The Japanese Trademark Act has been revised as of May 30. The changes force all divisional trademark registration applications filed from June 9, 2018 to stem from a properly paid-for trademark registration application.
Until this, the Trademark Act Article 10 (1) had only given general requirements for a divisional trademark registration application. As long as the parent trademark application was properly pending, the source of claims in the divisional application, and avoided a double-trademarking situation, the divisional application could enjoy protection with the priority date of the parent application. As a result, the divisional application could in practice be filed and get an earlier filing date through a parent trademark registration application that was unpaid.
The present revision of the Trademark Act, in accord with the larger Revision to Unfair Competition Prevention Act that went into effect on May 30, 2018, seeks to close this loophole. Now, any divisional application filed on or after June 9, 2018 (whether the parent application was filed before or after this date) will only be acknowledge to have priority claim to a parent trademark registration application if the parent trademark application’s filing fees have been paid.
We would hope that any applicant will have already paid the official application fee for the parent trademark registration application to the JPO, but now it is clear that applicants may not sneak in priority rights for applications that have not been filed properly, that is, paid for. Please inquire if there are questions about requirements for a divisional application of a trademark registration application.
(The information provided on this website is for informational purposes only and is not intended as legal advice. For questions or inquiries, please contact us for more information.)
Taro Yaguchi
Source
Trademark system planning office, Trademark Division, Japan Patent Office. “商標登録出願の分割要件が強化されます [Requirements for trademark registration divisional applications to be tightened],” May 30, 2018.
