Useful information when protecting trademark rights in Japan is presented below.
It is our hope that our clients will find this page helpful in protecting their intellectual property domestic.
*As of April 2018
It takes approximately 6 months to 12 months from the date of filing to the date of registration or issuance of a decision of refusal.
2. Trademark Rights in Japan
A. Target of Trademark Registration
(1) Types of Trademark
- (i) Normal Trademarks
- (ii) Collective Trademarks
- (iii) Regional Corrective Trademarks
(2) Available Trademarks and Protection Targets Thereof
■ Traditional Trademarks
- (i) Word Trademarks: Trademarks consisting of hiragana, katakana, Chinese characters, and/or Roman alphabets.
- (ii) Figure Trademarks: Trademarks consisting of marks and/or characters.
- (iii) Three-Dimensional Trademarks: Trademarks consisting of three-dimensional dolls of characters or the like.
- (iv) Trademarks Consisting of Combinations of (i) through (iii) above.
■ Nontraditional Trademarks (available since April 1, 2015)
- (i) Trademarks Consisting Solely of Colors
- (ii) Position Trademarks
- (iii) Sound Trademarks
- (iv) Motion Trademarks
- (v) Hologram Trademarks
B. Outline of Japanese Trademark System
(1) First-to-File, First-to-Register Principle
The Japanese Trademark Law follows the first-to-file, first-to-register principle.
- ● First-to-File Principle: It refers to a principle under which, in a case where two applications for identical or similar trademarks which designate identical or similar goods or services are in competition against each other, the trademark for which the application is filed earlier will be registered in priority.
- ● First-to-Register Principle: It refers to a principle under which, even if a trademark is currently not in use, it can be registered as long as the applicant intends to use it in the future and it satisfies certain conditions.
- ● In view of the circumstances, if you plan an extension of business in or exports to Japan, it is important to take some measures in advance (e.g., file an application for a trademark that you intend to use in Japan).
(2) Substantive Examination
In Japan, substantive examination is conducted after formality examination is conducted in which whether a trademark application satisfies formality requirements is determined.
In the substantive examination, whether a trademark application is substantially registrable is determined.
[Main reasons for refusal]
- • There is doubt as to whether the applicant is using or has an intention to use the trademark (Article 3(1), main paragraph of the Japanese Trademark Law (hereinafter simply referred to as “the Law”)).
- • The trademark lacks distinctiveness (each section of Article 3 of the Law).
- • There is a ground of unregistability in view of public interest or due to a relationship with other’s trademark (each section of Article 4 of the Law).
- • Designated goods or services are not properly stated (each section of Article 6 of the Law).
C. Trademark Rights
(1) Incidence of Trademark Rights
- • After the substantive examination, a Decision (or a Trial Decision) to Grant a Trademark is issued.
→ Registration fee must be paid within 30 days from the delivery date of the Decision.
→ The trademark right enters into force from the date on which the registration is established.
- • 10 years from the registration date.
- • Renewable (Basically, procedures for renewal need to be taken on or within 6 months before the expiration date of the trademark right).
- • Procedures for renewal can also be taken within 6 months from the expiration date of the trademark right. In such a case, however, additional fees must be paid.
(3) Classification (Goods or Services)
- • One-Application-for-Multiple-Classes Principle
- • Classifications must be stated in conformity to the Nice Classification and the Law.
- • Comprehensive classification is available which is stated in the examination guideline for similar goods and services.
(4) Documents etc. Required for Application
- (i) Application Form
- (ii) Application Fee
* The following are required as necessary*
• For Priority Claiming: Priority Certificate (can be filed within 3 months from the date on which an application is filed).
• For Collective Trademark: Document that proves the eligibility of an applicant.
• For Regional Collective Trademark: Document that proves the eligibility of an applicant; and Document that proves that the region’s name included in the trademark has a close connection to the designated goods or services.
(5) Main Official Fees *As of April 2018
|<Application Fee>||3,400 JPY + (8,600 JPY × Number of Classes)|
|<Registration Fee>||28,200 JPY × Number of Classes (for 10 years)|
|16,400 JPY ×Number of Classes (for 5 years; in a case where the applicant wishes to divide the payment of registration fee)|
|<Renewal Fee>||38,800 JPY × Number of Classes (for 10 years)|
|22,600 JPY ×Number of Classes (for 5 years; in a case where the applicant wishes to divide the payment of registration fee)|
(6) Flow of Trademark Application
* Accelerated examination can be requested upon satisfaction of certain conditions.
(7) Cause of Cancellation
(i) Opposition to Registration
In a case where there is a registered trademark that should not have been registered, it is possible to request a re-examination of that trademark by filing an Opposition against the trademark. The Opposition must be filed within 2 months from the date on which the trademark was published in the Japanese Trademark Gazette. Once this deadline is passed, it is necessary to file a Trial for invalidation in order to obtain a revision of a mistaken registration.
(ii) Trial for Invalidation
In a case where there is a registered trademark that should not have been registered or where there is a registered trademark that subsequently appears to have been unfairly registered, it is possible to invalidate the registered trademark by filing a Trial for invalidation. The trial procedure that allows retroactive dismissal of the trademark right is called Trial for Invalidation.
(iii) Trial for Recession
In a case where, for reasons that appeared after registration, it becomes inappropriate to maintain a trademark that had been originally registered without defect in the examination process, it is possible to dismiss the trademark by filing a Trial for Rescission. There are five types of Trial for Rescission, as described below.
- ● Trial for Rescission due to lack of use (Article 50 of the Law)
A Trial for Rescission due to lack of use can be filed in order to request the rescission of the registration, in a case where neither the owner of the trademark right, the exclusive licensee, nor a non-exclusive licensee has used the registered trademark in Japan within 3 years before the filing of the Trial for Rescission.
- ● Trial for Rescission due to unfair use by the owner of the right (Article 51 of the Law)
A Trial for Rescission due to unfair use by the owner of the right can be filed in order to request the rescission of the registration, in a case where the owner of the right has deliberately attempted to cause confusion with a similar product or service of a third party through the use of the registered trademark.
- ●Trial for Rescission due to unfair use by the licensee (Article 53 of the Law)
The Law imposes at the same time a duty of fair use of the registered trademark to the licensee and a duty of control of the licensee to the owner of the right. Accordingly, in case where any of the above duties is violated, a Trial for Rescission due to unfair use by the licensee can be filed in order to request the rescission of the registration.
- ● Trial for Rescission due to unfair use by the owner of the right in connection to a transfer of the right (Article 52-2 of the Law)
A Trial for Rescission due to unfair use by the owner of the right in connection to a transfer of the right can be filed in order to request the rescission of the registration, in a case where, as a result of a transfer of the right, the use of the registered trademark by the separate owners of the right is causing confusion in the mind of the consumer. This serves as a protective measure against the confusion that can appear with regards to the source of a trademark due to a transfer of the right.
- ● Trial for Rescission due to unfair registration by a representative (for example by an outlet) (Article 53-2 of the Law)
A Trial for Rescission due to unfair registration by a representative can be filed in a case where the representative has registered the trademark without the consent of the entity entitled to the rights related to the trademark.
D. Measures against Infringement
(1) What is Trademark Right Infringement?
• An act of using a registered trademark for goods/services designated for the registered trademark.
• An act of using a mark similar to a registered trademark.
• A preliminary act of using a registered trademark or a mark similar to a registered trademark (e.g., possession of such a mark for transfer).
(2) Measures against Infringement
(i) Civil Measure
- ● Right to Demand Injunction
- ● Right to Demand Compensation for Damages
- ● Right to Demand Restoration of Credibility
- ● Right to Demand Restitution of Unjust Enrichment
(ii) Criminal Measure
● Fine (subject to dual liability), imprisonment, or combination thereof
(iii) Claim in Customs
It is possible to claim injunction of importation and/or exportation at customs by taking certain procedures.
Japan has mainly acceded to the following treaties.
|Paris Convention||WTO Agreement||Trademark Law Treaty||Madrid Protocols||Nice Agreement|