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The Ten Most Frequently Asked Questions regarding Madrid Protocol Trademark Application Designating Japan
Q1: Is it possible to extend the term to respond to the Notification of Provisional Refusal?
A1: It is possible to request a one-month extension of time to respond to the notification. No further extensions are permitted. The initial deadline to respond to the notification is three months from the date of pronouncement of the notification indicated at the bottom of the first page.
Q2: What documentation is required to file a response through the local representative in Japan?
The original signed Power of Attorney is required. A photocopy of the signed Power of Attorney will not be accepted. The original Power of Attorney can be filed later. More specifically, the original signed Power of Attorney can be filed within 30 days from the date of Order for Procedural Amendment issued by the Japan Patent Office.
Q3: In what cases can a response be submitted directly to the International Bureau (IB) of WIPO in order to overcome the provisional refusal?
A3: A limitation of the list of goods and/or services by way of the form MM6 can be submitted directly to the IB if the refusal can be overcome by amending (namely, limiting) the goods or services.
In addition, a request for recording a change in ownership by way of the form MM5 can be submitted directly to IB if the refusal can be overcome by changing the ownership of the cited mark or the present application.
In the above cases, we recommend that you contact the Japanese examiner to inform him/her that such action is being taken.
Q4: Will the refusal be waived if we accept the examiner’s suggested amendment as indicated in item VI of the notification?
A4: Basically yes. If you agree with the examiner’s suggested amendment, you can save some costs if you directly submit the form MM6 to the IB.
Q5: If we cannot accept the examiner’s suggested amendment or if no suggestions are made by the examiner, what should we do?
A5: You should file a response through the local representative in Japan by submitting an amendment based on your alternative wordings (in case you cannot think of any alternative wordings, without an amendment) and an argument in which a detailed explanation of goods or services is provided. The examiner will review the argument and may provide an appropriate indication of the goods or services. Since an amendment cannot be submitted to the examiner after the initial three month period (or within the extended period) has expired, you may need to submit the form MM6 directly to the IB based on the examiner’s proposed indication.
Q6: Our trademark application has been refused on the ground that the application does not conform to the requirements as provided in the main paragraph of Section 3(1) of the Trademark Law. In other words, the examiner is requesting us to prove use or intention of use of the trademark. In such a case, how should we respond to the refusal?
A6: You have the following options:
Option 1: |
To reduce the number of categories of the goods or services in accordance with the examiner’s suggestions as indicated in item VI |
Option 2: |
To submit proof of use of the trademark with respect to the rejectionable goods or services |
Option 3: |
To submit a Declaration of Intention of Use of the mark together with a Business Plan with respect to the rejectionable goods or services. |
Please consult us for sample forms for option 3 above.
Q7: Our trademark application has been refused based on the existence of a prior similar or identical mark. How can we deal with the refusal?
A7: As in the case of a national application, you have the following options:
Option 1: |
To delete the goods or services in conflict with the cited mark by an amendment |
Option 2: |
To argue the dissimilarity of the marks by an argument |
Option 3: |
If the cited registered mark has not been in use for three consecutive years, you may cancel the registration by filing a non-use cancellation request |
Option 4: |
To contact the owner of the cited mark for assignment (a mere letter of consent from the owner of the cited mark will not be considered by the examiner.) |
Q8: Our application is refused because the classification of goods or services is inappropriate. How can we deal with such a rejection?
A8: Since a proper classification has already been determined by the IB, the Japan Patent Office (a designated Office) cannot accept a change of classification. If the original International Registration is registered under an apparently wrong class, you or your representative before the IB should consult with the IB for correction of the classification of the International Registration. If such a correction is made by the IB, the JPO will accept the change of classification.
Q9: We missed the three month deadline to reply to the provisional refusal. Are there any measures to revive the application?
A9: The application will be finally rejected. Thereafter, you can file an appeal against the final rejection to overcome the rejection.
Alternatively, if the rejection can be overcome by simply limiting the goods or services, you can directly submit the form MM6 (limitation of the list of goods or services) to the IB after the expiration of the three months period. Your application will be allowed if the examiner considers the limitation before issuing a final rejection.
Therefore, you should file a form MM6 as soon as possible and at the same time contact the Japanese examiner to inform him/her that a form MM6 is being submitted in order to avoid final rejection.
Q10: We have received a Certified Copy of the Decision to Grant a Trademark Registration. What we must do next?
A10: You must pay the registration fee (or the second part of the individual fee) within the period indicated in the notification. This fee must be paid directly to the IB by you or your representative before the IB. If the fee is not paid within the prescribed period, the Japanese part of the registration will be cancelled. There are no measures to revive the application for failure to pay the fee by the deadline.