Amendment of practice about a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1)
Under the Japan Patent Office’s practice, in a case where a trademark application covers a broad range of goods and services in a Class, the Examiner will issue a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1) so that the Examiner can confirm whether the applicant has been conducting business regarding at least one item of each of the similar group codes of the goods and services or intends to conduct business regarding at least one item of each of the similar group codes of the goods and services within three to four years from the application date (within three years following the registration) in Japan.
The practice was amended as of April 2, 2018. The main points of the amendment are as follows:
[Old Practice]
In a case where a trademark application covers 8 or more similar group codes (categories) of goods and services in a Class, an Examiner issued a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1).
[New Practice]
In a case where a trademark application covers 23 or more similar group codes (categories) of goods and services in a Class, an Examiner will issue a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1).
[Old Practice]
Although, for example, the service “Providing entertainment” is covered by 16 similar group codes (41E01 41E02 41E03 41E04 41E05 41F01 41F06 41G01 41G02 41G03 41G04 41K01), since the service is a single description, under the Japan Patent Office’s practice regarding the Principal Paragraph of Article 3 (1), the service was deemed to be covered by 1 similar group code, not 16 similar group codes.
[New Practice]
The number of the similar group codes of the service “Providing entertainment” (41E01 41E02 41E03 41E04 41E05 41F01 41F06 41G01 41G02 41G03 41G04 41K01) is simply counted as 16.
[Old Practice]
In a case where an applicant already submitted a declaration of intention to start using a trademark in another application, the applicant was not allowed to forgo submitting a declaration.
[New Practice]
In a case where an applicant already submitted a declaration of intention to start using a trademark in another application, the applicant is allowed to forgo submitting a declaration by indicating the number of the previous application and the name of the declaration submitted before.
This new practice has been applied to all pending trademark applications as of April 2, 2018.
Takashi ISHIDO