The Trademark Examination Manual has been revised, effective April 2, 2018.
In Japan, when an application designates a number of sub-classes in a single class that is more than the stipulated amount, under Article 3.1 of the Trademark Act an Office Action may be issued requiring submission of either a) proof of use or b)-1 a Declaration of “Intent to Use” and also b)-2 a business plan.
Through April 1, 2018 the “stipulated amount” mentioned above regarding standard goods and services (excluding retail services) was “eight or more,” and the stipulated amount for retail services was “two or more.” However, regarding the treatment of the former case (goods and services, excluding retail services), due to the revision, the stipulated amount of sub-classes that can be designated without triggering an Office Action was raised from seven (7) to twenty-two (22), effective April 2, 2018. In addition, the way in which these sub-classes are counted was also changed.
Manner of Counting Sub-Classes to Date
Several sub-classes that were attributed to a single specification of goods were counted as “one” sub-class. Due to this, by adding a specification of goods that has several sub-classes, the total number of sub-classes could technically be reduced.
|When you add “seasonings, other than spices” ->||
Manner of Counting Sub-Classes as of April 2, 2018
From now on, each sub-class attributed to a specification of goods will be counted individually. Accordingly, unlike as was possible previously and indicated above, there is no way to reduce to total number of calculated sub-classes.
|soya bean paste||31A01|
|Seasonings, other than spices||31A01 31A02 31A03 31A04 31A05|
While this revision actually raised the ceiling on the stipulated number of sub-classes allowed (up to 22), because of the change in the way the sub-classes are counted, an application designating the same goods or service as previously might still be the recipient of an Office Action (Reason for Refusal).