Trademark
Japanese Trademark Law
Flow in Obtaining Trademark Registration
To obtain a trademark registration, an application needs filing with the JPO. The application for request of trademark protection will essentially track on the flow illustrated below.
Table of Contents
3. Regional collective trademark
6. Trial for cancellation of trademark registration based on non-use
7. Cancellation of Trademark Registration Due to Abuse
8. Designating Japan in the International Registration
8.2. Second Part of the Individual Fee
8.3. Amendment (Limitation) of Goods and Services
9. On JPO's recent practice concerning the principal paragraph of Article 3(1) and Article 6
9.2. Eight (8) similarity groups in one class
9.3. How to deal with the criterion of 8 similarity groups in one class
9.4. Combination of Article 6(1) and the principal paragraph of Article 3 (1)
Trademark Act is designed based on the philosophy, “First File, First Register”. Under the framework of Trademark Act, mere fact of prior use of a trademark in Japan for a certain goods/services legally entitles a senior user of the non-registered trademark a legitimate right to use the trademark within a scope as actually ongoing. However, the prior use of the trademark does not create an exclusive right against a holder of registered trademark but filed after the use of senior user. The prior user of the non-registered trademark has to live with the registered mark. An entitlement of the prior user of trademark is to file a cancellation appeal to the registered trademark on the ground of likelihood of confusion.
The current classification of goods and services is subject to the International Classification of Goods and Services. However, the goods designated in the application filed before April 1, 1992 were classified in accordance with the former classifications used only in Japan (classification under laws of 1899, 1902, 1921 and 1959).
Therefore it was decided to reclassify the designated goods of trademark registered under the above-mentioned former classifications in the current classification (the International Classification of Goods and Services). The term "reclassification" hereinafter means the reclassification of the designated goods of trademark registered under the former classifications into the current classification (the International Classification of Goods and Services).
The holder of a trademark right resulting from an application filed before April 1, 1992 shall request the registration of reclassification by submitting the application for registration of reclassification to the Commissioner of the Patent Office (Article 2 (1) and 3(2) of Supplementary Provisions).
The period for submitting the application is from six months before the expiration date of duration of trademark right which arrives first after six months from the "acceptance starting date" to one year after the said expiration date. The term "acceptance staring date" here means a date on which the acceptance of the application for registration of reclassification starts (Article 3(2) of Supplementary Provisions).
The "acceptance starting date" varies according to each former classification.
| Distinction of the law | Acceptance starting date |
| Classification under laws of 1899 and 1909 | April 1, 1998 |
| Classification under law of 1921 | April 1, 1999 |
| Classification under law of 1959 | April 1, 2000 |
However if, due to reasons beyond the control of the applicant, the applicant is unable to submit an application for registration of reclassification within the above-mentioned period, the applicant may submit an application for registration of reclassification within 14 days (in the case of an overseas resident, within two months) from the date on which the said reasons ceased to exist, but not later than six months after the expiration of the above-mentioned period.
Please note that the procedure for registration of reclassification is different from the procedure for registration of renewal of duration of trademark right. In the case where the renewal of duration of a trademark right to be reclassified has been registered, if the reclassification of the trademark right is not registered, the trademark right shall expire upon the expiration date of the renewed duration. If the holder of a trademark does not request the registration of renewal of duration of the trademark right, the registration of reclassification of the trademark right is not necessary.
When the number of classes increases as a result of reclassification, the registration fee for the next renewal shall be paid in accordance with the increased number of classes. The registration fee can be reduced by waiving unnecessary class(es) where the registrant no longer wishes to use the trademark.
3. Regional collective trademark
The Japanese Trademark Act admits the registration of "regional collective trademark" under certain conditions. The term "regional collective trademark" means, briefly, a trademark which is used by the members of certain associations and consists solely of the name of the region and the common name or the customarily used name of the goods or services (Article 7-2(1)).
The items of Article 7-2(1) provide, in detail, the three following sorts of the regional collective trademark:
(A) "a trademark consisting solely of characters indicating, in a common manner, the name of the region and the common name of the goods or services pertaining to the business of the applicant or its members" (Article 7-2(1)(i));
(B) "a trademark consisting solely of characters indicating, in a common manner, the name of the region and the name customarily used as a name indicating the goods or services pertaining to the business of the applicant or its members" (Article7-2(1)(ii));
(C) "a trademark consisting solely of characters indicating, in a common manner, the name of the region and the common name of the goods or services pertaining to the business of the applicant or its members or the name customarily used as a name indicating thereof, and characters customarily added in indicating, in a common manner, the place of origin of the goods or the location of provision of the services" (Article 7-2(1)(iii)).
According to Article 7-2, the requirements particular (including the procedural requirements) to the registration of regional collective trademark are as follows:
(1) the applicant shall be an association (including a business cooperative) with juridical personality established by a special Act which provides, without a just cause, that the association shall not refuse the enrollment of any person who is eligible to become a member or that the association shall not impose on any of its prospective members any condition that is heavier than those imposed on its existing members or a foreign juridical person equivalent thereto (the principle paragraph of Article 7-2(1));
(2) the trademark shall be used by the members of the above-mentioned association (the principle paragraph of Article 7-2(1));
(3) as a result of the use of the trademark, the trademark shall be well recognized among consumers as indicating the goods or services pertaining to the business of the applicant or its members (the principle paragraph of Article 7-2(1));
(4) the trademark shall fall under any of the above-mentioned (A), (B) and (C);
(5) the "name of the region" contained in the trademark shall be the name of the place of origin of the goods etc. or the name of the region which considered to have a close relationship with the said goods or services to the equivalent extent (Article 7-2(2));
(6) at the time of the application, the applicant shall submit to the Commissioner of the Patent Office a document certifying that the applicant is an association prescribed in (1) and documents necessary to prove that the trademark contains the "name of a region" prescribed in (5) (Article 7-2(4)).
Furthermore, in the current examination practice, the applicant is required to submit a document proving that the trademark is well recognized among consumers as indicating the goods or services pertaining to the business of the applicant or its members.
With regard to the trademark right of regional collective trademark, the following matters shall be considerable:
(i) the trademark right may not be assignable (Article 24-2(4));
(ii) the exclusive license may not be established (proviso of Article 30(1));
(iii) members of the association (holder of the trademark right) have the non exclusive license(Article 31-2 (1)).
Defensive Mark creates a wider protection for a famous mark, which can prohibit a third party from using or registering a famous for goods and services but dissimilar to those of famous mark.
If a trademark is famous for a certain goods or services, its mark can be register-able provided that the trademark satisfies the requirements, namely;
Requirement A; A trademark is famous in Japan for a certain goods/services as indicator of source demonstrating goods/services of a famous mark owner.
Requirement B; There is a likelihood of confusion between trademarks when a third party use the famous mark in connection with goods/services but it’s not identical or similar to those of famous mark.
The most significance in the Requirement concerns that the Act essentially still requires “likelihood of confusion”. In a contrast to other jurisdictions, mere “likelihood of dilution” does not meet the Requirement as a Defensive Mark.
Please note a use or intention to use of a famous mark for dissimilar goods/services is not essential so long as there is a likelihood of confusion between goods/services of famous mark and dissimilar goods/services used by a third party. In turn, a Defensive Mark will not be vulnerable to cancel due to non-use of the Defensive Mark if the Defensive Mark remains meeting the Requirement A and B both. Being uncancellable by non-use for dissimilar goods/services presents definitely a great advantage for a famous trademark owner.
A use of a Defensive Mark by a third party may constitute infringement of trademark right of a famous mark. For instance, a registered trademark is recognized a famous mark for high-end automobiles, and the trademark was registered as the Defensive Mark in connection with herbicide. In case that a third party uses the famous mark for herbicide, its use of famous mark by a third may constitute an infringement of registered trademark for high-end automobiles.
In administrative phase at the JPO, however, it was truly understood that a holder of famous mark for high-end automobiles successfully demonstrated that there was a likelihood of confusion between high-end automobile and herbicide if a third party uses the trademark for dissimilar goods, herbicide.
A registration of Defensive Mark expires in 10 years from a date of registration, but its term does not synchronize with a term for registration of a famous mark. The registration of Defensive Mark can be renewable by filing an application but needs examination by an Examiner to see if the Defensive Mark still remains satisfying the Requirement A and B.
Any person may file with the Commissioner of the Patent Office an opposition to registration within two months from the date of publication of the bulletin containing the trademark, on the grounds that the trademark registration falls under the reasons for opposition (Japan Trademark Act Article 43-2).
The reasons for opposition are almost same with the reasons for refusal.
In this case, an opposition to registration may be filed for each of designated goods or designated services if the relevant trademark has been registered in connection with two or more designated goods or designated services.
An examination and decision on an opposition to registration shall be conducted by a panel consisting of three or five trial examiners.
Where the trial examiners find that the trademark registration falls under the reasons for opposition, the trial examiners shall render a decision that the trademark registration is to be rescinded.
Where the rescission decision becomes final, the relevant trademark right shall no longer exist.
Where the trial examiners find that the trademark registration does not fall under the reasons for opposition, the trial examiners shall render a decision that the trademark registration is to be maintained. The decision that the trademark registration is to be maintained shall not be subject to appeal.
Where the person does not accept the decision that the trademark registration is to be maintained, the person can file a request for a trial for invalidation of the trademark registration.
6. Trial for cancellation of trademark registration based on non-use
Where a registered trademark has not been used in Japan in connection with any of the designated goods and designated services for three consecutive years or longer by the holder of trademark right, the exclusive right to use or non-exclusive right to use, any person may file a request for a trial for cancellation of such trademark registration in connection with the relevant designated goods or designated services (Japan Trademark Act Article 50).
Where a request for a trial is filed, unless the demandee proves that any of the holder of trademark right, exclusive right to use or non-exclusive right to use has used the registered trademark in Japan in connection with any of the designated goods or designated services pertaining to the request within three years prior to the registration of the request for the trial, the holder of trademark right may not prevent the cancellation of the trademark registration in connection with the relevant designated goods or designated services.
However, this shall not apply where the demandee shows just causes for non-use of the registered trademark in connection with the relevant designated goods or designated services.
Use of a registered trademark includes use of a trademark deemed identical from common sense perspective with the registered trademark will be accepted to prove using the registered trademark.
For example, a trademark consisting of characters identical with the registered trademark but in different fonts, a trademark that is written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from the registered trademark but identical with the registered trademark in terms of pronunciation and concept, a trademark consisting of figures that are considered identical in terms of appearance as those of the registered trademark, will be accepted to prove using the registered trademark.
When a right holder cannot prove using the registered trademark or cannot state inexcusable reason of non-use, a trial decision of cancellation is performed, and the trademark right is cancelled.
7. Cancellation of Trademark Registration Due to Abuse
If use of a registered trademark or a mark similar thereto misleads consumers as to the nature of the goods or causes confusion with the goods of another person, such use shall constitute abuse of the registered trademark. For example, if the registrant of the trademark registration for "AJPO" uses the mark in the form like "a-JPO" to make the mark closely approximate another person's trademark "JPO", such use could be considered abuse of the registered trademark.
As a penalty for such abuse, the trademark registration shall be subject to cancellation under Articles 51 and 53 of the Japan Trademark Law. Article 51 addresses abuse by the trademark registrant while Article 53 addresses abuse by the licensee. The purpose of these Articles is to protect consumers' interests.
Requirements of Request for Cancellation Proceedings and Legal Effect
| Abuse by Trademark Registrant under Article 51 |
Abuse by Licensee under Article 53 |
|
| Plaintiff | Any person, even without any legal interest | |
| Defendant | Trademark Registrant | |
| Conditions |
i)To intentionally use;
ii) either a trademark similar to a registered trademark in connection with the designated goods or designated services, or a registered trademark in connection with goods or services similar to the designated goods or designated services or a trademark similar thereto; and iii) in a manner that misleads consumers as to the nature of the goods or services or causes confusion in connection with the goods or services pertaining to a business of another person. |
i) To intentionally or unintentionally use;
ii) a registered trademark in connection with the designated goods or designated services or in connection with goods or services similar thereto, or a trademark similar thereto; and iii) in a manner that misleads consumers as to the nature of the goods or services or causes confusion in connection with the goods or services pertaining to the business of another person.. |
| Exception | This Article shall not apply to the case where the trademark registrant was not aware, in spite of due care, of the fact of the abuse by the licensee. | |
| Legal effect |
Where a board decision canceling the trademark registration becomes final and binding, the trademark right shall become extinguished thereafter. The former trademark registrant or licensee who abused the trademark may not be granted a registration of an identical or similar trademark in connection with identical or similar goods and services, until after the lapse of five years from the date the board decision becomes final and binding. |
|
8. Designating Japan in the International Registration
Japan adopts and sets up its own "individual fee" system in place of the supplementary and complementary fee system under Article 8 (7) of the Madrid Protocol (Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on June 27, 1989). Therefore, if Japan is designated in the international registration, only the individual fee, instead of the supplementary and complementary fee, is payable.
In this regard, the applicant should be most careful about the following three points.
(1) The individual fee for Japan must be paid in two parts (at two stages).
First Part (at the time of filing) : 140 CHF for one class
107 CHF for each additional class
Second Part (at the time of registration) : 467 CHF for each class
* CHF (in Swiss francs - Status on August 12, 2009)
(2) The Second Part of the individual fee must be paid within a certain period (three months from the date of allowance under the present practice).
(3) A failure to pay the Second Part of the individual fee would lead to the lapse of the Japanese part of the international application.
Generally applicants tend to fail to pay the Second Part of the individual fee. Therefore, it would be recommendable for an applicant to retain a Japanese patent attorney to monitor the status of the application.
8.2. Second Part of the Individual Fee
The Japan Patent Office has adopted the two-part payment of individual fees, in accordance with Rule 34 (3)(a) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto.
The second part of the individual fee has to be paid within the prescribed period indicated in the notification, which will be sent directly to the applicant from the International Bureau (IB) in due course. The fee must be paid directly to the IB. If the second part of the individual fee is not paid within the prescribed period, the Japanese portion of the international registration in the International Register will be cancelled.
Once the international registration has been cancelled, the international application for trademark registration will be deemed to have been withdrawn in Japan. There is no way to revive applications deemed to be withdrawn in Japan if said withdrawal is the result of failure to pay the second part of the individual fee.
8.3. Amendment (Limitation) of Goods and Services
(1) Time Limit for Amendment (Limitation) filed with the Japan Patent Office
If an applicant wishes to file with the Japan Patent Office (JPO) an amendment (including a limitation of goods and services) of the Japanese part of its international application in response to a provisional refusal issued by the Japan Patent Office, such amendment must be filed by a Japanese Patent Attorney and only within a certain period under Article 68-28 of the Japan Trademark Law. Under the present Japanese trademark practice the certain period given is three months after the issuance of the JPO's provisional refusal.
(2) Amendment (Limitation) filed with the International Bureau
The applicant of an international registration may file any limitation at any time, in respect of all or some of the Contracting Parties, or of goods and services listed in the international registration under Article 9bis (iii) of the Madrid Protocol.
If an applicant fails to file an amendment (limitation) with the JPO within the period set forth in the above (1), it may file such amendment with the International Bureau of the WIPO. If such amendment overcoming the provisional refusal is to be filed with the International Bureau of the WIPO when the application for the Japanese part is still pending before the JPO, the application for the Japanese part of the international registration will be allowed by the JPO.
9. On JPO's recent practice concerning the principal paragraph of Article 3(1) and Article 6
The Japan Trademark Act requires intention of use of the registered trademark. This standpoint is expressed in the principal paragraph of Article 3(1). This paragraph is as follows:
"Article 3 (1) Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:"
On the basis of this principal paragraph, Japan Patent Office (JPO) considers that the registration of a trademark presupposes or requires intention of use in connection with goods or services pertaining to the business of an applicant. Furthermore, from the point of view of intention of use of the registered trademark, JPO has imposed more restrictive practices concerning the designated goods or designated services upon the applications filed on and after April 1st, 2007. JPO explains in The Trademark Examination Manual 41.100.03 (There is no English version of this part on JPO's site) that, where at least one of the classes of goods and services (*1) in an application contains eight (8) or more similarity groups (*2), the examiner shall notify its applicant of reason for refusal in order to ascertain intention of use of the trademark in connection with all the designated goods or designated services in the class(es) in question. Therefore the applicant must pay attention to the number of "similarity groups" of designated goods or designated services per class of goods and services in an application. But why eight (8) similarity groups in one class?
(*1) The current classification of goods and services is subject to the International Classification of Goods and Services of the NICE AGREEMENT (9th edition at present).
(*2) The term "similarity group" means a group of goods or services that JPO considers similar. JPO assigns a code (similarity group code) to each similarity group. Therefore JPO judges in principle that the goods or services to which same code is assigned are similar. In each class there are several similarity groups in general. For example, fifteen (15) similarity groups are contained in class 1 at present.
(See the following page on JPO's site:
http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/kijun/kijun2/ruiji_kijun9_eng.htm.)
9.2. Eight (8) similarity groups in one class
In order to understand such recent practice, it is necessary to know the relation between the designation of goods or services and the class of goods and services. This relation is provided in Article 6. The full text of Article 6 is as follows:
"Article 6 (1) An application for trademark registration shall be filed for each trademark and designate one or more goods or services in connection with which the trademark is to be used.
(2) The designation provided for in the preceding paragraph shall be made in accordance with the class of goods and services provided by Cabinet Order.
(3) The class of goods and services provided for in the preceding paragraph shall not be perceived as prescribing the scope of similarities of goods or services."
According to Article 6 (1) and (2), the goods or services stated in an application shall be designated per and in accordance with the class of goods and services. And the filing fee and the registration fee of an application are subject to the number of classes of goods and services (*3). These fees are indifferent to the scope of the designated goods or designated services as well as to the number of similarity groups. The cost for registration being taken into consideration, the number of classes included in an application is decisive. Therefore an applicant who wants to cover a broader scope of a registered trademark at lower cost would like to designate more goods or services than necessary (if possible) in each class in spite of the requirement of the principal paragraph of Article 3 (1). Such applications cause expansion of non-use range of designated goods or designated services of registered trademarks. So, in order to minimize their non-use range, JPO added the criterion of 8 similarity groups per class in an application. However in Examination Guidelines for Trademarks (English version) about the Principal Paragraph of Article 3(1), this criterion is not expressed definitely:
"2. An application containing designated goods or designated services that contained in an application fall under the following (1) or (2) will receive a notification of reason for refusal stating that the trademark does not fall within the category of trademarks registrable in accordance with the principal paragraph of Article 3(1), because there is a justifiable doubt as to whether the applicant is conducting, or is planning to start, business connected with the designated goods or designated services which is regarded as the premise for the use of a trademark. The intention of use of the trademark will be ascertained by investigating the applicant’s business.
(1)...
(2) Regarding overall goods and services
Where there is a doubt as to the intention of use of a trademark in regard to the designated goods or designated services, since the designation of goods or services ranges widely in one classification."
(Part 2: Principal Paragraph of Article 3(1) in Examination Guidelines for Trademarks (English version))
The following page on JPO's site:
http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/tt1302-001.htm)
(NOTA BENE:
In the above cited paragraphs the part of (1) is omitted. This part is intended for so called "retail services."
The "retail services" are subject to another and severer restriction. Please be careful of the designation of "retail services.")
In such paragraphs, there are not the words of "eight (8) similarity groups." But The Trademark Examination Manual 41.100.03 referred to above definitely explains that such expression of "the designation of goods or services ranges widely in one classification" means that the designated goods or designated services in one class cover 8 or more similarity groups of goods or services. Therefore where an application includes at least one class in which the designated goods or designated services cover 8 or more similarity groups, the examiner considers that "there is a doubt as to the intention of use of a trademark in regard to the designated goods or designated services" in such a class and notifies its applicant of reason for refusal concerning intention of use for the ascertainment of intention of use. So, how should an applicant deal with the criterion of 8 similarity groups in one class?
(*3) The articles on the filing fee and the registration fee for trademark registration are as follows:
"Article 40 (1) A person obtaining the registration of establishment of a trademark right shall pay as a registration fee for each trademark registration the amount of 37,600 yen multiplied by the number of classes (referring to classes of goods and services provided by Cabinet Order provided for in Article 6(2), to which the designated goods or designated services belong; the same shall apply hereinafter)."
"Attached Table (In relation to Article 76)
| Person responsible for payment | Amount | |
| 1 | Person filing an application for trademark registration | 6,000 yen per case plus 15,000 yen for each class |
9.3. How to deal with the criterion of 8 similarity groups in one class
Where an applicant has received a notification of such a reason for refusal concerning the intention of use, he/she can submit document(s) to show the intention of use about all the designated goods or designated services in the class(es) that the examiner has put into question (*4) or can amend (that is, delete) the designated goods or designated services so that the number of their similarity groups is within seven (7). Where the designated goods or designated services of each class included in an application does not exceed seven (7) similarity groups, the examiner does not consider that "there is a doubt as to the intention of use of a trademark in regard to the designated goods or designated services." When an applicant would like to avoid such a notification, he/she had better limit the number of similarity groups of the designated goods or designated services per class up to seven (7) beforehand. But, on the basis of the combination of Article 6 (1) and the principal paragraph of Article 3 (1) the reason for refusal may be notified. What does the combination between Article 6 (1) and the principal paragraph of Article 3 (1) mean?
(*4) With regard to the document(s) for showing (or proving) use or intention of use, see the above mentioned page on JPO's site:
http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/tt1302-001.htm.
9.4. Combination of Article 6(1) and the principal paragraph of Article 3 (1)
With regard to Article 6, we cite some of paragraphs concerned of Examination Guidelines for Trademarks (English version) below:
"1. The description of designated goods or designated services needs to be so made that the content and scope of goods or services may be clearly grasped as, for example, indicated in the attached table of the Ministry Ordinance (Article 6 of the Regulations under the Trademark Act), etc."
"3. When the description of the designated goods and designated services is not clear and the classification of the goods and services do not conform to the Cabinet Orders, reasons for refusal will be given as not satisfying the requirements provided in Article 6(1) and (2)."
"4. Where the descriptions of the designated goods and services is not clear, but may be judged to be conforming to the classifications of the goods and services provided
in the Cabinet Order, a reason of refusal will be notified for not satisfying the requirements of Article 6(1)."
(Chapter V: Article 6 (Single trademark on each application) in Examination Guidelines for Trademarks (English version))
The following page on JPO's site:
http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/tt1302-001.htm)
According to the above mentioned Examination Guideline, the content and scope of designated goods or designated services stated in an application shall be clearly grasped, that is, the description of designated goods and designated services shall be clear. When their description is not clear, the examiner notifies its applicant of reason for refusal on the basis of non-clearness of description (*5). And under examination, even if the examiner can not clearly gasp the content and scope of designated goods or services, he/she shall decide similarity group codes assigned to the designated goods or services and assign the decided similarity codes to them. These decided similarity group codes may be temporary. As a consequence of such (temporary) decision and assignment, it can occur that the number of the similarity groups in one class reaches eight (8) or over. In such a case, the examiner notifies its applicant of reason for refusal on the basis on the doubt as to the intention of use (due to the criterion of 8 similarity groups) at the same time. Such a notification is a notification on the basis of the combination between Article 6 (1) and the principal paragraph of Article 3 (1).
(*5) With regard to the measures of the applicant, see the above mentioned page on JPO's site:
http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/tt1302-001.htm
