Trademarks

• 9-1. What is a trademark?
• 9-2. How is a procedures for obtaining a trademark right?
• 9-3. What should I know before I file a trademark application?
• 9-4. How can I renew my trademark registration?
• 9-5. Can I pay my registration or renewal fees in installments?
• 9-6. How can I file an opposition?
• 9-7. Can the period that the examiner specifies for me to respond to the notification of reason for refusal be extended while my trademark application is undergoing substantive examination?

 9-1. What is a trademark?

(i) Subject of protection under the Trademark Act

The subject of protection of the Trademark Act is a trademark. According to the Article 1 of the Trademark Act, the purpose of this Act is, through the protection of trademarks, to ensure the maintenance of business confidence of persons who use the trademarks and thereby to contribute to the development of the industry and to protect the interests of consumers.

It goes without saying that consumers benefit from the economic activities of various companies and other economic entities.

Consumers expect a certain level of quality of products or services from certain brands and therefore benefit by being able to determine the manufacturer of a product or provider of a service.

Trademarks indicate a specific function of a product or a service. By protecting the reputation of a brand associated with a trademark, the trademark system protects the interests of the consumer and contributes to the development of industries.

Article 2 of the Trademark Act defines a "trademark" as among those which can be perceived by people, any character, figure, sign or three-dimensional shape or color, or any combination thereof; sounds, or anything else specified by Cabinet Order (hereinafter referred to as a "mark") which is:

• (i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or
• (ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item).

In addition, "Services" set forth in item (ii) above shall include retail services and wholesale services, namely, the provision of benefits for customers conducted in the course of retail and wholesale business.

(ii)Non-traditional trademark

In 2014, the Trademark Act was amended for the purpose of supporting the company with diversified brand strategies, which has enabled the registration of non-traditional trademarks, such as sound, color, motion, hologram and position, in addition to the letters, figures, etc.

In 2019, from the viewpoint of improving user convenience and clarifying the scope of the right, the JPO revised the method of making statements in the application when filing an application for a three-dimensional trademark (revision of the Regulation for Enforcement of the Trademark Act) so as to enable companies to protect the shapes of outer appearances and interiors of stores and complicated shapes of goods more appropriately.

(iii) Duration of a trademark right

The period of a trademark right is ten years from the date of registration of the trademark right. The period may be renewed every ten years.

(iv) Outline of procedures for obtaining a trademark right

An outline of the procedures for the registration of a trademark

 9-2. How is a procedures for obtaining a trademark right?

An outline of the procedures for registration of a trademark

 9-3. What should I know before I file a trademark application?

First of all, you should know the "First to File" principle.

According to Article 8 of the Trademark Act, when two or more applications are filed on different dates to register an identical or similar trademark used for identical or similar goods and services, only the applicant who filed the application first will be entitled to register that trademark. This is called the "First to File" principle. This means that if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.

Therefore, before filing a trademark application, please be sure to search prior trademarks to see if identical or similar trademarks have been registered by other applicants.

Please also note that even if no trademark applications have been filed earlier or if no registered trademarks exist, your trademark still might not be able to be registered if it corresponds to either of the trademarks stipulated in Article 3 and Article 4(1) of the Trademark Act. In addition, the "Examination Guidelines for Trademarks" is helpful for letting you know what kinds of trademarks cannot be registered.

Examination Guidelines for Trademarks

See FAQ 1-1: "Should I search for prior art before applying for a Patent?"

 9-4. How can I renew my trademark registration?

A trademark right expires 10 years from day on which the trademark was registered.

You can renew your trademark right by filing a request for renewal six months before the trademark right expires. You need to pay the renewal fee at the same time you request to renew your trademark right.

Please note

The Japan Patent Office does not accept direct payments by any means from applicants/persons residing outside Japan, such as payments by bank transfers, credit cards, or checks. The payment has to be made by an appointed representative either residing or domiciled in Japan such as a patent attorney.

See FAQ 4-1: "How much are the fees? and refer to section 3. "Annual fee/ Registration fee"

 9-5. Can I pay my registration or renewal fees in installments?

Yes, the registration fee can be paid in two installments, one for the first five years and the next for the last five years. When paid over installments, however, the amount of the registration fee for 10 years ends up being higher than if it were paid all at once.

The registration fee for the first five years must be paid within 30 days from the date on which a certified copy of an examiner's decision (or a trial decision) stating that the trademark can be registered has been sent. The registration fee for the last five years must be paid within five years from the day on which the trademark was registered.

The renewal fee can be paid in two installments as well, one for the first five years and the next for the last five years, in the same way that you can pay registration fees.

When paid over installments, however, the amount of the renewal fee ends up being higher than if it were paid all at once.

Please note

The Japan Patent Office does not accept direct payments by any means from applicants/persons residing outside Japan, including payments by bank transfers, credit cards, or checks. The payment has to be made by an appointed representative either residing or domiciled in Japan such as a patent attorney.

See FAQ 4-1: "How much are the fees? and refer to section 3. "Annual fee/ Registration fee"

 9-6. How can I file an opposition?

If you would like to raise an opposition against a trademark registration, you can file an opposition against that registration within two months from the date on which the Gazette containing the trademark was published. You need to state that your opposition is based on the grounds that the trademark lacks the requirements needed for the trademark to be registered. (This is based on Article 43-2 of the Trademark Act.)

Attention

Please note that under Article 8 of the Patent Act, persons who don't reside or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan. (This same type of provision applies to utility models, designs, and trademarks under their respective acts.) We highly recommend that you appoint a patent attorney as your representative and consult with your representative about the procedures in detail.

See FAQ 1-6: "How can I get a list of patent attorneys in Japan?"

 9-7. Can the period that the examiner specifies for me to respond to the notification of reason for refusal be extended while my trademark application is undergoing substantive examination?

Yes, the period of time that the examiner specifies for you to respond to the notification of reason for refusal can be extended while your trademark application is undergoing substantive examination. In order to do so, you need to file a request to that effect with the JPO before the specified period has expired.

For both applicants who reside or who are domiciled in Japan and applicants who don’t reside or who are not domiciled in Japan, the specified period can be extended by one month if you file a request to that effect before the specified period expires. The fee to request for an extension is ¥2,100.

The specified period may also be extended if you file a request to that effect with the JPO within two months after the period has expired, or if the period has been extended by one month, within two months after the extended period has expired.

Applicants who reside or who are domiciled in Japan and applicants who don’t reside or who are not domiciled in Japan can extend the period by two months, if they file a request to that effect. The fee to request for extension after the expiration of the specified period is ¥4,200.

For more details, please see “Change of Operating Procedures regarding the Extension of the Specified Time Limit for Responding to a Notification of Reasons for Refusal concerning Patent Applications and Applications for Trademark Registration (starting from April 1, 2016)”

Attention

Please note that under Article 8 of the Patent Act, which is applicable to trademarks under the Trademark Act, persons who don’t reside or who are not domiciled in Japan cannot conduct any procedure, with respect to trademark applications or trademark right, directly with the JPO and must appoint a representative in Japan. We highly recommend that you appoint a patent attorney as your representative and consult with him or her about the procedures in detail.