Method for accelerating the register of your trademark in the Japan Patent Office

Method for accelerating the register of your trademark in the Japan Patent Office

ArticleNo. 02_0007

Contents of this article

              In this article, a patent attorney who is trademark professional explains the trademark registration in simple terms. If you are running a business, trademark registration will always be with you.  This article will provide you with the advantages of trademark registration, points of concern, the registration flow, and the like.

 

What is trademark registration?

              Trademark registration refers to the process of registering a trademark which indicates goods and/or services, with the Japan Patent Office to obtain trademark rights.  In order to register a trademark with the Japan Patent Office (JPO), you need to prepare and file a trademark application with the JPO, the application describing the trademark you wish to register and the goods and/or services you intend to use with the trademark.  If a third party is using a trademark that is similar or the same as your trademark, you can stop them based on your trademark rights. Therefore, in order to use your trademark for a long period of time to accumulate brand power (customer attraction power) in your business and to prevent the third party from using your trademarks, it is very important to obtain trademark rights through trademark registration.

 

Period required for trademark registration

              In Japan, the examination period for trademark registration takes about 10 months.  However, there are two systems that can shorten this period.  One is the fast-track examination system, and the other is the accelerated examination system, as shown below.

 

Examination

Period from application to first OA

Application Documents

Requirements

Normal Examination

About 10 months

None

None

Fast-Track Examination

About 6 months

None

All designated goods and services which are specified in the trademark application, being corresponding to "Standards for Examination of Similar Goods and Services", etc.

Accelerated Examination

About 2 months

Required

(1). Using the filed trademark for a part of the designated goods and services, or making considerable preparations to use it therefor.

(2). All designated goods and services which are specified in the trademark application, being corresponding to "Standards for Examination of Similar Goods and Services", etc.

(1). Using the filed trademark for a part of the designated goods and services, or making considerable preparations to use it therefor.

(2). Urgency for obtaining trademark rights is as shown below: (a) Unauthorized use of your filed trademark by a third party (preparation for use); (b) Third party's warning regarding use (preparation for use) of your filed trademark; (c) Third party's request for permission to use your filed trademark; (d) Foreign application pending for your trademark; and/or (e) Plans to file Madrid Protocol trademark application on the basis of your filed trademark in connection with a request for accelerated examination.

(1). Using the filed trademark for all of the designated goods and services, or making considerable preparations to use it therefor.

 

*  "Standards for Examination of Similar Goods and Services", etc. refers to "Standards for Examination of Similar Goods and Services"; "Appended Table of Enforcement Regulations of the Trademark Law (related to Article 6)"; and "International Classification of Goods and Services (Nice Classification).

 

Fast-track Examination System

              The fast-track examination system is a system that allows an applicant to shorten the period from the filing of the application to the date of the first examination result to about six months.  It needs to designate in the application for trademark registration goods and services that have already been disclosed in the "Examination Guidelines for Similar Goods and Services", etc. Compared to the normal examination period, which takes about 10 months, the fast-track examination period taking about 6 months is shorter, making it a system that should definitely be considered by those who wish to early obtain trademark rights to their trademark applications. In addition, the fast-track examination does not require any application documents other than the trademark application.  If the above conditions are met, the application will automatically switch from the normal examination to the fast-track examination, so there is almost no burden on the applicant.

 

Accelerated Examination System

              The accelerated examination system is a system that allows a significant reduction in the period from filing an application to receiving the results of the initial examination to about two months, provided that any one of the following conditions 1 to 3 is met. Compared to the fast-track examination system, the accelerated examination system is much stricter in terms of meeting any one of the conditions 1-3, and in addition to a trademark application, a document called "Statement of Circumstances Concerning Accelerated Examination" and evidence such as proof of use must be submitted. In addition to the application for trademark registration, a document called "Statement of Circumstances for Accelerated Examination" and evidence of use are required.

 

Condition 1: (1). The applicant is already using the filed trademark for a part of the designated goods and services, or making considerable preparations to use it therefor.; and (2). All designated goods and services which are specified in the trademark application, being corresponding to "Standards for Examination of Similar Goods and Services", etc.

 

Condition 2: (1).  The applicant is already using the filed trademark for a part of the designated goods and services, or making considerable preparations to use it therefor.; and (2). The applicant must have an urgency for obtaining trademark rights is as shown below: (a) Unauthorized use of your filed trademark by a third party (preparation for use); (b) Third party's warning regarding use (preparation for use) of your filed trademark; (c) Third party's request for permission to use your filed trademark; (d) Foreign application pending for your trademark; and/or (e) Plans to file Madrid Protocol trademark application on the basis of your filed trademark in connection with a request for accelerated examination.

 

Condition 3: (1). The applicant is already using the filed trademark for all of the designated goods and services, or making considerable preparations to use it therefor. 

Conclusion

              Compared to the regular examination, the fast-track examination can shorten the examination period by about 4 months, and the accelerated examination can shorten the examination period by about 8 months. From the perspective of accelerating the acquisition of rights to a trademark application, the conditions and procedures for accelerated examination are quite complicated, and fast-track examination is relatively more user-friendly. If you wish to have your trademark fast-tracked in Japan, please consider these systems.

 

Brand Shogun

              Brand Shogun Services enables you to file your trademark application with Japan Patent Office (JPO) at minimum cost and to register it because omitting a similar trademark search service and personnel costs.  For example, you can file a lot of trademark applications at a reasonable price.  Furthermore, Brand Shogun has Japan patent attorneys who are familiar with Japan Patent Article and Prosecution against JPO.  Therefore, Brand Shogun is the most recommendable service of a trademark application and please consider that. If you have any questions, please do not hesitate to contact us.

 

ArticleNo. 02_0007

 

 

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