Trademarks – FAQ

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.