The Japan Patent Office (the "JPO") recently amended its rule regarding the number of sub-classes that may be included in one International Class. Under the previous rule, an applicant was able to include only up to 7 sub-classes in one Class, and if the applicant exceeded this limit, the applicant was asked to show use or intent to use. However, under the new rule, an applicant is able to include up to 22 sub-classes in one Class. The new rule goes into effect on April 2, 2018.
Article 3(1), main text of the Trademark Act of Japan states that "Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered". Here, the Trademark Act provides that an applied-for trademark may be registered only if it is a "trademark to be used".
Regarding this "use" requirement, if the scope of goods/services in one International Class is broad, the JPO Examiner will consider that there is doubt as to whether the applicant uses or has intent to use the applied-for trademark, and will issue an office action based on Article 3(1), main text.
The JPO determines whether the goods/services in one Class is broad or not by counting the number of sub-classes included in that Class. The JPO adopts a sub-classification (similarity code) system, which assists the JPO Examiner in determining the similarity of goods/services. If two goods/services belong to the same sub-class, the goods/services will be considered similar to each other.
Under the JPO's previous rule, if the number of sub-classes included in one Class was 8 or more, the JPO Examiner would consider that the scope of goods/services in that Class was broad and would issue an office action. In response, the applicant had to either: (a) delete some goods/services so that the number of sub-classes would not exceed 7; or (b) submit evidence showing that the applicant used or had plan to use the applied-for trademark in the near future.
There was an exception to this JPO's rule regarding goods/services that covered multiple sub-classes. For example, "clothing" in Class 25 covers five sub-classes: 17A01, 17A02, 17A03, 17A04 and 17A07. If an applicant designated "clothing" in Class 25, the number of sub-classes would be 5. However, for the purpose of applying the JPO's above rule, the number of sub-classes would be counted as 1. Therefore, an applicant was able to designate 6 additional sub-classes in Class 25 in addition to "clothing".
While this exception allowed an applicant to cover more than 7 sub-classes in one Class, there was criticism that this exception was too complicated and it was difficult to count the number of sub-classes due to this exception. Also, it was also criticized that the limit (7 sub-classes) is too narrow and is not sufficient to cover relevant goods/services involved in an applicant's business.
The JPO recently amended the rule regarding Article 3(1), main text of the Trademark Act. The amended rule takes effect on April 2, 2018, and applies to all pending trademark applications that will be examined on or after that date (including applications filed before that date).
Under the amended rule, if the number of sub-classes included in one Class is 23 or more, the JPO Examiner will consider that the scope of goods/services in that Class is broad and would issue an office action. In other words, if the number of sub-classes in one Class does not exceed 22, an applicant will not receive an office action.
In the meantime, the amendment also abolished the exception regarding goods/services that covered multiple sub-classes. Under the amended rule, for example, if an applicant designates "clothing" in Class 25, the number of sub-classes will be counted as 5 instead of 1.
It should be noted that this amendment does not amend the rule regarding application of Article 3(1), main text to wholesale/retail services in Class 35. Namely, if an applicant designates wholesale/retail services in Class 35 that cover 2 or more sub-classes, the JPO Examiner will consider that the scope of services in Class 35 is broad and will issue an office action based on Article 3(1), main text. There is no change to this rule by the amendment.
It is likely that this amendment will have a significant impact on the practice regarding filing of trademark application in Japan.
Written by: Mr. Yusuke Inui (Attorney-at-law (Japan, New York), Patent Attorney (Japan))