1.
General
1.1.
Upon registration at the Japan Patent
Office, an exclusive right to a trademark is established.
The granted trademark right is effective throughout Japan,
and its owner can use it exclusively with respect to the
designated goods and services, without exclusion by any
other party. The Japanese trademark system is a
first-to-file system. Any words or designs with or without
colors, three dimensional marks and collective marks may
be registered as trademarks. Service marks may also be
registered, and multi-class applications are acceptable.
1.2.
The International Classification System of goods
and services was introduced as of April 1, 1992. The 8th
Edition of the Nice International Classification of Goods
and Services (which expanded the International
Classification system) came into force in Japan on January
1, 2002; however, this adoption does not affect existing
applications and registrations filed before January 1,
2002.
1.3.
The associated trademark system, where trademark
owners could formerly register marks similar to their own
marks as associated marks, has been abolished as of April
1, 1997. Japan is a member of the Paris Convention, the
Trademark Law Treaty, TRIPS and the Madrid Protocol.
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2.
Filing Requirements (Step 1)
The applicant must submit to the Patent Office directly
or by mail an application for trademark registration
having the following requirements:
2.1.
The applicant's full name, address and nationality.
2.2.
Details of the mark. If the mark consists of only
plain block letters in English or Japanese characters,
drawings are not necessary. However, if the mark consists
of a logo, stylized letters, design, 3-D or has color(s),
a clear drawing of the mark is necessary.
2.3.
Goods and/or services to be covered must be
itemized, but there is no limitation on the number of
goods or services to be designated in one class. An
additional fee is required for each additional class in
the same application (a multi-class application).
2.4.
If Convention priority is claimed, the date and
country of the base application must be indicated in the
application, and a certified copy of the base application
must be submitted within a three-month period from the
filing date of the Japanese application.
2.5.
Neither prior use nor any evidence of use is
required. Any person who intends to use the mark may file
an application.
2.6.
No specimens showing actual use of
the mark are required. Additionally, no Power of Attorney
or any other formal documents from the applicant are in
principle required. However, the Patent Office may request
that the applicant file documents to confirm nationality,
corporate entity, etc.
2.7.
An online filing system
(electronic trademark applications) has been introduced
beginning on January 1, 2000.
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3.
Search
3.1.
In Japan, a trademark search can be conducted based
only upon the Patent Office's records, namely, the prior
registrations and pending applications for trademarks that
are the same as or similar to the proposed trademark with
respect to goods or services for which the mark is to be
used. However, pending applications filed during the last
three months or so are not completely listed in the data
available for the search.
3.2.
A separate search must be conducted for each group
of similar goods, and several such groups are included in
one International Class. Thus, the fee for conducting a
full trademark search for a word mark depends upon the
number of groups of similar goods.
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4.
Examination (Steps 2 & 3)
4.1.
The Japanese trademark system is a first-to-file
system. Specifically, a trademark in an application filed
prior to other applications for identical or similar
trademarks will become registered. Thus, it is always
advisable to file an application as soon as possible in
order to secure an earlier filing date.
4.2.
The application is examined to determine whether it
fulfills the necessary procedural and formal requirements.
If any necessary documents are missing or required
sections have not been filled in, an invitation to correct
will be made (step 2).
4.3.
All applications are examined to determine whether
they meet the substantive requirements; in particular the
examination is made regarding the distinctiveness of a
mark and its and similarity to a third party's prior
registrations and applications (step 3). Request for
accelerated examinations can be made.
4.4.
Trademarks which do not enable consumers to
differentiate the applicant's goods or services from those
belonging to other parties will be refused. Additionally,
trademarks which are unregistrable for reasons of public
interest or for the protection of private interests will
also be refused.
4.5.
If there is any reason to reject the application,
the Examiner will issue a preliminary notice of rejection
(step 4) and the applicant can file an argument and/or an
amendment to overcome the official notice (step 5). If the
reasons for refusal are not eliminated, the decision of
rejection will stand (step 9).
4.6.
If there is no reason for rejection or the
applicant can overcome the official notice, an official
decision for registration of the application will be
issued (step 6) and the application will be registered
upon the payment of a registration fee (step 7). The
registration fee can also be payable in two installments.
4.7.
Japan has no system for disclaiming any descriptive
word contained in a trademark application. If an
application for a trademark including a famous
geographical name with a distinctive element is filed, the
Examiner will request that the applicant restrict the
goods covered by the application to those made in the
country where the place indicated by the geographical name
is located, and the trademark would be registered
accordingly.
4.8.
The Japanese Patent Office has issued Certificates
of Registration for trademarks that have been registered
since January 1, 1999. For trademarks registered on
December 31, 1998 or before, it is necessary to request
that the Patent Office issue a special Certificate.
4.9.
An official action for a trademark application is
generally received after about 10 months or later after
the filing of the application.
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5.
Appeal of a Decision for Rejection (Step 10)
5.1.
If there is dissatisfaction with a decision of
rejection of a trademark application, an appeal against
the decision can be filed with the Trial Board of the
Patent Office. A notice of appeal can initially be filed
without showing any grounds. A Power of Attorney
executed by the applicant must be filed.
5.2.
Within about one month of the filing of the appeal,
the Patent Office will send a notice regarding an appeal
number assigned to the subject appeal. Thereafter, a
formal official notice is issued requesting that we file
substantial reasons for the appeal along with any
evidence to support our argument. Such substantial reasons
must be filed within 30 days (no extension is allowable),
although additional evidence can be submitted later.
5.3.
The appeal is examined by three Trial Examiners
based only upon the reasons for the appeal and the
evidence filed by the applicant. No hearing is held. An
official decision is issued upon completion of the
examination.
5.4.
If there is dissatisfaction with that official
decision, the applicant can file a court action before the
Tokyo High Court seeking revocation of the decision (step
11). A decision rendered by the Tokyo High Court can
further be appealed before the Supreme Court, a decision
by which is final.
5.5.
An official decision regarding an appeal is
generally issued about 18 months or later after the filing
of the appeal.
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6.
Opposition
6.1.
After registration, an application is published in
the Official Gazette for opposition. Any person can file
an opposition against it with the Commissioner of the
Patent Office within two months from the publication date.
Since no extension of this period is allowable, a notice
of opposition (a pro-forma opposition) must be filed
within those two months in order to secure title as an
opponent. An opponent must then file substantial reasons
for the opposition and evidence supporting those reasons
must then be filed within three months after that
expiration of the opposition term.
6.2.
A copy of the opposition is sent to the applicant
by the Patent Office, but the applicant is not required
to take any action at that time. The Examiners of the
Trial Board of the Patent Office will examine the
opposition and, if they consider it unreasonable, they
will issue an official decision dismissing the opposition
and maintaining the opposed registration.
6.3.
On the other hand, if they consider the opposition
to be reasonable, they will issue a preliminary notice of
cancellation of the registration and request the applicant
to file a response to the notice. After examining the
response, they will issue an official decision
maintaining or canceling the registration (step 8).
6.4.
An applicant who receives a decision canceling a
registration can file a court action seeking the
revocation of the decision before the Tokyo High Court
(step 11). However, an opponent who receives a decision
dismissing an opposition cannot file an appeal against the
opposition decision itself. Instead, the opponent can file
for a trial for invalidation of the registration with the
Patent Office, based on the same reasons as those for the
opposition.
6.5.
An official decision in an opposition is generally
received in about 6 months or later after the filing of
the opposition.
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7.
Trials for Invalidation or Cancellation
7.1.
In Japan, the term "cancellation trial" is often
used to indicate a cancellation action against a trademark
registration based on non-use. The term "invalidation
trial" is used to indicate a forfeiture action against a
trademark registration based on a third person's prior
right to a similar mark or the lack of distinctiveness.
7.2.
In order to seek the cancellation (or invalidation)
of a trademark registration in Japan, it is necessary to
demand a trial for cancellation (or invalidation) of the
trademark registration at issue with the Trial Board of
the Patent Office.
7.3.
Under Japanese Trademark Law, anyone can demand a
cancellation trial against a trademark registration based
on non-use for three consecutive years in Japan with
respect to all or some of the designated goods of the
registration. If such a cancellation trial is filed for,
the registrant must then prove that the mark has been used
by him/her or a licensee with respect to the goods sought
to be cancelled, or that there is good reason justifying
non-use of the mark. Otherwise, the cancellation trial
will be accepted and the registration will be cancelled
with respect to the goods sought to be cancelled.
7.4.
The onus of establishing use of the challenged
trademark falls on the registrant. Therefore, in the
initial document submitted in the trial for cancellation
based on non-use, it is not necessary for the plaintiff to
make substantial arguments or file any evidence proving
non-use of the trademark at issue. Instead, it is
sufficient for the plaintiff to file a petition seeking
cancellation of the mark based on non-use. If the
defendant (the owner of the trademark at issue) then files
a response to the trial with evidence sufficient to prove
the use thereof, it would be impossible to refute that
evidence and the plaintiff would lose the case. On the
other hand, if the defendant does not file any response
and evidence of use, it would be unnecessary for the
plaintiff to take any further action and he/she would win
the case. In either case, an official decision would be
served on the parties concerned.
7.5.
Furthermore, if the response and evidence filed by
the defendant are disputable or there are some questions
thereon, the plaintiff can file a refutation and make a
substantial argument emphasizing that the trademark at
issue should be cancelled based on non-use. The parties
concerned can thereafter file documents supporting their
respective arguments, although that happens rarely. An
official decision is then finally issued, and the party
receiving an unfavorable decision can subsequently file an
appeal before the Tokyo High Court.
7.6.
Regarding an invalidation trial, it can be demanded
only by a person who has a legal interest in the trademark
registration at issue (unlike a cancellation trial, which
can be demanded by anyone). However, this limitation term
does not apply where the trademark has been registered
with the intension of conducting unfair competition or of
carrying out a dishonest scheme.
7.7.
The other procedures for an invalidation trial are
the same as the above-mentioned ones for a cancellation
trial.
7.8.
An official decision in an invalidation trial is
generally received in about 20 months or later after said
trials are filed for. An official decision in a
cancellation trial based on non-use is generally received
in about 10 months or later after said trial is filed for.
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8.
Licenses
8.1.
In Japan as in many countries, there are two kinds
of trademark licenses. One is an exclusive license ("Senyo-Shiyo-Ken")
under Article 30 of the Trademark Law, and the other is a
non-exclusive license ("Tsujyo-Shiyo-Ken") under Article
31.
8.2.
A "Senyo-Shiyo-Ken" (exclusive license) is
effective only when it is recorded on the Official
Register, and the holder of this right is recognized as
having an exclusive right to a registered trademark to the
extent of the Licensing Agreement. Furthermore, the
licensee can initiate a court action solely in his/her own
name against an infringer to stop use of the registered
trademark and recover damages. Additionally, no person
other than the licensee, not even the licensor, can use
the trademark concerned within the scope of the license
granted to the licensee.
8.3.
In contrast, a "Tsujyo-Shiyo-Ken" (non-exclusive
license), does not need to be recorded in order to be
effective. This use right is based only upon the Licensing
Agreement between the trademark owner and the licensee,
who can use it to the extent of the Licensing Agreement.
The licensee does not have the right to oppose another
application or sue infringers in his/her own name. It is
possible to record this use right, but such a registration
is effective only against late comers, such as a future
assignee of the trademark concerned. Even if this use
right is not recorded, use of the trademark by the
licensee will meet the use requirement for the trademark
concerned in a possible cancellation trial based on
non-use.
8.4.
Both use rights described above can only be
recorded after the trademark concerned is actually
registered.
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9.
Infringement
9.1.
In Japan, a trademark right holder exclusively
possesses the right to use the registered trademark on the
designated goods or services. The use by another party of
an identical or similar trademark with respect to an
identical or similar range of goods or services
constitutes infringement. Thus, the trademark right holder
may require the infringer to cease the infringing acts and
pay damages.
9.2.
In Japan, the trademark owner usually for sends a
warning letter first to an infringer before taking any
court action. Thereafter, negotiations or arguments via
correspondence typically occur between the parties in
order to settle the matter. If the infringer agrees to
cease using the mark in the future and/or pay monetary
compensation, the matter is settled.
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10.
Duration of Registration and Renewal
10.1.
The duration of a trademark registration is 10
years from the registration date and can be renewed for
the same period by filing a petition for renewal along
with payment of a renewal fee. The renewal fee can be paid
in two installments, each of which covers a five-year
period. There is a six -month grace period for paying the
renewal fee, but a renewal fee double the usual amount
must be paid in that case.
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11.
Re-classification
11.1.
Japan adopted the International Classification
system on April 1, 1992. Under the revised Trademark Law
of 1996, the goods covered by those registered trademarks
that were filed on or before March 31, 1992 in accordance
with the four versions of earlier Japanese classifications
(of 1899, 1909, 1921 and 1959) will be reclassified in
accordance with the International Classification system
upon renewal.
11.2.
These re-classification procedures commenced on
April 1, 1998 with respect to very old registrations whose
expiration dates were on or after October 1, 1998. The
registrant must file an application for re-classification
separately from the petition for renewal, and the
application for re-classification is examined by the
examiner to see whether the re-classified class(es) and
the identification of goods are acceptable or not.
11.3.
It is possible to renew a trademark registration
without re-classifying the same registration. However, a
further renewal of the registration would not be allowable
in that case.
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12.
Marketing
12.1.
Under Japanese trademark law and regulations, a
trademark right holder shall "make efforts" to indicate
that the trademark is registered on the goods or packaging
thereof. Accordingly, the indication of a trademark
registration notice is optional. There is no statutory
penalty or disadvantage resulting from the failure to
indicate a registration notice.
12.2.
The Trademark Law Enforcement Order prescribes that
a registration notice shall be indicated by the words
"registered trademark" in Chinese characters and the
registration number thereof. However, only the ® symbol is
widely used in actual trade to indicate that a mark has
been registered in Japan.
12.3.
Trademarks registered in other countries have no
legal effect in Japan. Therefore, if a mark has not been
registered in Japan, the use of any indication having the
meaning "registered trademark" or the ® symbol on products
sold in Japan would constitute a false indication, which
is punishable.
12.4.
The
TM
symbol is also used in Japan when the mark concerned has
not been registered, although this symbol is not popular.
There is no clear definition of the symbol in Japan and
thus the average Japanese consumer would not probably know
its meaning. Of course, there is no legal effect resulting
from the use of the symbol. Furthermore, in Japan, there
is no particular indication to show that the mark belongs
to the user, when it has not been registered.
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13.
Well-known Trademarks
13.1.
The Patent Office has published a "list of
established famous and well-known marks" on the Internet.
The list includes two kinds of trademarks, one being the
trademarks which have been registered as defensive marks,
the other being trademarks which have been recognized as
famous or well-known trademarks in decisions rendered by
the Trial (Appeal) Board of the Patent Office or the
courts.
13.2.
Thus, there is no system to register famous and
well-known trademarks in Japan, but the Patent Office has
informally punished such trademarks as mentioned above in
the "list of established famous and well-known marks".
13.3.
If the owner of a trademark wishes to have his/her
trademark published in this list, it would therefore be
necessary to obtain a defensive mark registration with
respect to his/her trademark. In other words, if his/her
mark were registered as a defensive mark, then the mark
would be automatically published in the above list.
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14.
Assignment
14.1.
Under Japanese Trademark Law, the assignment of a
trademark application or registration is effective only
when it is recorded in the Official Register. In order to
record this assignment, the following are necessary: (1) a
deed of assignment executed by the assignor or an
agreement between the assignor and assignee concerning
the assignment (the application and/or registration
numbers of the trademarks concerned must be indicated in
those documents) and (2) a Power of Attorney executed by
the assignee.
14.2.
A petition for recording the assignment must be
filed together with the above documents with the Patent
Office, after which said assignment would be registered.
The advertisement of the assignment in a newspaper is no
longer required.
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15.
Recording Change of Name and Address
15.1.
In order to record the change of a name and address, a
Power of Attorney executed by the trademark owner is
necessary. It is sufficient to file a petition for
recording the same with the Patent Office, but the
application and/or registration numbers of the trademarks
concerned must be indicated in the petition.
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