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Revision of the Trademark Examination Manual (effective since April 2, 2018)

Emi Aoshima (Ms.)

Requirements of the intent-to-use refusal have been relaxed since April, 2, 2018.

Previously, if the number of similarity group codes allocated to goods or services in one class is 8 or more (if retail services or wholesale services in Class 35, 2 or more), the Japan Patent Office (JPO) refused the application on the ground of lack of intent-to-use (the main paragraph of Article 3 (1) of the Trademark Act).

To resolve the refusal, you have to (a) submit evidence showing that the applicant is doing business in connection with the designated goods or services, (b) submit a declaration of intent-to-use and a simple business plan, (c) delete some goods or services by amendment, or (d) file a divisional application(s).

However, as there were many exceptions in the way the similarity group codes could be counted, the practice was complicated. Also, as the number of the similarity group codes allocated to one lot of goods/services differed, depending on the goods/ services, this practice was unfair. Moreover, there was a demand that applicants would like to designate many goods and services in one class for their house mark applications.

To make the practice simple and fair, under the new Trademark Manual, which has become effective since April 2, 2018, if the number of similarity group codes allocated to goods or services in one class is within 22, the JPO will not issue the intent-to-use refusal.

The new practice, however, is NOT applied to “retail or wholesale services” in Class 35. Therefore, if the number of similarity group codes allocated to retail services or wholesale services is 2 or more, the JPO will issue the intent-to-use refusal.

Also, the new practice is applied to pending applications filed before April 2, 2018 as well as applications filed on or after April 2, 2018.

Ex. 1: Goods and Services other than “retail services or wholesale services”

Ex. 2: Retail Services or Wholesale Services

Authors

Trademark & Design DivisionAssociates Patent Attorneys

AOSHIMA, Emi (Ms.)

[Practices]

Designs Trademarks

Other legal updates authored by AOSHIMA, Emi (Ms.)

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