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Any request for territorial extension to Japan under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks shall be deemed to be an application for trademark registration filed on the date of international registration or subsequent designation under the Japanese Trademark Act. Therefore, the request shall be examined by the 88av 888 (JPO) in the same way as a national application is examined. If the request falls under any reasons for refusal under the Act, the JPO will issue a total provisional refusal.

For the benefit of holders of International Registrations, the JPO provides the following information regarding the most commonly issued grounds of provisional refusals, how to respond to them and the unique procedures when designating Japan.

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The JPO is unable to accept the indication of goods and services if its scope is considered to be too vague in Japan, even if the said indication is registered in the International Register or included in the alphabetical list of goods and services of the NICE Classification. You can search acceptable indications of goods and services in Japan by following tools.

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The JPO is unable to accept the indications of goods and services in the left column of the following table because the scope of the indication of goods and services is considered to be too vague. The indications of goods and services listed in the right column of the following table are examples of acceptable indications in Japan.

Class

Unacceptable indications of the class headings

Examples of acceptable indications of goods and services;

7 Machines and machine tools; metalworking machines and tools; mining machines and apparatus; construction machines and apparatus; industrial fishing machines; chemical processing machines and apparatus; textile machines and apparatus; food or beverage processing machines and apparatus; lumbering, woodworking, or veneer or plywood making machines and apparatus; pulp making, papermaking or paper-working machines and apparatus; printing or bookbinding machines and apparatus; agricultural machines and implements; packaging or wrapping machines and apparatus; plastic processing machines and apparatus;
9 Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments; Apparatus and instruments for scientific research in laboratories; nautical apparatus and instruments; surveying apparatus and instruments; photographic apparatus and instruments; cinematographic apparatus and instruments; optical apparatus and instruments; weighing apparatus and instruments; measuring apparatus; signals, luminous or mechanical; monitoring apparatus, other than for medical purposes; life saving apparatus and equipment; teaching apparatus; navigational instruments;
12 Vehicles; aircraft; automobiles; bicycles; motorcycles; rolling stock for railways; ships;
12 apparatus for locomotion by land, air or water; aircraft; automobiles; bicycles; motorcycles; rolling stock for railways; ships;
14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Precious metals, unwrought or semi-wrought; key rings [trinkets or fobs] of precious metal; statues of precious metal; jewellery cases [caskets] of precious metal; boxes of precious metal; ornaments [jewellery, jewelry (Am.)]; shoe ornaments of precious metal;
16 Paper, cardboard and goods made from these materials (included in this class); paper, boxes of paper, table cloths of paper, table napkins of paper, cardboard and cardboard articles;
16 Paper and paper articles; paper, boxes of paper, table cloths of paper, table napkins of paper;
17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; raw or semi-worked rubber; gutta-percha; raw or partly processed gum; asbestos; raw or partly processed mica;
17 Packing, stopping and insulating materials; Packing [cushioning, stuffing] materials of rubber or plastics; cotton wool for packing [caulking]; pipes (Joint packings for —); stops of rubber; stoppers (Rubber -); insulators; asbestos packing.
18 Leather and imitations of leather, and goods made of these materials and not included in other classes; Leather, unworked or semi-worked; imitation leather; stirrup leathers; girths of leather; chin straps, of leather; bags [envelopes, pouches] of leather, for packaging; leather leads; leather bags; tool bags of leather, empty.
20 Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; furniture made from wood or substitutes for wood; corks; screens of reed or substitutes for reed; chairs of cane and wicker or substitutes therefor; statuettes of wood, wax, plaster or plastic; boxes of plastic; packing boxes and containers made of plastic; plastic and wooden sculptures;
24 Textiles and textile goods, not included in other classes; fabric; household linen; sheets [textile]; table napkins of textile; table linen [textile]; tapestry [wall hangings], of textile;
31 Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; barley; grains (cereals); seeds; natural flowers; plants; seedlings; trees; fresh vegetables; fresh fruits; edible aquatic animals, live;
36 financial, monetary and banking services; Financial consultancy; financial evaluation [insurance, banking, real estate]; financial management; capital investment; investment of funds; monetary exchange; securities brokerage; stocks and bonds brokerage; banking:
36 monetary affairs; capital investments; exchanging money; fund investments; securities brokerage; stocks and bonds brokerage;
37 installation and repair services; installation and repair of automobiles and parts thereof; installation and repair of medical machines and apparatus; installation and repair of metalworking machines and apparatus; installation and repair of office machines and apparatus; installation and repair of telecommunication machines and apparatus; installation and repair of computers;
37 Furnace installation and repair; Industrial furnaces installation and repair; Atomic piles installation and repair; waste incinerators installation and repair;
40 Treatment of materials; cloth treating; leather staining; metal treating; water treating;
41 Sporting and cultural activities; sporting activities; organization of exhibitions for cultural or educational purposes
42 Scientific and technological services and research and design relating thereto; scientific and technological research and development; computer software design; industrial design;
42 quality control and authentication services; quality control; testing, analysis and evaluation of the goods and services of others for the purpose of certification;
45 personal and social services rendered by others to meet the needs of individuals; clothing rental; crematorium services; detective agencies; marriage agencies;
45 funerary services; funerary undertaking; burial services; crematorium services; desairologists' services;

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The trademarks for so-called "retail or wholesale services" can be protected in Japan, providing that the date of international registration or subsequent designation is on or after April 1, 2007. Please refer to the “Notice regarding Trademark System for Retail and Wholesale Services” on the JPO Website atNotice regarding Trademark System for Retail and Wholesale Services

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A trademark which falls within the category of trademarks registrable under the Trademark Act is a trademark which is used now or which is intended to be used in the near future. The veracity of use or intention of use of the trademark in regard to all the designated goods and services is doubted if the range of the goods and services listed in one class is too wide. Therefore, such an application does not conform to the requirements as provided in the principal paragraph of Section 3(1) of the Trademark Act.

This practice applies to international registrations which are registered or subsequently designated on or after April 1, 2007.

Please see the JPO Website at for the examination guideline corresponding to the Principal Paragraph of Article 3 (1) of the Trademark Act.

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Holders of an international registration who seek to overcome the grounds for provisional refusals by limiting/amending the list of goods and services have two options indicated below.

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The request for an amendment of the list of goods and services is a formal procedure according to Article 68-28 of the Japanese Trademark Act. The JPO does not require a payment of fees to file a request for an amendment. The list of goods and services may be amended by filing a written request for amendment with the JPO. The request must be presented to the JPO through the intermediary of a representative domiciled in Japan within three months from the date of pronouncement of the NOTIFICATION OF PROVISIONAL REFUSAL. Please consult your attorney in Japan for details since the procedures and the format for requesting an amendment must be in the Japanese language only.

Please note that the request for an amendment of the list of goods and services cannot be submitted directly to the JPO via e-mail.

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The request for a limitation of the list of goods and services is a formal procedure according to Rule 25 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The list of goods and services may be limited by presenting a written request for limitation with the prescribed fee to WIPO. Please note that the request must be filed with WIPO directly using the official form (MM6).

A limitation shall have effect when it is registered in the International Register. The limitation recorded in the International Register is effective in respect of the designation of Japan as long as the case is pending before the JPO. A case is considered to be pending before the JPO:(a) not only the period of three months from the date of pronouncement of the NOTIFICATION OF PROVISIONAL REFUSAL but also until the pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION, and (b) even after the pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION, subject to the fact that the holder has made a request for an appeal examination to the JPO within three months from the date of pronouncement of the DECISION TO REFUSE A TRADEMARK REGISTRATION.

However, the examiners of the JPO will not be aware of the fact that a request for a limitation has been filed with WIPO until the JPO receives the notification of recording a limitation from WIPO. In such cases, it is possible that the examiners of the JPO may issue the DECISION TO REFUSE A TRADEMARK REGISTRATION or the STATEMENT OF CONFIRMATION OF PROVISIONAL REFUSAL. Therefore, in order to avoid such a situation, please inform the examiner in charge via e-mail of the fact that the holder has filed a request with WIPO.

Please contact WIPO for details about the request for a limitation.

Please see WIPO Web site at http://www.wipo.int/treaties/en/text.jsp?file_id=355319 ( External link ) for Rule 25 of the Regulations under the Madrid Protocol and http://www.wipo.int/treaties/en/text.jsp?file_id=355319 (External link) for the official form for a limitation.(MM6)

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The necessity for payment of the second part of the individual fee depends on the filing date of international registration or subsequent designation. This is because the JPO had previously adopted an individual fee consisting of two parts in accordance with Rule 34 (3)(a) of the Regulations under the Madrid Protocol, which it withdrew on April 1, 2023. The details are as follows.

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where Japan:

  • (a) is designated in an international application that is received by the Office of origin on or before March 31, 2023; or,
  • (b) is the subject of a subsequent designation that is received by the Office of the Contracting Party of the holder on or before March 31, 2023, or is filed directly with the International Bureau of WIPO on or before that date.

Please refer to the instructions indicated in the NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE, which is transmitted from the International Bureau with the STATEMENT OF GRANT OF PROTECTION or the STATEMENT OF WITHDRAWAL OF PROVISIONAL REFUSAL for the payment of the second part of the individual fee. Please note that the International Registration in the International Register shall be cancelled with respect to Japan where the second part of the individual fee is not paid within the period indicated in the NOTIFICATION OF SECOND PART OF INDIVIDUAL FEE according to Rule 34 (3)(d) of the Regulations under the Madrid Protocol.

Please refer to Rule 34 (3) of the Regulations under the Madrid Protocol on the WIPO website at http://www.wipo.int/treaties/en/text.jsp?file_id=355319 (External link)

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where Japan:

  • (a) is designated in an international application that is received by the Office of origin on or after April 1, 2023; or
  • (b) is the subject of a subsequent designation that is received by the Office of the Contracting Party of the holder on or after April 1, 2023, or is filed directly with the International Bureau of WIPO on or after that date.

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(i) Trademark Act

https://www.japaneselawtranslation.go.jp/en/laws/view/4032 (External link)

88av173 88av1043 cc地址发布页

Examination Guidelines for Trademarks

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The Trademark Examination Manual

(iv)Classification

[Last updated 18 May 2023]

Contact

Question 1-5, and 7

Trademark Division

TEL:+81-3-3580-6864

Question 5 and 6

Office for International Design and Trademark Applications

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E-mail: [email protected]

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