New Guidelines for an Accelerated Examination System for Trademarks Effective February 1, 2009

Introduction

The Japan Patent Office has put into effect new guidelines for the accelerated examination systems for trademarks. The JPO introduced the system for trademarks back in September of 1997 and was implemented in order to speed up the registration procedure for applications that urgently needed acceptance due to third party infringements. Under the original guidelines, the qualifying conditions were so stringent, very few were accepted under this system. If you were one of the rare candidates that did get accepted, the examination process was completed in a considerably shorter amount of time.The new guidelines which will go into effect on February 1, 2009 have opened-up such opportunities for applicants that can prove that the claimed trademarks are already being used or the preparation to use them is considerably underway in connection with specific goods and services.

Trademark Applications Subject to Accelerated Examination

Either conditions 1 or 2 below have to be met for a trademark application to be examined under the accelerated examination system:

Condition #1(Conditions that existed prior to February 1st, 2009)

The applicant or his licensee of the trademark claimed in the filed application (“claimed trademark”) is already using the trademark for the designated goods or services covered by the applications, or the preparation for using the trademark is considerably underway, AND

The trademark rights need to be granted urgently for one of the following cases:

1) when a third party is using a trademark which is the same or similar to the claimed trademark without authorization of the applicant or licensee, in connection with designated goods or services that are the same or similar to the goods and services for which the applicant or licensee has been using said trademark, or for which the preparations for use of said trademark has already been made to a considerable degree.2) when a third party has issued a warning with respect to the applicant’s use of claimed trademark3) when a third party is demanding that the applicant agrees to his use of the claimed trademark4) when the applicant has applied for the claimed trademark to Patent Offices or Inter-Governmental organizations other than the Japanese Patent Office

Condition #2(New condition in force after February 1st, 2009)

An application for which the applicant or licensee designates only the goods and services that are already being used with or being prepared to be used with the trademark filed for.

The Procedure

What must be filed:A document used for requesting an accelerated examination titled the “Explanation of the Circumstances Concerning Accelerated Examination.”

Who must file it: The applicant or his attorney

How to submit the form: The above document can be paper filed in the JPO or can be filed online.

Timing: Anytime after the trademark application has been filed.

Fee: No official fee is required for processing the form.

*To learn more about the procedure for applying for an accelerated examination for trademarks, please write to us at usmail@keisenassociates.com with TRADEMARK in the subject line.

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