JPO to Address Concerns for Trademark Applications Improperly Filed by Another First

Recently there have been a large number of trademark applications filed by applicants who have filed applications without paying the application fee to the JPO.

In response to this, the JPO recently announced a change in their response practice with the regard to the Notice of Reasons for Refusal in order to provide an alert.
Under JPO examination practices, unpaid applications are deemed to contain deficiencies and the applications are given a certain amount of time to remedy these deficiencies. However, during this term, these deficient applications are still considered “live”. Therefore, the JPO is required to cite the “live” applications as a reason for refusal in the Notice of Reasons for Refusal against subsequent trademark applications at the substantive examination stage because these deficient applications are prior in time to these regular, complete applications.
Under the new practice, when the JPO issues the notification of reasons for refusal an explicit comment stating that “The examiner’s decision of trademark registration will be issued soon after confirming the prior trademark application be dismissed.” will be included in the Reasons for Refusal for applications falling under the described situation above and which contain no other reasons for refusal. Through this measure, the JPO hopes to encourage bona fide applicants not to easily abandon their trademark application. However, there will be no change in the examiner’s rejection decision until the prior application is rejected. 

One of the most recent examples involving this type of deficient trademark application involves applications filed without permission related to Japanese comedian, Piko-Taro’s Pen-Pineapple-Apple-Pen (PPAP) skit that went viral last year.