Advice for Those Engaged in Apparel Industry

(1) Introduction

We consider that those of you engaged in the apparel industry feel familiar to trademarks. According to statistics issued by the Japan Patent Office (JPO) on the number of trademark applications, approximately 98,000 trademark applications in relation to the class of clothing (i.e., Class 25) were filed in 10 years from 2003 to 2012.

This number of applications is the third largest number in terms of the goods classification, following the first place Class 9 (relating to various machinery, equipment, and software) and the second place Class 30 (relating to confectionery and foodstuffs). This figure shows that those engaged in apparel industry actively file trademark applications.

The fact that the large number of applications are filed means that such a large number of brands are created. Under the circumstances, it is highly possible that one infringes a someone else's trademark right, a similar trademark is used by others, and inferior counterfeits appear.

This page is intended to provide a support for those of you engaged in the apparel industry by introducing the "know-how" about industry-specific trademark registration.

(2) Is Class Selected Properly?

"Clothing" is generally known as goods in the apparel industry. We wear various kind of goods such as, from the top of the body, "headwear", "Western clothes", "belts", "trousers", "shoes", and inner clothing such as "underwear" and "socks" .

These goods all belong to the class of clothing, i.e., Class 25. Then, how about the following goods which are similarly worn or carried about?

• "Sunglasses"
• "Bag"
• "Wallet"
• "Wearable various accessories"
• "Watch"
• "Business card case"
• "Umbrella"

These goods belong to classes different from Class 25. This means that, even a shop dealing mainly with Western clothes needs to register a trademark for goods other than those of Class 25, depending on goods dealt with by the shop. In view of this, it is important to carefully consider goods which are actually sold and contents of goods which are to be sold, and properly select necessary classes.

For example, "clothing" and "bag" are not considered as similar goods, and therefore the same trademark or similar trademarks can be registered by separate owners of trade mark rights.

Under the circumstances, in a case where you register a certain trademark only for "clothing" and you sell "bag" which is affixed with the certain trademark, you may infringe a someone else's right of trademark (designated goods: bag) which happens to be the same as your certain trademark.

Therefore, for those of you who deal with various kinds of goods, it is necessary to carefully select classes and goods. We accept inquiries from you at any time. Please feel free to consult us.  

(3) Has Trademark Registration Been Done Concerning Retail Services, etc.?

As you may know, it is possible to register a trademark for retail services, etc. in Japan from April, 2007.

This is aimed at protecting trademarks used by retail sellers and wholesale dealers. Specifically, a large number of trademark applications are filed not only by those engaged in apparel industry but also by those running retail businesses such as convenience stores, supermarkets, and bookstores.

The retail services, etc. belong to Class 35 to which advertising services, etc. also belong. The number of applications concerning Class 35 filed in 10 years from 2003 to 2012 was the largest in classes of services (even in classes including goods, the third largest number of applications were filed for Class 35).

In regard to Class 35 for which such a large number of applications are filed, in a case where a trademark application is filed which is directed to retail services, etc. that deal with overly various kinds of goods, such an application is sometimes refused by the JPO because "it is doubtful whether or not the trademark is being actually used or whether or not the trademark will be used".

Such refusal can be avoided by taking measures as follows:

• (A) In a case where the trademark is actually being used:
  Submit a photograph or a catalog of goods with which the trademark can be confirmed.
• (B) In a case where the trademark will be used:
  Present (i) "business plan" and (ii) "intention to start using the trademark".
• (C) In a case where the trademark is not used for certain goods at all:
  Delete the certain goods from targets for the retail services, etc.

The above measures (A) through (C) may seem to be difficult at the first glance. However, in any of the cases, the refusal would be overcome by taking appropriate measures. In view of this, it is important not to easily give up even if such a reason for refusal is notified.

Please note that, in regard to the above measures (A) and (B), the applicant is not allowed to submit false documents. That is, if the applicant obtains a trademark registration by submitting a false photograph of goods which are not actually sold or by faking a business plan, etc. while knowing that the goods will not be used, such action can be considered as a fraud and accordingly the applicant may be punished. Please do not take such action.

(4) For Those Who Manufacture Goods in Foreign Countries

We consider that, in order to lower manufacturing cost, many companies manufacture clothing items in a foreign country and import the clothing items so as to sell them in Japan. In a case where a trademark is affixed to clothing items manufactured in a foreign country, it is of course necessary to register the trademark in Japan when the clothing items are imported to Japan. Further, in principle, it is necessary to register the trademark in the country where the trademark is affixed to the clothing items.

If someone else in the foreign country has a right of similar trademark and the affixing of the trademark is regarded as infringement of the someone else's right of similar trademark, the goods can be distrained before being imported to Japan.

We consider that clothing items are often manufactured in East Asia including China, and, recently, in countries of Southeast Asia and South Asia. Trademarks are variously handled in different countries, and necessary know-how about trademark registration is accordingly different for each country. Please feel free to consult us about this point.

(5) Our Support for Those Engaged in the Apparel Industry

The apparel industry closely relates to daily lives of general consumers, and it can be said that, in the apparel industry, credibility of an owner of a trademark right is easily lost from a purchaser of inferior goods due to similar trademarks and distributed many counterfeits.

Under the circumstances, those of you engaged in the apparel industry may sometimes come up against a situation in which you cannot help recognizing a problem of intellectual property right. We are prepared to do our best to protect intellectual property of those of you engaged in the apparel industry. Please feel free to contact us for professional advice.