Frequently Asked Questions

Frequently Asked Questions

Regarding goods and services in general

Q For the reason that the designation of goods and services in the 1 classification covers a wide range, I received a notice of Reason for Refusal based on there being a doubt regarding the use of or intention of use the trademark for designated goods or designated services under the Trademark Act, Article 3, Clause 1, main paragraph. Specifically what cases does this "doubt regarding the use of or intention of use the trademark for designated goods or designated services" refer to?
A Guidelines to analyze an application covered by this case:
1. When the applicant, in principle, designates eight or more codes for similar retail services under one (hereinafter called "similar group codes"), examiners shall confirm the applicant's use of or intention to use the trademark since the applicant is considered to designate a wide variety of goods or services.

2. However, when the application for a single goods or service is classified in multiple similar group codes and there is no other appropriate classification for the application, the application is considered to be covered by a single similar group code even if the single goods or service is covered by two or more classification places, such as Class 9 for electronic publication (26A01, 26D01).

In addition, goods or services included in a so-called trademark representing a comprehensive idea exemplified in the Examination Standards for Similarity of Goods or Services, such as Class 25 "Clothing" (17A01, 17A02, 17A03, 17A04, 17A07, etc.) are often difficult to separate into each similar retail service, and the application for such goods or services is considered to be covered by a single similar group code even if the application for goods or services for a trademark representing a comprehensive idea is classified in two or more similar group codes.

Through this process, when an application is classified in seven or less similar group codes in total under one class, examiners shall not confirm the applicant's use of or intention to use the trademark.

Additionally, an application for retail services is not considered to be covered by similar group codes for the goods in which the applicant deals. For example, an application for "35K04 (12A05): Retail services or wholesale services for automobiles" is covered by two similar group codes, 35K04 and 12A05, but the application is considered to be covered by a single similar group code, 35K04, alone since the other similar group code, 12A05, covers the goods in which the applicant deals.
This phrase is quoted from the JPO.

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