TRADEMARK FILING AND PROSECUTION IN JAPAN
The Trademark Act (Act No. 27 of 1959) governs the laws relating to trademark filing and prosecution. Article 2 of the Trademark Act defines a “trademark” as among those which can be perceived by people, any character, figure, sign or three-dimensional shape or color, or any combination thereof; sounds, or anything else specified by Cabinet Order (hereinafter referred to as a “mark”) which is:
(i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or
(ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item).
A Trademark in Japan may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
| Relevant office | Japan Patent Office (JPO) |
| Filing principle | First-to-file |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services. |
| Prosecution process | Filing publication of the mark in the trade mark journal opposition(within 2 months after the publication date) registration renewal |
| Registration term | 10 years from the date of registration |
| Renewal term | 10 years |
Trademark searches in Japan
Under the “First to File” principle, if any other applicant files an application for an identical or deceptively similar trademark used for identical or similar goods and services after the first applicant has applied then the application filed by later applicant will be refused.
Therefore, it is advisable to always conduct a trademark search prior to filing a trademark application and ascertain trademark availability, so as to avoid any objections or oppositions with respect to the mark in the future.
A trademark search in Japan can be conducted for word marks, numbers, etc. The Japan Patent Office i.e. JPO provides a public database to search for already filed and registered trademarks.
It is advisable to conduct a comprehensive trademark clearance search in Japan to ascertain the availability of the proposed mark and also to overcome any objections and oppositions with respect to the mark later on.
Trademark Filing in Japan
A person may file a multi-class or single-class trademark application in Japan.
A Trademark application in Japan can be filed under the following categories:
- Ordinary Applications
- Convention application (i.e. claiming priority from a convention country)
A priority trademark application may be filed in Japan. A priority trademark application should be filed in Japan within 6 months after the date on which the application was made in the convention country.
Trademark Examination in Japan
Once a trademark application is filed then the same proceeds to the examination process, which is divided into two stages: formal and substantive examination.
Under formal examination, an application is checked to see whether it fulfills the necessary procedural and formal requirements. In case any necessary documents or information is missing, an invitation to correct the same is made to the applicant.
Under substantive examination, trademarks will be refused if they are deemed not to meet the following requirements:
(i) trademarks which do not enable consumers to differentiate the applicant’s goods or services from those belonging to other parties;
(ii) trademarks that are unregistrable for reasons of public interest or for the protection of private interests;
Where an application fails to meet the substantive requirements, notification of reasons for refusal will be sent to the applicant. JPO also has the provision of expedited or accelerated examination.
Thereafter, an applicant may submit either a written argument against a notification of reasons for refusal or an amendment that would nullify the reasons for refusal.
In case the applicant is dissatisfied with the decision of refusal of the examiner, an appeal against the decision of refusal may be filed against a collegial body of three or five appeal examiners.
Trademark Opposition in Japan
As per Article 43-2 of The Trademark Act, once a trademark application is published in the Gazette, an opposition may be filed against the said application within two (2) months from the date of publication of the Gazette.
The grounds for filing an opposition are limited to those prescribed in Article 43-2.
It is possible to file an opposition against an application in Japan on the basis of an unregistered trademark. However, it would necessary to establish that the trademark on the basis of which the opposition is being filed, was already well-known or famous in Japan at the time of the filing of the application being opposed, with the help of a large volume of supporting evidence.
Trademark registration in Japan
After the examination process is completed and the mark is accepted for registration, the trademark is published in teh Trademark Gazette.
Thereafter, the prescribed registration fee is to be paid to the JPO so trademark registration comes into force.
The mark is registered for a period of 10 years from date of registration of the application and the registration certificate is issued.
Trademark Appeal in Japan
An applicant who is dissatisfied with an appeal decision of refusal, and an interested party who is dissatisfied with an appeal decision of invalidation, revocation or maintenance, may appeal to the Intellectual Property High Court.
Trademark Renewal in Japan
You can renew your trademark right by filing a request for renewal six months before the trademark right expires.
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