The applicant must review closely the reasons for refusal mentioned in the notification and comprehend the substance of the reasons for refusal. If there are points that are not clear, it is recommended that the applicant consult his/her trademark administrator(e.g. patent attorney), or make inquiries to the examiner through the trademark administrator.
If the applicant disagrees with the examiner's reasons for refusal, the applicant may submit a written argument and/or amendment.
If necessary for overcoming the examiner's reasons for refusal, the applicant may demand a trial for invalidation.
Restriction on amendments and declining of amendments
Amending the designated goods is usually the most effective way of overcoming the reasons for refusal. However, there are restriction as mentioned below in occasion and in content of amendments.
Persons making application, demands or other procedures relating to trademark registration may make amendments only while the case remains under examination or trial at the Patent Office. Further restrictions are imposed on amendments after transmittal of decision for publication of the application for opposition.
If an amendment made on the designated goods or the trademark is considered to change the gist of the application, it may be declined by the examiner.
Against the examiner's decision to decline an amendment, there are two possible responses.
- 1. To follow the examiner's decision
The examination will be resumed as if no amendment took place. - 2. To demand a trial against the decision
Within 30 days from the transmittal of the certified copy of the decision to decline amendment, the applicant who is dissatisfied with the decision may demand a trial against it and ask for a reconsideration by trial examiners. The examination of the application is suspended while the trial is in process.
Publication of the application for opposition
When the reasons for refusal are overcome with the response by the applicant or when no reason for refusal is found, the examiner makes a decision for publication of the application for opposition. The Commissioner of the Patent Office then issues Office Gazette for opposition, to publish the contents of the application worthy of granting a trademark registration.
This does not mean that trademark registation is granted at that stage, and a reason for refusal may be again sent to the applicant after publication, although there is a high probability that the trademark is registrable. The application documents related to the publication may be freely inspected, free charge, in the Patent Office during two months period following the date of publication
Filing of opposition
During the 30 days following the publication date, any person may file an opposition to the granting of trademark registration. Filing of opposition is carried out by filing a document stating the grounds of opposition.
Any person who has filled an opposition against a trademark registration may supplement and correct the reason and evidence mentioned in the written opposition against a trademark registration within thirty days after the period of the opposition against the trademark registration expires.
When an opposition is filed, the examiner in charge will consider the arguments presented by both the applicant and the opponent and makes a decision concerning the opposition to granting of registration. The applicant may contest the credibility of the evidence used for opposition.
If the examiner decides that there is reason in the opposition, he then makes a decision to refuse the application. On the other hand, if he/she finds no reason in the opposition, he/she makes a decision to grant registration of trademark.
If no opposition is filed, the examiner normally makes a decision to grant registration of trademark. The system of filing opposition contributes to the stability of the trademark right. This may be seen from the low rate of the decision of invalidity in trials for invalidation after a trademark right has been established.
Decision of registration ; Decision of refusal
- 1. Decision of registration
After an application is published for opposition after examination and if no reason for refusal is found in the statutory period for filing an opposition, a decision of registration of trademark is made.
When a decision of registarion of trademark is made, a certified copy of the decision is sent to the applicant. The application is invalidated if the applicant fails to pay the registration fee within a prescribed period from the transmittal of the certified copy of the decision.
- 2. Decision of refusal
A decision of refusal is made when the reason for refusal found by the examiner is not overcome with written argument or amendment presented by the applicant.
If the applicant is dissatisfied with the decision, he may request an appellate trial within thirty days from the transmittal of the certified copy of the decision.
Trademark right
When a decision of registration of trademark is made, a certified copy of the decision is sent to the applicant.
When the trademark is registered on the Trademark Register after the payment of the registration fee, the trademark right comes into force.
The owner of a trademark right shall have an exclusive right to use the registered trademark with respect to the designated goods or services. The owner may establish a right of exclusive use or non-exclusive use.
Trial and appellate trial
- 1. Trial for invalidation of trademark registration.
If a trademark registration or additional registration of designated goods falls under any of the prescribed cases, the interested person or examiner may request a invalidation trial. In this case, if there are two or more designated goods of the registered trademark, it may be requested for each designated goods.
- 2. Trial for invalidation of trademark right duration renewal registration.
If a trademark right duration renewal registration falls under any of the prescribed cases, the interested person or the examiner may request a invalidation trial, and in this case, if there are two or more designated goods of the renewed registered trademark, it may be requested for each designated goods.
- 3. Revocation trial on trademark registration.
If a registered trademark falls under any of the prescribed cases, the revocation trial on the trademark registration may be requested.
- 4. Request for appellate trial.
If a person who got a trial decision is dissatisfied with it, he may request an appellate trial within 30 days after he is served a copy of the trial decision. In this case, no appellate trial protesting only against the expenses of the trial may be requested.
Appeal to supreme court
If a person upon whom the decision of the appellate trial is given is dissatisfied with it, he may bring a final appeal in the Supreme Court within 30 days after he is served a copy of the trial decision only in case where the final appeal is brought by the reason that the decision on trial is in contravention of laws and regulations.
