What is Accelerated Examination for Trademarks in Japan? How to expedite your trademark registration?

I’m already using your trademark, but I realized after the fact that I should register it.
I don’t want to get into trouble with other companies, so I’d like to get the rights to it as soon as possible. Any suggestions?

If you are using a trademark, you can use the accelerated examination system.
The requirements vary depending on whether you are using the trademark for all or part of the designated goods or services, so check carefully.

What is Trademark Accelerated Examination?

Accelerated examination for trademark registration is a system whereby an application is received from an applicant, and the examination is conducted earlier than usual under certain conditions.

• No official fee is required.
• It is different from the “Super Accelerated Examination” for patents. There is no equivalent to “Super Accelerated Examination” for patents.

Similar Systems

There is no equivalent to “Super Accelerated Examination” for patents.

There is also the “fast-track examination system,” in which the trial examination is conducted earlier than the examination.

Note: Fast-track examination will be suspended as of March 31, 2023.
The resumption date has not yet been determined.
Reference: JPO website

Advantages of Early Examination

You can receive registration earlier.

An accelerated examination allows you to obtain registration of a trademark that needs to be registered as soon as possible.

The normal examination process takes 6 to 9 months to start, but with Accelerated Examination, the process is much quicker.
In the case of early examination, the average time from the filing of an application for early examination is 2.1 months (for 2021), which is considerably shorter.

This is a great relief, as it prevents problems as quickly as possible.

Disadvantages of receiving an early screening

Takes a lot of time and effort

Submission of the Early Examination Circumstances Statement itself is free of charge.
However, there are many documents to be submitted, and preparation is often time-consuming.
It is recommended to ask an experienced patent firm, etc. to prepare the documents.

Requirements for Accelerated Examination

The following is a quick guide to the flow of determining whether or not you are eligible for an Accelerated Examination.

To be eligible for an Accelerated Examination, one of the following cases must apply;

1. the applicant is already using the applied-for trademark for some of the designated goods/services + there is an urgency to obtain the right (e.g., the trademark is being used by a third party, the application is pending in a foreign country, etc.)
2. the applicant is already using the applied-for trademark for all the designated goods/services
3. the applicant is already using the applied-for trademark for some of the designated goods/services + the applicant only designates goods/services listed in the “Examination Guidelines for Similar Goods and Services”, etc.

In all cases, you have to be already using the applied-for trademark, right?

It’s okay if the licensee (right to use) is using the trademark, not just the applicant.

Ineligible Trademarks

• International Registrations with Japan as the designated country
• new type of trademark
• Some 3D trademarks
• A three-dimensional trademark consisting of the exterior or interior of a store, office, business establishment, or facility (including mobile vending vehicles, sightseeing vehicles, passenger aircraft, and passenger ships)
• 3D trademarks that have (or require) a detailed description of the trademark.

These trademarks are not subject to accelerated examination from the viewpoint that careful examination is required, etc.

Points to note regarding the use (preparation for use) in connection with the designated goods or services

Does it constitute “use”?

“Use” under the Trademark Law means certain acts such as;

• Affixing a mark to goods or the packaging (package) of goods
• Distributing (selling, etc.) the mark on the goods or the packaging of the goods
• Affixing a mark to an item (e.g., shopping cart) used by a customer in the course of providing a service
• Providing services by using an item (such as a delivery bag for a delivery service) affixed with a mark.
• Attaching a mark to a utensil used in the provision of services (e.g., coffee cups in a restaurant) and displaying the mark on the utensil.
• Attaching a mark (e.g., sticker) to a customer’s property in the course of providing services.
• Providing services via the Internet, etc. by displaying a mark.
• Exhibiting or distributing advertisements or transaction documents with a mark on them, or offering them on the Internet, etc.

Examples of evidence of “use”;

• Photographs of the goods bearing the trademark
• Brochures or catalogs relating to the goods or services bearing the trademark
• A copy of a screen of an advertisement or website relating to the trademarked goods or services

Does it constitute “substantial preparation for use”?

Even if you are not using the trademark, you may be eligible for accelerated examination if you are deemed to be “making substantial preparations for use”.

The term “making substantial preparations for use” means that the applicant has started to use the applied-for trademark externally and is unlikely to backtrack, and it is certain that the applicant will use the trademark.

For example, the following situations;

• the applicant has already ordered the printing of a product catalog, etc. to use the applied-for trademark
• It has been reported that the applicant intends to use the applied-for trademark for the designated goods or designated services.

Therefore, the following evidence is useful to show that you are making substantial preparations for use;

• Receipts and orders for catalogs, pamphlets, and advertisements to external parties
• Press materials
• In the case of pharmaceutical products, a copy of the “Application for Approval of Manufacture and Sale of Pharmaceutical Products.”

I guess the internal planning stage doesn’t count as “considerable preparation for use”.

Is the (planned) trademark to be used the same as the applied-for trademark?

The trademark to be used must be identical to the applied-for trademark.
Please note that a trademark applied for in Roman characters will not be considered identical if you use katakana, or if you use only the graphic part of a trademark that was applied for in letters and figures, etc.

Are the goods/services to be used the goods/services designated in the application?

The goods/services for which the trademark is to be used must be at least partially included in the goods/services designated in the application, and evidence is required to prove this.

Is the (prospective) user the applicant or the licensee?

The applicant or licensee must be the one who is using the trademark.

Evidence of the user may include, for example;

• A photograph of the seller’s information on the product package
• A copy of the “NOTATION UNDER SPECIFIED COMMERCIAL TRANSACTION ACT” page of the retail site
• A copy of the page about the site operator

Documents showing the relationship with the licensee

If the applicant is not the applicant and allows others to use the trademark, it is necessary to prove that the applicant has some kind of relationship with the licensee, such as a subsidiary, or that a license agreement has been concluded.

• If the licensee is a subsidiary or other affiliate: Documents showing the relationship with the applicant, such as an organization chart or a copy of a website showing the controlling relationship.
• If the licensee is not a subsidiary or affiliate: Documents showing that the licensee has a license agreement with the applicant, such as a license agreement or license agreement.

Let’s take a look at the required documents for each of the cases that are eligible for accelerated examination.

Case 1: Partial use + urgency to obtain rights

In this case, the following must be shown

• Documents showing partial use of the trademark in connection with the designated goods or services
• Urgency of the grant of rights

The urgency to obtain rights means the following circumstances.

Case 2: Use for all goods/services designated

In this case, the following must be shown;

• Documents showing that the trademark is used in connection with all of the designated goods or services.

Case 3: Partial use + Designation of only the goods or services listed in the “Examination Guidelines for Similar Goods and Services”, etc.

In this case, the following must be shown;

• Documents showing that the trademark is used for a part of the designated goods or services

The “Examination Guidelines for Similar Goods and Services” etc. refer to the following

• Annexed Table of the Enforcement Regulations of the Trademark Law (related to Article 6)
• Examination Guidelines for Similar Goods and Services
• International Classification of Goods and Services (Nice Classification)

If you have designated goods or services that are not included in these categories and wish to obtain a fast-track examination, you need to amend them.

Relationship with Fast Track Examination

Note: Fast-track examination will be suspended as of March 31, 2023.
The resumption date has not yet been determined.
Reference: JPO website

This requirement to designate only goods/services listed in the “Examination Guidelines for Similar Goods and Services” etc. is the same as the requirement for fast-track examination, so even if evidence of use is not admitted, there is an advantage that the examination will be conducted earlier than usual.

Reference the JPO page for reference.

• Overview of Trademark Accelerated Examination and Accelerated Examination

File a trademark application with Amazing DX and get an Accelerated Examination!

All products and services that can be selected for Amazing DX are listed in the “Examination Guideline for Similar Goods and Services”.
You just need to provide us with evidence of use, and we’ll get you an expedited examination!

In addition, you can conduct a trademark search in advance to see if there are any prior trademarks, reducing the likelihood of problems being found during the examination!

I would consult with a patent attorney’s office to see if evidence of use is admissible and which evidence to request for an accelerated examination so you can proceed with confidence.