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Assistance for Reattempt
Reattempt after decision of refusal
In these years, approximately 85% to 90% of all trademark applications in Japan are registered. However, this means that approximately 10% to 15% of the applications are dismissed or refused.
In a case where you receive a decision of refusal from the JPO (Japan Patent Office), you might think that there are only the following two options to be selected:
(1) Accept the decision of refusal and give up the registration.
(2) File a request for a trial against examiner’s decision of refusal.
In fact, most cases are addressed by taking any of the above two measures but those measures have the following demerits:
[Demerit (in a case of accepting the decision of refusal and giving up the registration)]
• You cannot help refraining from using a trademark which has been determined to be identical or similar to other’s registered trademark, in order to avoid infringement on the trademark right.
• Once the decision of refusal is fixed, the status of prior application is lost (Article 8(3) of the Japanese Trademark Act). Therefore, if another person files an application for the same trademark or uses the same trademark after that, you cannot seek an injunction, etc. and, on the contrary, there is a risk of infringing the other person’s trademark right.
[Demerit (in a case of filing a request for a trial against examiner’s decision of refusal)]
The request for the trial requires expense and time.
However, there is other measures to be taken, other than the above two measures. Depending on the reasons for the decision of refusal, there is a sufficient possibility of registration by refiling an application with some strategies.
• In a case where the decision of refusal was issued based on a cited prior trademark but the cited prior trademark may currently be extinguished due to the passage of time.
→ Refile an application at an appropriate timing!
• In a case where the decision of refusal was issued for lack of distinctiveness but the trademark may be registered by making arguments from a slightly different viewpoint.
→ Reconsider arguments for increasing the chance of registration, and refile an application!
HARAKENZO supports such refiling of an application with some strategies in Japan through “Assistance for Reattempt”.
For details, please feel free to contact us. Even if you have received a decision of refusal, you do not need to give up, and please consult us.