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Oshima, Nishimura & Miyanaga PPC

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JPO Adopts New Practice for Citation of Defective Prior Applications

In light of the recent publicity surrounding mass filings of trademark applications by the notorious trademark squatter Ikuhiro Ueda and his company Best License Co., Ltd., the Japan Patent Office has released a statement regarding a change to their practice.

As explained previously on our site, Ueda is able to file such a large number of applications because he does not pay the corresponding filing fees in the vast majority of cases. Although the JPO rejects these defective applications for non-payment of fees within four to six months, during this period they may be cited against subsequent applications on relative grounds. This creates a barrier for subsequent bone fide applicants who must wait, sometimes for months, for the cited prior defective application to be rejected before their application is cleared for registration.

In an attempt to address this ongoing problem, the JPO has announced that it will begin to include a notice in the office action if a cited prior application is lacking in formality requirements and, if the subsequent application is otherwise registrable, will issue the Decision of Registration once the cited application is dismissed.

The JPO further clarified that in cases where a single applicant has filed a large number of applications exceeding the expected use of a mark, there will be a presumption that the applicant does not intend to use the mark for goods and/or services relating to the applicant’s own business, which would disqualify the application for registration under the law. They also stated clearly that advance applications for marks which are already in use by others, or for public interest marks such as those in use by local or national government, may not be registrable under the law.