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Japanese Trademark Law
The information found or referenced herein is not intended to be legal advice or a substitute for obtaining legal advice from a licensed attorney.
Table of Contents
- I. Who may register a trademark
- II. Ownership rights
- III. Representation
- IV. Application procedures
- V. Examination
- VI. Term of registration and renewal
- VII. Reclassification
- VIII. Post-grant opposition system
- IX. Trial system
- X. Assignment and licensing
- XI. Infringement
- XII. Other forms of registration
- XIII. International application
I. Who may register a trademark
Any person or legal entity who intends to use a trademark in Japan may file for registration. The threshold for showing intention appears to be met merely by filing.
The registration of a trademark gives the registrant an exclusive right to use the mark in connection with the designated goods or services. Only when a trademark is registered does its respective right become effective. Therefore prior use of an unregistered trademark does not automatically confer an exclusive right to use the mark with respect to the specified goods or services. Regardless, any person or business that has been using a trademark in Japan that is identical or similar to a registered trademark prior to the application date of the registered trademark is allowed to continue to use the mark, assuming the mark has become well known.
An applicant who has his domicile or residence in Japan may represent himself
before the Patent Office, or may be represented by a patent attorney ("benrishi")
or a general attorney ("bengoshi"). However, applicants who do not have a domicile
or residence in Japan must be represented by a "benrishi" or "bengoshi" who has
his domicile or residence in Japan.
The domicile or residence of a "benrishi" or "bengoshi" representing a registrant
who does not have a domicile or residence in Japan will be considered when determining
the proper venue for litigation.
Like the Japanese patent system, the Japanese trademark system employs a first-to-file
system. Under this system if one or more applications conflict with another, the
application that was filed first is registered. In the unlikely event that two
or more applications are filed for identical or similar marks on the same day
for identical or similar goods or services, the parties involved are given the
opportunity to decide which one may obtain registration. If no agreement can be
reached within a specified time limit, the Director-General will draw lots.
Due to the first-to-file system and the low threshold for showing intention, many
large companies in Japan have created their own trademark banks by registering
many different trademarks. Many of these trademarks are never used. About one
third of all registered trademarks have never been used. More than two thirds
of all registered trademarks are currently not in use. The Japanese system does
allow a party to demand a Trial for Cancellation of Trademark Registration (due
to non-use). It is because of the existence of trademark banks that we at Shinjyu
recommend that every trademark applicant have a preliminary search done to determine
if the proposed trademark would infringe on an existing one.
An application must include the mark, designated goods or services, the applicant's
name and address, and the applicant's area of business, and must be accompanied
by a filing fee. No power of attorney is required. If the mark can be represented
using ordinary characters, a sample is not required. However, if the mark is a
figure, sign, three-dimensional mark, or any combination of the aforementioned,
including characters, with or without colors, a sample must be submitted.
A mark may consist of characters, figures, or signs. It may also be a combination
of these. Assuming that it can be represented graphically, a mark may be any combination
of characters, figures, or signs with colors. Three-dimensional trademarks can
also be registered. Sounds and smells cannot be registered.
Japanese law allows for multi-class applications. This means that the designation
of more than one of the forty-two classes of goods and services is permitted on
a single application.
All trademark applications are subject to a substantive examination to determine
whether it is to be registered or rejected. The trademark is examined for distinctiveness
and non-registerability. The examination of distinctiveness determines whether
or not the trademark indicates the common name of goods or services, the quality
of goods or services, or the shape of goods or their packaging.
The examination of non-registerability determines (1) whether or not a trademark
is identical or similar to national flags and state coat of arms; (2) whether
or not a trademark is identical or similar to another's registered trademark for
the identical or similar goods/services; (3) whether or not a trademark is identical
or similar to another's well-known or famous trademark (in Japan and abroad);
and (4) whether or not the trademark contains the stage name of another person
or a famous abbreviation thereof.
When an applied mark passes the examination of distinctiveness or non-registerability,
a decision of registration is made and a notice of the decision is sent to the
applicant or his representative. To have the trademark registered, the applicant
must pay the registration fees which can be paid in full or in two installments.
If an applied mark fails to pass the examination, an examiner issues a notice
of a reason for refusal. The applicant is given an opportunity to respond to it
by filing an amendment and/or an opinion. If the applicant fails to overcome the
reason for refusal, a decision of refusal is issued by the examiner.
A term of registration is ten years from the registration date and is renewable
indefinitely. Each term of renewal is also ten years.
Renewing the term for registration of a trademark is as simple as filing a request
and paying the renewal fee. The request of registration can be filed within six
months before the expiration date. It can be filed with an additional fee within
six months even after the expiration of the term. A renewal fee, like a registration
fee, can be paid in installments.
Japanese law no longer requires a substantive examination or checks concerning
use at the time of renewal.
Before International classification was adopted in April of 1992, designated
goods of trademarks were classified under Japan's own classification which had
been revised four times. In order to remove complication derived from different
classification systems, the reclassification system was adopted. A reclassification
of goods is required of trademarks whose applications were filed before March
31, 1992.
Owners of such registered trademarks are required to apply for a reclassification
of their designated goods and their classes in accordance with the present classification.
The trademark owners shall file the request of reclassification from six months
prior to the expiration date to one year after the expiration date. No fee is
charged for a reclassification.
If an owner of a trademark filed before March 31, 1992 does not file a reclassification
request, the mark will not have a renewal term after the first renewal when reclassification
becomes applicable to the mark for the first time.
VIII. Post-grant opposition system
When a registration fee is paid after a decision of registration is made, the
trademark is registered. The registered trademark is published in the Trademark
Gazette. Any party that opposes a trademark may file an opposition to the registration
within two months of the issuance of the trademark.
The opposition is examined by a group of three or five trial examiners. If the
examiners find a reason to cancel the registration, the owner is notified and
given an opportunity to respond. If the grounds for the opposition are not overcome,
the examiners render a decision to cancel the registration. In cases in which
the opposition is limited to part of the designated goods or services, that part
of the registration is canceled. If the owner is dissatisfied with the decision
of cancellation, an action can be filed with the Tokyo High Court.
There are four major trials that comprise the trial system, trial against decision of refusal, trial for invalidation of trademark registration, trial for cancellation of trademark registration (due to non-use), and trial for cancellation of trademark to avoid confusion over source. All of the trials are handled by a body of trial examiners consisting of three or five examiners.
A. Trial against decision of refusal
If an applicant is dissatisfied with an examiner's decision of refusal, the applicant may demand a Trial against Decision of Refusal within thirty days, or thirty days and two months if the applicant is an overseas resident, of the transmittal of the decision. The demand should be addressed to the Commissioner of the Patent Office.
B. Trial for invalidation of trademark registration
A Trial for Invalidation of Trademark Registration may be demanded if a registered trademark loses its distinctiveness or falls under any of the reasons for non-registerability. In cases which are based upon distinctiveness or certain areas of non-registerability, the trial must be demanded within five years of the date of registration.
C. Trial for cancellation of trademark registration
A Trial for Cancellation of Trademark Registration may be demanded when an owner has not used a trademark in Japan continuously for a period exceeding three years. In the past only those who had an interest in the case were allowed to demand this trial. However, presently anyone may do so. When the cancellation becomes final and conclusive the trademark is deemed to have been extinguished retroactively to the date of registration of a demand for a cancellation trial.
D. Trial for cancellation of trademark to avoid confusion over source
When more than one person owns rights to similar trademarks and one of them
uses the trademark in a manner that causes confusion with goods or services that
are connected to the business of the other trademark right owner for unfair trading
purposes, a Trial for Cancellation of Trademark to Avoid Confusion over Source
may be demanded by anyone.
In addition, there are other trials including one for the cancellation of a registered
trademark due to abuse. A party may appeal to the Tokyo High court if a decision
is dissatisfactory.
Registered trademarks or trademark applications can be assigned. A trademark
registration or application may be assigned for one or more of the specified goods
or services. Until the Director General of the Patent Office is notified and accepts
the transfer, the transfer of the right from a trademark application is not effective.
Furthermore the transfer of a registered trademark is not effective against third
parties until it is recorded, except in cases of inheritance or other general
succession.
In Japan, as in many countries, there are two kinds of licenses, an exclusive
license (Senyo Shiyo-ken) and a non-exclusive license (Tsujo Shiyo-ken).
An exclusive license grants an undivided interest to an exclusive licensee. An
exclusive license is an in rem property right, and not a personal property right.
Thus it is possible for a trademark owner to grant exclusive licenses to more
than one person.
An exclusive license must also be registered with the Patent Office in order for
it to be given effect as such. By registering the exclusive license, the licensor
is prevented from granting a conflicting license to a third party, and the exclusive
licensee is given the right to sue third parties for infringement. Note, however,
that there is no duty on the part of the trademark owner to register an exclusive
license with the Patent Office, so a requirement to register the exclusive license
is often included in the licensing agreement.
An exclusive license may be transferred only together with the business in which
it is worked, or only with the consent of the trademark owner. This does not include
transfer by inheritance or other general succession. An exclusive licensee may
not grant a non-exclusive license to another without express permission from the
trademark owner.
A non-exclusive license does not give the licensee the right to sue infringers.
Non-exclusive licenses also do not have to be registered to be given effect as
such. However, like the exclusive license, registration of the non-exclusive license
prevents the trademark owner from granting a conflicting license to third parties.
A trademark right is infringed when a party other than a licensee or owner: uses a mark that is similar or identical to the registered mark for similar or identical goods or services; holds goods for delivery or assignment if those goods are similar or identical to the designated goods and show a mark similar or identical to the designated mark; possesses materials used for applying such a mark on such goods; assigns, delivers, or holds for assignment or delivery materials to be used in applying such a mark; manufactures or imports materials to be used in applying such a mark; or manufactures assigns, delivers or imports, in the course of business, materials to be used solely for making articles to used in applying that mark.
XII. Other forms of registration
If a registered mark has become very well-known the owner may register it as a defensive mark. A defensive mark allows an owner to exclude others from using the mark in connection with goods or services that are unrelated to the goods or services for which it is currently being used.
A collective mark is one that is owned by an organization that permits its members to use the mark. Only non-profit organizations can submit applications for a collective mark.
XIII. International application/registration
Japan has joined the Protocol Relating to the Madrid Agreement.
After a registration or an application of a trademark in Japan, a Japanese, a
Japanese corporation, a foreigner who has a residence or domicile in Japan, and
a foreign corporation who has a place of business in Japan, may file an international
application with the Patent Office.
An applicant who files an international application with a foreign trademark office
that is a member of the Protocol Relating to the Madrid Agreement may include
Japan as a designated country for the registration of the mark.
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