Cautions and Disadvantages of Accelerated examination

Accelerated examination

Well, for those seeking to register their trademarks early, accelerated examination is a very convenient system! And now that the number of trademark applications is increasing, the examination period at the JPO is getting longer.
Come to think of it, we often hear about the advantages of accelerated examination, but we don’t seem to have heard much about the disadvantages…
Whether it is even a disadvantage depends on the case. If you wish to be considered for an early screening, you should familiarize yourself with the details of the program.

This article explains the disadvantages of Accelerated examination and points to note when requesting Accelerated examination.

About the Accelerated examination

Accelerated Examination of Trademarks is a system whereby, under certain conditions, an application is received from an applicant and examination is conducted earlier than usual.
Compared to the normal examination, the applicant can obtain notification of the examination result earlier.

In the case of normal examination, it takes 6 to 9 months to start the examination.

But in the case of Accelerated examination, the average time is 2.1 months from the time of application for Accelerated examination (actual results for 2021), which is considerably shorter.

In addition, there is no fee to the Agency regarding the request, which is important for those in a hurry to register.

*For a more detailed explanation of Accelerated Examination, please see this article.

Subject to Accelerated examination

If any of the following (1) through (3) apply, the applicant is eligible for Accelerated examination of trademark.

(1) Where the applicant is using the applied-for trademark in connection with some of the designated goods or services (services), and where the applicant is in urgent need of obtaining a right in connection with any of the designated goods or services.

(2) The applicant uses the applied-for trademark for all of the designated goods or designated services.

(3) The applicant uses the applied-for trademark for some of the designated goods or designated services.
And the applicant designates only those goods or services that are listed in either the “Annex to the Enforcement Regulations of the Trademark Law (related to Article 6),” the “Examination Guidelines for Similar Goods and Services,” or the “International Classification of Goods and Services (Nice Classification)”.

What are the disadvantages of Accelerated examination for trademark?

We understand that Accelerated examination for trademark is a convenient program.
So, are there any disadvantages to applying for an Accelerated Examination?

When applying for Accelerated Examination, the following documents must be submitted.

・Statement of Circumstances for Accelerated Examination: (Matters to be stated) Trademark user, time of use, place of use, explanation of urgency (only in the case of (1))
・Documentary evidence of trademark use: (only in case (1))
Evidence for some designated goods and services is required for (1) and (3) above, while evidence for all designated goods and services is required for (2) above.

The subject matter of accelerated examination and documents to be submitted are summarized as follows.

・When all the designated goods/services are those listed on the examination criteria
→(3) above is applicable It is sufficient to submit evidence of only a part of the designated goods or designated services.

・When designating goods or services other than those listed in the Examination Guidelines
→The conditions (1) or (2) must be met.
In other words
If (1) is the case, it is necessary to explain the reason for the urgency of the grant of the right.
If (2) is the case, it is necessary to collect evidence for all the designated goods and services.

In other words, if the case falls under subject (1) or (2), the preparation may be somewhat more difficult than if the case falls under subject (3).

Can you explain the reason for urgency with respect to (1)?

”Urgency” with respect to the grant of rights means either of the following

(a) A third party is using (preparing to use) the applied-for trademark without permission
(b) A third party has warned you about the use (preparation for use) of the applied-for trademark
(c) A third party has requested a license to use the applied-for trademark
(d) an application for the applied-for trademark is pending in a country other than Japan
(e) The applicant intends to use the application for which early examination is requested as the basis for a Madopro application.

If the applicant does not have any of the aforementioned reasons and simply wishes to shorten the examination time, he/she is not eligible for Accelerated examination.
Therefore, in order to fulfill the condition (1), you must provide a reason for urgency regarding the establishment of rights.
Before requesting expedited examination, it is necessary to thoroughly consider whether you really want to obtain rights to your trademark as soon as possible.

In cases falling under (2), the paperwork is complicated.

If you wish to request an accelerated examination by applying (2), you are required to collect evidence for all designated goods and designated services you are using.

If you have not yet used the designated goods or services and plan to do so in the future, you must prove that you are “making substantial preparations for the use of the applied-for trademark”.

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

Therefore, mere preparation of a design plan for a product package or an image drawing to be used on a website would not be objectively considered “making substantial preparations for use.
In this case, it is not objectively recognized that the applicant is “making substantial preparations for the use of the trademark”.

Objective evidence that “the applicant has started moving toward the use of the applied-for trademark externally, that there is little possibility of going back, and that it is certain that the applicant will use the applied-for trademark” is required.
For example, the following materials are required to be submitted.

a. Documents indicating that the applicant has received an order or placed an order for the printing of brochures, catalogs, etc., relating to goods or services bearing the trademark
b. Documents indicating that an order has been received or an order placed for the advertisement of goods or services bearing the trademark

For each document, there are detailed requirements.
For example, “materials indicating receipt of an order” requires both materials indicating that an order has been placed and materials indicating that the order has been received.
In addition, materials indicating that the applicant intends to attach the trademark to the ordered item are also required.

Gathering evidence to show that you are “using” the trademark is also difficult, but if you are not using the trademark, the preparation of the documents is especially complicated.

For (3), the description of goods and services to be designated is limited.

Among (1) through (3), the submission document is considered to be the easiest in case (3) is applicable.
However, when filing a request for accelerated examination under (3), the designated goods and services must be selected from among those listed in the examination criteria.
If this is the case, there may be cases where the goods/services that you really want to designate cannot be designated.

In other words, unless the applicant has well-prepared evidence of use of the designated goods or services, or has an urgent and justifiable reason, it will not be recognized as subject to accelerated examination.
Gathering evidence may be difficult, but preparing materials to show that “the preparation for use is proceeding to a considerable extent” may be even more difficult….
Incidentally, in case (2), if some of the designated products are not found to be eligible for accelerated examination, accelerated examination will not be available for all designated products.
If you wish to take advantage of Accelerated Examination, we recommend that you consult with a patent attorney, patent firm, or other expert regarding the details of the system as well as the preparation of documents.
Indeed. If you’re serious about getting those rights early, you’d be better off hiring an expert!

If you wish to apply for accelerated examination of trademark, you need to be sure you are prepared!

We have explained a little about the Accelerated Examination process in this article, and you can find a complete set of information about the Accelerated Examination system and the documents to be submitted here.

As you can see, the required materials are defined in detail, and it is easy to assume that the actual preparation will take time.

If you wish to obtain an accelerated examination for your trademark application, but are concerned about how to prepare evidence and materials, please feel free to contact us!

We will guide you on the appropriate measures to take after hearing about the evidence and materials that your company can prepare and the status of use of the designated goods and services!

Supervisor for the article:
Osaka Legal Strategy Department General Manager Akinori HACHIYA
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