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Individual question (Trademark)

Q&A Regarding Japanese Trademark Practice

I. Application
Q1. What kinds of marks are registerable as trademarks in Japan?
Q2. What is required to file a trademark application in Japan?
Q3. Is it possible to apply for a “standard character mark”?
Q4. Does the Japan Patent Office recognize three-dimensional marks?
Q5. What goods and services may be designated in Japan?
Q6. How does the application proceed?

II. Examinatin
Q7. What are typical reasons for refusal?
Q8. How does the Japan Trademark Law define distinctiveness?
Q9. How is the similarity of trademarks judged?
Q10. How are similarity in appearance, sound, or concept judged?
Q11. How are the judgments on the similarity of goods/services made?
Q12.How can an applicant respond to a rejection on the grounds that an overly broad range of goods or services in one class?
Q13.How can an applicant respond to a rejection for lack of distinctiveness?
Q14. Is it possible to register an inherently indistinctive mark that has acquired distinctiveness through use?
Q15. If a trademark applicant receives an Office Action citing a registered trademark, what measures can the applicant take?
Q16. If a trademark applicant receives an Office Action pointing out that some of the designated goods or services are vague, what measures can the applicant take?
Q17. If a trademark application designates goods or services in multi-class and the Examiner issues an Office Action finding a reason for refusal in one of the classes, is such an application unregisterable concerning the other classes which were not refused?
Q18.How can an applicant respond to a final Decision of Rejection?

III. Post Registration
Q19. How long does a trademark right last?
Q20. What rights accompany a trademark registration?
Q21. Are there limits to the rights of a trademark registration?
Q22. What acts constitute infringement of trademark rights?
Q23. Is there any demerit or penalty if a registered trademark is not used?
Q24. Is use of an indication such as ”registered trademark” required?
Q25.When is the registration fee due?
Q26.Is evidence of use required to register a trademark?
Q27.How can a registered trademark be renewed?
Q28.Can an expired registration be revived?

IV. Cancellation and Invalidation
Q29. Is there an opposition system in Japan?
Q30. Other than oppositions, are there any other means for a third system to request cancellation of a trademark registration?
Q31. Can an Invalidation Trial be requested at any time?
Q32. What are the criteria for having a trademark registration cancelled due to non-use?
Q33. On whom is the burden of proof when cancellation based on non-use is requested?
Q34. Must the trademark have been used exactly as registered?
Q35. Will a registered trademark not used in commerce always be cancelled?
Q36. Will a registered trademark that has turned into a common name be cancelled?

Ⅴ. Special Trademarks
Q37. Can Collective Trademarks be registered in Japan?
Q38. Can regional collective trademarks be registered in Japan?
Q39. Is additional protection available for famous trademarks?
Q40. What is “Reclassification”?
Q41. Is it possible to request accelerated examination of a trademark application?
Q42. Are there ways to comment on a pending trademark application filed by another party?
Q43. What are the current JPO official fees?

VI. Trademark Application Based on Request for Territorial Extension under the Madrid Protocol
Q44. Is it possible to request a territorial extension to designate Japan under the Madrid Protocol?
Q45. When the Notification of Provisional Refusal is issued, what information should be provided to an attorney in Japan?
Q46. Is there any difference between a case where Japan is designated in an international application under the Madrid Protocol and another case where a domestic application for trademark registration is filed with the JPO?