Trademark Advice for Individuals and Small and Medium-sized Enterprises

 

Consultation about All Trademark-Related Matters

 

  • Q1. How can we register a trademark for our goods in Japan?
  • A1. For trademark registration, we would ask you (1) a name (or mark) which is to be used for your goods and (2) your goods for which the name (mark) is to be used.
  • We can give you advice not only on evaluation of registrability of a name or mark as a trademark, but also on designation of goods.

 

  • Q2. What types of trademarks can we register?
  • A2. The Japanese Trademark Act places certain limitations on what types of trademarks can be registered.
  • ・For example, a generic name that cannot distinguish your goods or services from those of others (this is called a lack of “distinctiveness”) cannot be registered as a trademark (Article 3 of the Japanese Trademark Act).
  • ・Further, it is not possible to register (1) a trademark similar to a registered trademark of others, (2) a trademark that may mislead consumers as to quality of goods or services (e.g., a name “Udon” cannot be used as a trademark for goods “Ramen”), (3) a trademark similar to a well-known trademark, and so on.
  • ・Designated goods or services vary depending on the usage and/or field of goods or services (for example, whether the goods or services are chemicals, pharmaceuticals, or household utensils). So, if you wrongly designate goods or services, you may not be able to exercise your trademark right in a case where a mark identical or similar to your registered trademark is used by others.

 

  • Q3. We received a notification of reasons for refusal from the JPO after filing a trademark application. The notification states that our trademark is identical or similar to others’ trademark for which a trademark application was filed earlier than that of ours. Is there any problem if we give up on registration here and continue using our trademark as it is without registration?
  • A3. Yes. If you continue using such a trademark without registration, a holder of the prior trademark right may deem that you attempt to infringe his/her prior trademark right, and may demand an injunction against the use of your trademark and/or claim compensation for damages. We recommend arguing, in a Response, that your trademark is not similar to the prior trademark.
  • In a case where your application is rejected, you may better make changes to your trademark and newly file an application for the new trademark. Once the new trademark is registered, you can then use the trademark with no worries.

 

  • Q4. We have a shop whose name is registered as a trademark. However, one of our large rival firms has recently opened a new shop whose name is similar to our trademark, and the name of their shop even seems to be registered as a trademark. We have been worrying about whether the large rival firm will claim that we should stop using our trademark.
  • A4. If you filed the trademark application earlier than the rival firm and have been using the registered trademark for its designated goods or services, you have no problems.
  • However, in a case where you made alterations to the trademark and have been using the trademark for not longer than 3 consecutive years in Japan, your trademark right may be cancelled due to non-use. In order to avoid such cancellation due to non-use, we recommend you to keep, as objective evidence which can prove that you have been using the trademark for its designated goods or services, newspapers in which your trademark is inserted, advertisements of the goods or services on magazines, fliers, catalogues, brochures, transaction slips, etc. If you keep transaction slips, they must clearly indicate a relationship between the goods or services and the trademark. Further, the trademark whose use is to be proven must be a trademark that can be recognized as being identical to the registered trademark from common sense.

 

  • Q5. We have been selling some goods in Japan and are planning to open an overseas branch. Do we need to register our trademark also in the country?
  • A5. Yes. We recommend you to register your trademark in the country.
  • In general, the principle of territoriality applies to trademark rights. Trademark rights acquired in Japan and trademark rights acquired in foreign counties are independent from each other. That is, a trademark registered in one country is protected only in the country, and such protection is not valid in other countries (Article 6 of the Paris Convention). If you use your trademark in a foreign country without registration, your trademark may be copied by others and accordingly, your brand’s value may be degraded. In addition, most countries employ the first-to-file system, which means that once your trademark is registered by others, you will not be able to use your trademark. This may cause a serious loss to your business. (There are some exceptions that the right of prior use is acknowledged, but dispute settlement over the trademark imposes a significant financial burden to you.)
  • If you file a trademark application in a foreign country, you also need to carefully designate goods or services. Most of goods or services are classified in accordance with the International Classification under “the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks”. However, each country has a different method of describing designated goods, so that it is necessary to request a local agent to verify the designated goods for your trademark. Moreover, each country has a different trademark system, and accordingly, it is necessary to pay attention to documents necessary for trademark registration, whether or not a single application can be filed for multiple classes, whether or not the first-to-use rule is employed, and the like.
  • Trademark registration in foreign countries can be sought via various routes such as direct application to each country, international registration application, and European community trademark application. Each application route has merits and demerits. On the application routes, please feel free to consult us.

 

  • Q6. We are planning to manufacture products in a foreign country and sell them in Japan. In this case, do we need to register a trademark for such products in the foreign country?
  • A6. Yes. Even if you register the trademark in Japan, you cannot exert your trademark right in the foreign country.
  • So, in a case where (1) you manufacture, in a certain country, products to each of which a trademark is affixed and (2) import them into Japan, this is deemed to be use of the trademark, and you need to register the trademark in the certain country, too. In a case where, for example, (1) you manufacture, in a certain country for import into Japan, products to each of which an unregistered trademark is affixed and (2) there is already, in the certain country, a registered trademark that is identical or similar to the unregistered trademark, the unregistered trademark is deemed as infringing the trademark right. There is also a risk that your trademark is registered by others in the certain country. In such a case, you will not be able to manufacture the products in the certain country. We also recommend applying in advance to the customs for prohibition on importation of imitations of your products.

 

  • Q7. It seems that imitations of our products have been imported. What action should we take against it?
  • A7. “To import goods or packages of goods to each of which a mark is affixed” is deemed use of a trademark.
  • So, if a trademark registered in Japan is affixed to the imitations imported into Japan, such importation is deemed to be an infringement of the trademark right. In such a case, a holder of the trademark right can claim prohibition on the importation, compensation for damages, and return of unjust enrichment. Even though your trademark is not a registered one, you may be able to claim prohibition on use of your trademark or compensation for damages, alleging that the imitations infringe a design right or violate the Unfair Competition Prevention Act. Demanding an injunction to prohibit the importation at the customs may also be possible. In a case where an individual is importing imitations of your products, it is practically possible to demand an injunction to prohibit such importation, depending on the case.

 

  • Q8. What do we need to do if we want to sell goods with comic characters?
  • A8. We also answer questions as to not only trademark rights but also design rights and copyrights.
  • In general, if you create your own original comic character, you naturally have a copyright on the comic character at a time point when you create the comic character. This does not need registration or examination. In a case where the comic character functions to show an origin of goods or services, the comic character is eligible for registration as a trademark. If a name or a logotype of the comic character is registered as a trademark, you, a holder of the trademark right, can conclude a licensing agreement with a third party on the use of such a trademark.