IP NEWS:SOEI Patent & Law Firm

In the revised Trademark Law that will come into force next year, the registration of service marks designating retail sales will be allowed, and there is increased interest in how the retail service should be indicated when filing the applications.

The Japan Patent Office (JPO) has disclosed its proposal for revisions of the Examination Standards for Similarity of Goods or Services based on the revised Trademark Law. According to this proposal, the JPO views retail sales as “a service that provides convenience to customers in retail and wholesale trade” and it will be placed in Class 35 in accord with the Nice Agreement.

In the proposed revisions, “a service that provides convenience to customers in retail and wholesale trade” under Class 35 is further divided into 19 groups. The designated services for the first group consist of retail and wholesale services that provides goods for daily use such as clothing, food, etc. Department stores and supermarkets are in this group. The designated services for the remaining groups are divided according to the individual item. For example, a retail service group for fabrics and bed clothes, a retail service group for food and beverage, a retail service group for cars, a retail service group for furniture, etc. Each group will be provided with a similar group code, and any service that is in one of these groups will be considered to be similar to another service in the same group. Services in different groups will not be considered to be similar to each other. Therefore, the retail services of department stores that provide comprehensive retail services will not be considered to be similar to the retail services of stores that specialize in food and beverage sales.

The services after the first group that specialize in particular goods are considered similar to the goods specified in the classification for those particular goods. For example, retail service for cars in Class 35 is similar to cars themselves in Class 12. Therefore, both Class 12 and 35 will be cross-searched in the examination.

The JPO is asking for public comment on the proposals, and it plans to finalize the standards based on these comments. But we predict that the basic framework of this proposal will not change.