Registration and use
Ownership of marks
Who may apply for registration?
Any Japanese individual or legal entity that uses or will use a trademark in respect of goods or services in connection with its business may apply, as well as:
- a foreign individual domiciled or resident in Japan;
- a foreign legal entity with a place of business in Japan; or
- an individual or legal entity from a country that allows Japanese nationals to register their trademarks, provided that such foreign nationals have a representative in respect of the said trademark in Japan.
Scope of trademark
What may and may not be protected and registered as a trademark?
Under an amendment to the Japanese Trademark Act introduced in 2015, non-traditional marks, such as colours and sounds, can be registered as trademarks. Under the Trademark Act, trademark should be recognisable by human perception and is defined as ‘any character, figure, sign, three-dimensional shape) or any colour, or any combination thereof, sounds or other marks provided by Cabinet Order’. In particular, motion marks, holograms, colours without profiles, position marks and sound marks are to be protected in addition to the traditional trademarks. Scent and smells are not eligible for trademark protection.
There is no provision for certification marks in Japan while collective marks are protected under articles 7 and 7-2 of the Trademark Act.
A trademark to be used in respect of goods (trademarks) or services (service marks) in connection with the applicant’s business can be registered, unless such trademark is generic, customary for the business, non-distinctive, or against good morals or public order.
Can trademark rights be established without registration?
The Unfair Competition Prevention Act (Act No. 47 of 1993) protects well-known trademarks without registration. Other trademarks are not protected without registration.
Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Article 4(1)(xix) of the Trademark Act provides a ground for rejecting an application for a well-known mark filed by a third party. It reads:
Notwithstanding the preceding article, no trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter).
According to the Examination Guideline for Trademarks provided by the Japan Patent Office (JPO), ‘trademarks well known among consumers abroad’ are explained as follows:
The trademark must be well known in one country other than Japan but is not necessarily required to be well known in several countries. In addition, when the trademark is well known abroad, the fact as to whether or not the trademark is well known in Japan is disregarded.
Thus, if the mark is well known abroad and there are unfair purposes, the mark is protected under article 4(1)(xix) even if the mark is not used or well known within Japan.
The fame of the mark will be estimated through information and materials such as:
- any materials proving volume of use of the trademark (eg, an amount of production or sales); and
- any method, period, areas and scale of advertising (eg, newspapers, magazines, catalogues, leaflets and television commercials, etc).
The benefits of registration
What are the benefits of registration?
The major benefits of registering a trademark include that a trademark owner:
- enjoys an exclusive right to use the mark on designated goods or services;
- may claim an injunction against unauthorised trademark use;
- may claim damages caused by trademark infringement, in which case, the infringer’s intent or negligence will be presumed to exist under the Trademark Act;
- has the right to license third parties to use the registered mark; and
- may file an application for customs seizure based on the trademark registration.
Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
On the application form, the following information will be needed:
- the mark;
- the applicant’s name and address; and
- classes and specific goods or services to be covered by the application.
No other documents such as power of attorney are required for filing purposes. Electronic filing is available. It is recommended to conduct trademark searches before filing. No official search is provided by the JPO and there is no official fee for conducting trademark searches.
Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
It usually takes from 10 to 12 months from the filing of an application for registration with the JPO before the JPO determines the registrability of the trademark (assuming there are no major issues in respect of the application). After issuing the decision of registration, a certificate of trademark registration will be issued upon payment of registration fees in approximately one month. A trademark registration formally comes into effect upon registration by the JPO.
As for cost, an applicant or owner of a trademark should pay the official fee for filing upon filing and registration tax when the application is determined registrable. The official fee for filing one application is the total sum of ¥3,400 plus the result of ¥8,600 multiplied by the number of designated classes. Registration tax is the sum of ¥28,200 multiplied by the number of designated classes. There is no legally binding standard for attorneys’ fees in Japan. Usually, attorneys charge flat fee rates agreed with clients.
Attorneys’ fees for filing and registration (excluding translation costs) are difficult to estimate, but they would, on average, be approximately ¥120,000 per application covering one class, provided that there are no reasons for rejection. Filing an application in more classes can increase the estimated time and cost of filing a trademark application, and receiving a registration.
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
The JPO follows the latest version (11th edition) of the International Classification of Goods and Services (the Nice Classification). Any goods or services listed in the Nice Classification may be claimed, as long as goods or services are specifically designated. The wording of the class headings is not always acceptable for the designation of the goods or services. Multi-class applications are available. Filing such an application will be more cost-efficient than filing one application per class.
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The JPO examines all applications for conflicts with prior registrations and applications.
The similarity between the trademark applied for and prior registrations or applications of trademarks is determined by the examiners of the JPO according to the examination standard published by the JPO, considering three factors: sound, appearance and meaning.
If an objection is raised based on a third-party mark, a letter of consent may be acceptable to overcome the objection only if the holder of a cited prior trademark and the applicant are in a controlling relationship (eg, the holder of the prior trademark is a parent company or subsidiary of the applicant). If there is no controlling relationship between the holder of a prior mark and the applicant, a letter of consent would not be acceptable to the JPO.
Applicants may respond to preliminary rejections by the examiners of the JPO and may request further examinations in an appeal against a final rejection. An English translation of the examination guidelines for similar goods and services can be downloaded from the JPO’s website.
Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
No. The use of a trademark or service mark is neither a requirement for the application or registration of a trademark nor a requirement for the maintenance of the registration, although lack of an intention to use can be grounds for the rejection of registration. Accordingly, in principle, proof of use does not have to be submitted.
If the registered trademark has not been used for three consecutive years, any party may ask the JPO to cancel the registration. In such a case, the trademark will be cancelled unless the trademark owner shows proof of use of its registered trademark.
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Marking is not mandatory for registered trademarks. In general, ™ is used as a marking of a trademark and ® is recognised as the marking of a registered trademark. Any person who affixes false or misleading marking shall be punished by imprisonment with work for a term not exceeding three years or a fine not exceeding ¥3 million.
Appealing a denied application
Is there an appeal process if the application is denied?
Yes. In the course of an application examination, the JPO examines the completeness of the basic formalities and the substance of the applications, and absolute and relative grounds for refusal. If the examiners find any problems, the JPO issues a notice of rejection, in which case the applicant can submit an opinion or amend the application. If, after the applicant’s amendment or opinion, the JPO decides that the requirements remain unsatisfied, it will issue a decision of rejection. If the applicant is dissatisfied with the decision of rejection, the applicant may appeal to the Trial and Appeal Department (TAD) of the JPO. Further, the applicant can appeal to the Intellectual Property High Court seeking cancellation of the TAD’s refusal decision. If the court renders a judgment cancelling the refusal decision of the JPO, the applicant can have the trademark in question registered based on such a judgment.
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Japan adopts a post-registration opposition system and, therefore, applications are not published for opposition. Any third party may oppose a trademark or service mark only after registration.
An opposition may be filed with the JPO on the grounds that the trademark or service mark is unregistrable within two months from the publication of the Gazette that shows the trademark or service mark. The examination of the opposition filing shall be conducted by documentary examination. In addition, any party may seek invalidation or cancellation of the registration of a trademark or service mark with the JPO. The primary bases of opposition or invalidation include:
- that a mark is generic or descriptive;
- that a mark is similar to another party’s mark that has been registered, filed for registration or well known in Japan;
- that a mark is similar to another party’s mark, which is well known in a foreign country, and has been filed for registration by an applicant for the purpose of deception; and
- that a mark includes another party’s image, full name, or famous abbreviation or stage name.
Certain major reasons for invalidation must be filed within five years after registration.
A brand owner may oppose a bad-faith application regardless of whether its mark is registered with the JPO if the mark is famous in Japan or a foreign country.
In the opposition proceedings, the trademark owner is required to submit a counterargument only when the JPO considers that a third-party’s argument is reasonable and issues a notification of the reason for revocation.
The typical range of costs associated with a third-party opposition would be from approximately ¥200,000 to ¥400,000 when filing a counterargument.
Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
The term of a trademark is 10 years from the date of the registration. An owner of a trademark desiring the renewal of the registration shall submit a request for renewal to the JPO within six months prior to its expiry. Even after the expiry of the term, the owner may make a request for renewal within six months from the date of expiry. No proof of use is required for renewal. However, where a registered trademark has not been used in Japan by an owner or its licensee for three consecutive years, any person may file a request for a trial for rescission of such trademark registration. As a defence against such request for a trial for rescission, the trademark owner must file proof of use, such as copies of catalogues, advertisements, publications, websites and trade documents that bear the trademarks and indicate the issuance dates.
What is the procedure for surrendering a trademark registration?
Registration of the trademark will be cancelled by filing an application for abandonment with the JPO. It is possible to request a partial abandonment of the goods or services covered by the trademark registration.
Related IP rights
Can trademarks be protected under other IP rights?
A device mark and three-dimensional mark may be protected as design rights if the design has not lost its novelty. Non-traditional marks, such as motion marks and position marks, may also be protected as design rights. If the design has already been disclosed, an application can be filed within a one-year grace period with requests for ‘exceptions to loss of novelty’.
In addition, a device mark, three-dimensional mark and sound mark may be protected under the Copyright Act. Copyright is an unregistered right in Japan and creativity is required for the work to be protected as a copyrighted work.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The Unfair Competition Prevention Act (the UCP Act) provides protection for domain names. Under article 2(1)(xix) of the UCP Act, the following constitute unfair competition:
acts of acquiring or holding a right to use a domain name(s) that is identical or similar to another person’s specific indication of goods or services (which means a name, trade name, trademark, mark, or any other indication of a person’s goods or services), or the acts of using any such domain name, for the purpose of acquiring an illicit gain or causing injury to another person.
A person who infringes on the business interest of another person by unfair competition shall be liable for an injunction and a person who intentionally or negligently infringes on the business interests of another person by unfair competition shall be liable for damages.
As to country code top-level domain .jp, the relevant Domain Name Dispute Resolution Policy is ruled by the Japan Network Information Centre and it is possible to request that a .jp domain name registered or used in bad faith be transferred to a complaint, or cancelled. The Japan Intellectual Property Arbitration Centre is the institution that conducts dispute resolution proceedings.
If a domain name is identical or similar to a registered trademark and functions as the indication of origin of goods and services, use of the domain name may be considered ‘trademark use’ and the trademark owner may claim for trademark infringement.