A trademark is a mark used by a manufacturer, dealer, or service provider in respect of goods or services in order to differentiate them from goods and services offered by other parties which are of the same or a similar type. Japanese trademark law is mainly enacted by the Trademark Act (商標法, Shōhyō-hō). Under this Act, only registered trademarks establish a “trademark” right (Article 18), and the examination procedure is necessary for trademarks to be registered (Article 14). Japan’s first modern trademark law was enacted in 1884. The current Trademark Act was enacted in 1958 and has been amended several times since then. On the other hand, the protection for unregistered trademarks is provided by the Unfair Competition Prevention Act (不正競争防止法, Fusei kyōsō bōshi-hō).
- What you should know previously
Use of trademark
There are clear regulations defining which kind of acts infringe trademark rights, which kind of acts constitute unfair competition, and which kind of acts are fair.
The period of a trademark right is ten years from the date of registration of the trademark right and the period may be renewed every ten years. Therefore, you can renew your trademark right by filing a request for renewal six months before the trademark right expires. You need to pay the renewal fee at the same time you request to renew your trademark right.
Schedule of fees
- Procedures for Obtaining a Trademark Right
The flowchart below states an outline of the procedures for registering a trademark specifically.
In order to obtain a trademark right, an applicant must fill out the forms prescribed in the relevant ordinances and submit them to the Japan Patent Office(JPO).
2.Publication of Unexamined Application
The JPO will publish the content of an application in the Official Gazette after filing.
An application document submitted to the JPO will be checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made where necessary documents are missing or required sections have not been filled in.
An examination will be made of whether the application fulfills the substantive requirements. The following trademarks will be refused as they are deemed not to meet the substantive requirements.
- Trademarks which do not enable consumers to differentiate the applicant’s goods or services from those belonging to other parties
- Trademarks which are unregistrable for reasons of public interest or for the protection of private interests
5.Notification of Reasons for Refusal
Where an application fails to meet the substantive requirements, notification of reasons for refusal will be sent.
An applicant may submit either a written argument against a notification of reasons for refusal or an amendment that would nullify the reasons for refusal.
7.Decision of Registration
If it is ultimately judged that there are no reasons for refusal, a decision to register a trademark will be made.
8.Decision of Refusal
If a written argument and an amendment can not eliminate the reasons for refusal, and if the examiner judges that the trademark can not be registered, a decision of refusal will be made.
9.Appeal against Decision of Refusal
When dissatisfaction is in the decision of refusal of the examiner, the applicant may appeal against the decision of refusal.
10.Appeal Examination(against the decision of refusal)
An appeal examination against a decision of refusal is performed by a collegial body of three or five appeal examiners.
The decision of the appeal examiners is called appeal decision.
When it is judged, as a result of appeal examination, that the reasons for refusal was solved, an appeal decision to register a trademark is performed, and when the reasons for refusal is judged that the reasons cannot cancel and the trademark cannot be registered, an appeal decision of refusal is performed
11.Registration(Registration Fee Payment)
With the payment of the registration fee, the registration of the trademark right will take place and the trademark right will come into force.
12.Pubilication of a Trademark Gazette
As for the trademark right which has been registered and come into force, the contents are published on the trademark gazette.
Any person may file an opposition to the decision to register a trademark with the Commissioner of the JPO.
14.Appeal for Invalidation/Revocation
Even after a trademark is registered, any person may appeal for invalidation of the trademark if it has a flaw.
Moreover, if the trademark has not been used after registration for three years or more, an appeal for revocation may be charged.
An appeal examination of invalidation/revocation is performed by a collegial body of three or five appeal examiners.
About invalidation, if the appeal examiners judge that there is no flaw in the decision to register a trademark, they will make a decision to maintain the trademark registration. If however, they judge that the decision to grant was flawed, they will make a decision to revoke the trademark right.
About revocation, when a right holder cannot prove using the trademark, an appeal decision of revocation is performed, and the trademark right is revoked.
16. Intellectual property High Court
An applicant who is dissatisfied with an appeal decision of refusal of an appeal against the decision of refusal, and any interested party who is dissatisfied with an appeal decision of invalidation, revocation or maintenance, may appeal to the Intellectual Property High Court.
You can find all the documents you need below when applying for a trademark.
Notes for the readers:
Please use this article only as a reference, not as a legal guideline. Therefore, sugee.jp will take no responsibility or liability, so far as legally possible, for any consequences of your actions. This article was written by Chen Xin, a SUGEE writer, on 25 March 2020.
Jetro.go.jp. 2020. 5.8 The Registration Process | Section 5. Trademark And Design Protection Systems – How To Set Up Business In Japan – Investing In Japan – Japan External Trade Organization – JETRO. [online] Available at: <https://www.jetro.go.jp/en/invest/setting_up/section5/page8.html> [Accessed 2 July 2020].
オンライン商標登録 – 簡単商標登録手続き | Cotobox（コトボックス）. 2020. 商標登録とは？〜10分で詳しく解説します. [online] Available at: <https://cotobox.com/primer/about-trademark/> [Accessed 2 July 2020].
Jpo.go.jp. 2020. ホーム | 経済産業省 特許庁. [online] Available at: <https://www.jpo.go.jp/index.html> [Accessed 2 July 2020].