The JPO is making its procedures for examining trademark applications that have been preceded by defectively filed applications more transparent after some confusion that caught up the media in Japan. Defective (often, with official fees unpaid) applications frequently are attempts by third parties to claim an IP interest in the ideas of others. Recently, there was public speculation if pop artist Piko Taro might lose some rights to use his viral online song “PPAP [Pen-Pineapple-Apple-Pen]” due to a prior application on that by a “trademark troll” company that files applications for registrations of various popular expressions without paying the JPO up front, and make license deals.
While a third-party application may ultimately be rejected on grounds of defective filing (nonpayment of the official fee, for example), because it is earlier in the examination docket, JPO examiners of legitimate trademark applications filed later do not immediately allow the latter, until the four to six months of grace given to the corresponding defective application is considered rejected. In the meantime, an examiner may issue Reasons for Refusal because the prior application exists.
One might think that it is obvious that a prior application by a trademark troll will not pass, but the JPO wants to give grace to those who might legitimately forget to file payment with the application, and is keeping the grace period. However, it also fears that legitimate claimants to a trademark may become overly worried by Reasons for Refusal due to a defective prior application. Indeed, the public excitement about this the PPAP case shows that the situation can be blown out of proportion.
Thus, apparently in response to this application and many others, the JPO announced on June 21, 2017 (Japanese announcement here) that it will now state explicitly in such a Reasons for Refusal that that an Allowance can be given once the deficient application is confirmed as void. It hopes that this will help legitimate claimants stay on track and be less worried by a negative-sounding initial office action.
While those who understand the examination policies of the JPO would not have been worried at all of the outcome for legitimate applications, the public confusion surrounding the PPAP registration attempt demonstrates how important it is for IP firms to work with patent offices to educate and clarify what legitimate applicants can expect from the examiners.
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Taro Yaguchi
