Discontinuation of the Fast Track Examination for trademark applications due to shortening of the First Action pendency in Japan
On 15 March 2023, the Japan Patent Office (JPO) has announced that they will discontinue the Fast Track Examination, which is an examination operation where trademark applications that meet the conditions will be examined in about 6 months from the filing date, on 1 April 2023 since the First Action pendency (FA pendency), which is the period from the filing date of the application to the mailing date of a first Office Action or a notice of allowance, has become shortened in Japan. The JPO has not specified when they will resume the Fast Track Examination.
Under the current examination system, trademark applications covering only the goods and/or services indicated in the JPO’s guidelines at the time of filing are automatically subject to the Fast Track Examination when no amendment has been made to the list of goods and/or services until the commencement of the examination. The Fast Track Examination began in October 2018, and, compared to the standard examination, applicants could receive a first Office Action or a notice of allowance in nearly half the time with the Fast Track Examination in the past.
However, according to the JPO, by their efforts to reduce the time of pendency of applications, the FA pendency has become shortened and the number of cases, in which an applicant can receive a first Office Action or a notice of allowance within 6 months even if the application undergoes the standard examination, is increasing recently. Therefore, given that the Fast Track Examination is losing its advantage, the JPO has decided to discontinue it. In the meantime, the JPO periodically announces the time period from accepting a trademark application to starting the substantial examination once every four months, and, from our experience, the FA pendency for applications undergoing the standard examination mostly coincides with the said time period. The time periods announced by the JPO last month are as follows;
Whilst the FA pendency has become shortened, it is necessary for applicants to obtain trademark rights as soon as possible in case of urgency, such as battle against counterfeit goods and licensing negotiation. In that case, the accelerated examination system is available when the applicant has already started to use the applied mark. According to the JPO, in case of using the accelerated examination system, applicants allegedly could receive a first Office Action or a notice of allowance after 2.1 months from the date of filing a request for the accelerated examination on average in 2021. In this regard, applications based on international registrations designating Japan, and applications for non-traditional trademarks, which are motion marks, hologram marks, marks consisting solely of colors, sound marks, position marks and some three-dimensional marks, are not subject to the accelerated examination.