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: