Revision of the Accelerated Examination Guidelines (since February, 2017)

AOSHIMA, EMI (Ms.)

1.　Overview of the Accelerated Examination

The Japan Patent Office (JPO) has introduced the accelerated examination system since 1997, which except for non-traditional trademarks; covers namely color per se marks, sound marks, motion marks, hologram marks and position marks.
If an applicant applies for the accelerated examination of its trademark application or of its appeal trial against a decision of refusal for its trademark application and an examiner in charge (or trial examiners in charge) judges that the requirements of the accelerated examination are fulfilled, the trademark application or the appeal trial would be examined sooner than usual as follows:

*1 From filing a trademark application until a decision for registration or the first office action is issued.
*2 From filing an appeal trial until a decision is sent to an applicant.
*3 From a request for an accelerated examination until a decision for registration or the first office action is issued.
*4 From a request for an accelerated examination until a decision is sent to an applicant.
The above information is based on data in 2015 shown in the JPO 2016 statistics report.

2.　Revision of the Accelerated Examination Guidelines

To have an examination accelerated, in principle, an application has to fulfill the requirements, (1) an applicant or its licensee is using an applied-for mark or has prepared to use an applied-for mark to a considerable degree, in connection with any of the designated goods and services, and (2) an application needs to be registered on an urgent basis (the emergency requirement). The emergency requirement (2) has been relaxed since February, 2017 as follows:
(1) As for a case where an applicant has a plan to make a Japanese application a basic application of an international application filed with WIPO under the Madrid Protocol, the emergency requirement (2) has been fulfilled since February, 2017.
(2) As for a case where an application designates only goods and services shown in the annexed table of trademark enforcement regulations or examination guidelines for similar goods and services, and the alphabetical list of goods and services based on the Nice International Classification, the emergency requirement (2) has not been required since February, 2017.

Therefore, if any of the following requirements (1) through (3) are met; an accelerated examination will apply to such an application. The part shown in red is the February 2017 revision.

（1）(A) an applicant or its licensee is using an applied-for mark or has prepared to use an applied-for mark to a considerable degree, in connection with any of the designated goods and services, and (B) an application needs to be registered on an urgent basis (the emergency requirement).

If an applicant proves either of the following (a) through (d), the emergency requirement (B) will be fulfilled.

(a) A third party is using an applied-for mark or similar thereto in connection with goods or services for which an applicant or its licensee is using the applied-for mark or has prepared to use the applied-for mark, or similar thereto, or has prepared to use it in connection with them to a considerable degree.
(b) An applicant has received from a third party a cease and desist letter in regard to its use of an applied-for mark.
(c) A third party asks an applicant to grant a license for use of an applied-for mark.
(d) An applicant filed an application for an applied-for mark with a Patent Office overseas, or intergovernmental organization, in addition to the JPO and such overseas application is pending.
(e) An applicant has a plan to file an international application under the Madrid Protocol, based on an applied-for mark.

(2) Only goods and services for which an applicant or its licensee has already used an applied-for mark or has prepared to use it to a considerable degree are designated in an application.

(3) (A) An applicant or its licensee is using an applied-for mark or has prepared to use an applied-for mark to a considerable degree, in connection with any of the designated goods and services, and (B) only goods and services shown on the annexed table of trademark enforcement regulations, examination guidelines for similar goods and services, or the alphabetical list of goods and services based on the Nice International Classification are designated in an application.