The Trademark Law does not contain a specific provision to prohibit a junior application filed by an owner of existing trademark registration for the same mark designating the same goods/services from being registered.
Against the purpose of the Trademark Law
However, the JPO has consistently refused the junior application even if it was filed in the name of trademark registration owner on the grounds that it may result in producing duplicate exclusive right on a mark which is inconvenient from a legal point of view, namely “against the purpose of the Trademark Law”.
Trademark Examination Guidelines
Trademark Examination Guidelines (TEG) sets forth prohibition of the duplication.
Chapter XVIII: Others
6. When the same person makes a duplicating application for the same trademark designating the same goods or services, except for cases corresponding to the provisions of Article 68-10, in principle, after the trademark in respect of the prior application is registered, the later application will be refused under the reasons that it is “against the purpose of the Trademark Law”. This is also true when the holder of the trademark right applies for a trademark registration for the same trademark designating the same goods and services.
There is a dispute whether the Guideline should be applied to a case where junior application filed by an owner of trademark registration for the same mark designating goods/ services more than existing registration.
The Trial Board has decided the junior application will not hinder the purpose of the Trademark Law to the extent it designates additional goods/services and allowed junior trademark application to be registered regardless of examiner’s continuous refusal.
New Trademark Examination Guidelines
Expectedly the dispute reaches a conclusion in April.
According to news release from the JPO, New TEG allows trademark registration of a junior application filed by the same entity for the same mark as long as junior application designates goods/services beyond the scope of existing registration.
Without additional designation, junior application will be refused as it is.
MASAKI MIKAMI – Attorney at IP Law (JAPAN), MARKS IP LAW FIRM
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