Registerable marks include any characters, figures, signs or three-dimensional shapes, or colors, or any combination thereof, and sounds. Smell cannot be registered as a trademark.
The information required for a trademark application includes the following:
Yes. A word mark consisting only of letters of the English alphabet, Arabic numerals, and Japanese characters designated as standard characters by the Japan Patent Office can be designated a “standard character mark”.
An applicant can apply for a trademark consisting of a three-dimensional shape by stating so in the application. The application must adequately describe the three dimensional shape in the application. For example, the following trademarks are not recognized as three dimensional marks:
In addition to three-dimensional trademarks, the JPO accepts applications for “non-traditional marks”, such as colors, sounds and other marks as designated by Cabinet Order. The following types of marks are protected as non-traditional marks:
The JPO does not accept all Class Headings of the Nice
Agreement, but does allow certain designations unique to Japan as listed in the JPO’s Examination Guideline.
As the application is filed, both a formality examination and a substantive examination are held.
At the substantive examination, the existence of either absolute or relative grounds for refusal is determined.
It takes about 6 or 7 months until the first Office Action is issued.
If there is no reason for refusal in the application, a decision of registration is issued, and registration of the trademark right comes into force after payment of the registration fee. All together, it should take 8 or 9 months from the filing date until registration of the trademark right, at the earliest.
If there is a reason for refusal in the application, the Examiner issues an Office Action. In other words, a notification of reasons for refusal is sent. Against the Office Action, the applicant may file an argument and/or an amendment to overcome the reasons for refusal within the response term allowed by the Office Action. The response term for an Office Action for a resident abroad is 3 months. A three-month extension (comprised of an initial one-month extension and an additional two-month extension)is obtainable by paying the official fee.
Some typical cited grounds for rejection are:
Trademark Law Article 3(1) provides that the following marks are unregistable:
In judging the similarity of trademarks, appearance, sound and concept (connotation) are comprehensively taken into consideration. Generally, the most important factor in the judgment is the sound of trademarks.
The judgment of similarity may vary in examination, appeal, and litigation.
On examination, Examiner judges the similarity relatively mechanically or uniformly according to the Examination Guidelines provided by the JPO. However, on appeal/litigation, appeal Examiners/courts take actual business circumstances, such as trade conditions, into consideration. Therefore, the judgment concerning trademarks on appeal/litigation is more flexible or comprehensive than on examination.
Similarity in Appearance
If the components of two marks are confusingly similar each other, they may be determined to be similar in appearance. For example, the following marks would like be considered similar in appearance:
When the pronunciations of two marks as read by Japanese native speakers are close to each other, they may be determined to be similar in sound. For example, the following marks would be considered similar in sound:
“VANCOCIN” and “BUNCOMIN”
“Atomin” and “ATAMIN” “HETORON” and “PETRON”
When the meaning of two marks is similar, the marks may be determined to be similar in concept. Marks in languages other than Japanese are frequently rejected based on prior Japanese registrations having a corresponding meaning. For example, the following marks would be considered similar in concept:
“りんご” and “apple”
(”りんご” is the Japanese word for “apple”. )
Although Japan has adopted the Nice International Classification, goods or services are categorized into some groups unique to Japan and independent of the International Classification. Each group has a certain code. Specifically, goods or services bearing the same code, that is, goods or services categorized into the same group, are presumed to be similar. If the goods or services for an application have the same codes as the cited prior trademark, the goods or services are deemed to be similar to one another and it is generally difficult to argue that they are dissimilar.
There are three measures:
The applicant can argue against the specific grounds cited by the Examiner. For example, if the rejection states that the trademark merely indicates a “quality” of the designated goods or services, the applicant could attempt to argue that such an interpretation is not direct, or is not viewed in that manner in the particular trade in which use of the mark is intended, or to argue that the mark is not indicated in a common manner,
especially if the trademark has a unique composition.
Although a trademark that has acquired a secondary meaning through long and extensive use in Japan may be registered, the standards are extremely high.
There are four measures:
There are two possible measures:
Unregisterable. Unless the reasons for refusal are completely overcome, the application will be refused as a whole. If the applicant intends to register the application on the other classes which were not refused as soon as possible, it is advisable to divide the application into two independent applications. However, in the case of an international application under the Madrid Protocol, such division is not allowed.
The applicant may file an Appeal within three months of receiving such a decision.
The trademark right lasts 10 years from the date of registration. Registration renewal can be made every 10 years.
The owner of a registered trademark has both a positive right to use the registered mark in connection with the designated goods and services, and a negative right to prevent unauthorized use of the mark or a similar mark on identical or similar goods or services.
Yes. The rights to a registered trademark cannot be used to prevent another party from using their own name in a common manner or from using common names or generic terms in a common way, for example.
Commercial use of a registered trademark in connection with the designated goods or services; commercial use of a similar trademark in connection with similar goods or services, commercial use of registered or a similar trademark in connection with similar goods or services; or acts in preparation of such use may constitute infringement.
However, use for explanation or design only is considered fair use.
Acts other than use which damage the registration or impair the owner’s ability to use the registered trademark may be considered infringement.
Yes, the registered trademark can be cancelled by a non-use cancellation trial(Trademark Law Art. 50).
It is recommended that a designation such as “registered trademark” be used when a registered trademark is used in connection with designated goods or services, but usage is not mandatory.
・ Issuing stage and Renewal stage
The initial registration fee is due within 30 days from the receipt of a Notice of Allowance.
No evidence of use is required to register a trademark, but evidence of use within the most recent three years may be required to prevent cancellation of a mark whose registration is challenged.
A request for renewal of a trademark right can be filed within the six months prior to the expiration date.
A request for renewal can still be filed up to six months after a registration has expired, but double the normal renewal fee must be paid.
Yes. Any person can file an opposition within two months from the date of publication of the registration.
Yes. The Japan Trademark Law provides for both Invalidation Trials and Requests for Cancellation. The grounds for filling a Request for Cancellation are:
・ Invalidation Appeal
Other than fraudulent registration, an Invalidation Trial may only be requested within five years after the initial registration of a trademark.
・ Non-Use Cancellation
The registered trademark will be cancelled, if the owner or licensee are unable to provide evidence of use of the registered mark in Japan , for a period of 3 consecutive years (calculating back from the date of filing of the cancellation trial) (Trademark Law Art. 50).
The owner of the registration has the burden of proving that the registered mark was used in Japan.
Use of a trademark in a form very similar to that registered may be used to establish use. Among the commonly accepted variations are:
Examples of acceptable variations:
The JPO has the authority to allow the registration if the trademark owner can demonstrate good cause that the mark was not used commercially.
No. Evolution of a mark into a common name after its registration is not grounds for cancellation.
Yes. Recognized collective associations may obtain
protection for marks used by its members.
Yes. Recognized regional collective associations may obtain protection for trademark consisting of a place name and a type of goods, if the goods are well known among consumers.
Yes. The owner of a famous trademark may obtain a defensive registration of a trademark identical to the registered trademark in connection with goods or services not similar to the designated goods or services of their business, if there is a likelihood of confusion concerning the source of the goods or services. A defensive mark cannot be cancelled based on non-use.
All trademark registrations filed prior to March 31,1992 under the former Japanese classification system must be reclassified according to the International Classification System which is now employed in Japan.
A Request for Reclassification may be filed up to six months before or one year after the renewal deadline of a trademark registration. If reclassification is not requested, the registration may not be renewed again. No official fee is required.
Yes. Accelerated examination can be requested for applications when the applicant or a licensee is using or has plans to shortly begin use of the mark, and any of:
If a request for accelerated examination is accepted, a first office action is issued within about two months in most cases. No official fee is required.
Yes. Any party may file evidence or a statement concerning the registerability of any pending application. Such a disclosure may be filed anonymously, using the name of any individual. No official fee is required.
The Examiner’s remarks set forth in the Notification of Provisional Refusal and a power of attorney should be provided. It should be noted that the power of attorney is indispensable although it can be submitted to the JPO later.
A request for territorial extension to designate Japan under the Madrid Protocol shall be deemed to be a domestic application for a trademark registration filed on the international registration date or the date of subsequent designation. Thus, the international application is examined in a manner similar to that of the domestic trademark application. However, there are some exceptions. For example:
When a dispute related to intellectual property rights arises and it is difficult to resolve the dispute by discussion between the parties to the dispute, such dispute may be resolved mainly by filing an action with a court or by means of an alternative dispute resolution (hereinafter referred to as “ADR”). An example of ADR is mediation. Parties to a dispute may have mediation proceedings related to intellectual property rights at the Japan Intellectual Property Arbitration Center (hereinafter referred to as “JIPAC”). JIPAC is a private ADR organization that has been operated jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations since April 1998. Its services include not only mediation services but also various other services related to intellectual property rights such as consultation, arbitration, JP domain name dispute resolution, the Center’s advisory opinion, the Center’s essential patent evaluation, advisory opinion on operability, and evaluation of the level of contribution of a patent to business. JIPAC is an ADR organization certified under the ADR Act (Certification No. 119). The JIPAC website (https://www.ip-adr.gr.jp/eng/) shows a detailed explanation of services provided, examples of dispute resolution cases and other matters.
The characteristics of mediations by JIPAC are (i) expertise, (ii) being closed to the public, (iii) neutrality and fairness, (iv) voluntariness, (v) flexibility and (vi) speediness.
(i) Characteristic 1: Expertise
The persons who may serve as mediators when an application for mediation is made (mediator candidates) consist of experienced attorneys-at-law, patent attorneys and academic experts. In JIPAC mediations, mediators exhibit their very high expertise and present a persuasive mediation proposal by forecasting the result of a lawsuit that may be filed if the dispute is not settled by mediation. Mediators are appointed by the Director of the Center of JIPAC, and the parties are also allowed to appoint the mediators whom they want to appoint if the parties agree on such appointment.
(ii) Characteristic 2: Being closed to the public
In the case of a lawsuit, court proceedings take place at an open court on the date for oral argument and the judgment and records thereof are generally disclosed to the public. On the other hand, mediation proceedings at JIPAC, including whether or not an application for mediation is made, are not disclosed to the public and the result of mediation proceedings is also not published. For this reason, a dispute may be resolved without the existence of such dispute being known to third parties.
(iii) Characteristic 3: Neutrality and fairness
JIPAC is an organization established jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations, and its neutrality and fairness are guaranteed. In addition, the Rules for Mediation Proceedings of JIPAC provide for the exclusion or challenge of mediators, and JIPAC always confirms that mediators have no interest in the relevant case before appointing the mediators.
(iv) Characteristic 4: Voluntariness
In mediations by JIPAC, the parties to a dispute can have advanced discussion with the mediators, who are third parties with abundant experience and knowledge. As a result, if the parties can find a point of compromise, they can reach a settlement. If the parties think there is no room for compromise, they can refuse to reach a settlement and terminate the mediation proceedings. Because of this voluntariness, mediation by JIPAC is considered to be the more sensible response to a dispute compared with simply continuing to ignore the other party’s demands, with a risk of being sued.
(v) Characteristic 5: Flexibility
Mediations by JIPAC are a purely voluntary method of dispute resolution by a private organization and therefore have the advantage of being flexible. For example, when a party makes a claim for the payment of money, the party is not always required to specify the amount in the application for mediation, and there is no problem with stating “we claim an appropriate compensation” or the like in the application. Unlike court settlements where the parties feel pressured from being subject to a judicial decision if they cannot reach an agreement, mediation by JIPAC is commenced only after the other party agrees to commence mediation proceedings. Therefore, mediation by JIPAC is flexible with regard to the progress of proceedings. In addition, mediations by JIPAC allow the parties to discontinue mediation proceedings partway along the process to return to voluntary negotiation, file an action, or take other options.
JIPAC also provides arbitration services (a dispute resolution system under which the parties to a dispute are assumed to agree in advance to appoint arbitrators, who are neutral third parties, to make a decision on the dispute and follow such decision) in addition to mediation services. For this reason, JIPAC may start with mediation proceedings and, if the parties in the medication proceedings reach an agreement to commence arbitration proceedings, move on to arbitration proceedings, thereby taking the proceedings successively in order to exploit the advantages of both mediation and arbitration proceedings. In this case, mediators may continue to serve as arbitrators, or new arbitrators may be appointed depending on the will of the parties.
(vi) Characteristic 6: Speediness
The average time period required to resolve a dispute through JIPAC mediation is 176 days (the median is 162 days) and the minimum number of days required for proceedings is 65, although it depends on the level of cooperation between the parties and the details of the case. When the parties want to resolve a dispute speedily, it is possible to perform examination in a concentrated manner in a shortened period of time. With respect to the dates for mediation proceedings, we expect that about three dates will be required for resolution and aim to complete the proceedings within six months from the first date of mediation proceedings, although it will differ depending on the nature of the case. Looking at past cases of dispute resolution, the average number of dates is 4 (the median is 4) and the minimum number of dates is 2. This indicates that the proceedings until the resolution of disputes proceeded almost as expected.
As stated above, mediations by JIPAC are characterized by their expertise, being closed to the public, flexibility, and speediness, and therefore can be an excellent means of dispute resolution when the parties have the intention to resolve the dispute by discussion and want to resolve the dispute soon or at a place closed to the public.
In addition, intellectual property-related mediations in court do not allow the parties to appoint the members of the Mediation Committee, but mediations by JIPAC allow the parties to appoint the mediators whom they want to appoint if the parties agree on such appointment. For example, the parties may appoint the same mediators as the mediators for a past mediation case or appoint attorneys-at-law or patent attorneys who are specialized in the relevant field. They may also appoint, for example, a former judge who was in charge of famous lawsuits in the past or an academic expert who has published many papers. The fact that the parties are allowed to appoint mediators whom they can trust is considered to be a strong point of JIPAC mediations.
As stated above, mediations by JIPAC have various advantages that lawsuits do not have.