The Japan Patent Office (JPO) officially announced the new Examination Guidelines for Trademarks, which started to be applied as of April 1, 2016. This is the first time that the Guidelines have been comprehensively revised since the first edition was released 45 years ago.
Among the key revisions listed in Reference (1) below, a public attention has been focused on revision of the guidelines relating to Article 3(1)(vi) of the Trademark Act since the early stages of the discussion. These guidelines apply to marks comprising slogans and catchphrases. Before the revision of the guidelines, slogans (such as catchphrases) principally fell under Article 3(1)(vi) and were frequently rejected. While this provision continues to be applied as a basis for rejections if a trademark is only recognized as displaying advertising of goods or services, corporate philosophy or management policy in a typically used manner, the revised guidelines relating to Article 3(1)(vi) of the Trademark Act now list specific circumstances in which slogans and catchphrases are regarded as not falling under this provision.
The Examination Guidelines relating to Article 3(1)(vi) have been revised in response to the opinions of those who stated that it is common in advertising to display marks that incorporate concisely-written phrases relating to company philosophy, principles or the like, in the form quasi-trademarks, in connection with business-related goods or services in order to strengthen branding, and as such, there is a need to extend trademark protection to such marks as well (see Proposal for Revision of Examination Guidelines for Trademarks in Reference (2)). Furthermore, in numerous appeals against decisions of refusal the JPO appeal examiners reversed the original examiners’ decisions against such quasi-trademarks, and this discrepancy between examiners’ decisions and appeal decisions was the subject of much debate. With the revised guidelines, it becomes easier to foresee whether or not marks comprising slogans or catchphrases may be registered by considering specific circumstances.
Other key changes include:
- Clarification that the main paragraph of Article 3(1) applies when applicants clearly do not hold national qualifications required to use trademarks as stipulated under Japanese laws and ordinances
- Clarification to provide specific guidelines relating to Article 3(1)(iii) for cases where trademarks relating to the titles of books and other publications allow consumers to recognize details of goods.
- Clarification of guidelines relating to Article 3(2) on identicalness of trademarks and goods/services in terms of the acquisition of distinctiveness through use, and in light of recent judicial decisions.
- Changes to examples that fall under each item of Article 3(1), in light of recent judicial decisions.
- Better consistency in the use of terms.
The JPO have set aside two years to review the Examination Guidelines for Trademarks, and this year’s review is already underway. The first working group for 2016 convened on May 12, 2015 to discuss Examination Guidelines relating to institutions of public interest (Article 4(1)(i) to (v)), prizes awarded at exhibitions (Article 4(1)(ix)), registered varieties (Article 4(1)(xiv)), places of origin of wines (Article 4(1)(xvii)), collective trademarks (Article 7), and regional collective trademarks (Article 7bis).
List of References*:
(1): Overview of 12th Edition of Examination Guidelines for Trademarks (Japanese only)
(2): Handout (1) for twelfth Working Group of Trademark System Subcommittee under Intellectual Property Policy Committee of the Industrial Structure Council (Japanese only)
*All of the above references are provided by the JPO.