2011.2.1

This article provides an overview of the Japanese trademark process and strategies for trademark applicants to secure their trademarks in Japan.

1. CONSIDERATIONS BEFORE FILING

Intent to Use the trademark

Actual use or intent to use of the trademark is required for the applicant to register a trademark. Each international class is further divided to subclasses in Japan. If goods or services are selected from more than seven subclasses within a single International class, then patent office requests a declaration accompanied by a business plan to prove the intent to use the trademark. Otherwise, the applicant is generally not required to prove the intent-to-use.

What is Registrable
A trademark may include colors, but mere colure without any figure is not acceptable. Sounds and smells cannot be registered as well. Three-dimensional trademarks can also be registered.

Prior Use

Prior use of an unregistered trademark does not automatically confer an exclusive right to use the mark. However, any person that has been using a trademark in Japan that is identical or similar to a registered trademark prior to the application date of the registered trademark is allowed to continue to use the mark, assuming the mark has become well known.

Term of registration and renewal

The term of rights is 10 years from the registration and is renewable indefinitely. The request for renewal can be filed within six months before the expiration with no surcharge and within six months after the expiration with a 100 % surcharge.

Description of Goods and Services

The JPO published "Acceptable Description of Goods and Services" at Japan Patent Office. While this is in Japanese, if a class is selected, the Acceptable Description appears in English as well. The JPO is very strict in description of goods and services. The International standard goods/services are sometimes rejected as well. If the actual goods or services correspond to the Acceptable Description, the Acceptable Description should be used.

If the actual goods or services do not correspond to any Acceptable Description, the goods or services should be listed specifically and the application should accompany a detailed explanation of the goods or services, such as pamphlets or print out of web sites, so that the examiner clearly understands the nature and scope of the goods or services. Then the examiner would suggest a description in a first office action.

During prosecution, the applicant can further limit goods or services, but cannot broaden them. At the time of filing, it is recommended to add broad identification of goods and services to support future limitation, especially when the actual goods or services do not correspond to the Acceptable Description.


2. EXAMINATION

Examination

All trademark applications are subject to a substantive examination. A request for expedited examination is permissible in special circumstances, such as possible infringement of the trademark or a pending application in a foreign country. The trademark is examined for distinctiveness and registrability including:

• Whether an identical/similar trademark is registered for identical/similar goods/services;
• Whether a famous trademark exists in Japan or abroad;
• Whether the trademark contains a stage name of another person or a famous abbreviation thereof; and
• Whether a trademark is identical or similar to any national flags or state coats of arms;

If any requirement is not satisfied, the examiner issues a notice of reasons for rejection, to which a foreign applicant must respond within three months.

Amendment and Argument

If the application is rejected based on a prior mark, conflicting goods or services may be deleted to avoid the citation. However, not even a small change of a trademark is permitted. The Applicant may also argue dissimilarity of the mark. It is also advisable to add arguments supported by past JPO, court decisions or other supporting documents.

Cancelling a Cited Trademark

If overcoming the rejection appears difficult, one option that is routinely chosen in Japan is to file a non-use cancellation request against the cited trademark. The cited mark will be successfully cancelled with respect to conflicting goods or services, if the registered trademark has not been used for any conflicting goods or services within the last 3 years.

Consent

Mere consent from the owner of the cited trademark does not cure the rejection in Japan. However, by temporarily assigning the trademark application to the owner of the cited trademark, the rejection is overcome. After the trademark is successfully registered, the registered trademark is assigned back to the original applicant in accordance with a contract previously made. Another option is to negotiate with the owner of the cited trademark for either an assignment or a license of the cited trademark. For negotiating with the owner of the cited trademark, making a contract, and pursuing the above assignments, contact us at cases_to_jp@ryuka.com.

Secondary Meaning

If the trademark application is rejected due to lack of distinctiveness, proof that the mark has acquired distinctiveness through long and extensive use may be enough to register the mark. If this option is not available, it may be necessary to ensure that the mark is not registrable in Japan so that no other party is able to obtain registration of the mark. For that purpose, filing an argument or even an appeal to confirm rejection should be undertaken.


3. AFTER THE REGISTRATION

Post-grant opposition
Any parties that oppose a trademark registration may file an opposition within two months of the publication of the registered trademark. If board examiners find a reason to cancel the registration, the owner is notified and given an opportunity to respond. If the grounds for the opposition are not overcome, the examiners render a decision to cancel the registration, which can be appealed to the Tokyo High Court. If the opposition is limited to part of the designated goods or services, that part is cancelled.

Assignment and licensing

A registered trademark or trademark application may be assigned for one or more of the specified goods or services. The transfer of a registered trademark is not effective until it is recorded, except in cases of inheritance or other general succession.

An exclusive licensee may not transfer the exclusive license nor grant a non-exclusive license to another without express permission from the trademark owner. However, if the related business is transferred together, the exclusive license can be transferred without the permission.

While exclusive license becomes effective by registration, non-exclusive licenses is effective without being registered. However, for avoiding any conflicting licenses from being registered, we suggest registering non-exclusive licenses to the Japan patent office as soon as possible.

Non-use cancellation

If a registered trademark has not been used for given designated goods or services for three years in Japan, anyone can file a non-use cancellation request against the trademark registration with respect to such goods or services. The trademark registration will be cancelled unless the registrant proves use of the registered trademark or justifiable reason.

The use by a licensee is also considered use of a registered trademark. A registered trademark is also regarded as being in use even if the trademark owner uses a slightly different trademark consisting of the same characters in a different style, or consisting of different characters but having the same pronunciation and concept. For example, a registered trademark consisting of Roman letters is considered to be in use if a trademark consisting of Japanese Katakana syllables that has the same pronunciation and concept is used.

Trial system

Trials include those for invalidating trademark registration, cancelling trademark registration due to abuse, and cancelling trademark registration to avoid confusion over source. A body consisting of three or five trial examiners handles all of the trials and either party may appeal the decision of trial examiners to the Tokyo High Court.


4. PLANNING FOR SUCCESS

It is recommended that a preliminary trademark search be carried out, in order to decrease the possibility of rejection and trademark infringement, with a view toward registration encompassing a broad specification of goods and/or services. Initial effort and strategic planning will provide an applicant with a greater chance of registration and a final result of a registered trademark with strong enforcement rights in Japan.

For filing a trademark application in Japan, please let us know the followings.

• Name and address of the applicant
• Filing date and the country of the priority application, if any
• Trademark
• Classes and Designated goods or services

More than one classes can be selected in a single application. A certified copy of the priority application must be submitted within three months from the Japanese filing date, but a power of attorney is not required until an appeal is filed.

Should you have any questions, please feel free to contact us.


Truly yours,
Aki Ryuka