November [Legal] Newsletter

Proposal for the 2025 "Similar Goods and Services Examination Standards"

The Japan Patent Office has prepared a draft of the "Examination Guidelines for Similar Goods and Services (Compatible with International Classification 12th Edition - 2025)," which is scheduled to come into effect on January 1, 2025, and has invited comments on the guidelines (request period: September 30, 2024 to October 29, 2024).

The "Similar Goods and Services Examination Guidelines" are, in principle, based on the Schedule prescribed in Article 6 of the Enforcement Regulations of the Trademark Act. The goods and services listed in the Schedule are reviewed every year in light of changes in the international classification and the actual state of commercial transactions.

The proposed changes will be finalized based on the opinions submitted, and the final version is usually announced around December.

Some of the changes described in the proposed similar goods and services examination standards announced recently are introduced below.

 

◆ "Linoleum flooring and wall materials"

The proposal is to classify products that cover existing floors and walls into Class 27, which mainly includes "floor coverings," and to delete "linoleum building materials" from Class 19 and create new products such as "linoleum wall sheets/tiles" and "linoleum floor sheets/tiles" in Class 27.

 

◆ "Sunshade" related

The proposed amendments to "sunshades" are intended to clarify the material (metal/woven/other) and place of use (outdoors/indoors) and to make it clear which category each item belongs to.

 

◆ "Nursing care" related

This proposed change was made after the Nice Union Committee of Experts approved "providing non-medical in-home care services for individuals" as a service in Class 45 and reaffirmed that the service in question is an indication that includes "care."

 

In addition, the reference translations for the above three services were deleted from the 2024 version, but the proposed changes for 2025 have included the reference translations again.

 

The Ministry of Agriculture, Forestry and Fisheries registers "Chinsuko" and four other products as geographical indications (GIs).

On August 27, 2024, the Ministry of Agriculture, Forestry and Fisheries registered the following products as geographical indications under the Act on Protection of Names of Specific Agricultural, Forestry and Fishery Products, etc. (Geographical Indications Act).

"Chinsuko" will be the first confectionery product to be registered under the GI.

With this latest registration, the number of GI registered products in Japan now stands at 148, and the number of GI registered products overseas now stands at 6.

(Note) As the registration of two products has expired, the registration numbers do not match the number of registered products.

<Reference> Geographical Indication (GI) Protection System VS Regional Collective Trademark System

- Geographical Indication Protection System: A system in which the names of agricultural, forestry and fishery products that have characteristics linked to their place of production are registered along with standards for the production method of the product, etc., and protected as a shared regional asset.

Regional collective trademark system: A system that allows the name of a regional brand to be registered as a trademark (indication of origin) and used exclusively.

The geographical indication protection system does not require well-known status as a registration requirement (tradition is required), and has the advantage that the government will work with other countries to crack down on unauthorized use, but it also imposes burdens on trademark holders, such as the obligation to use the registered name in accordance with the registered standards and to manage the production process of the products of the members, so it is necessary to consider whether to use this system or the regional collective trademark system on a case-by-case basis. If both are met, great benefits can be expected by registering both.

<Reference>
Ministry of Agriculture, Forestry and Fisheries press release
https://www.maff.go.jp/j/press/yusyutu_kokusai/chizai/attach/pdf/240827-3.pdf

 

Publication of "Everyone's Design Rights: Ten Different Ways to Use Them"

In October 2024, the Japan Patent Office published a design guidebook entitled "Everyone's Design Rights: Ten Different Ways to Use Them." In addition to explaining the design system, in "Part 2" the guidebook contains easy-to-understand four-panel comic strips presenting examples of how ten fictional people use the design system. This is a valuable resource that teaches how to use design rights according to your business and purpose.

Below is a partial table of contents for "Part 2" of this guide. The table of contents alone shows the usefulness of this guide.

 

 

 

Newsletter translated into English

Draft “Examination Criteria for Similar Goods and Services” for 2025

The JPO has prepared “Examination Criteria for Similar Goods and Services [International Classification 12-2025 Edition] (Draft)” to be applied from January 1, 2025, and solicited opinions on it (period of solicitation: 2024/9/30 – 2024 /10/29).

The “Examination Guidelines for Similar Goods and Services” are, in principle, organized in accordance with the schedule provided for in Article 6 of the Enforcement Regulations of the Trademark Law. The goods and services listed in said table are reviewed every year in light of changes in the international classifications and the actual conditions of business transactions.

Proposed changes are finalized based on comments received, and finalized versions will be published around December in most years.

Some of the changes described in the recently announced draft of examination criteria for similar goods and services are introduced below.

 

◆”Linoleum flooring and wall coverings”

The proposal is to delete ”building materials made of linoleum”, etc. from Category 19 and establish “linoleum wall sheets/tiles” and “linoleum floor sheets/tiles” in Category 27, as products covering existing floors and walls belong to Category 27 , which mainly includes “floor coverings”, etc.

 

◆”Outdoor window shades”

The purpose of the proposed change is to clarify which categories “window shades” belong to by specifying the material (metal/textile/other) and the place of use (outdoor/indoor).

 

◆"Care"

The proposed change is due to the fact that the Nice Union Committee of Experts passed “providing non-medical in-home care services for individuals” as a category 45 service and reaffirmed that said service includes “care”.

 

Note that the reference translations of the above three services were deleted in the 2024 edition, but the reference translations are again included in the proposed changes for 2025.

 

The Ministry of Agriculture, Forestry and Fisheries registers “Chinsukō” and four other products as Geographical Indications (GI).

On August 27, 2024, the Ministry of Agriculture, Forestry and Fisheries (MAFF) registered the following products as Geographical Indications under the Law Concerning Protection of Names of Specified Agricultural, Forestry and Fishery Products, etc. (Geographical Indications Law).

“Chinsukō” is the first confectionery to be registered under the GI. With this registration, there are now 148 GI-registered products from Japan and 6 GI-registered products from overseas.

(Note: the registration numbers do not correspond to the number of registered products because the registrations of two products expired.)

The Geographical Indications (GI) Protection System and the Regional Collective Trademark System are compared below.

Geographical Indications Protection System: A system to register the names of agricultural, forestry, and fishery products that have characteristics linked to the producing area, along with standards for the production method of the product, and to protect them as common property of that region.

Regional Collective Trademark System: A system that allows the registration of the name of a regional brand as a trademark (indication of origin) and grants exclusive use of that name.

While the Geographical Indications Protection System has some advantages, such as not requiring public recognition as a requirement for registration (however, the subject must be traditional) and the government cracking down on unauthorized use in cooperation with other countries, it also imposes burdens on the trademark owner, who must use the registered name in accordance with the registered standards, and must perform production process management for the products of the members of the organization. Therefore, it is necessary to consider which system should be used, the registered trademark system or the regionally based collective trademark system, depending on the case. If both systems are appropriate, registering both can be expected to have a significant effect.

Ministry of Agriculture, Forestry and Fisheries Press Release
https://www.maff.go.jp/j/press/yusyutu_kokusai/chizai/attach/pdf/240827-3.pdf

 

Publication of “Design Rights for Everyone: A Variety of Ways to Use Them”

In October 2024, the Japan Patent Office (JPO) published a design guidebook entitled “Design Rights for Everyone: A Variety of Ways to Use Them”. In addition to an explanation of the design system, this guidebook contains, in Part 2, examples of how 10 hypothetical people can use the design system, presented in easy-to-understand four-frame cartoons. The guidebook is a valuable resource for those who want to know how to use design rights for their business and other purposes.

Below is a partial table of contents for Part 2 of this guide. The way the table of contents itself is laid out is illustrative of the effectiveness of this guide.