Outline of Japanese
Trademark System
JAPAN PATENT OFFICE
Contents
Part 1: Trademark Protection in Japan
Part 2: Details of the Trademark Act of Japan
I. Subject Matter of Trademark Registration
II. Basic Principles of the Trademark Act
III. Requirements for Trademark Registration
Part 3: Examination Practices at the Japan Patent Office
I. Trademark Examinations Using Similar Group Codes
II. Measures for Non-Use of Trademarks
Part 4: Japanese Trademark System
I. Regionally Based Collective Trademark
II. Defensive Mark Registration
ANNEX
1. Flow Chart of Procedures in the Japan Patent Office
2. Fees
3. Application Trends
4. Trademark Filings under Madrid System
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JAPAN PATENT OFFICE
Part 1: Trademark Protection in Japan
Trademark protection in Japan is mainly achieved
under the Trademark Act which requires trademark registration at the Japan Patent Office (JPO). Although an
unregistered trademark may be protected under the Unfair Competition Prevention Act, the owner has to prove
several conditions to enjoy protection; i.e., the mark is
well known among consumers in Japan; the third party’s use causes confusion, etc.
Trademark registration in Japan is highly recommended for any business in Japan.
Part 2: Details of the Trademark Act of Japan
I. Subject Matter of Trademark Registration
Section 2(1) and (2) of the Trademark Act defines
“trademark” as follows: any character(s), figure(s) , sign
(s) or three-dimensional shape(s), or any combination
thereof, or any combination thereof with colors which is
used in connection with the goods of a person who produces, certifies or assigns the goods in business, used in
connection with the services of a person who provides
or certifies the services in business (except those provided for in the preceding item). Retail services and
wholesale services are included in services.
* Japan is making headway to expand the scope of
trademark protection to include five non-traditional
trademarks, namely, Color Per Se Mark, Sound
Mark, Motion Mark, Hologram Mark, and Position Mark. A bill to revise the Trademark Act, so as to
enable these non-traditional trademarks to be protected
legally, was approved by the Japanese Cabinet on
March 11, and the bill was enacted by the Diet on April
25. Now the JPO intends to take actions such as creating new examination guidelines and such.
II. Basic Principles of the Trademark Act
1. Principle of Registration
Trademark registration shall be granted when the applicant intends to use the mark, even without any actual
use of the mark.
2. Substantive Examination
Trademark registration is granted only upon completion of substantive examination. Examiners are to review not only absolute grounds for refusal but also relative grounds. Examiners conduct a substantive examination to determine whether there are identical or similar trademarks with earlier application.
filed earlier has priority for registration.
III. Requirements for Trademark Registration
1. Formality
An entity seeking trademark protection can file an
application directly with the JPO or indirectly with the
JPO through the Madrid System. The application has to
satisfy formality requirements; e.g., applicant’s eligibility to file applications, clear representation of the mark,
payment of fees.
2. Major Substantive Requirements
(1). Distinctiveness
A trademark is registrable when the mark is distinctive and able to distinguish the source of the designated
goods/services. Signs consisting only of words describing quality, type, nature, or geographical origin cannot
be registered except when it acquires secondary meaning.
(2). Existing Trademarks
A trademark cannot be registered when the mark is
identical or similar to a registered trademark of another
party used in goods/services identical or similar to
goods/services designated by the prior registration.
Even an prior unregistered mark can be a ground for
refusal under certain circumstances. i.e. the mark is
well-known in Japan and an applied mark identical or
similar with the mark is likely to cause confusion with
the mark; the mark is famous in abroad and an applied
mark identical or similar with the mark is filed under
unfair purpose, etc.
3. First-to-File System
Where there are two or more identical or similar marks
for identical or similar goods/services, the trademark
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(3). Absolute Grounds for Refusal
A trademark which falls under absolute grounds for
refusal cannot be registered; e.g., the mark is (i) identical
or similar to a national flag or (ii) offensive to public
order or morals.
(4). Designation of Goods/Services
An applicant has to provide a clear description of designated goods/services and classes in accordance with
the Nice Classification.
Applicants can refer to the List of Goods and Services
(which is a list of acceptable goods/services) displayed at
the Intellectual Property Digital Library (IPDL).
[http://www.ipdl.inpit.go.jp/homepg_e.ipdl]
Also, the JPO is providing information on its website,
which outlines the important points for designating
goods and services, so as to enable users to acquire rights
smoothly and promptly. Please refer to: http://
www.jpo.go.jp/sesaku_e/tips_on_designating_gs.htm
Part 3: Examination Practices at the JPO
I. Trademark Examinations Using Similar
Group Codes
When examining whether or not trademarks filed at the JPO fall
into reasons for refusal, the JPO, based on the Examination Standards for Similarity of Goods or Services, determines either similarities or dissimilarities between the designated goods/services of
the filed trademarks and the designated goods/services of other
persons’ trademarks that have been already registered.
Under the Examination Standards for Similarity of Goods or
Services, the JPO places good/services under the following into
groups: (1) goods having common features in terms of the production departments, sales departments, raw materials, and quality, or
(2) services having common features in terms of their means of
supply, intended purposes, and the places where the services are
provided. Based on this, goods/services belonging to the same
groups are in principle presumed to be similar goods/services.
And, “similar group codes,” which are five-digit, common
codes consisting of a combination of Arabic numerals and Roman
alphabet letters, are assigned to the goods/services in each of the
groups.
According to examination practices at the JPO, goods/services
that are assigned the same similar group codes are in principle
presumed to be similar to each other.
By using similar group codes, examiners are able to efficiently
determine similarities or dissimilarities of goods/services. As a
result, this speeds up examination procedures.
Also in Japan, similar group codes have become a tool for ensuring “uniform judgments in terms similarity/dissimilarity of
goods/services during the examination process” and also ensuring
“the predictability of examination results for applications, based
on searches for prior applications and registered trademarks,
which are being conducted by applicants and others.” Please refer
to the following URL for your reference: http://www.jpo.go.jp/
tetuzuki_e/t_tokkyo_e/goods_services_10-2014.htm
II. Measures Designed For Non-Use of Trademarks
1. When the JPO has reasonable doubts as to whether applicants
are currently conducting business or whether they have concrete
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plans to conduct business in the future in connection with the designated goods or services, which is a prerequisite to their rights to
use the trademarks, the JPO, in responding to the issue of non-use
of trademarks, confirms that applicants either are actually, currently using the trademarks that they are filing to register, or have true
intentions to use the trademarks in the future.
2. The JPO confirms the actual use of the trademarks or the
planned future use of the subject trademarks under the following
are circumstances, whenever the JPO has any reasonable doubts,
as stated in 1 above.
(1) Retail and/or wholesale services
(i) Whenever individuals (natural persons) designate services that
fall under the category of general retail and/or wholesale services.
(ii) Whenever applicants are corporate entities and designate general retail and/or wholesale services but are not recognized to be
conducting any general retail or wholesale businesses in the manner of department stores and general merchandise stores, despite
detailed searches having been conducted.
(iii) Whenever applicants designate multiple retail and/or wholesale services that are not similar to each other.
(2) General goods and services
Cases in which the JPO has reasonable doubts as to whether applicants are actually using or have true intent to use the subject trademarks because the applicants designate an extremely wide range
of goods or services in one class.
* Cases in which the number of similar group codes for the designated goods or services is eight or more.
3. Ways for confirming the actual use of, or the intent to use,
trademarks
(1) In order to clarify that claimed trademarks are
“trademarks to be used in connection with goods or services
pertaining to the applicants’ businesses,” the applicants must
submit documents certifying that they are conducting or plan
to conduct business relating to these designated goods or services, listing them by similar-group code.
(2) Documents or items certifying proof that applicants are
conducting or plan to conduct business relating to their designated goods or services are, for example, the following:
(i) Printed materials (newspapers, magazines, catalogues, leaflets,
etc.)
(ii) Photographs of the exteriors and interiors of stores
JAPAN PATENT OFFICE
Part 3: Examination Practices at the JPO (continuation)
Business documents (order forms, delivery statements, invoices,
receipts, etc.)
(iii) Certificates of proof issued by public organizations (national
governments, local governments, embassies in Japan, chambers of
commerce and industry, etc.)
Certificates of proof issued by others in the same business, or by
clients, consumers, etc.
(vi) Articles on the Internet
(v) Documents clearly stating sales revenue generated from products
relating to the retail and/or wholesale services
(i) Overall proof that the applicants are conducting business relating
to general retail and/or wholesale services will be determined, for
example, based on the following conditions:
A. Applicants are conducting actual retail or wholesale businesses.
B. The services of such retail and/or wholesale service are being
provided at one business facility that deals in a variety of goods in
each of the following fields: clothing, foods and beverages, and
household goods.
C. Sales in any of the fields of clothing, foods and beverages, and
household goods account for 10 to 70% of total retail sales.
(3) The following will serve as proof that applicants are conducting business connected with retail and/or wholesale services.
(ii) The fact of either A or B below will establish proof of retail
services in regards to services that are other than general retail and/
or wholesale services, for example, through the means of proof stat-
Part 4: Japanese Trademark System
I. Regionally Based Collective Trademark
Japan; i.e., at least several neighboring prefectures.
1. Regionally Based Collective Trademark
Protection of a regionally based collective trademark
was introduced in April 2006 to support the competition
and activities of local brands. The primary focus of this
protection is a mark consisting of a geographical name
and a generic name of the designated goods/services,
which is well-known within a certain area of Japan but
has not yet acquired a secondary meaning.
A third party, who had been using a mark identical or
similar to the regionally based collective trademark
without unfair intention from the time prior to the filing
date of the registration, may still use the trademark.
II. Defensive Mark Registration
2. Requirements for Regionally Based Collective
Trademark Registration
The Regionally Based Collective Trademark registration may be given upon satisfaction of the following
requirements:
(i) the trademark consists of a geographical name and a
generic name of the designated goods/services.
(ii) the owner is a business or agricultural cooperative
or other association established under a special Act,
which prohibits unfair and unreasonable selection and
exclusion of members of the cooperatives or associations.
2.Requirements for Defensive Mark Registration
Defensive mark registration is based on an individual
trademark registration and can be granted (to the holder of the individual trademark registration who applies
for defensive mark registration) for goods/services
which the applicant does not intend to use, provided
that the use of the mark in the goods/services by a third
party is likely to cause confusion with the applicant’s
business.
When the basic trademark registration is transferred
to a third party, the defensive registration is also
deemed to be transferred to the transferee. When the
basic trademark registration is divided and owned by
different holders, the defensive mark registration is
deemed to be extinguished.
* Under the current trademark system, entities entitled to register
regional collective trademarks are limited to business cooperatives and other collective groups and organizations. Thanks to the
proposed amendment to the Trademark Act, the types of entities
that will become eligible to register regional collective trademarks will be expanded to include associations of commerce and
industry, chambers of commerce and specified non-profit corporations (NPOs) , which are entities that have been playing a central role in promoting regional brands in recent years. This is
based on the need to further popularize and develop regional
brands.
1. Defensive Mark Registration
Beyond the scope of a trademark right which covers
identical or similar goods/services, the goodwill of well
-known mark may be harmed by a third party’s use of
the mark in unrelated goods/services. Defensive Mark
Registration extends the scope to include unrelated
goods/services.
The holder of the defensive mark registration may
prevent others from using or registering identical marks
for the designated goods/services.
(iii) the trademark is well-known within a certain area of
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JAPAN PATENT OFFICE
Part 4: JPO Website for Madrid Protocol Users
Since any request for territorial extension to Japan under the Protocol Relating to the Madrid Agreement Concerning
the International Registration of Marks shall be deemed to be a national application to Japan, the applied trademark
should be reviewed and examined by the JPO in the same way as in the case of a national application. When an
examiner of the JPO finds reasons for refusal under the Act, the examiner will issue a total provisional refusal.
You can find detailed national procedural information of Japan at the website below.
[http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/japan_under_the_madrid_protocol.htm]
JAPAN PATENT OFFICE
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ANNEX 1 : Flow Chart of Procedures in the Japan Patent Office
ANNEX 2 : Fees
Direct Application
Trademark application:
¥3,400 + ¥8,600 per class
Registration fee
(including defensive marks):
¥37,600 per class
Renewal fee:
¥48,500 per class
By Madrid Protocol
Individual Fee:
First Part: 99CHF (for one class)
+ 75 CHF per class (when designating two or more classes)
Second Part: 328 CHF per class
Fee for Renewal:
423 CHF per class
* Fees may change depending on exchange rate or legislation.
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JAPAN PATENT OFFICE
ANNEX 3: Trademark Applications filed with JPO (Provisional data for 2013)
250,000
206,491 200,000
150,000
117,674 100,000
50,000
0
2008
2009
2010
Number of Classes
2011
2012
2013
Number of Applications
ANNEX 4: Trademark Filings under Madrid System (Provisional data for 2013)
2,500
12,000
10,098 10,091 10,000
2,000
7,311 7,242 8,001 8,000
6,364 1,500
6,000
2,127 1,000
500
1,310 1,265 1,567 1,547 1,881 4,000
2,000
0
0
2008
2009
2010
Number of Application
2011
2012
2013
Number of designated states
16,000
14,000
13,696 12,586 12,412 10,641 10,825 12,000
11,788 10,000
8,000
6,000
4,000
2,000
0
2008
2009
2010
2011
2012
2013
Number of Madrid Filings designating JP
JAPAN PATENT OFFICE
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