Jack Ellis

While the Japan Patent Office (JPO) registered more trademarks last year than it has in almost a decade, new data indicates that it is also taking more time than ever before to decide whether applications should be granted or refused.

In 2016, the JPO issued 131,264 first actions – ie, the first notice of an examination decision to an applicant after their trademark application has been submitted – according to the agency’s most recent annual status report. This represents an increase of 17.7% on first actions issued in 2015, and is the highest number of first actions in the past five years.

Of these, 113,025 – or 85.9% - were notices of the examiner’s decision to register the trademark. The remainder were largely notices of the examiner’s reasons for refusal of the application. This allowance rate is slightly lower than the previous year’s 89.6%, but nonetheless appears to be fairly consistent with the trend over the past five years (2014, 86.6%; 2013, 88.1%; 2013, 85.4%).

A somewhat more substantial change can be seen in the average pendency period for trademark applications. In 2015, applicants had to wait an average of 4 months between the filing of their trademark application and the JPO’s issuance of a first action. Last year, that timeframe extended to 4.8 months – an increase of 20%. For accelerated examinations – which applicants can request in certain urgent circumstances – the pendency period was 1.8 months. The JPO received 2,210 requests for accelerated examination of trademark applications in 2016, representing growth of 9.2% on the figure for 2015 and the highest number of such requests in the past five years.

When it comes to challenging examiner decisions on the registration or otherwise of trademarks, the JPO allowed 741 appeals against an examiner’s decision for refusal in 2016. The average waiting time from the filing of the request to the conclusion of the case was 7.2 months. The agency also allowed 103 trials for invalidation, with a pendency period of 11.3 months; 480 oppositions, with a pendency of 8.4 months; and 969 trials for rescission, with pendency of 6.4 months. With the exception of oppositions, these represent the lowest number of such requests in a year filed with the JPO over the past decade. Opposition requests remained flat as compared to 2015, and were slightly higher than in 2014.

It is also worth mentioning are the filing figures for non-traditional trademarks – including sounds, colours, animations and holograms, among others – which were authorised for protection under Japanese trademark law from April 2015. As of the end of 2016, 1,446 non-traditional trademark applications had been submitted to the JPO; 183 of these have been registered as trademarks so far. The JPO had previously reported that it had received 471 applications for non-traditional trademark registrations on the first day that they became eligible.

This would suggest that since April 2015, interest in non-traditional marks has dropped off considerably – following a trend seen in other jurisdictions where such protection has been made available. Time will tell whether falling interest in non-traditional marks continues.

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