The JPO has been improving the speed and quality of patent and trademark examinations. In fact, they have stated their aim to be the fastest in the world, and the recent publication of related statistics confirms Japan is achieving more timely trademark applications.
This brief update looks at the JPO’s results in Trademark First Action (FA) pendency. We also share the JPO’s update on the Trademark Fast Track Examination progress, which is an essential part of accomplishing the gains in speed.
Kimura & Partners writes regularly on notable updates to Japanese IP law. Our focus is on Patent and Trademark law of relevance to the SME market seeking strong IP protection in Japan and globally. We have a long history of supporting Japanese SMEs in Japan, and globally, using our unique approach to client relationships and “fighting on the IP Battlefield”.
JPO Sources Used in this Article.
The JPO is right on track to achieve the target of timely trademark examinations! In 2019, the JPO set a target of reducing the first action (FA) pendency and the total pendency to 6.5 months and 8 months respectively in light of recent rising trademark applications followed by a growing queue for examinations. The mark is to be reached by the end of the current fiscal year (FY 2022), thereby securing timeliness of trademark examinations.
We will do the utmost to ensure the goal is accomplished on time!
Latest Results and Statistics in Trademark Pendency
As stated by the JPO, in 2021 the FA Pendency and the Total Pendency index values on average were 8.0 months and 9.6 months respectively. Speedier examinations thus far have been achieved through combined measures, including “fast track examination,” available for any applications which designate goods or services listed in the prescribed tables.
As a result of further strengthening and streamlining the examination system to prevent increasingly long examination periods, the number of primary examination notifications (FAs: First Actions) in 2021 increased by 23.3% from the previous year.
Fast Track Examination Update
The fast track examination is a key part of the speedier overall results noted in this article. Specifically, the examination process on average falls from 10 months for regular applications to 6 months for Fast Track examinations.
Let’s look at the required conditions for Fast Track, and key details as set out by the JPO.
Note that there are no extra fees required for JPO Fast Track applications.
Applications that satisfy the following requirements shall be subject to the fast track examination:
- (1) An application for trademark registration in which only the goods or services published in the “Examination Guidelines for Similar Goods and Services” “Regulation for Enforcement of the Trademark Act” or “International Classification of Goods and Services (Nice Classification)” (hereinafter referred to as the “goods or services indicated in the guidelines, etc.”) are designated at the time of filing; and
- (2) An application for trademark registration with respect to which no amendment of the designated goods or designated services has been made until the commencement of the examination.
- * Applications filed for non-traditional trademarks, some three-dimensional trademarks (trademarks that represent the exterior or interior of stores, offices and facilities, or trademarks that require “Detailed Description of Trademark”), regional collective trademarks and international applications under the Madrid system are excluded.
- *If goods or services other than the “goods or services indicated in the guidelines, etc.” such as the “ Goods/service name (only Japanese or English) adopted by examination” published in the “Goods/Service Name Search ( External link )” in the Japan Platform for Patent Information (J-PlatPat)are designated, the relevant application shall be ineligible.
- *Even though the difference in indication between the designated goods or services and the goods or services indicated in the guidelines, etc. is slight, the relevant application shall be ineligible.
Example: With respect to the indication of Class 41 “arranging, conducting and organization of seminars” (Examination Guidelines for Similar Goods and Services), the designated service is Class 41 “arranging and conducting of seminars” → Ineligible
- *Applications filed on or after February 1, 2020, shall be subject to this operation. Also applications subject to Fast track examination submitted before January 31, 2020 will be examined approximately two months earlier than regular examination.
For the goods and services guidelines, please refer to the following links.
* Goods and services published as [reference] in the Examination Guidelines for Similar Goods and Services are also covered (because they are goods and services published in the “International Classification of Goods and Services (Nice Classification)”).
Operations and JPO Procedures, etc. for Applications Subject to Fast Track Examination
- (1) Extract of applications subject to fast track examination
An application for trademark application which satisfies the requirements set forth in 2. above shall automatically be subject to fast track examination.
However, some applications may require time depending on the case, same as applications undergoing regular examination.
- (2) Indication in Trademark Gazette, etc.
It will not be indicated whether or not the relevant application is subject to fast track examination in the Trademark Gazette, etc.
Trademarks are an essential part of your overall IP business strategy.