Summary

General Information

The process of registering a trademark in Japan, barring any office actions, generally takes between 10-18 months. A registration is valid for 10 years and may be renewed indefinitely with payment of the applicable renewal registration fees.

In Japan, three-dimensional trademarks and collective trademarks may be registered. Although colors may be recognized as part of a mark, a color, alone, may not be registered. Sounds cannot be registered as a trademark.

The Japan Patent Office (JPO) uses the international classification of goods and services. Applications covering multiple classes can be filed.

First and the First-to-File rule

The application must be submitted in Japanese unless the application is an international application filed under the Madrid Protocol system. In Japan, the first person to file an application for a particular trademark in Japan will be given priority over all subsequent applicants.

Actual use of the mark is not required to file an application for registration of the mark. However, if use of the mark does not commence within three years of the registration date, the registration may be subject to cancellation for non-use by other parties who wish to use the same or similar mark.

If an applicant includes a wide arrange of goods or services within each international class, the JPO will request for the applicant to show the applicant’s actual business activity or an actual business plan(s) to cover the goods and/or services.

Similarity

A trademark will not be approved for registration, if it is similar to a previously registered or applied for trademark where the designated goods or services are similar.

Examination

The JPO examines trademark applications for substantive compliance with the trademark laws. Generally, the JPO will issue an Office Action within about 8 to 10 months of the application filing date.

During examination, any amendment to the designation of the goods or services must be within the scope of the initial application and cannot re-introduce any goods deleted during prosecution, it will be rejected.

Response to Office Action

The JPO allows foreign applicants a period of three months from the mailing date of the Office Action to file a response. If needed, the applicant may request a single one-month extension of time to prepare and file the response.

However, the request for extension of time must be filed before the end of the initial response period.

An appropriate response usually involves amending the designated goods or services covered by the mark and making supporting arguments. However, on occasion, arguments traversing the rejection alone are sufficient. Amendment of the mark itself is generally not permitted, except under very limited circumstances.

If the Examiner maintains the rejection after considering the response, it will be necessary to file an Appeal of the final rejection.

Registration

After the application is allowed, the applicant must pay the registration fee.

Payment for the ten-year term of the registration may be made either in full, or in two installments. For installment payments, the first installment is paid upon allowance and the second installment is due during the fifth-year of the registration term. If the second installment is not timely paid, the trademark registration will lapse.

Publication and Opposition

After registration of a mark, the trademark is published for opposition in the Trademark Gazette. Any interested party may file an opposition within two months of the publication date. If no opposition is filed, a trademark will remain in force for 10 years from the registration date. Afterwards, the registration may be renewed for an unlimited number of ten-year terms.


 

 

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Room 1644, 16F Hankyu terminal building 1-1-4 Shibata Kita-ku, Osaka, 530-0012, Japan

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Telephone: +0081-6-7669-2020
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Email: akano@agip.com
Contact: Akane Kano (Ms.)