According to “JPO Status Report 2022” released on March 31, 2022, by the Japan Patent Office (JPO), a total of 184,631 trademark applications were filed in 2021. This number increased 2% compared to the previous year when the number of applications amounted to 181,072.
It is astonishing to see that SM Entertainment Co., Ltd., a South Korean record label and entertainment agency, became a top-ranking foreign registrant in 2021 who could successfully register 185 trademarks in Japan, drastically increased from the previous year.
Requests for accelerated examination consecutively increased to 11,450 by 2.2% in 2021, 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 11.2 months on average, which is 0.3 months longer than the previous year.
You can access and download the full text of “JPO Status Report 2022” from here.
With fewer than 80 days to go until the Tokyo Olympics, Japan just extended a state of emergency in the capital, Tokyo until May 31, 2021, to stem a surge in coronavirus cases.
Japanese trademark applications in 2020
One year has passed since Japan’s first state of emergency was declared on April 7 last year and lasted into late May.
Recent JPO statistical data, released on April 30, 2021, revealed the number of trademark applications newly filed in the Japan Patent Office (JPO) in 2020 fell by 5.1% to 181,072 compared to the previous year, 2019. When counting the total number of classes specified the trademark applications in 2020, it fell by 24.5% from the previous year.
A total of 17,924 trademarks were filed in the JPO via the Madrid Protocol in 2020. The number dropped by 7.8% from 2019.
The data also showed a 3.4% decrease in the number of international trademark applications filed with the JPO as the office of origin in 2020 to 3,033.
The Tokyo Olympic Games
The Tokyo Olympic Committee filed an initial trademark application for the “TOKYO 2020” mark (see below) in 2011, two years before the IOC decision.
In January 2012, the Committee applied for registration for the wordmark “TOKYO 2020” in standard character covering all 45 classes to which the JPO granted protection in November 2013.
However, because of the pandemic, the Tokyo 2020 Olympic and Paralympic Games have been postponed to 2021. The Olympics will now run from July 23 to August 8 2021 and the Paralympics will be held from August 24 until September 5, 2021.
On March 25, 2020, the Committee filed a trademark application for the wordmark “TOKYO 2021” for use on goods and services in 45 classes and subsequently divided the application so that the mark would remain pending the JPO examination as long as possible in fear of trademark theft.
It came to my notice that the following trademarks are filed with the JPO by other entities.
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.
The Japan Patent Office (JPO) affirmed the examiner’s refusal and decided to reject a wordmark “FS12” due to a lack of inherent distinctiveness. [Appeal case no. 2019-650019, Gazette issued date: January 29, 2021]
“FS12”
Fette Compacting GmbH filed a trademark application with the JPO via the Madrid Protocol (IR no. 1349196) for word mark “FS12” (see below) for use on goods of ‘Compression tools (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for producing pellets and tablets; die-table segments (parts of machines for the pharmaceutical industry, chemical industry, food industry, and metal industry) for rotary presses’ in class 7
Article 3(1)(v) of the Trademark Law
The JPO examiner refused the “FS12” mark in contravention of Article 3(1)(v) of the Trademark Law.
The article prohibits any mark from registering if it consists solely of a very simple and common mark.
Trademark Examination Guidelines (TEG)stipulates that a mark consisting of one or two alphabetical letters followed by a numeral, e.g. “A2”, “AB2”, is unregistrable under the article.
Followings are also enumerated as unregistrable marks under the article.
Numerals
One or two alphabetical letters, e.g. “AA”
Two alphabetical letters combined with “-” or “&”, e.g. “A-B”, “C&D”
One or two alphabetical letters accompanied by “Co.”, e.g. “AB Co.”
A numeral followed by one or two alphabetical letters, e.g. “2A”
The applicant filed an appeal against the refusal and argued distinctiveness of the “FS12” mark.
Appeal Board decision
However, the JPO Appeal Board dismissed the entire allegations and held that a mark consisting of a numeral and one or two alphabetical letters is incapable of identifying the source of the goods since the relevant public would perceive, without further thought, it to indicate a value, code, type, model or standard of the goods in question.
As a matter of fact, the Board found the combination of alphabetical letters, and a numeral is frequently used to indicate a value, code, type, model, or standard of the goods in relevant industries.
Given the mark “FS12” consists of two alphabetical letters and two digits written in regular font, the Board considers it is unlikely to play a role of source indicator and shall be unregistrable in contravention of Article 3(1)(v) of the Trademark Law.
To my knowledge, “FS12” would be mostly considered distinctive in other jurisdictions. Please be noted that a combination of one or two alphabetical letters and the numeral is deemed descriptive in relation to any kind of goods in Japan. To register such a mark, it is required to add a descriptive element or demonstrate acquired distinctiveness as a result of substantial use in Japan.
On June 17, 2020, the Japan IP High Court affirmed the JPO’s rejection of the “I♡JAPAN” mark in relation to various goods of class 14,16,18 and 24 due to a lack of distinctiveness. [Judicial case no. Reiwa 1(Gyo-ke)10164]
I♡JAPAN
The disputed mark consists of the capital letter “I”, followed by a red heart symbol, below which are the capital letters “JAPAN” (see below). The mark filed by CREWZ COMPANY, a Japanese merchant on April 17, 2018, over various goods in class 14, 16, 18, and 24 [TM application no. 2018-049161].
Noticeably, the JPO already allowed trademark registration for the same mark on apparels in class 25 on March 27, 2015, filed by the applicant [TM Registration no. 5752985]. Regardless of it, the examiner refused disputed mark in contravention of Article 3(1)(vi) of the Trademark Law.
Article 3(1)(vi) is a provision to comprehensively prohibit from registering
any mark lacking inherent distinctiveness.
Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark: (vi) is in addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person.
JPO decision
The JPO Appeal Board sustained the examiner’s refusal and decided to reject disputed mark by stating that we are nowadays accustomed to finding goods bearing the “I♡” logo followed by a geographical indication, which represents a strong devotion or attachment to the area/city in its entirety. In fact, the “I♡JAPAN” design is commonly used on several goods as a symbol to support the Japanese sports team or souvenirs for tourists. If so, the design shall not be exclusively occupied by a specific entity. Under the circumstances, relevant consumers are unlikely to conceive the disputed mark as a source indicator of the applicant. Thus, the mark shall be rejected in contravention of Article 3(1)(vi) and the examiner did not error. [Appeal case no. 2018-16957]
To contend against the decision, the applicant filed an appeal to the IP High Court.
IP High Court ruling
The IP High Court dismissed the applicant’s allegation entirely, stating that the disputed mark gives rise to the meaning of “I love JAPAN”. The court found the “I♡” logo followed by a geographical indication is commonly used to appeal a strong devotion or attachment to the area/city. Inter alia, various merchants promote goods bearing the “I♡JAPAN” design as a sign of their support to Japan or the Japanese sports team. If so, relevant consumers and traders would not conceive disputed mark as a source indicator of goods in question, but merely a symbol to represent their devotion and support to Japan. Therefore, the disputed mark shall not be registrable under n contravention of Article 3(1)(vi).
Besides, the court found the fact of a precedent registration for the same mark in a different class would not affect the distinctiveness of disputed mark since it does not have a legal effect to bind subsequent examination in assessing registrability of a junior mark under Article 3(1)(vi).
The Japan Patent Office (JPO) has announced the measures it has taken to help foreign users for trademarks during the coronavirus outbreak.
Response to the office action
JPO takes flexible approaches to allow a delayed response on the condition that the applicant requests for remedy either in the following ways:
To file a written request and its reason before the lapse of a deadline in advance.
To file the response with an additional written explanationwithin a certain period after the deadline.
[Example of reasons]
Due to the negative effects of the COVID-19, Company ____ for which applicants work/Office ___ where representatives of applicants work had been closed from _____ to _____ in 2020, and the applicants/the representatives are (were) not able to implement the prescribed procedures. Nonetheless, since it has become possible to implement the procedures from ____, 2020, please accept ____ as a valid procedure.
Priority documents
JPO allows submitting priority documents within two months after deadline, namely five months from the application date, provided that the applicant simultaneously files a statement of reasons for the failure to meet its original deadline.
Appeal to refusal decision
JPO considers a request for appeal against the examiner’s decision of refusal valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to state delayed reasons in the appeal brief.
Payment of registration fee
JPO considers payment of registration fee valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to file a statement of delayed reasons simultaneously.
Application for renewal
JPO accepts application for renewal of trademark registration valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the expiry date. It is required to file a statement of delayed reasons simultaneously.
New transformed Application after revocation of international registration
JPO considers a newly transformed application for Japanese trademark application after the revocation of International Registration valid if appealed within two months after foreign users go back to normal life impacted by COVID-19, but before the lapse of six months after the original deadline. It is required to file a statement of delayed reasons simultaneously.
More and latest information is available on the JPO website. Click here.
In a trademark dispute, similarity between “OKLOK” and “OKLOCK”, the Appeal Board of the Japan Patent Office found both marks dissimilar and reversed examiner’s rejection. [Appeal case no. 2019-16781, Gazette issued date: March 27, 2020]
OKLOK
A senior mark, consisting of a word “OKLOK” in standard character, was registered on September 21, 2018 (TM Reg no. 6083192) over electric locks; electronic key fobs being remote control apparatus; anti-theft warning apparatus; other goods in class 9 by a Chinese business entity, 深圳市龙兄弟数码锁有限公司 (Shenzhen Longbrothers Digital Co., Ltd.).
Owner has used “OKLOK” on fingerprint key less padlock, Smart Bluetooth Security Lock with USB Charge and other intelligent anti-theft devices (see below).
[Capture shot of OKLOK official site]
OKLOCK
Applied junior mark, consisting of a word “OKLOCK” in standard character, was applied for registration on April 3, 2019 over anti-theft locks for use on automobile steering wheels and other goods in class 12 [TM application no. 2019-47122].
Applicant uses “OKLOCK” on car steering wheel
locks and anti-theft car hand brake and gear lock (see below).
The JPO examiner rejected “OKLOCK” because
of confusing similarity to “OKLOK” based on Article 4(1)(xi) of the Trademark
Law.
Article 4(1)(xi) is a provision to prohibit registering a junior mark which is identical
with, or similar to, any senior registered mark.
There is criterion that the examiner is
checking when assessing the similarity between the marks:
visual similarity
aural similarity
conceptual similarity
and taking into account all these three
aspects examiner makes a decision if a mark is similar (at least to some
extent) with the earlier mark and if there is a likelihood of confusion for the
consumers.
Applicant filed an appeal against the
rejection on December 11, 2019 and argued dissimilarity of both marks.
Appeal Board decision
In the decision, the Appeal Board held
that:
From appearance, applied mark “OKLOCK”
contains a letter “C” unlike the cited mark “OKLOK”. This gives rise to a distinctive
impression visually in the mind of relevant consumers where respective mark
consists of five or six-letter words, anything but long.
Next, applied mark is pronounces as [oʊˈkeɪ lɑːk]. In the meantime, the cited mark just gives rise to a pronunciation of [oʊˈkeɪ el ə keɪ] because relevant consumers are likely to see “OKLOK” as a combination of five alphabets and read it as each letter sounds since “OKLOK” does not appear in dictionary.
Thirdly, applied mark does not give rise
to any specific meaning in its entirety even though it is perceived as a combination
of “OK” and “LOCK”. Likewise, relevant consumers would not conceive any meaning
from “OKLOK” and just see it as a coined word. If so, both marks are incomparable
from concept.
Based on the foregoing, the Board found no reasonable
ground to affirm examiner’s rejection from visual, phonetic, and conceptual
points of view and decided to reverse examiner’s rejection.
The Japan Patent Office released its 2019 Annual Report (in Japanese only) on July 12, 2019, which contain informative figures and statistics relating to IP applications in Japan and on all other activities of the JPO.
Trademark Applications in Japan
The number of trademark applications in Japan has increased recent years. In 2018, 184,483 trademark applications were filed to the JPO. TM application via Madrid Protocol increased to 17,802 by 2.7% compared to the previous year. Direct application decreased to 166,681 by 4 %.
Trademark Application to JPO by Year
Timeline for Trademark Registration
Due to the recent increase, timeline for
trademark prosecution, i.e., the average time between filing and first office
action, was getting longer for the last four years in a row. Trademark Average
First Action Pendency was 6.3 months in 2017. In the meantime, the pendency in
2018 exceeded 7.9 months on average. Accordingly, the average total pendency
period for trademark registration was 9.3 months in 2018.
Timeline for trademark registration
Application to JPO by Foreign Company/
Non-resident
39,209 trademark applications, which
account for 21.3% of the total, were filed by foreign company or non-resident
in 2018. The number was increased by 8.4% since last year.
TM Application to JPO by Foreign applicants
The statistic shows Europe was leading the ranking with about 10,000 trademark applications in 2017. In 2018, China took the leading place eventually.
