FAQ for Trademark Application in Japan
FAQ for Trademark Application in Japan
|What is trademark?|
|A trademark is a mark or sign that is used to distinguish goods and services provided by the trademark owner from those of the third parties. In general, a trademark is composed of letters, a device, a 3-D shape or a combination thereof. To be recognized as a trademark, the mark/sign should be able to distinguish the goods and services provided with the mark/sigh from those from the others.|
|What can be protected as trademark in Japan?|
|In Japan, the “word”, “figure”, “sign” and “three-dimensional configuration” and a combination thereof used to be protected as “trademark”. Since April 2015, the “motion”, “hologram”, “position”, “color” and “sound” have been added to the subject of protection.|
|Why do we need to register the trademark?|
|Trademark registration enables the manufacturer of the product to use their mark exclusively for their own brand. When imitated products manufactured in poor-quality are out on the market, not only the holder of the original brand but also the consumer will suffer inconvenience by confusion.|
|What is registrable as a trademark in Japan?|
|Registrable marks must be distinctive. Three dimensional marks are registrable. However, smell is not registrable in Japan.|
|Marks that are not considered as distinctive include common names of goods, very simple marks including two initials represented in a simple common design, descriptive marks (i.e., marks indicating in a common way, the origin, place of sale, quality, raw materials, use, quantity, etc.).|
|However, it may be possible to obtain registration of the above-mentioned marks if the applicant can establish that consumers recognize the goods or services as being connected with its business as a result of long and extensive use of the mark.|
|What do we need to do to have our trademark registered?|
|We are required to file a trademark application with the Japan Patent Office in order to register a trademark. To file a trademark application we need
(1) Name and address of applicant
(3) List of Goods and/or Services, and Classification
(4) Priority Claim, if needed .
|When applying for a trademark, is it necessary to prepare a specimen of trademark?|
|A specimen of trademark is required for the application of trademark of figure or logo. In relation to a word mark with plain fonts, such sample would be unnecessary since there is a standard character system, but attention should be paid to the case where a preferential right is claimed.|
|Can I (individual residing outside Japan) apply for a Trademark right in Japan?|
|If you belong to a company, please contact us through its IP works or related department. If this is not the case, we can introduce to you our associated law firm in your country. Please feel free to ask us.|
|Are we required to submit a Power of Attorney form when we file an application?|
|No Power of Attorney form is required at the time of filing an application.|
|What are the procedures for registration after the application?|
|If the application is considered to fulfill the requirements of trademark registration as a result of the substantive examination, Decision of Registration will be issued and the filed trademark will be registered when the payment of the registration fee is completed. However, if the application does not meet the requirements of trademark registration, the Reasons for Refusal will be issued. The applicant will have opportunities to respond to the Notice of Reasons for Refusal within the stated time period.|
|How long does it take to have the trademark registered?|
|The time for examination depends upon the number of classes in the application, usually, we will receive the result of substantive examination in about 10 to 11 months from the filing date. So it usually takes from one and a half to two years to obtain a trademark registration if no office actions are issued.|
|How much does it cost to register a trademark?|
|The cost varies depending on the content of the application. If you are planning to register a trademark, please do not hesitate to contact us.|
|Are marks well-known outside Japan protectable in Japan?|
|In order to strengthen protection of famous marks, Art. 4-1-19 was introduced in 1997. This law expressly states that registration of a trademark right shall not be granted when the mark has been applied for with an unjust intention (e.g., intention to gain unjust profits or to do damage to another person).
This provision allows protection of trademarks that have high recognition outside Japan, regardless of the level of recognition within Japan.
|Are three-dimensional trademarks allowed in Japan?|
|Since 1997 three-dimensional trademarks have been registrable in Japan. However,
the Japanese Patent Office has been very strict in applying the examination standards especially to marks that relate to the shape of the designated goods or their packages. Generally, if the shape can be recognized as no more than the shape of the designated goods (including their packages), the shape cannot be registered as a three-dimensional trademark unless it has acquired distinctiveness through long and extensive use of the mark. For example, it is very difficult to register a fanciful shape of a cup if the cup is still recognizable as a cup. In this case, we often recommend seeking design protection.
|What is the general view on the similarity of trademarks?|
|The similarity of trademarks will be determined upon comprehensively considering three elements i.e. sound phonetic, concept and appearance of trademark. The sound phonetic is the most important element, therefore, even if the spelling is different, if the way it is read is the same, then, it tends to be deemed to be “similar”. Also, if the trademark is a combined mark that combines plural number of words, then, the comparison of essential feature of trademarks will be made in consideration of distinctiveness of each word.|
|What is the general view on similarity of goods and services?|
|The decision on similarity of goods and services would be made by an examiner in
comprehensive consideration of the scope of goods or service providers and demanders, but in practice, the decision would be made in a unified manner in accordance with the “Examination Guidelines for Similar Goods and Services” prepared by the Japan Patent Office.
|Is there a way to expedite examination?|
|It is possible to shorten the time prior to receiving the first action by taking advantage of the accelerated examination system for trademark applications.
This system is useful if there is a possible infringement of your mark which has not yet been registered in Japan. If you have a corresponding trademark application pending in a foreign country, you are qualified to apply for accelerated examination. You can file the request when you file the application or even after you have filed the application. However, you must explain the reasons for expediting the examination along with any related documentation and the results of a trademark search. If we use the accelerated-examination system, the results of substantive examination will be notified in about 1.5 to 2 month from the filing date.
|Is proof of use required to obtain trademark registration?|
|Use is not required to obtain a trademark registration. Proof of use is also not required at the time of renewal of registration. Proof of use is, however, necessary if a non-use cancellation request is filed against a registration which is more than three years old.|
|We have designated Japan in the international registration application. Are there any points to remember?|
|The international registration that is applied upon designating Japan will be sent to the JPO within approximately three months from the date of international registration and the examination will commence. The first action will be issued within eighteen months from the date of international registration. If the decision to grant a trademark is served, since Japan adopts the two-phased payment system, the individual fee for the second part must be paid.|
|How long will a trademark remain?|
|The trademark right will remain for ten years from the date of registration.
However, by making an application for registration renewal every ten years, the term may be extended almost permanently. This is because the purpose of trademark right is to protect the credit and power of brand that are granted by the using of trademark.
|The trademark owner has changed. Is it necessary to take any procedures?|
|The trademark will become effective only when the procedures for change of owner are taken and such is registered on the register of the Japan Patent Office.|
|What is the non-use cancellation system in Japan?|
|If a registered mark is not used for more than three years in Japan, the registration is vulnerable to a third party’s cancellation request based on non-use. Any person may file a non-use cancellation request. The burden of proof of use is on the registrant. A non-use cancellation request may be filed with respect to all of the designated goods/services or a part of the goods in the registration. Under this provision, use of the mark within the 3 months period prior to the filing of the cancellation request is not a defense if the person requesting cancellation can prove that the registrant knew the cancellation proceeding was likely to be filed. Therefore, it is possible to seek an assignment of a trademark from a trademark owner who has not been using his mark and if such an assignment cannot be negotiated within 3 months, to file the cancellation request.|
|The trademark that is quite similar to my registered trademark is being applied.
Is there any way to prevent the registration?
|It depends upon the status of examination of such trademark. If such trademark is being examined and it is expected that the trademark regarding the application for registration of trademark has a reason for refusal, there is a possibility to lead such application to decision of refusal by submitting to the examiner the fact and supporting evidence thereof. This is called as “submission of information”. If such trademark is already registered and no more than two months has elapsed since the issuance of Trademark Gazette,
then anybody may make an opposition against such registration. Then, the person who has legal interest may make an appeal for invalidation.
|Is it possible to prevent others from using marks identical to or similar with a trademark in a pending application?|
|No. In Japan, trademark rights become effective once the applied for mark is registered. Unlike in the U.S., mere use of the mark will not provide any enforceable rights against third party use. In the case of unregistered well-known marks, it may be possible to take legal action against a third party’s use based on Unfair Competition Prevention Law. Otherwise, you can apply for an accelerated examination.|
|What are the forms of trademark registration specified under the Japanese Trademark Law?|
|In Japan, in addition to regular trademark registrations, collective mark registrations, defensive mark registrations are available. A collective mark is one used or intended to be used by members of an aggregate corporation, industrial business cooperative association and other associations.|
|A defensive mark registration can be obtained for a mark that is identical with one’s own well-known registered mark for goods or services other than those registered to prevent others from using it for such goods or services that may cause confusion among the public. For obtaining a defensive mark
registration, no intention to use the mark is required.
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