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Oshima, Nishimura & Miyanaga PPC

意匠法等によるデザインの保護

1. Registrable Trademarks

Under the Japanese Trademark Law, (i) character, (ii) figure, (iii) sign, (iv) three-dimensional shape, (v) color (only), (vi) any combination thereof, (vii) sound, (viii) position, (iix) movement or (ix) hologram can be registered.

Although (iv) a three-dimensional trademark is registrable, in practice a trademark consisting only of a shape without word or devise mark, such as a bottle, container and product configuration itself, is rarely registered.

(v) a color(s)-only mark is not considered distinctive under the guidelines. An acquired distinctiveness is required for registration of a color(s)-only mark.

2. Trademark Right created by a Registration

Under the Japanese Trademark Law, trademark right is created by registration of the trademark. The trademark right is infringed if an unauthorized person uses a trademark identical or similar to the registered trademark in connection with goods or services identical or similar to those covered by the trademark registration.

A trademark is registered on a first-to file basis.

Therefore, it is most important to file an application for registration of your trademark as soon as possible.

3. Registration Proceeding

(1)Requirements

a) Information necessary for an application

In order to file a trademark application, the following information is necessary:

- Trademark to be applied for (Please also see “Representation” below)
- Goods and services for which the trademark is to be used (Please also see “Classification” below)
- Applicant’s full name and address
-Priority information if claimed

b) Representation

A trademark application in Japan is electronically filed via the internet. For this purpose, an electronic image data is required, if a trademark to be applied for is a device mark or stylized mark. It is possible to file a word mark in standard characters.

Musical scores or descriptions in a specimen as well as audio file (mp3) are required for filing of a sound mark application. As to color, position, movement or hologram mark, a description of the mark is required in an application to identify it.

c) Classification,

- International Classification

Japan is a member of the Nice Agreement and adopts the International Classification of goods and services.

A multi-class application is available.

A mark used for retail services can be registered as a service mark in Class 35.

- Scope of goods and services (Special Requirements by the JPO)

Please note that if a number of different categories of goods and services are specified in one class, an applicant is requested to prove that he or she is actually conducting business relating to all the designated goods and services, or has a bona fide intention to launch such business.

Accordingly, that specification issue is avoidable should we know the actual goods and services relating to your business to draft a proper specification of goods or services in conformity with the JPO guidelines.

d) No use requirement at filing

In filing a trademark application, it is not necessary that a trademark has ever been used.

e) Priority

Priority under the Paris Convention can be claimed only at the time of filing.

The original priority document (a certified copy of the application in the first country) must be filed within 3 months from the filing date of Japan.

f) Power of Attorney and Nationality Certificate

Neither a Power of Attorney nor Nationality Certificate is necessary in filing a trademark application

(2)Special Types of Application

a) Collective Trademark

Certain associations/organizations defined under the Trademark Law are entitled to file a collective trademark application.

b) Defensive mark

If a registered trademark becomes very well-known, the same mark can be registered as a defensive mark with respect to goods or services dissimilar to those covered by the original registration on certain conditions. That is, the defensive mark can expand protection of a famous trademark to dissimilar goods and services. A defensive mark registration is useful in or outside Japan to prove the famousness in Japan.

Any third party’s use of a trademark identical to the registered defensive mark in connection with the goods or services covered thereby constitutes a trademark infringement.

A defensive mark is not cancelled for non-use.

c) Regionally-based Collective Trademark

Certain associations defined under the Trademark Law are entitled to obtain a registration for a regionally-collective trademark that consists of a geographical indication and a generic name of the goods or services on condition that the mark has become well known.

(3)Examination

The Japan Patent Office conducts examination for both absolute grounds and relative grounds for refusal.

a) Time Frame

It normally takes 5 months from the filing date before a first Office Action is issued.

When an Examiner does not find any reasons for refusal of the trademark applied for, a decision for registration of the trademark is made and the Certificate of Trademark Registration is issued upon payment of the registration fee, then a trademark is published for opposition.

A trademark right comes into force from the date of registration.

b) Accelerated Examination

A trademark application can be examined on an urgent basis under the Accelerated Examination system, if an application satisfies certain requirements. If your application is accepted in this system, you could receive a first Office Action in one month or so.

(4)Responding to Office Action

a) Office Action

If the Examiner finds a reason for refusal of the application, s/he issues a preliminary notice of rejection (office action). The initial term for responding to an Office Action is 3 months (for foreign applicants) and this term is extendable only by one month.

b) Letter of Consent

A letter of consent is not effective in overcoming citation of a prior trademark under the current practice.

As an expedient, the following “assign back” procedures are often adopted:

(Step 1)
To temporarily assign a prior trademark registration from the owner thereof to the applicant, or vice versa.

(Step 2)
To re-assign the prior trademark registration from the applicant back to the owner after the application is granted, or vice versa.

c) Amendment

- Amendment of Goods and Services

An applicant can restrict, but not broaden, the scope of goods and services in a trademark application at any time during the examination. As to applications through the Madrid Protocol, however, an amendment is allowed before JPO only in the fixed term in which a response to the provisional refusal can be filed.

- Amendment of Trademark

No amendment of a mark is allowable once it is applied for.

(5) Appeals

If the Examiner issues a decision for final rejection of a trademark application, an appeal against the decision can be filed in 3 months from the date of the decision. The appeal is examined by a trio of the Trial Examiners at the Trial/Appeal Board of the Patent Office.

4. Renewal Proceeding

A trademark registration is renewable for further 10 (or 5) years in 6 months before the expiry date. There is a grace period for a renewal of a trademark registration, which is in 6 months after the expiry date. In this case, a trademark registrant must pay double the amount of the renewal fee. For renewal, a Power of Attorney is not required.

5. Opposition, Cancellation and Invalidation

(1) Opposition

Japan adopts a post-grant opposition system. Accordingly, an opposition can be filed only after a trademark is registered, in 2 months from the date of publication of the registration. Any person may file an opposition with the JPO. Said 2-month term is not extendable.

A Power of Attorney is required for an opposition proceeding.

(2) Cancellation trial based on non-use

If a registered trademark has not been used for certain goods/services covered by a registration for three consecutive years or more, the registration is vulnerable to being cancelled for such goods/services by means of a cancellation trial based on non-use.

The onus of establishing use of the challenged trademark is imposed on the owner of the trademark.

(3) Invalidation trial

After a trademark is registered, a trial seeking invalidation of a registration can be filed. Such an invalidation trial is, in principle, subject to the 5-year limitation from the registration date. 6. License and Assignment

A trademark registration can be assigned, licensed or pledged. A recordal of assignment and pledge is effective against a third party.

There are two types of license, Senyo-Shiyo ken and Tsujo-Shiyo ken, which are slightly different from exclusive or non-exclusive license from a legal perspective point of view. A licensee of a Senyo-Shiyo ken is entitled to use a licensed mark on licensed products exclusively and must record it before the JPO. However, a Tsujo-Shiyo ken is a mere right of use of a licensed mark. A recordation is optional. A licensee of a Tsujo-Shiyo ken cannot enforce a third party based on the license.

7. Customs Action

A trademark registrant can register its trademark rights at the Customs for the suspension of import of cargo based on an infringed trademark right and for finding that the cargo infringes the property rights with the Customs.

8. Domain Names

(1) We assist foreign clients in obtaining a .jp domain name, which is a general-use domain name that can be obtained by any person. However, a .co.jp domain name, which is an organizational-type domain name, can be registered only by a Japanese corporation or a foreign corporation registered in Japan as a “Gaikoku Kaisha.”

2) There is an ADR organization called Japan Intellectual Property Arbitration Center, where a domain name unjustly obtained can be cancelled or transferred to the rightful owner. We assist a brand owner in cancelling or taking back such a domain name unjustly obtained by a third party.

9. Madrid Protocol

Japan is a contracting state of the Madrid Protocol.

If the JPO issues a provisional refusal against the Japanese designation of your International Registration, you need to appoint a Japanese attorney to respond thereto. A signed Power of Attorney is required to be a representative before the JPO.

The term for responding to the provisional refusal is 3 months and can be extended only by one month.

10. Registration Notice

While “R” in a circle, ®, is commonly used as a registration notice in Japan, no such a registration notice is compulsory. Failure to give such a registration notice entails no legal disadvantage. Note, however, use of such a registration notice is prohibited in respect of unregistered trademarks.

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