Changes to Trademark Examination Manual Starting in April

On April 2, 2018 changes to the Trademark Examination Manual will go into effect. These changes will affect applications which cover a wide scope of goods and services. Under current Japanese trademark practice, applications which include a wide scope of goods and services are viewed suspiciously due to concerns that there is a lack of intent to use the mark with respect to the wide scope of goods and services. Thus, applications would receive a provisional refusal if more than 7 similarity codes were listed in an application. The applicant would then need to provide evidence for intent to use for all of the similarity codes.

Under the new guidelines, however, the maximum number of allowable similarity codes will change from 7 to 22 before triggering the provisional refusal and the need to provide extra documentation as proof of intent to use with regard to all of the goods and services.

However, there is a wrinkle to this change in examination practice in that the way the JPO will count the number of similarity codes will also change. Under the previous system, some goods and services which had multiple codes were counted as one code. An example would be “seasoning” which had five codes (31A01, 31A02, 31A03, 31A04, and 31A05) but would have been counted as one code. However, under the new guidelines, each code would be counted individually and no longer be considered one code but instead would be considered five distinct codes. Thus, some applicants need to be careful when applying for trademarks with regard to certain types of goods and services.