate operation of the trademark system.
(2) Opinions of the Trademark Committee of
the Japan Intellectual Property Association(JIPA)[1] Introduced by law(a) Consent should be based on the trademark
right arising from the earlier application.
(b) The purpose of the consent system is toregister a trademark that is not liable to cause
confusion with the earlier registered trademark interms of origin and therefore deemed not to be
similar to it, while taking into consideration
opinions of the parties who are most informed of
the actual conditions of transactions.
(c) Consent should be allowable only regarding
Section 4(1)(xi).
(d) If two trademarks are deemed to be identicalto each other from common sense, the later
trademark should not be registered even with theconsent of the owner of the earlier registeredtrademark.
(e)(f) The existence of consent should be
disclosed and clearly stated.
(g) Filing an opposition and demanding a trial forinvalidation is not allowable. Some members saythat persons other than the trademark owner who
has given consent should not be prevented fromfiling an opposition or demanding a trial forinvalidation.
(h) Filing an opposition and demanding a trial forinvalidation is allowable.
(i) Filing an opposition and demanding a trial forinvalidation is not allowable. Some members saythat persons other than the trademark owner who
has given consent should not be prevented fromfiling an opposition or demanding a trial for

IIP Bulletin 2005

invalidation.
(j) X may exercise his exclusive right on Y andvise versa.
(k) The application for registration of trademark
A'' will be refused for the reason of registeredtrademark A' unless consent is obtained from Y.
(l) The application for registration of trademark
A'' will be refused unless consent is obtained fromboth X and Y.
(m) There is no such necessity.
(n) Consent should be allowable anytime.
(o) Consent can be withdrawn while theapplication is pending.
(p) It is not necessary to provide that nocompensation shall be demanded.
(q) Weshouldconsidermeasuresthat
correspond to the provisions of Section 24-4 andSection 52-2.
(r) There is no such necessity because those
who are negative about the consent system will
not have to give consent.
(s) There is no need to adhere to theintroduction by law as far as we can establish aconsent system that is in accordance with the
purport of the trademark law and is effective.
[2] Introduction by operation(a) The committee is in agreement with theopinion that trademarks should be registered ifthey are not liable to cause confusion because ofconsent.
(b) It is necessary at least to require suchrespect under the Examination Guidelines.
[3] Others(a) The committee desires for a written consent
to be made in a simple format that contains
minimum information.
(b) The examination should be deferred only fora reasonable period.
(c) The Examination Guidelines for Similar
Goods and Services should be reviewed
periodically. Measures should also be taken tocope with registered trademarks not in use byrefusing applications designating all classes, but
careful consideration is necessary.
(d) Thecommittee
requirescarefulconsideration in this respect.
(e) There appears to be no necessity to takespecial measurers against trademark brokers
upon the introduction of the consent system.
(3) Opinions on the major items presented
at the research study committee[1] Introduced by law(b)Concerning the opinion that the trademark
to be registered with the consent of theowner of the earlier registered trademark● 26 ●

should be construed to be "similar to theearlier registered trademark but not liable tocause confusion with it."
Under the current law, such construction
cannot be accepted. In this respect, legal revision
is inevitably necessary.
Concerning the opinion that the trademark
to be registered with the consent of theowner of the earlier registered trademark
should be construed to be "not similar to theearlier registered trademark."
It would be theoretically possible to construethat there is no similarity if a trademark isformally similar to the earlier registeredtrademark but is not liable to cause confusion
with it. According to such construction, no
problem would arise from registering a trademarkthat is not similar to the earlier registeredtrademark.
(d) A trademark that is identical to the earlier
registered trademark and is used in respect of thegoods or services covered by the earlier
registered trademark shall not be registered even
if consent is obtained.
(o) Consent cannot be withdrawn after the
trademark is registered and the right isestablished.
3

Overseas Consent Systems(1) Consent system is not available: Australia,etc.
(2) (i) Reservation type consent system isadopted: Norway, etc. (by law); United States, etc.
(by operation)(ii)
Complete type consent system is adopted:
United Kingdom, etc.
(3) Examination is conducted only in respect ofabsolute grounds for refusal: OHIM, etc.
4

Introduction of the Consent System inJapan(1) Basic points of the introduction of theconsent system(i) Purpose of the introduction of the consent
systemThe consent system should be introduced asa means to complement the examination
conducted by the examiner ex officio, so as toensure that similarity between trademarks will be
determined as more appropriate according to theactual conditions of transactions.
(ii) Contents of the consent system① In the following cases, the trademark is
obviously likely to cause confusion and therefore
shall not be registered even if consent isobtained.
(a) Where the trademark is identical (or deemed

to be identical from common sense) to the citedtrademark and is used in respect of the goods orservices covered by the cited trademark.
(b) Where the cited registered trademark is wellknown or famous.
② Consent shall be allowable only regarding
Section 4(1)(xi).
(2) Model cases of the consent system(i) To what extent will the examiner be boundby the consent?
A practical resolution to this issue would beto adopt a quasi-complete type consent system,
which is in-between a pure complete type consent
system and a pure reservation type consent
system. Under this compromise system,
trademarks shall be registered if consent isobtained, except for those falling under the cases
mentioned in (1)(ii)①(a) or (b) above.
(ii) Should the consent system be stipulated bylaw?
① Introduction of a quasi-complete typeconsent system by operation
By uniform operation as provided under the
Examination Guidelines, trademarks, except for
those falling under the cases mentioned (1)(ii)①(a) or (b) above, shall be registered if consent isobtained. More specifically, if consent is obtained
from the owner of the cited registered trademark,"the trademark for which registration is soughtshall be registered as being not similar to thecited trademark."② Introduction of a quasi-complete typeconsent system by law (along with theintroduction of the concept of likelihood ofconfusion in that of similarity)
By stipulating that trademarks, except for
those falling under the cases mentioned in (1)(ii)①(a) or (b) above, shall be registered if consent isobtained, the "concept of likelihood of confusion"is introduced in the provisions of Section 4(1)(xi)of the current Trademark Law so as to establish aquasi-complete type consent system. Morespecifically, if consent is obtained from the ownerof the cited registered trademark, "the trademark
for which registration is sought shall be
registered as being similar to the cited trademark
but not liable to cause confusion with it."
(3) Direction of the discussion on theconsent system(i) The majority opinion in the committee wasthat a quasi-complete type consent system should
be introduced by operation, and then if any
problems occurred, legal revision and othermeasures should be considered.
A quasi-complete type consent system canalso be introduced by law along with the● 27 ●IIP Bulletin 2005

introduction of the concept of likelihood ofconfusion because, if the concept of "a trademarkthat is so similar as to cause confusion" isintroduced in the overall framework of theTrademark Law, a consent system will be
introduced smoothly by law.
(ii) Issues to be discussed for the operation of
the consent system① It is not necessary to set a special period forconsent negotiation.
② The fact that consent has been given should
be disclosed in gazettes or the IPDL.
③ In a written consent, it will suffice to state "Iconsent to the registration of the trademark in
the application."(iii) Issues to be discussed upon the introductionof the consent system① The Examination Guidelines for Similar
Goods and Services should be revised.
② The application of the provision of theprincipal sentence of Section 3(1) should be
reinforced.

Ⅲ Discussion on the Treatment ofTrademarks for Retailing as
Service Marks
1

Issues to Be Discussed Regarding theRegistration of Trademarks for Retailingas Service Marks

Issue 1
(1) Contents of retail services and treatment oftrademarks therefor(a) Is it necessary for goods and services under
the Trademark Law to satisfy the requirement of"being able to be an independent object ofcommercial trade"?
(b) Isn't it reasonable to understand that anenvironment has recently been created in which
services aimed at offering customers convenience,such as provision of an assortment of goods in aparticular store, can be recognized as a type ofservice that has independent economic value?
(c) Is it appropriate to specify the contents ofretail services as "services aimed at offering
customers convenience, such as provision anddisplay of an assortment of specific goods,"
excluding "sale of goods"?
(d) Do retail services include "services aimed atoffering customers convenience via the Internet"?
(e) Do retail services only include "general retailservices" or also include "specialized retailservices"?
(f) Is legal revision necessary?
(g) Are transitional measures necessary?
(2) Discussion on how to describe thedesignated services covered by trademarks forretailing as service marks(a) What right is granted in respect of a service

IIP Bulletin 2005

mark for "retailing"?
(b) If "retail services" do not include "sale ofgoods," how should retail services be described?
(c) How should the designated services be
described?
(d) What are specific examples of the descriptionof the designated services covered by trademarks
for retailing?
Issue 2
Verification of the relationship between how
to designate goods or services covered bytrademarks and how to define the trademark andthe use of trademark(1) Where a dispute arises from the use of a
trademark, is there any difference between agoods mark and a service mark in terms of themethod of proof?
(2) With respect to the registration of
trademarks for retailing as service marks, is it
possible to include not only "general retailing" butalso "all acts that can be deemed to be services"in the scope of objects of protection?
Issue 3
(1) How should similarity be determined
between services covered by registrable
trademarks for retailing and other goods orservices? How should similarity be determined
between services covered by registrable
trademarks for retailing and other services forretailing?
2

Opinions on the Discussion Items(1) Opinions of the Trademark Committeeof the JPAA
Issue 1(1)(a) The substance of retail services is to"provide an assortment of goods with the aim ofoffering customers the convenience of purchasing
goods," and the compensation for such services is
added to the price of goods purchased byindividual consumers who enjoy the services.
Based on this recognition, retail services can berecognized as the "act of providing others with
benefits, which is capable of being an independent
object of commercial trade."(c) "Sale of goods" refers to the act of assigning
goods to customers for value, and services of"retailing" refer to the services aimed at offering
customers, for value, the convenience ofpurchasing goods.
(d) The definitions mentioned in (c) shall apply
to "services aimed at offering customers
convenience via the Internet."(e) There is no necessity to distinguish generalretailing and specialized retailing as designatedservices covered by registered trademarks.
(2)(a) If retail services are construed as"provision of an assortment of goods with the aim● 28 ●

of offering customers the convenience ofpurchasing goods," the scope of rights to be
granted in respect of a registered trademark
would depend on the scope of such services.
(b)-(d) It should be allowable to describe thedesignated services as "retailing of…" or"wholesaling of…"
Issue 2
(1) Whether a trademark is used in respect ofthe designated goods or in respect of thedesignated services is irrelevant to whether it isa goods mark or a service mark.
(2) The substance of "retailing of goods" is to"provide an assortment of goods with the aim ofoffering customers the convenience of purchasing
goods," and this is not only applicable to "generalretailing."
Issue 3
(1) As provided under the Trademark Law, some
services may be similar to goods and some goods
may be similar to services. In the examination
process, determination of similarity between
services and goods is deemed to be an issue ofSection 4(1)(xv) rather than Section 4(1)(xi) andhandled as such. This also applies to thedetermination of similarity between retailservices and goods.
(2) Opinions of the Trademark Committeeof JIPA
Issue 1(1)(a) The provision in parentheses of Section
2(1)(ii) does not preclude the possibility of
construing "trademarks for retailing" as service
marks.
(b) Trademarks for retailing serve as marks bywhich customers can distinguish and select laboror benefits provided for them, in particular,
through the provision and display of anassortment of goods and customer relations, andthey
perform
fundamental
functionsoftrademarks in the same manner as ordinary
service marks, such as indicating the origin ofservices, guaranteeing the quality of services,
and advertising services. In this respect,trademarks for retailing have property value thatis worthy of protection as service marks in which
reputations of individual retailers are embodied.
There is no substantial problem if "independent
tradability" is considered flexibly from theperspective of whether a trademark used in
respect of an act has property value that is worthyof protection as a trademark in which the act issymbolized.
(c) "Retailing" can be defined as "a series ofservices provided in the course of sale of goods
by the seller for customers with the aim ofoffering them the convenience of purchasing
goods, such as provision and display of anassortment of goods and customer relations."(d) "Retailing" via the Internet can also be
defined as "a series of services provided in thecourse of sale of goods for customers with theaim of offering them the convenience ofpurchasing goods, such as provision and display ofan assortment of goods and unique customer
relations based on the nature of cyberspace."(e) It may be appropriate, for a start, to grantregistration in respect of "general retailing" asstatutory registrable services.
(f) Even if registration were granted to
trademarks for retailing as service marks, thecurrent provision of Section 2(1) could be read asapplicable and there could be no necessity torevise the definition of the "use" (Section 2(3))
arising therefrom. However, it is worthy of
consideration to provide that, for confirmation,"retailing" shall be treated as services under the
Trademark Law.
(g) If registration were granted only in respectof "general retailing" as statutory registrable
services, it would be suffice to revise the attachedtable of the Trademark Law, as for problems that
could be solved through interpretation. There
would be no need to take other special measures,such as transitional measure.
(2)(c) The committee is in disagreement withdescribing the designated services merely as"retail services," but finds no need to discuss theuse of the term "retailing."(d) As designated services, general retailservices may be described in the form of ① "Bprovided at A" or ② "B provided by A." In theform of ①, A can be filled in with the name of astore that does not remind people of any
particular goods, such as "department store," andB can be described as "the bringing together, forthe benefit of others, of a variety of goods(excluding the transport thereof), enablingcustomers to conveniently view and purchasethose goods." In the form of ②, A can be filled inwith the name of a sales method that does notremind people of any particular goods, such as"catalogue selling," and B can be described in thesame manner as in the form of ①.
Issue 3(1) If registration were granted only in respectof "general retailing" as statutory registrable
services, it may be reasonable to preclude thenecessity of cross search without further
consideration in this respect.
(3) Opinions on the major items presented
at the research study committee
Issue 1(1)(a) Some members were of the following
opinion. "Even if retail services are required to be
tradable independently, it cannot be regarded as● 29 ●IIP Bulletin 2005

capable of being in itself a normal object ofcommercial trade; therefore, a suggestible
measure would be to regard retail services as an
object of commercial trade by operation without
further consideration in this respect, or if it is
impossible, legal revision would inevitably benecessary."(b) Some members were of the following opinion.
"Increasing the values of Japanese brands as
economic resources is recommended in theIntellectual Property Strategic Program. It would
be appropriate for us to discuss whether or not
retailing is eligible for protection from thisperspective. Providing a rich assortment of goods
at a convenience store is surely a valuable service,and the trademark used in respect for suchservice should be protected. Furthermore, forinstance, consumers are convinced that genuine
products are always available at Mitsukoshi, andsuch authority is expressed in their wrapping
paper. Assuming this, such services can also bedeemed to be valuable."(c) Some members were of the following opinion.
"The major point of treating trademarks for retailservices as service marks is that the substance ofretail services is to provide an assortment ofgoods for consumers. It is recommended to
exclude sale from the scope of retail services
according to the international trends in describing
services." "It does not matter whether or not
retail services includes sale. This does not affectpractices, leaving the necessity of legal revision
as the only issue to discuss."(d) Some members were of the following opinion.
"If it is only aimed at satisfying needs, it would
suffice to grant registration only in respect ofgeneral retailing."
Issue 3
(1) Some members were of the following opinion.
"As for retail services at department stores, there
is no need to determine similarity between
trademarks for retail services and trademarks forgoods, irrespective of whether or not sale isincluded in the scope of retail services.""Similarity should, in principle, be determined,
irrespective of whether or not sale is included in
the scope of retail services."
3

Overseas Service Marks for Retailing(1) Retail services are excluded from the scopeof services: Germany, etc.
(2) Retail services are included in the scope ofservices:① Retail services are accepted broadly as
designated services: Australia, etc.
② Retail services are described by industry ormode relating to retail services, such as"department store," "retail services at department
store," and "retail services of particular goods":

IIP Bulletin 2005

the United States, etc.
③ Retail services are described as defined in
the eighth edition of the Nice Classification, "thebringing together, for the benefit of others, of avariety of goods (excluding the transport
thereof), enabling customers to conveniently
view and purchase those goods": the United
Kingdom, etc.
4

Registration of Trademarks for Retailingas Service Marks(1) Services under the Trademark Law
Services under the Trademark Law must be"able to be independent objects of commercial
trade."(2) Independence of retail services
In order to grant registration to trademarks
for retail services, it would be reasonable torevise the Trademark Law so as to provide that"retail services shall be treated as services under
the Trademark Law."(3) Contents of retail services (whether or not"sale" are included)
Protection under trademarks for retailservices is needed in respect of "provision anddisplay of an assortment of goods." Furthermore,
if retail services were considered to include"sale," it would be difficult to distinguishtrademarks for retail services from trademarks
for goods that have been recognized as marks
used upon sale. Considering these matters, itwould be reasonable to limit the scope of retailservices that are eligible for trademark
registration
to"offeringconsumers
theconvenience of purchasing goods, such asprovision and display of an assortment of goods."(4) Whether protection should be afforded only
in respect of "general retail services" or also inrespect of "specialized retail services"
Consideringthatprotection
undertrademarks for retail services is needed only inrespect of "general retail services," protection
should start only in respect of "general retailservices," and whether or not this policy isappropriate should be subject to public comment.
(5) Necessity to determine similarity between aservice mark and a goods marks relating to retailservices in the examination process
There is no need to determine similarity if
protection under trademarks for retail services isafforded only in respect of "general retailservices."(6) Necessity to determine similarity between
services marks relating to retail services in theexamination process
Assuming that protection is afforded only inrespect of "general retail services," two views
would be argued: (i) all services that fall under
the category of general retail services should be● 30 ●

deemed to be similar with one another; and (ii)services that fall under the category of generalretail services should be deemed to be similar or
not similar depending on the contents of theservices.
(7) Description of the designated services forretail services
As the designated services, retail services
should be described without using the term
"retail" so as to avoid confusion with goods marks,
and it should be described with an expression
such as "offering the convenience of purchasing
goods" instead. Further consideration will beneeded as to a specific range of general retailservices.
(8) Date of enforcement
Along with the enforcement of the ninth
edition of the Nice Classification which willcontain changes in explanatory notes, it will beappropriate to enforce registration of trademarks
for retailing as service marks in respect ofapplications filed on January 1, 2007 andthereafter.
(9) Necessity of transitional measures
Under the conditions that protection isafforded only in respect of "general retailservices," sale is not included in retail services,
and it is not necessary to determine similarity
between a service mark and a goods mark relating
to retail services in the examination process,minimum transitional measures would suffice.
However, further consideration should be needed
as to the concrete contents of such measures.

50; examples of descriptions of retail services as
designated services; operational issues as to thenecessity of transitional measures.
（Senior Researcher: Seiji Uchiyama）

Ⅳ Conclusion
The research study committee discussed thepossibility of introducing the consent system andgranting registration to trademarks for retailingas service marks, and reached the conclusion,
shown in II.4 and III.4. The following issues
remain with respect to the consent system: Since
it is impossible to cope with registered trademarks
not in use only by refusing applications designating
all classes, other measures should be considered;
Whether or not it is appropriate to make a reviewof the Examination Guidelines for Similar Goods
and Services (or whether or not it is possible torequire considerable workload and costs,
including those for changing the computer system,from the Patent Office over a short period oftime), which is said to be a prerequisite for
introducing the quasi-complete type consent
system. The following issues remain with respect
to retail services: matters that affect the basis of
the trademark system, such as the scope of effectof trademark rights in respect of trademarks forretail services and the scope of acts that might bedeemed to be infringement, as well as the scopeof the use of a trademark provided under Section● 31 ●IIP Bulletin 2005