JPO Status Report 2021 – The impact of Covid-19 on Japan trademarks

Unquestionably, 2020 was remarkably a tough and soul-destroying year for businesses around the world. The coronavirus pandemic has had a major impact on every aspect of day-to-day life, including the world of business. Just as the fluctuations in the economy and our changing work and lifestyles due to long months spent at homes destroyed our understanding of “normal.” Business mentality, preferences, and actions taken during the crisis have all changed. As a result, it was inevitable for trademark filings to be affected by these changes.

According to “JPO Status Report 2021” released on March 31, 2021, by the Japan Patent Office (JPO), a total of 181,072 trademark applications were filed in 2020. This number is down 5% compared to the previous year when the number of applications amounted to 190,773.

It is interesting to see that Pfizer Inc. became a top-ranking foreign registrant in 2020 who could successfully register 154 trademarks in Japan, drastically increased from the previous year.

Requests for accelerated examination consecutively increased to 11,204 by 38% in 2020, which enables applicants to obtain trademark registration within 2months.

As a background, it should be noted that the entire trademark process for general examination at the JPO (the total time of application from filing to registration) takes 10.9 months on average, which is nearly 2 months longer than the previous year.

You can access and download the full text of “JPO Status Report 2021” from here.

Tips to Pass the JPO Trademark Registration Exam in 2 months

“JPO Status Report 2020” reveals more applicants make use of the “Accelerated Examination” in order to obtain an earlier trademark registration.

According to the latest report, the number of requests for accelerated examination in 2019 was 8,110, which increased by 54% than the previous year.

Accelerated Trademark Examination

The accelerated examination has enabled the shortening trademark examination period to 1.7 months on average. Being that it takes 7.9 months or longer for the JPO to notify the examination result at present, accelerated examination must be appealing to an applicant who wants their brand to be registered as early as possible.

The accelerated examination is available in three cases.

[Case 1]

An applicant is in use of or likely to use an applied mark on more than one of the goods/services in the designation, and in urgent need of registration.

To meet an urgent need requirement, the applicant is required to demonstrate; (i) unauthorized third party uses an applied mark, (ii) any third party request a license to use the applied mark, (iii) any third-party demand applicant to cease use of the applied mark, or (iv) applicant filed the identical mark to a foreign country.

[Case 2]

An applicant is in use of or likely to use an applied mark on every goods/service in the designation.

[Case 3]

An applicant is in use of or likely to use an applied mark on more than one of goods/services in the designation, and the description of goods/services are all in conformity with that listed in the Examination guidelines for similar goods and services.

Besides, (v) where the applicant seeks to apply for international registration of trademark identical with the applied mark through the Madrid Protocol, it is also admitted meeting an urgent need requirement for Case 1.

Fast Track Trademark Examination – Japan Patent Office

At present, applicant will wait at least 12 months from when trademark is filed until it becomes registered by the Japan Patent Office (JPO).

Accelerated Trademark Examination

To meet a need of earlier registration, JPO has introduced “Accelerated Trademark Examination” which enables trademark application to be registered in two or three months.
However, since it requires applicant to demonstrate actual use of applied mark on at least one of designated goods and services, if applicant has yet to use the mark, such applications have no way but to be in a long queue for JPO examination.

Fast Track Trademark Examination

Newly introduced “Fast Track Trademark Examination” provides an option to achieve earlier registration for non-use trademark owners. According to announcement from JPO, the Fast Track Examination shortens trademark examination period to 6 (six) months on average.

Excerpt from the JPO website

If trademark application meets with following conditions, your trademark will be freely on the fast track without request.

  1. Good and services initially designated under the application are all listed on the “Examination Guidelines for Similar Goods and Services”, “Regulation for Enforcement of the Trademark Act”, or “International Classification of Goods and Services (Nice Classification)”; and
  2. No amendment has been made with respect to goods and services by the time JPO commences examination; and
  3. Applied mark does not belong to non-traditional trademark, international applications under the Madrid system, or partial 3D (three dimensional) mark.

JPO adopts the Fast Track Examination to trademark application filed on or after February 1, 2020.

Further information is available from here.