The New Examination Guidelines for Trademarks (13th Edition) Started on April 1, 2017

In response to changing social conditions and in order to make the examination guidelines highly predictable, clear and easy to understand, the Japanese trademark examination guidelines were revised and went into effect starting April 1, 2017, and is part of an ongoing 2 year guideline revision project.

The latest revisions primarily pertains to grounds for not being registerable rights under Article 4 and the new guidelines incorporate new and revised examples of examination criteria based on the most recent judgments and practices.

For example, Article 4, Paragraph 1, Section 8 states that registering another person’s name or another person’s famous abbreviation cannot be registered without the person’s consent. Under the old guidelines, the definition of “name” was based on a person’s full name. However, many people, particularly outside of Japan, have one or more middle names. These people do not necessarily use their middle names during the course of their professional lives, and when they become famous, their middle name may not be known. Based on the legal precedents, the new guidelines codified the fact that the famous “name” without the middle name constitutes a famous abbreviation and the famous abbreviation cannot be trademarked without the person’s consent.

Also, with respect to the protection of personal rights, the law specifies that the abbreviated name should take into consideration whether the abbreviation is recognized generally or indicative of a specific person.

Another example relates to Article 4, Paragraph 1, Sections 10 and 11 which state that any marks that are either identical or similar to other marks are not eligible for registration. The new guidelines clearly define special cases where marks that are similar are handled differently. Specifically, the applications will be treated differently when the right holder for the cited, similar mark has a controlling interest in the application for example any parent/subsidiary corporations, and the right holder has given consent to the registration of the relevant mark in the application. In making determinations on similarity, the examiner may now also consider the actual circumstances involved with the commerce of the goods and services. Thus, if a mark is similar in the same category but the circumstances are such that the marks would be readily distinguishable, the marks may be allowed. Also, the new guidelines codified legal precedents related to when a mark can be viewed in parts or as a whole.