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October 2024 [Legal] Newsletter

October [Legal] Newsletter

Japan Patent Office: [Trademark] Key points for filing a trademark application that will not be rejected

 The Japan Patent Office has published a guide aimed at first-time trademark applicants that clearly explains the key points to avoiding rejection in a trademark application. The guide divides the process from application to registration into five steps, and for each step, it introduces common reasons for rejection (reason why a trademark cannot be registered) and the key points to avoid them.

1. There are 5 steps to trademark registration!

Step 1

Deciding on logo mark and naming (trademark)

★Common reasons for rejection★

"The trademark is not distinctive!"(Each item of Article 3, Paragraph 1 of the Trademark Act)

Distinctiveness refers to the ability of a logo or name (trademark) to distinguish one's goods or services from those of others. The presence or absence of distinctiveness is judged in relation to the goods or services in which it is used. For example, if the designated goods are fruits, the trademark "BANANA" is judged to be not distinctive.

☆Points☆

If the trademark includes characteristics of a product or service, it is advisable to make the trademark highly original (distinctive).

 

Step 2

Designation of goods and services for which the trademark is used

★Common reasons for rejection★

There is a problem with the product/service description!(Article 6, Paragraphs 1 and 2 of the Trademark Act)

"The description of the goods/services is not clear" is the most common reason for rejection. The goods/services must be described clearly and in the correct category.

☆Points☆

It is a good idea to choose the products and services to be included in your application from those listed on the patent information platform J-PlatPat (https://www.j-platpat.inpit.go.jp/).

 

Step 3

Check for similar registered trademarks

★Common reasons for rejection★

"There is a similar registered trademark!"(Trademark Law Article 4, Paragraph 1, Item 11)

If the trademarks are similar and the goods and services are similar, a notice of refusal will be issued.

☆Points☆

Before filing an application, it is a good idea to check J-PlatPat to see if there are any similar registered trademarks.

 

Step 4

Preparation of application documents and filing

★Common reasons for rejection★

"Specifying a wide range of products and services"(Article 3, Paragraph 1 of the Trademark Act)

The trademarks that can be registered are limited to the goods and services that are actually or are planned to be handled. In the examination of a trademark, if an applicant (1) specifies a wide range of goods and services in one class, or (35) specifies multiple retail services in Class XNUMX, a notice of refusal will be issued to confirm whether the applicant actually plans to handle the trademark.

☆Points☆

If you are specifying a wide range of goods and services, it is a good idea to prepare documents to submit in addition to your application, such as a letter of intent to start using the trademark.

 

Step 5

Flow after application

★Please be careful★

The term of a trademark right can be renewed every 10 years. If there is a possibility of renewal after 10 years, it is important not to forget the deadline for paying the renewal fee.

☆Points☆

If you are unsure about renewal management, you may wish to ask the Japan Patent Office's notification service or a patent attorney's office to manage it for you.

 

Summary

In such cases, please consult an intellectual property expert or patent attorney.

・If you cannot find a label that matches the product or service you handle on J-PlatPat

・When a trademark contains a figure or logo and it is difficult to search for prior trademarks on J-PlatPat

・If you are unsure whether the trademarks are similar

- If you find a registered trademark that is similar to yours and has similar products or services

・When it is difficult to determine whether the designated goods and services cover a wide range of areas

If you are planning to do business overseas

There are other points to be aware of, and if you have any concerns, we recommend that you consult with an intellectual property expert or patent attorney.

Source: "Explaining how to avoid trademark applications being rejected! How do you file a trademark application? 4th Edition" (Japan Patent Office)

URL: https://www.jpo.go.jp/resources/report/sonota-info/document/panhu/shutugan_shien.pdf

(September 2024, 9. Part of the document has been summarized and used by our office.)

 

The Ministry of Finance announced the status of the seizure of intellectual property infringing goods at customs in the first half of 2024.

On September 2024, 9, the Ministry of Finance announced on its website the status of the seizure of counterfeit brand-name goods and other intellectual property infringing items at customs offices nationwide in the first half of 6.

Overall, the number of import censors in the first half of 18,153 was 16.2 (up 2022% from the same period last year), a new record high. The background to this is that, with the enforcement of the revised Customs Act in October 10, counterfeit goods shipped from overseas businesses are now subject to crackdowns even for personal use. In addition, the number of import censors was 729,549 (up 5.6% from the same period last year), exceeding 60 for the second consecutive year.

■ Import ban record by country (region) of origin

China's share of both the number of cases and points exceeded 80%, while in terms of number of cases, Vietnam's share continued to be the second highest after China, and Malaysia's share increased.

■ Import performance by intellectual property

Of the total number of import cessations, 17,334 cases were counterfeit brand goods and other trademark infringing goods, up 15.4% from the same period last year, continuing to account for the majority of the total, followed by 685 cases of counterfeit character goods and other copyright infringing goods, up 82.2% from the same period last year.

The number of items seized was 258,527 items of trademark infringement (down 4.3% year-on-year), followed by 230,561 items of patent infringement (up 2,681.9% year-on-year) and 226,342 items of copyright infringement (up 447.0% year-on-year).

■ Import ban record by item

The highest number of import suspensions was for clothing at 6,630 cases, followed by bags such as wallets and handbags at 4,166 cases, shoes at 2,302 cases, and personal accessories (note) at 1,290 cases.

The largest number of items interdicted were tobacco and smoking paraphernalia at 176,825 items, followed by clothing at 43,594 items, medicines at 36,458 items, and paper products at 32,637 items. The import interdiction of items that pose a risk to health or safety through use or consumption continues.

(Note) "Personal accessories" refers to small personal ornaments (e.g., rings, brooches, earrings, pendants, tie pins, etc.) and personal items that are normally carried in a pocket or handbag, or worn on the body (e.g., cigar cases, pill cases, etc.).

<Reference URL>

Ministry of Finance website

https://www.mof.go.jp/policy/customs_tariff/trade/safe_society/chiteki/cy2024_1/index.html

https://www.mof.go.jp/policy/customs_tariff/trade/safe_society/chiteki/cy2024_1/index.html

"Learning from Case Studies: Design System Activities"Publication of the "Guide"

The latest 2024th edition of the "Guide to Using the Design System: Learning from Case Studies" was published by the Japan Patent Office in September 9. The guide provides specific examples of how to use the design system to protect designs.

According to this guide, the approach taken in introducing case studies is "the effects expected from design rights." The effects expected from design rights include preventing imitation by others and eliminating counterfeit products, and various positions, including large companies, small and medium-sized enterprises, designers, universities and research institutions, are attempting to utilize the design system in the hope of reaping the diverse effects of design rights. The published cases can serve as hints for taking on new designs, businesses and innovations.

Below is an excerpt from this guide:

Source: "Guide to Using the Design System: Learning from Case Studies" (Japan Patent Office)

URL: https://www.jpo.go.jp/system/design/gaiyo/info/document/2907_jirei_katsuyou/jirei_katsuyou.pdf

 (Used on June 2024, 9)

*Created by our company based on pages 2,11,17, XNUMX, and XNUMX

 

Design System Utilization Case No.0.1

 

Design System Utilization Case No.0.7

 

 

Newsletter translated into English

JPO: [Trademark] Points for filing trademark applications that will not be rejected

 The JPO has published a guide for applicants filing their first trademark application, which provides easy-to-understand explanations of the key points for filing a trademark application that will not be rejected. The guide describes the five steps from application to registration, and for each step introduces common reasons for refusal (reasons why a trademark cannot be registered) and points for avoiding them.

There are five steps in the trademark registration process!

Step 1

Determination of logo and naming (trademark)

★Common Reasons for Refusal★

“The trademark has no distinctiveness!” (items of Article 3(1) of the Trademark Law)

Distinctiveness refers to the power to have one's goods or services recognized as distinct from the or services of others with respect to a certain logo mark or naming (trademark). The existence goods of distinctiveness is judged in relation to the goods or services used. For example, if the designated good is fruits, the trademark “BANANA” is judged to have no distinctiveness.

☆Points☆

If you want to include features of your products or services in your trademark, you should make your trademark full of originality (a mark with distinctiveness).

 

Step 2

Designation of goods and services for which the trademark is to be used

★Common Reasons for Refusal★

“There is a problem with the description of the goods or services!” (Article 6(1) and 6(2) of the Trademark Law)

“Lack of a clear description of goods and services” is the most common reason for refusal. Goods and services must be described clearly and in the correct category (class).

☆Points☆

The indication of goods and services to written in the application should be selected from those listed on the patent information platform J-PlatPat (https://www.j-platpat.inpit.go.jp/).

 

Step 3

Search for similar registered trademarks

★Common Reasons for Rejection★

“There is a similar prior registered trademark!” (Article 4(1)(xi) of the Trademark Law)

If trademarks are similar and the goods/services are similar, a Notification of Reasons for Refusal will be issued.

☆Points☆

Before filing an application, it is advisable to search for similar registered trademarks in J-PlatPat.

 

Step 4

Preparation and filing of application

★Common Reasons for Rejection★

“Designation of a broad scope of goods and services” (Main Paragraph of Article 3(1) of the Trademark Law)

Trademarks that may be registered are limited to goods and services that are actually handled or planned to be handled. In the trademark examination, when an applicant (1) designates a broad scope of goods or services within one class, or (2) designates multiple retail services in category 35, the applicant will be notified of the reasons for refusal and if will be confirm whether he/she really intends to handle the trademark.

☆Points☆

If you are designing a broad scope of goods or services, you should prepare documents to be submitted in addition to the application, such as a letter indicating your intention to start using the trademark.

 

Step 5

Flow after Application

★Please note★

The term of trademark rights can be renewed every 10 years. If there is a possibility of renewal after 10 years, care should be taken not to forget the deadline for payment of the renewal fee.

☆Points☆

If you are concerned about the renewal management, you may request the JPO's notification service or entrust a patent attorney's office to manage the renewal.

Summary

In the following cases, please consult an IP specialist or patent attorney.

・If you cannot find indications on J-PlatPat that match your goods and service.

・If your trademark includes designs or logos and the search for prior trademarks on J-PlatPat is difficult.

・If you are not sure whether the trademarks are similar or not.

・If you find a registered trademark whose mark is similar and whose goods or services are also similar.

・In cases where it is difficult to determine whether the designation falls under broad scope of designated goods and services.

・If you plan to do business overseas.

There are also other points to note. If you have any concerns, we recommend that you consult with an IP specialist or patent attorney.

Source: “Trademark Application without Rejection Explained! How Do You File a Trademark Application?” Fourth Edition” (Japan Patent Office)

URL: https://www.jpo.go.jp/resources/report/sonota-info/document/panhu/shutugan_shien.pdf

(September 13, 2024, partially abridged and used by our firm)

Ministry of Finance announces “Status of Injunction of Intellectual Property Infringing Goods at Customs in the First Half of 2024

On September 6, 2024, the Ministry of Finance announced on its website the status of the seizure of counterfeit brand goods and other IP infringing goods at customs offices nationwide during the first half of 2024.

Overall, there were 18,153 cases of import injunctions in the first half of 2024 (up 16.2% from the same period last year), a record high. This is due in part to the enforcement of the revised Customs Law in October 2022, which makes counterfeit products shipped from overseas businesses subject to a crackdown even when used for personal use. In addition, the number of items subject to import injunctions totaled 729,549 (up 5.6% from the same period last year), exceeding 600,000 for the second year in a row.

Injunction against imports by country (region) of origin

China accounted for more than 80% of the total in both number of cases and number of items, while Vietnam continued to be second only to China in the number of cases, and Malaysia increased its share.

Imports by Intellectual Property

The number of import injunctions continued to be dominated by trademark-infringing goods, such as counterfeit brand goods, at 17,334 cases (up 15.4% from the same period last year), followed by copyright-infringing goods, such as fake character goods, at 685 cases (up 82.2% from the same period last year).

The number of items subject to import injunctions was 258,527 trademark-infringing goods (down 4.3% from the same period last year), followed by 230,561 patent-infringing goods (up 2,681.9% from the same period last year) and 226,342 copyright-infringing goods (up 447.0% from the same period last year).

Import Injunctions by Product Category

Clothing accounted for the largest number of import suspensions (6,630 cases), followed by purses, handbags, and other bags (4,166 cases), shoes (2,302 cases), and small personal effects (see note) (1,290 cases).

Cigarettes and smoking paraphernalia accounted for the largest number of items subject to import injunctions at 176,825 items, followed by clothing at 43,594 items, pharmaceuticals at 36,458 items, and paper products at 32,637 items. Import injunctions continue to be imposed on articles that pose a risk to health or safety when used or ingested.

(Note) “Personal effects” means small personal ornaments (eg rings, brooches, earrings, pendants, tie pins, etc.) and personal effects normally carried or worn in a pocket or handbag (eg cigar cases, pill cases, etc.) .

Ministry of Finance

https://www.mof.go.jp/policy/customs_tariff/trade/safe_society/chiteki/cy2024_1/index.html

 

Publication of “Learning from Case Studies: A Guide to Using the Design System”

On September, 2024, the Japan Patent Office issued the 6th edition of “Learning from Case Studies: A Guide to Using the Design System”. This guide introduces how to use the design system to protect designs, citing specific examples.

According to this guide, the introduction to the case studies contained therein is based on the “expected effects of design rights”. The expected effects of design rights include the prevention of imitation by others and the elimination of counterfeit products, etc. Various large companies , small and medium-sized enterprises, designers, universities and research institutes are trying to utilize the design system in anticipation of the various effects of design rights. The case studies in this guide can serve as hints when one tries new designs, businesses, and innovations.

The following is a partial list of this guide.

Source: “Learning from Case Studies: A Guide to Using the Design System” (JPO)

URL: https://www.jpo.go.jp/system/design/gaiyo/info/document/2907_jirei_katsuyou/jirei_katsuyou.pdf

 (Visited on September 17, 2024)

Created by our firm based on pages 2, 11, and 17

 

 

Examples of design system utilization: No. 1

 

Examples of design system utilization: No. 7

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