Trademark Registration Refusal and Appeal against Decision of Refusal

I submitted a written opinion in response to the notice of reasons for refusal, but now I receive an examiner’s decision of refusal.
It says, “If you are dissatisfied with this decision, you may file a request for a trial with the Commissioner of the Patent Office within three months from the date of service of this transcript.”
What should I do?

If you are not satisfied with the content of the decision of refusal, you can file a request for a trial (appeal against decision of refusal) within the designated period and submit a counterargument.

How is a petition for appeal different from a previously submitted opinion?

It is still examined by the Patent Office, but the difference is that when you file a request for a trial, the case is heard by a panel of trial examiners.
Let’s take a look at the details.

It is tempting to think that trademark registration is hopeless if you receive an “examiner’s decision of refusal” even though you have gone to the effort to argue your case in a written opinion.
However, there is still an opportunity to argue against the decision of refusal, and there is still a possibility that the trademark will be registered.
In this article, we will explain how a request for a trial against an examiner’s decision of refusal differs from a written opinion against a notice of reasons for refusal, and what the chances of success are.

What is the difference between an Decision of Refusal and a Notice of Reason for Refusal?

A notice of reasons for refusal is a notice given by the examiner of the JPO to the applicant upon examination of an application for a trademark, together with the reasons if any why the trademark cannot be registered. It reflects the examiner’s judgment.
If the applicant is dissatisfied with the decision, he or she may argue against the examiner’s decision by submitting a written opinion.
In the case of reasons for refusal of inadequate description of designated goods or services (Article 6(1) or 6(2)), or when the reasons for refusal can be resolved by deleting the designated goods or services, etc., a written amendment may be submitted instead of a written opinion.

On the other hand, an ” Decision of Refusal” is issued when the reasons for refusal notified in a Notice of Reasons for Refusal have not yet been resolved by a written opinion or an amendment. An ” Decision of Refusal ” is also issued when the applicant has not responded to the Notification of Reasons for Refusal and has left the application unexamined or has accepted the decision.

While a Notice of Reason for Refusal and a written opinion or amendment to the Notice of Reason for Refusal are examined by the examiner, an appeal against an Decision of Refusal is a “Request for Appeal” and is heard by the Trial and Appeal Division. The reason for this is that an appeal against an Decision of Refusal is no longer pending in the examination process once the Decision of Refusal has been issued.

The trial is heard by a panel of three or five members, so the decision is made more comprehensively and in accordance with the substance of the case, rather than by an examiner who examines the case uniformly in accordance with the examination criteria.

Success possibility

Even if the decision is made by the panel, the actual success rate is a matter of concern.

According to statistical data* published by the JPO,
In 2020, there were 742 appeals against examiner’s decision of refusal, and 553 requests were approved (registration decision), which is about 74% success rate.

The possibility of success in a trial depends largely on the grounds for refusal, but even so, patent attorneys, as experts in the field, have a wealth of experience in drafting a request for a trial, including the ability to collect evidence to support a counterargument and effective methods of stating the contents of their opinions. The chances of success are higher in many cases than if you handle the case yourself.
Although there is a fee involved, the more important the trademark, the more we recommend that you consult with and request a specialist or patent firm.

*From the Annual Report on Patent Administration 2022

How to file a petition for appeal against Decision of Refusal

An appeal against Decision of Refusal may be filed by the person who received the Decision of Refusal (including the trademark applicant and his/her successor).
If the trademark application is a joint application, the request must be filed jointly by all co-applicants.

Deadlines and length of trial

A request for appeal must be filed within three months from the date of dispatch of the rejection decision.
The three-month period cannot be extended.

The trial period (time until a decision is rendered) for an appeal against Decision of Refusal is 9.7 months in 2019, 9.5 months in 2020, and 9.2 months in 2021. Since the first action period is 8.6 months in 2021, it may take more than two years if the case is not settled until the decision on the appeal against examiner’s decision of refusal.

Fee

The fee (stamp) for a request for a trial must be paid according to the number of classifications.
The fee is 15,000 yen + (number of classifications x 40,000 yen).

For example, the fee for a two-division application is as high as 95,000 yen.

What happens after the request for appeal?

When a request for a trial is filed, the JPO conducts a formal examination.　If there are no deficiencies in the formality, the case will be heard on the merits, and if the reasons for refusal have been resolved, a trial decision (granted) will be made.
If the registration fee is paid within 30 days of the receipt of the trial decision, the trademark is registered, and the establishment of the trademark is registered with the JPO in the same manner as a trademark for which a registration decision has been issued.

On the other hand, if there is a deficiency in the form of the request for a trial, an amendment order will be notified and a response will be required within a specified period. Failure to respond will result in dismissal of the appeal.

If the reasons for refusal are determined to be unresolved at the trial, a trial decision (not sustained) is rendered.
If the applicant is dissatisfied with the trial decision, he/she must file a lawsuit against the JPO within 30 days to rescind the trial decision.
The Tokyo High Court has jurisdiction over the action.

However, since the JPO trial procedures are strictly conducted in a quasi-judicial manner similar to a trial, the first trial level is omitted and the case goes directly to the High Court.

Nevertheless, according to the JPO’s statistical data*, the number of suits filed against decisions in the assessment system (appeals against examiner’s decision of refusal) is not so high: 19 cases in 2019, 16 cases in 2020, and 4 cases in 2021.

In addition to the assessment-related trials, there are also party-related trials, such as cancellation trials and invalidation trials, in which the trademark right holder and the claimant dispute.

*From the Patent Administration Annual Report 2022

Even if I receive an examiner’s decision of refusal, there is still a possibility of registration, isn’t there?
If there is no alternative trademark, rather than giving up, I would like to somehow oppose the refusal by filing a request for a trial and get a decision on registration.

Yes, it is. It depends on the basis of the reasons for refusal, but it is worthwhile to challenge the decision at the trial examination because the appeal will make a decision that is more in line with the actual situation.
When you receive the Decision of Refusal, you should first pay attention to what kind of decision is made.

Summary

How was it?
We hope that you have been able to understand the process of how to respond to an Decision of Refusal.
We recommend that you leave it to our professional patent attorneys to handle this matter.

In order to avoid refusal of registration due to the existence of a prior trademark, we strongly recommend that you conduct a prior trademark search before filing an application.
We offer Amazing DX, a free trademark search service.
If the Amazing DX search shows that your trademark is registrable, you can submit your application online.
We hope you will take advantage of this service.