Trademark Others Q&A

APPLICATION

QWhat kinds of marks are registerable as trademarks in Japan?

A

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.
[Reviewed in January 2024]

QWhat is required to file a trademark application in Japan?

A

The information required for a trademark application includes the following:

1. the mark for which registration is sought;
2. the designated goods and/or services and the International Class to which said goods and/or services belong; (Note: A multi-class application is possible.)
3. the name and the domicile or residence of the applicant for trademark registration;
4. when claiming priority from the filing date of a first trademark application, the filing date, the country name and the filing number are required. A priority document has to be filed within 3 months from the filing date.

note) A power of attorney is not required at the time of filing, but is necessary when you abandon/withdraw the application or file an appeal or the like.
[Updated in January 2024]

QIs it possible to apply for a “standard character mark”?

A

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”.
[Reviewed in January 2024]

QDoes the Japan Patent Office recognize three-dimensional marks?

A

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:

1. Marks not described as three-dimensional:
   
2. Marks containing both two and three dimensional nodes:
   
3. The drawings do not match such that they cannot be combined into a single three-dimensional view.
   [Updated in January 2024]

QDoes the Japan Patent Office recognize non-traditional marks?

A

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:

1. Motion Marks
   
   Marks consisting of texts and/or designs which move or transform as time progresses
   
2. Hologram Marks
   
   Marks consisting of texts and designs which change by holography
   
   and/or other methods
3. Color (per se) Marks
   
   Marks consisting solely of a single color or combination of multiple colors
4. Sound Marks
   
   Marks consisting of music, voices, sounds, etc. and can be perceived aurally
5. Position Marks
   
   Marks consisting of text and/or designs that are placed in a specified position
   [Updated in January 2024]

QWhat goods and services may be designated in Japan?

A

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.
[Reviewed in January 2024]

QHow does the application proceed?

A

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.
[Updated in January 2024]

EXAMINATION

QWhat are typical reasons for refusal?

A

Some typical cited grounds for rejection are:

1. Overly broad range of goods or services in one class;
2. Lack of distinctiveness;
3. A trademark which is liable to contravene public order or morality;
4. A trademark which contains a portrait or name of a person other than the applicant;
5. A trademark which is identical with, or similar to, another party’s trademark which is well known among consumers;
6. A trademark which is identical or similar to prior registered trademark;
7. A trademark which is likely to cause confusion in connection with the goods or services pertaining to a business of another person;
8. trademark which is likely to mislead as to the quality of the goods or services; and
9. Vagueness of the designated goods or service.
   [Reviewed in January 2024]

QHow does the Japan Trademark Law define distinctiveness?

A

Trademark Law Article 3(1) provides that the following marks are unregistable:

1. A trademark solely consisting of a mark indicating the common name of the goods or services in an ordinary manner (Trademark Law Art. 3(1)(i));
2. A trademark customarily used with respect to the particular goods or services (Trademark Law Art. 3(1)(ii)
3. A trademark solely consisting of a mark merely indicating, in a common way, place of origin, place of sale, quality, raw materials, efficacy, intended purpose, shape (including shape of packages), the method or time of production or use, quantity, price or other features of the goods, location of provision, quality, articles to be used in such provision, efficacy, intended purpose, modes, the method or time of provision, quantity, price or other features of the services (Trademark Law Art. 3(1)(iii));
4. A trademark solely consisting of a mark indicating, in a common way, a common surname or business name (Trademark Law Art. 3(1)(iv));
5. A trademark solely consisting of a very simple constituent element (Trademark Law Art. 3(1)(v)); and
6. A trademark from which consumers cannot recognize the goods or services as those pertaining to a business of a particular person (Trademark Law Art. 3(1)(vi)).
   [Updated in January 2024]

QHow is the similarity of trademarks judged?

A

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.
[Reviewed in January 2024]

QHow are similarity in appearance, sound, or concept judged?

A

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:

Similarity in Sound

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”

Similarity in Concept

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”. )
[Reviewed in January 2024]

QHow are the judgments on the similarity of goods/services made?

A

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 called “similarity 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 and accepted that they are dissimilar especially at the examination stage.
[Updated in January 2024]

QHow can an applicant respond to a rejection on the grounds that an overly broad range of goods or services in one class?

A

According to the trademark examination manual, in principle, when an applicant has designated goods or services covered by 23 or more similar group codes (hereinafter referred to as “similar groups”) in one classification, it is required for the applicant to show the use or the intention of use of the trademark.

There are three measures:

1. The applicant can establish that they are carrying out the business connected with the designated goods or services using material evidence and arguments.
2. The applicant can delete some goods or services, and/or argue that they have a bona fide intent to use the mark in connection with the remaining goods and services.
3. The applicant can submit documentary evidence establishing that they have bona fide plans to use the mark within 3 to 4 years from the date of filing the application (within three years following the registration) for each of the similar groups in each of the classifications of the designated goods or designated services.
   [Updated in January 2024]

QHow can an applicant respond to a rejection for lack of distinctiveness?

A

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.
[Reviewed in January 2024]

QIs it possible to register an inherently indistinctive mark that has acquired distinctiveness through use?

A

Although a trademark that has acquired a secondary meaning through long and extensive use in Japan may be registered, the standards are extremely high.
[Reviewed in January 2024]

QIf a trademark applicant receives an Office Action citing a registered trademark, what measures can the applicant take?

A

There are five measures:

1. Filing an argument stating that the applicant’s trademark is not similar to the cited trademark and/or the designated goods or services are not similar to those of the cited trademark.
2. Filing an amendment to delete the goods or services in conflict with those of the cited trademark.
3. Filing a non-use cancellation trial against the cited registered trademark. (Please note that the cited registered trademark will be cancelled unless the owner of the cited registered trademark proves that the cited registered trademark has been used in connection with at least one of the designated goods in Japan within a period of three years prior to the filing of the cancellation trial.)
4. Negotiating with the owner of the cited registered trademark to have the cited trademark assigned. To overcome the refusal, the assignment has to be registered with the Patent Office.
5. Submitting a Letter of Consent executed by the owner of the cited trademark registration and prove that there is no likelihood of confusion between the cited trademark and the applied trademark at the moment and in the future (effective from April 1st, 2024).
   [Updated in January 2024]

QIf 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?

A

There are two possible measures:

1. Filing an amendment to delete the goods or services refused by the Examiner or to amend the description of such goods or services in a form acceptable to the Japanese trademark practice.
2. Filing an argument explaining what the goods or services refused by the Examiner are like.
   [Reviewed in January 2024]

QIf 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 unregistrable concerning the other classes which were not refused?

A

Unregistrable. 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.
[Reviewed in January 2024]

QHow can an applicant respond to a final Decision of Rejection?

A

The applicant may file an Appeal within three months of receiving such a decision.
[Reviewed in January 2024]

QHow long does a trademark right last?

A

The trademark right lasts 10 years from the date of registration. Registration renewal can be made every 10 years.
[Reviewed in January 2024]

POST REGISTRATION

QWhat rights accompany a trademark registration?

A

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.
[Reviewed in January 2024]

QAre there limits to the rights of a trademark registration?

A

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.
[Reviewed in January 2024]

QWhat acts constitute infringement of trademark rights?

A

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 a 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 damages the registration or impair the owner’s ability to use the registered trademark may be considered infringement.
[Updated in January 2024]

QIs there any demerit or penalty if a registered trademark is not used?

A

Yes, the registered trademark can be cancelled by a non-use cancellation trial if the registered trademark has not been used for over three years (Trademark Law Art. 50).
[Updated in January 2024]

QIs use of an indication such as “registered trademark” required?

A

It is recommended that an indication such as “registered trademark” be used when a registered trademark is used in connection with designated goods or services, but such an indication is not required.
[Updated in January 2024]

QWhen is the registration fee due?

A

The initial registration fee is due within 30 days from the receipt of a Notice of Allowance (Trademark Law Art. 18(2)).
[Reviewed in January 2024]

QIs evidence of use required to register a trademark?

A

No. Evidence of use is not required to register a trademark. However, evidence of use within the most recent three years may be required to prevent cancellation of a mark when the registration is challenged.
[Updated in January 2024]

QHow can a registered trademark be renewed?

A

A request for renewal of a trademark right must be filed from six months prior to the expiration of the trademark right to the expiration date together with the renewal fee (Trademark Law Art. 20(2)).
[Updated in January 2024]

QCan an expired registration be revived?

A

A request for renewal may be filed up to six months after the registration has expired by paying double the standard renewal fee (Trademark Law Art. 20(3)).
[Updated in January 2024]

CANCELLATION AND INVALIDATION

QIs there an opposition system in Japan?

A

Yes. Any person can file an opposition within two months from the date of publication of the registration.

QOther than oppositions, are there any other means for a third party to request cancellation of a trademark registration?

A

Yes. Invalidation Trials and Request for Cancellation are available.

Grounds for Request for Cancellation:

• – Non-use for the most recent three years (Trademark Law Art. 50)
• – Unfair use of the registered trademark (Trademark Law Art. 51 & 52-2)
• – Likelihood of confusion (Trademark Law Art. 53)
• – Unauthorized registration (Trademark Law Art. 53-2)

Grounds for Invalidation Appeal (Trademark Law Art. 46):

• – Unregistrable trademarks as stated in Trademark Law Art. 3(1), Art. 4(1)(i)-(xix), Art. 7-2(1), Art. 8(1)(2), Art. 51(2), Art. 53(2), and Patent Law as applied mutatis mutandis pursuant to Art. 77(3) of Trademark Law
• – Violation of a treaty
• – Failure to specify the trademark in the statement and materials of the trademark application
• – Unauthorized registration
• – The holder has become unable to enjoy the trademark right
• – The registered trademark has become an unregistrable trademark
• – The holder of a regionally-based collective trademark has ceased to be an association, or the registered regionally-based collective trademark is no longer well known among consumers in connection with the business of the holder or its members.
  [Updated in January 2024]

QCan an Invalidation Trial be requested at any time?

A

Other than a fraudulent registration, an Invalidation Trial may only be requested within five years after the initial registration of a trademark (Trademark Law Art. 47).
[Reviewed in January 2024]

QWhat are the criteria for having a trademark registration cancelled due to non-use?

A

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 three consecutive years (calculating back from the date of filing of the cancellation trial) (Trademark Law Art. 50).
[Reviewed in January 2024]

QOn whom is the burden of proof when cancellation based on non-use is requested?

A

The owner of the registration has the burden of proving that the registered mark was used in Japan.
[Reviewed in January 2024]

QMust the trademark have been used exactly as registered?

A

Use of a trademark deemed identical to the registered trademark based on the conventional wisdom is recognized as use of the registered trademark (Article 38(5) of the Trademark Act). The following variations would be considered as use of the registered mark.

• – use of different fonts;
• – a mark registered in all caps may be used in a combination of capital and lower-case letters, or entirely in lowercase;
• – use of alternative character sets such as Japanese hiragana and katakana characters or alphabetic characters which are recognized as identical in terms of pronunciation and connotation; or
• – use of figures that are considered substantially identical in terms of appearance as those of the registered trademark.
  [Updated in January 2024]

QWill a registered trademark not used in commerce always be cancelled?

A

The JPO has the authority to allow the registration if the trademark owner can demonstrate good cause that the mark was not used commercially.
[Reviewed in January 2024]

QWill a registered trademark that has turned into a common name be cancelled?

A

No. Evolution of a mark into a common name after its registration is not grounds for cancellation.
[Reviewed in January 2024]

SPECIAL TRADEMARKS

QCan Collective Trademarks be registered in Japan?

A

Yes. Recognized collective associations may obtain protection for marks used by its members.
[Reviewed in January 2024]

QCan regional collective trademarks be registered in Japan?

A

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.
[Reviewed in January 2024]

QIs additional protection available for famous trademarks?

A

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.
[Reviewed in January 2024]

QWhat is “Reclassification”?

A

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.
[Reviewed in January 2024]

QIs it possible to request accelerated examination of a trademark application?

A

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:

1. the applicant or licensee can demonstrate an urgent need for a decision;
2. the only goods or services designated in the trademark application are the actual goods and services for which use has begun or prepared for, or
3. the only goods or services designated in the trademark application are the goods and services listed in the Ordinance for Enforcement of the Trademark Act and Examination Guidelines for Similarity of Goods and Services etc.

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.
[Reviewed in January 2024]

QAre there ways to comment on a pending trademark application filed by another party?

A

Yes. Any party may file evidence or a statement concerning the registrability of any pending application. Such a disclosure may be filed anonymously, using the name of any individual. No official fee is required.
[Reviewed in January 2024]

TRADEMARK APPLICATION UNDER MADRID PROTOCOL

QIs it possible to request a territorial extension to designate Japan under the Madrid Protocol?

A

Yes.
[Reviewed in January 2024]

QWhen the Notification of Provisional Refusal is issued, what information should be provided to an attorney in Japan?

A

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.
[Reviewed in January 2024]

QIs 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?

A

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:

1. Filing a divisional application derived from the international application is not allowed (Trademark Law Art. 68-12).
2. Any amendment to the designated goods or services in the international application may be made only when the application is a pending examination, appeal/trial or retrial.
3. The designated goods or services in the international application cannot be transferred to another class by an amendment.
   [Updated in January 2024]