HOME > IP INFORMATION > Trademark > Countermeasures for official order to submit evidence of use or intent-to-use:
Countermeasures for official order to submit evidence of use or intent-to-use:
Effective from April 1, 2007, the Japan Patent Office may request an applicant of a trademark application citing a broad list of goods or services that corresponds to more than eight similarity codes, to submit evidence of use or evidence to support intent-to-use. The similarity codes help to facilitate determinations of similarity between goods and services in different international classes.
Accordingly, your client may receive an office action from the Japan Patent Office having the following notification:
Based on Article 3(1) of the Trademark Law, a registrable trademark needs to be in use or to be used in the near future. Since the subject application designates a broad range of goods (services), it is very questionable whether the applicant is actually using all goods (services) or will use them in the future. Thus, the subject application does not satisfy the requirements of Article 3(1) of the Trademark Law.
In order to properly respond to such a notification at the examination stage, we propose the following countermeasures:
(a) delete some goods or services to limit the number of similarity codes to seven at the most;
(b) file a divisional application; or
(c) submit documents specifying the applicant’s evidence of use or the applicant’s intentions of use and business plans per similarity code
Examples of acceptable evidence of use to prove that the applicant is using the mark in Japan are as follows:
(1) Printed matter (newspapers, magazines, catalogs, leaflets, etc.);
(2) Photographs of store exteriors and interiors showing the mark in use;
(3) Business documents (order forms, delivery statements, invoices, receipts, etc.);
(4) Testimonials issued by public organizations (government, local governments, foreign embassies in Japan, Chambers of Commerce and Industry;) or
(5) Testimonials issued by others in the same trade, trade clients, consumers, etc.;
(6) Articles from the press published on the Internet; and/or
(7) Documents stating the sales amount of goods in relation to retail services
The fact that the applicant is conducting general retail services, i.e., large-scale retail stores, can be proved by documents certifying, for example:
(i) that the applicant is a retailer or a wholesaler;
(ii) that the above retailer or wholesaler is providing retail services at a single establishment for goods in each of the fields of clothing, foods and beverages, and livingware, all together collectively; and
(iii) that the sales in each field of the above accounts from 10% to 70% of the total sales
Examples of acceptable evidence to support intentions of use and business plans to prove that the applicant will conduct business in the future using the mark are as follows:
(1) showing the applicant’s intention to use the mark within three to four years from the date of filing the application (within three years following the registration) specifying the following (confidential or unnecessary information on documents may be concealed by masking at the time of submission):
(i) Purpose of use the mark;
(ii) The applicant’s certain business related to the designated goods or service (production, sales, etc.); and
(iii) When use of the mark will begin; and/or
(2) submitting documents showing the applicant’s preparation status for commencing business (business plan).
Further, if a subsidiary, affiliated store or union member of the applicant is conducting the actual business, it is necessary to demonstrate the relationship between the applicant and the actual user by submitting documents such as a security report, quarterly corporate report, corporate yearbook, documents from meetings of shareholders, company brochure, catalog, articles of corporation, pamphlet, documents to prove that the applicant’s subsidiary is a constituent member of the applicant’s corporate body, franchise agreement, and the like.