October 2015

Partial Revision of the Patent Act and Other Acts (summary)

The “Draft of the Act for the Partial Revision of the Patent Act and Other Acts”, approved by the Cabinet of Japan on March 13, 2015, was passed by Parliament on July 3, 2015 and promulgated as Act No. 55 on July 10, 2015.

 

In the following, we provide an overview of these changes. The revised acts are not yet in force but are slated for implementation as of April 1st, 2016.

 

1. Review of employee invention system

In order to provide incentives for researchers’ performance and to improve a company’s competitiveness, the following provisions are made.

i) The right to obtain a patent on an employees’ invention can be vested in the company from the outset via an agreement between the company and the employer.

ii) The Minister of Economy, Trade and Industry shall draw up guidelines for said agreement.

iii) Employee inventors shall be entitled to claim a financial or other benefit for an invention.

 

 

2. Amendment of renewal and other fees

Renewal fees shall be revised in order to promote the use of patent and trademark rights. For example, the renewal fees for patents shall be reduced by ca. 10% for each year following registration of a patent right, the trademark registration fee shall be reduced by ca. 25% and trademark renewal fees by ca. 20%.

 

3. New provisions in accordance with Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks

In line with both treaties, the provisions for performing procedural acts within a time limit are amended. Examples are given below.

i) The time limit for submitting a translation of a preliminarily filed English-language subsequent patent application in Japan is extended by 2 months to 4 months following expiry of the 12-month priority period according to the Paris Convention. Where this time limit is missed, the JPO will issue a notification requesting the applicant to perform the omitted act within a period to be specified.

 

ii) If a patent application contains a defect which would lead to a non-remediable loss of rights, such as missing specification pages, or when the applicant’s name is not given, the JPO will henceforth issue a notification requesting the applicant to correct the defect within a period to be specified.

 

iii) Where the use of a trademark at an exhibition has been indicated upon filing the trademark application and proof thereof has still not been submitted within 30 days of filing, the applicant may validly perform the omitted act within a period to be specified (not yet determined).

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Trademarks – FAQ

What can be protected as trademark in Japan?

In Japan, only the “word”, “figure”, “sign” and “three-dimensional configuration” and a combination thereof used to be protected as “trademark” in Japan, but since April 2015, the “motion”, “hologram”, “position”, “color” and “sound” have been added to the subject of protection.

→ New types of trademarks introduced in Japan in 2015: please refer to this article.

 

Please explain whether or not the examination is required. Can the examination be made by myself?

It is recommended that you should conduct a trademark search before application and use. The trademark search makes it possible, to some extent, to see whether such trademark may be registered and to avoid the waste of expenses and time for application for trademark. There are some search tools for free use such as J-Plat Pat by the JPO, but unless you are well-familiarized with the method of search or decision on trademark similarity, it is impossible to conduct an accurate search, therefore, we would recommend you to ask patent attorneys to conduct a search.

→ All you need to know about Trademark search: Please refer to this article.

 

When applying for a trademark, is it necessary to prepare a specimen of trademark?

A specimen of trademark is required at the application of trademark of figure or logo. In relation to a word mark with plain fonts, such sample would be unnecessary since there is a standard character system, but attention should be paid to the case where a preferential right is claimed. Even if the first application is made with the standard characters, if the application is made with standard characters in Japan, there may be a case where the trademark conformity may not be accepted.

 

What are the procedures and time frame for registration after the application?

The substantive examination principle is adopted in Japan. Therefore, all the applied trademarks will be examined substantively and if there is no reason for refusal, the decision on registration will be notified. Then, upon payment of the prescribed fee, the registration will be made. For avoidance of doubt, the subject of examination includes not only whether to have distinctiveness (absolute reason for refusal), but also whether to fall under others’ prior similar trademark (relative reason for refusal).

 

The time for examination depends upon the number of classes, but the first action will be notified within six (6) months through one (1) year after the application. If a reason for refusal is notified, an opportunity for counterargument will be given.

 

The flow after application can be found here at JPO’s website.

 

What is the general view on the similarity of trademark?

The similarity of trademark will be determined upon comprehensively considering three elements i.e. sound aspect, concept and appearance of trademark. The sound aspect is the most important element, therefore, even if the spelling is different, if the way it is read is the same, then, it tends to be found to be “similar”. Also, if the trademark is a combined mark that combines plural number of words, then, the comparison of essential feature of trademark will be made in consideration of distinctiveness of each word.

 

What is the general view on similarity of goods and services?

The decision on similarity of trademarks and services would be made by an examiner in comprehensive consideration of the scope of goods or service providers and demanders, but in practice, the decision would be made in a unified manner in accordance with the “Examination Guidelines for Similar Goods and Services” prepared by the JPO.

 

The reason for refusal as provided for in the body of Paragraph 1 of Article 3 has been notified. How should we deal with it?

The operation of the body of Paragraph 1 of Article 3 has drastically changed since 2008. In principle, since Japan adopts the registration principle, the use or non-use of trademark would not be a problem at the registration of trademark. However, if the designated scope is too extensive in one class, the use of such trademark is regarded as doubtful and the notice of reason for refusal in breach of the body of Paragraph 1 of Article 3 is getting being sent. If such reason for refusal is notified, it is required to a) restrict the goods/services, b) (if the business is actually conducted) to certify such conduct, c) (if it is expected to commence the business in the near future) to make a declaration and to submit the business plan.

 

The reason for refusal of Sub-paragraph (xi) of Paragraph 1 of Article 4 has been notified. Is it possible to solve the problem in accordance with the “consent system”?

In Japan, not only the absolute reason for refusal but also the relative reason for refusal are subject to examination. Therefore, if the trademark is the same as or similar to the applied trademark and there exists a prior registration/prior application of “others” whose designated goods/services are similar, then, the reason for refusal would be notified. If such reason for refusal is notified, what is generally conducted is (a) to restrict the designated goods/services and resolve the infringement of goods/services, or (b) to counter such argument to the effect that the trademark or goods/services are dissimilar. What we should have in mind is that the so-called “consent system” does not exist in Japan. Instead, there are some cases where the infringement is resolved by using the method of so-called “assign-back”.

 

The trademark that is quite similar to my registered trademark is being applied. Is there any way to prevent the registration?

It depends upon the status of examination of such trademark. If such trademark is being examined and it is expected that the trademark regarding the application for registration of trademark has a reason for refusal, there is a possibility to lead such application to decision of refusal by submitting to the examiner the fact and supporting evidence thereof. This is called as “submission of information”. If such trademark is already registered and no more than two (2) months has elapsed since the issuance of Trademark Gazette, then anybody may make an opposition against such registration. Then, the person who has legal interest may make an appeal for invalidation.

 

For how long will a trademark remain?

The trademark right will remain for ten (10) years from the date of registration. However, by making an application for registration renewal every ten (10) years, the term may be extended almost permanently. This is because the purpose of trademark right is to protect the credit and power of brand that are granted by the use of trademark. On the other hand, the trademark would not be used or could become of anti-public benefit, therefore, the term of ten (10) years is set up.

 

The trademark owner has changed. Is it necessary to take any procedures?

Yes. The trademark will become effective only when the procedures for change of owner are taken and such is registered on the register of the JPO. Also, the judgement on the corporate identity is strict at the JPO. Even if the names of two companies are the same, if their addresses are different, those two companies will not be regarded as the same. As a result of that, without the procedures for change, if a new application is made at the current address and if its own trademark is registered at the former address, then, those two companies will not be regarded as the same and such trademark would be the cited trademark and the notice of reasons for refusal will be issued (cf: Reason for refusal in 4-1-11 in Q8).

 

There is some difference between the registered trademark and the trademark that is actually used. Is there any problem with that?

There could be mainly two issues. The first one is the risk of infringing the trademark of others. This is because, by changing the trademark, the scope of the trademark that is being used could go beyond the scope that is protected by the registered trademark. The second one is the risk that if a cancellation trial on the basis of non-use is demanded, the use of the trademark that is being used may not be regarded as the use of the registered trademark. If the registered trademark is different from the trademark that is being used, please consult with us just in case.

 

We have designated Japan in the international registration application. Are there any points to remember? Also, what should we do if the OA is given?

The international registration that is applied upon designating Japan will be sent to the JPO within approximately three (3) months from the date of international registration and the examination will commence. The first action will be notified within eighteen (18) months from the date of international registration. If the decision to grant a trademark is served, since Japan adopts the two-phased payment system, the individual fee for the second part must be paid.

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About Trademarks in Japan – 2

Japan: Protection of new types of trademarks

Changes to Japanese Trademark Law – April 2015

From April 2015, in addition to the conventional word mark and figure mark etc. new types of trademarks such as motion mark, hologram mark, position mark, color mark or sound mark may be registered as a trademark in Japan.

 

 

 

A. Motion Mark

A Motion Mark is a mark whose visually perceptible figure changes with time (such as a moving figure indicated on a screen when booting a computer).

 

<What to remember for the application>

It must be specified how the mark moves. Therefore, either the trajectory in a specimen of the mark is indicated with the following drawing,

 

TM_2_En_1

 

or a number of specimens of marks shown below is submitted indicating the changes over time:

 

TM_2_En_2

 

<Registration Requirements>

No distinctiveness can be ascribed to the movement of the figure itself. Therefore, if an examined mark comprises a simple figure with no inherent distinctiveness, then, whatever its movement, no distinctiveness can ascribed to it as a whole.

 

In addition, because the manner of movement itself is not subject to protection, even if an earlier filed mark moves in the same way and if the examined mark itself is originally dissimilar, then the examined mark would as a whole not be regarded as similar.

 

If the movement of an examined mark leaves a trace indicating a trajectory and if an earlier filed word mark is the same or similar to what is left as a trace by the examined mark, then the examined mark would be regarded as similar.

 

B. Hologram Mark

A Hologram Mark is a mark whose holographic image has a different appearance when viewed from different angles.

 

<What to remember for the application>

A number of specimens of marks must be prepared and submitted depending on how the Hologram Mark is presented.

 

TM_2_En_3

 

<Registration Requirements>

No distinctiveness can be ascribed as to the manner in which a 3-D figure itself is generated by holography. Distinctiveness of a Hologram Mark as a whole depends on the distinctiveness of indicated letters and figures. If an earlier mark is the same or similar to the figure of an examined Hologram Mark as seen from a certain angle, then the examined Hologram Mark as a whole would be regarded as similar.

 

C. Position Mark

A Position Mark is a mark specified by the position of the figure it comprises.

 

<What to remember for the application>

A dashed line must be shown to indicate the object to which the mark shall be attached. The shape indicated by the dashed line of the object does not affect the examination of the similarity of the Position Mark.

 

TM_2_En_4

 

<Registration Requirements>

A figure lacking distinctiveness as such could still be registered by specifying its position. If the examined Position Mark itself has no distinctiveness, the Examiner would next consider its position on an object to which it shall be attached. On the other hand, if the mark itself has distinctiveness, its position will be irrelevant.

 

D. Color Mark

A Color Mark is a mark consisting of a single color or a contour-less combination of colors and is not combined with figures or letters.

 

<What to remember for the application>

Along with submitting a specimen, the color(s) must be specified in accordance with objective indicators such as RGB and Pantone etc., as in the next depiction.

 

TM_2_En_5

 

For a combination of colors, in addition to indicating RGB values, the percentage of the figure’s area taken up by each color must be specified as shown below:

 

TM_2_En_6

The color combination is 70% red and 30% blue.

 

Note that distinctiveness cannot be ascribed to the Color Mark as such. However, Secondary Meaning may facilitate the registration of the Color Mark, albeit with a high standard of proof.

 

The application for registration of a Color Mark may specify its position on an object. This may lower the standard of proof for the required Secondary Meaning of the Color Mark.

 

TM_2_En_7

 

<Registration Requirements>

Because distinctiveness cannot be ascribed to a Color Mark as such, proof of secondary meaning must be provided in all cases.

 

E. Sound Mark

A Sound Mark is a mark consisting of music, a voice or a natural sound, etc.

 

<What to remember for the application>

The sound must be specified by staff notation or a description of the sound in words is required. If there are lyrics, they need to be incorporated into the staff notation. The sound must also be submitted separately as an MP3 file.

 

TM_2_En_8

 

An example of describing the sound in words would be: “In this mark, two clapping sounds “clap, clap” are heard first followed by the cry of a cat “meow”. The mark lasts for a total of three (3) seconds”

 

<Registration Requirements>

No distinctiveness can be ascribed to:

− the sound the product would usually make (e.g. a bubbling sound for a designated product such as a fizzy drink)

− the sound the product makes according to its inherent function (such as a “peep, peep, peep” for an alarm clock)

− a natural sound such as blowing wind or what is recognized as music only.

 

Where the Sound Mark includes an articulated word, if an earlier word mark is the same or similar to the articulated word of the Sound Mark, the latter will be regarded as similar.

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About Trademarks in Japan – 1

Trademark Search in Japan

Why would the search be necessary?

In Japan, an examination will be conducted not only for the absolute reasons for refusal, but also for the relative reasons for refusal. The reasons for refusal that a trademark is similar to the prior registered trademark of others can frequently be seen in practice.

 

If one receives a notice of reasons for refusal to the effect that a trademark is similar to the prior registered trademark of others, there may be some cases where such reasons may be dissolved by the measures such as denying the similarity of trademark upon counter-arguing the examiner’s view in an opinion letter and deleting the designated goods/services that infringe the cited trademark upon submitting the amendment, but if the similarity of trademark or designated goods/services could not be argued, then, there may be some cases where the establishment of right has to be given up.

 

If that is the case, the expenses and time that have been spent for the application would be wasted and also the use of trademark will be seriously interfered. If you use the trademark that was refused due to the similarity of registered trademark of others, then such others’ trademark right could be infringed. Then, the use of trademark that has been used or has been prepared to use could be forced to be suspended and that could lead to serious business loss such as change of the sales plan, re-printing of pamphlets and packages of goods, or, in some cases, collection of goods that have already been on the market.

 

Thus, due to the following two reasons, i.e.,

i. not to waste the time and expenses for application for registration of trademark;

ii. appraisal of risk of using the trademark, we strongly recommend to conduct the trademark search.

 

I could not find any problematic trademark in the JPO’s J-Plat Pat or the Worldwide Identical Screening Search (WISS). Should we ask for the trademark search even in a case like this?

In Japan, the trademarks using not only alphabets but also katakana, kanji and other characters are applied and registered and there may be some cases where such trademarks do not hit precisely in those databases that are based on the search using alphabets. Therefore, even if the same or similar trademark is not found in the J-Plat Pat or WISS, the applied trademark could be refused due to the similarity of trademark of others. Also, it is necessary to make a decision at the search in full consideration of the Trademark Examination Guidelines of Japan, therefore, it is essential that the trademark search should be conducted by the professionals with knowledge of practice in Japan.

 

How will the search of word trademark (i.e. trademark consisting of words) be conducted?

As to the word trademarks, the search will be conducted through the database for trademark search using the sound aspect of trademark. There are some kinds of databases that may be used for trademark search such as J-Plat Pat of the JPO, but our firm conducts the search using the paid database that is exclusively designed for trademarks called “BRANDY” (by Thomson Reuter). BRANDY requires the maintenance cost and it should take time to get used to it, but it should make it possible to conduct highly accurate search. Normally it should take five (5) business days to conduct the search of word trademark (subject to change due to the number of trademarks and international classifications to be searched).

 

How will the search of figure trademark (i.e. trademark consisting of figures) be conducted?

As to the figure marks, the person in charge of search conducts the search of the trademarks one by one that are abstracted in accordance with the classifications under the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks. Therefore, it would take more time and cost more comparing with the search of word trademarks and it should require approximately seven (7) to ten (10) business days.

 

Proposal of Contents of Application based on the Result of Search

If the same or similar trademark is found as a result of the search, there are some cases where the infringement on the prior trademark may be avoided by changing the aspect of indication of trademark or narrowing down the designated goods and services. If a trademark is found that is almost the same as the searched trademark in terms of designated goods and services and if you would like to register/use the searched trademark by any means, we might propose to file a motion for cancellation trial on the basis of non-use or to have negotiations with the owner of the prior trademark.

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About the Design System in Japan – 6

The “related design system” in Japan

What is the “related design system”?

 

The “related design system” allows the respective registration of similar designs. It is useful to cover design variations with only a few applications. Under the Japanese design law, without using the “related design system,” a similar design will be rejected based on the prior similar designs.

 

How effective is this system?

 

It enables a clear scope of the respective design right. Clarifying the scope of a design right is, in general, difficult. However, the Japanese “related design system” helps to address this problem and makes such clarification easier and clearer.

 

Example:

(JP Design No. 1390415)

 

This has been registered for a ceiling lamp (partial design, i.e. the portions shown in dotted lines are excluded from the scope of protection).

 

Are the following designs similar to the above design?

The above-mentioned three designs have identically shaped lamp holes. However, depending on the number of these holes, we may get a different overall impression which might lead to the conclusion that the designs are actually dissimilar.

 

However, in Japan there is the possibility to state similarity of the above mentioned designs by registering the following design as the related design with the above-mentioned seven holes design.

< JP Design No. 1412330 >

Doing so, the JP Design No. 1390415 will be considered as the principle design while the JP Design No. 1412330 will be considered as the related design. The JPO will consider these designs “similar” and will therefore accept a so-called “principle-related design” registration.

 

This kind of registration allows us to state that, in this case, that the number of holes has no influence on the scope of the design right. If only the design no. 1390415 were registered, it would be uncertain whether or not the design with three holes or the like are similar to design no. 1390415. However, by using the “principle-related-design-system” the owner will be able to stop a third party from using designs with similar lamps, regardless of the number of the holes.

 

How can we apply for related designs?

 

When filing the applications, one of the applications has to be selected as the principle design while one or more other applications have to be selected as the related design.

 

If the examiner considers pending applications to be similar, he will issue an office action and invite the applicant to use the “principle-related-design-system”. If this happens, it is possible to select one of the applications as the principle design and the other(s) as the related design(s).

 

When can we use the related design system?

 

To use the related design system, you need to file all similar designs at the same time. Also, it is possible to use the related design system if you file a similar design at any time before the design bulletin for the prior similar design application is published.

 

Note:

If the prior design claims postponement of the publication of bulletin; i.e., a “secret design”, the above mentioned design bulletin would not be considered a substantive bulletin which is published after the secret term is expired, but is a formality bulletin which is published without pictures/ drawings soon after the registration.

 

Are there any disadvantages of related designs?

 

Under the related design system, the related design has its own scope of protection similar to the principle design. Therefore, in comparison to a “normal” design right, a related design has no disadvantages concerning its scope of protection.

 

However, related designs have a few of the following disadvantages:

 

  1. Related design(s) can be assigned only together with a principle design. Thus, the owner has to assign the principle design and the related design(s) at the same time.
  2. It is not possible to grant separate licenses to the principle design and the related design(s). Thus, when the owner wishes to grant a license for a principle design, he will need to grant a license for related design(s) as well.
  3. The related designs right expires 20 years after the date of registration of the “principle design”.
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