FAQ

T1: Why register a trademark?
A trademark proprietor can obtain a trademark right by registering a trademark in Japan. Since Japan is a registration country, unregistered trademarks are not protected unless they are well-known either under the Trademark Law or the Unfair Competition Prevention Law.

T2: Is registration of a mark mandatory?
Registration is not mandatory, but if a trademark is registered, the trademark proprietor can be assured that he does not infringe any third party’s right, and thus can use the trademark safely. Further, if the trademark is registered, the registrant can prevent another party’s use or registration of any later identical or similar trademarks in respect of identical or similar goods and/or services.

T3: What is registrable?
Distinctive word marks, devices, signs, three-dimensional shapes and combinations thereof with or without color limitations are registrable. Service marks, collective marks and defensive marks can also be registered.

T4: Can a trademark be registered for retail and like services?
Under the current practice of the Trademark Law, retail services are not regarded as services for which a trademark can be registered. In two recent cases, “Shaddy case”(11(Gyo-Ke)390) and “ESPRIT case”(13(Gyo-Ke)103), the Tokyo High Court stated that retail services are not regarded as services under the Trademark Law, which is interpreted as being work rendered or convenience provided for others as an independent object of trade. Although the WIPO Experts Committee has been discussing whether retail services should be accepted as services since 1987, many countries still object to the acceptance of retail services on the grounds that the term “retail services” is too vague, and each country has the discretion to determine what should be accepted as registrable services. Accordingly, retail services are not accepted as services in Japan.

T5: How are domain names protected?
For domain names ending in .jp (ccTLD), there are two major proceedings that settle domain name disputes in Japan. One is JP Domain Name Dispute Resolution Proceedings under the JP Domain Name Dispute Resolution Policy (JPDRP), which has been operated by the Japanese Arbitration Center of Intellectual Property since October 19, 2000, and the other is a Court Proceeding on the basis of the Unfair Competition Prevention Law. On June 29, 2001, the partial revision of the Unfair Competition Prevention Law passed the Diet and came into effect on December 25, 2001 as Law No. 81 of 2001. The main purpose of this revision is to include a kind of anti-cybersquatting provision as Article 2, Paragraph 1, item 12, that is to say, cybersquatting is clearly included as one of the unfair competition acts. This provision is quite similar to that of the JPDRP; however, it should be noted that the remedy is limited to stopping use and/or cancellation, but a transfer is not included, unlike in the UDRP. JP Domain Name Dispute Resolution Proceedings under the JPDRP is a localized policy of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), which provides a quick, inexpensive and transparent procedure, and whose decision may be appealed to the court.

The only differences between the JPDRP and UDRP are that: (1) in the JPDRP procedure, the complainant can base his rights not only on his trademarks but also on other indications of goods, service or business, and (2) the JPDRP calls for the complainant to establish the third element as “Domain name has been registered or used in bad faith,” whereas the UDRP stipulates “Domain name has been registered and used in bad faith.” The JPDRP is more flexible than the UDRP in this respect. Until now, among the 13 requests that have been submitted to the Japanese Arbitration Center of Intellectual Property, six decisions to transfer the domain name to the complainants have been made (cf. goo.co.jp case, sonybank.co.jp case, sunkist.co.jp case, etc.). Some of them have been appealed to the court, however. Since May 7, 2001, general-use JP domain names that enable an individual or a legal professional to register more than one domain name, have become registrable on a first-come, first- serve basis after a transitional period. They are much more flexibly regulated than the existing JP domain names. As a result, it is expected that domain name disputes will increase. Lastly, ICANN’s UDRP has been applied to settle domain name disputes ending in .com, .net and .org (gTLD). Since 2001, when it became possible to register domain names in Japanese characters through the operation of experimental testbeds as Multilingual Domain Names (MDN), there have been some decisions made concerning domain name disputes in Japanese characters as well.

T6: Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this can take several months. While conducting a private pre-filing search is not required, it is recommended because it can save the applicant the time, effort and cost entailed in developing and adopting a mark and filing an application for a mark in which someone else has prior rights.

T7: How do I file?
An applicant who wishes to file a Japanese trademark application from overseas must be represented by a Japanese trademark attorney, who should be contacted before any steps regarding an application are taken. However, in the case of an international registration, a request for territorial extension of trademark protection to Japan based on an international registration shall be submitted directly to WIPO, which registration will then be deemed to be a Japanese trademark application. If the Japanese Patent Office issues a notification of refusal of protection in Japan, a written opinion should be submitted through a Japanese trademark attorney.

T8: What information must be provided before filing?
Before filing an application, an applicant must provide the following information: a specimen of the trademark, unless it is represented in standard characters; full particulars about the applicant; and a list of goods/services to be covered. If a convention priority is claimed, a certified copy of the original application must be filed within three months after the filing date. Since April 1, 1998, a Power of Attorney has not been required for filing a trademark application unless it is particularly required by the Patent Office, while a general Power of Attorney is acceptable.

T9: Is local registration the only option, or are there international alternatives?
In addition to the local registration system, international registration under the Madrid Protocol is available. On March 14, 2000, the Madrid Protocol became effective in Japan, and as a result, a request for territorial extension of trademark protection in Japan based on an international registration submitted to WIPO, shall be deemed to be a Japanese trademark application, which will be subject to a substantive examination by the JPO. When the said Japanese application has been accepted for protection in Japan following the substantive examination by the JPO, it will be regarded as a Japanese registration that has a ten-year duration from the date of international registration.

T10: Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. One application can cover multiple classes of goods and/or services.

T11: Is it possible to take advantage of a home application or registration?
If the applicant’s home country is a member of the Paris Convention or a member of the World Trade Organization, a home application can be the basis for claiming convention priority, if the Japanese application is filed within six months of the first filing date of the home application. A home application or registration can also be utilized as a basis for international registration under the Madrid Protocol, as mentioned above.

T12: Must a trademark be used after registration, and what happens if a trademark is not used?
A trademark must be used within three consecutive years of the registration date and for three consecutive years thereafter, otherwise the registration will become vulnerable to cancellation for non-use.

T13: Is using a variation of the trademark allowable?
A trademark may vary from time to time as far as the identity of the trademark is maintained, but a registered trademark cannot be amended. Therefore, a fresh application must be filed for a new version of the trademark, if protection for the exact trademark is needed. In a cancellation action based on non-use, a mark in use must be substantially identical to the registered trademark in order to be recognized for purposes of proving use. Since April 1, 1998, however, the criteria for assessing whether marks are identical have been relaxed, and thus, for instance, a trademark which differs only in the type of characters, i.e., Hiragana, Katakana or Alphabet, from that of the registered trademark, and which has the same pronunciation and concept as those of the registered trademark, may be recognized as being substantially identical to the registered trademark, on a case by case basis.

T14: Is there any advantage to using a trademark before filing an application?
Generally, no. An exception applies to well-known marks currently in use that may be entitled to protection even if not registered.

T15: For an application to be valid, are there any particular requirements that must be met?
In order to be accorded a filing date, the application must contain the following information: a statement that a registration of a trademark is sought; full particulars about the applicant; the trademark for which the registration is sought and a list of goods/services in respect of which the registration is sought.

T16: What information is first published about an application/registration and when is it published?
The following particulars about an unexamined trademark application are published in the Trademark Gazette within three to four weeks after the filing date just to inform the public: name and address of the applicant; application number and date; representation of trademark and specification of goods and/or services.

T17: What kind of examination (if any) will a new application undergo?
An application is subject to both formality check and substantive examination, the latter of which includes an examination as to distinctiveness and deceptiveness of the mark, whether there is any conflict with prior trademarks and other rights, etc. Since the Japanese Trademark Law adopts the first-to-file principle, it is recommended that an application be filed as soon as possible once the decision to adopt a trademark has been made.

T18: How long is the registration process?
On average, the registration process now takes approximately 10 to 15 months.

T19: What rights does an application confer?
A prior pending application can be cited against a later application for any identical or similar trademark in respect of identical or similar goods and/or services by the examiner, and it can be a ground for an opposition against a later application for any identical or similar trademark in respect of identical or similar goods and/or services as well. Also, an applicant whose mark was potentially infringed while the application was pending is entitled to claim the recovery of lost profits retroactively from the date that a warning letter was sent to the potential infringer, with the condition that the warning letter was sent while the application was still pending and after the application matured to registration.

T20: What is the legal effect of a registration?
A registration confers a trademark right. A trademark registrant has an exclusive right to use the registered trademark in respect of goods and/or services in the specification, and thus, can prohibit the use of any identical or similar trademarks in respect of identical or similar goods and/or services by third parties and preclude the registration of any later identical or similar trademarks in respect of identical or similar goods and/or services by third parties.

T21: Can an application be opposed or cancelled by third parties?
Yes. On April 1, 1998, the pre-grant opposition system was switched to a post-grant opposition system, whereby an opposition may be filed by any person within two months from the date of publication of the registration. During the time an application is pending, any person can voluntarily provide the JPO with information concerning a ground of refusal with respect to the application, in order to compensate for any deficiency in an official examination.

T22: Can an application or registration be assigned?
Yes. Either can be assigned.

T23: Must an assignment include goodwill?
No. A trademark may be assigned with or without goodwill.

T24: Does an assignment have to be recorded?
Yes. An assignment must be recorded to be effective.

T25: Can an application or registration be licensed?
Yes. A registered trademark can be licensed either as an exclusive or nonexclusive license. It should be noted that when an exclusive license is granted, even the use of the same mark by the registered owner is prohibited under the Japanese Trademark Law.

T26: Does a license have to be recorded?
An exclusive license on a trademark right must be recorded to be effective. A nonexclusive license on a trademark right is effective whether it is recorded or not, however, when it is recorded, it shall be protected from a challenge by anyone subsequently acquiring the trademark right or exclusive license on the same trademark right.

T27: What is the territorial limit of a registration?
The territorial limit of registration is Japan.

T28: (a). What is the term/renewal date of a registration?
The term of a registration is 10 years from the registration date and the renewal term starts from the next day and lasts for ten years.

28 (b). How long is the renewal period?
A registration can be renewed for periods of 10 years.

28 (c). When must a renewal be filed?
A renewal must be filed during the six-month period prior to the renewal date.

28 (d). Is it possible to renew after the renewal date has passed and, if so, for how long? Is there a fine for renewing after the renewal date has passed?
It is possible to renew for six months after the renewal date with payment of a fine.

28 (e). Is proof of use required for renewal?
Proof of use is not required.

28 (f). What documents executed by proprietors are required for renewal?
No documents are required.

T29: Is it necessary to indicate a trademark registration on goods or services?
The trademark proprietor or licensee shall clearly put an indication to the effect that the trademark as attached is registered, when applying a registered trademark to the goods themselves, their packaging, or in their advertisement thereof, or to articles for use in providing the services, or, in providing services, to articles related to providing relevant services belonging to persons to whom the services are provided. Marking is not compulsory; however, it is advisable that a registered trademark be used in commerce with the Japanese symbols for “Registered Trademark” and followed by the registration number. ® is also considered a sufficient marking for a registered trademark.

T30: Is your national office accessible online?
The national office is accessible online at www.jpo.go.jp. Electronic filing is not possible at this time.

Address:

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

P.O. Box:
Telephone: +0081-6-7669-2020
Fax: +0081-6-7222-3701
Email: akano@agip.com
Contact: Akane Kano (Ms.)