TRADEMARK LAW OF JAPAN

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 examination procedure is necessary for trademarks to be registered (Article 14). On the other hand, the protection for unregistered trademarks is provided by the Unfair Competition Prevention Act 

 

UNREGISTERED TRADEMARK 

Under the Trademark Law, unregistered marks are protected only in certain circumstances.

 

Prior user’s rights: Even if an unregistered mark is identical or similar to another’s registered mark, a prior user may continue to use the mark provided that:

• at the time of the subsequent trademark application the unregistered mark is well known to consumers or dealers in Japan for goods or services relating to the prior user’s business; and

• the prior user has no intention of engaging in unfair competition in its use of the unregistered mark.

 

Unregistered marks that are well known or famous, as well as certain configurations of goods, are protected under the Unfair Competition Prevention Law.

 

The law provides that where unfair competition causes damage to a person’s business, that person may seek an injunction and, if the damages were caused negligently or intentionally, compensatory damages.

 

‘Unfair competition’ includes:

• use of another’s mark that is well known to consumers or dealers as identifying its goods or business, thus causing confusion (or the likelihood of confusion) with that party’s goods or business;

• use as one’s own of another’s mark that is famous to consumers or dealers as identifying its goods or business; or

• imitation of the configuration of another’s goods (except when such configuration is indispensable for ensuring the function of the goods themselves).

 

 

REGISTRABLE MARKS

The Trademark Law provides that a trademark should be recognisable by human perception and shall consist of characters, figures, signs, three-dimensional (3D) shapes, colours or any combination thereof, or sounds, and be used for goods or services relating to the applicant’s business. In April 2015, motion marks, hologram marks, colour marks per se, sound marks and position marks also became registrable as trademarks.

 

A trademark right is granted when an examiner of the Japan Patent Office (JPO) determines that the mark meets all registration requirements. It is an exclusive right to use the mark with respect to designated goods or services, which becomes effective throughout Japan upon registration of the trademark with the JPO. The Trademark Law follows the first-to-file principle.

 

Under the Trademark Law, a trademark application will be rejected unless the following substantive requirements are satisfied:

• The mark is sufficiently distinctive for consumers to distinguish the applicant’s goods or services from those of others;

• The mark qualifies as registrable under the Trademark Law; and

• The application does not violate any treaties.

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Some trademarks that lack distinctiveness – excluding generic terms – may still be registered if the applicant can prove that they have acquired distinctiveness for specific uses. Further, a well-known trademark consisting of a geographical name and a generic term for a product or service that is owned by an industrial business cooperative association, a commerce and industry association, a chamber of commerce and industry or a specified non-profit corporation (including an equivalent foreign legal entity) may be registered, provided that it fulfils the other requirements.

 

Even if a mark is sufficiently distinctive, it will be rejected if it falls under one of the various bars set out in Section 4 of the Trademark Law concerning the public interest or an individual interest.

 

 

TERM OF PROTECTION

The term of protection lasts for 10 years from the date of registration. The trademark right may be renewed every 10 years by filing a request for renewal within six months prior to the expiration date.

 

 

PROCEDURE OF REGISTRATION

An applicant may file a trademark application with the JPO in person, by mail or online.

 

Once formal registration requirements are satisfied, the examiner will consider whether the application meets the substantive requirements for registration.

 

If the examiner finds reasons to reject the application, he or she will notify the applicant accordingly within 18 months. The applicant may submit written arguments or amendments in response.

 

If the applicant does not reply to the JPO’s notice, or if its written arguments or amendments fail to overturn the reasons for rejection, the JPO will issue a refusal decision.

 

The applicant may appeal the JPO’s decision, which will become final and conclusive if no appeal is sought.

 

If an appeal is requested, the application will be scrutinised by a panel of trial examiners. If the panel issues an unfavourable ruling, the applicant may appeal to the IP High Court; if it fails to do so, the rejection decision becomes final.

 

If the examiner determines that there are no reasons to reject the application, or if such reasons are defeated, he or she will issue a registration decision. It takes an average of five months from filing an application to a registration decision, if the JPO finds no reason to reject the application.

 

A trademark right is established upon registration of such right with payment of the registration fee.

 

The trademark registration will then be published in the Trademark Gazette.

 

 

Anyone may file an opposition to registration within two months of the trademark being published in theTrademark Gazette. Once an opposition is filed with the JPO, the panel of trial examiners will consider whether it has merit.

 

The grounds for opposition are similar to those for rejection (ie, lack of distinctiveness and unregistrability). However, an opposition may also be filed if the trademark application conflicts with a prior application.