10-26-2016 (Newsletter Issue 19/16)Trademark Examination Guidelines in English Now AvailableThe Japan Patent Office (JPO) has published the "Examination Guidelines for Trademarks" in English for overseas users in order to standardize and uniform the examination of trademark applications.
The Office informs that some examples have been changed partly from the original Japanese version for a better understanding.
To access the Examination Guidelines for Trademarks, please click here
07-25-2016 (Newsletter Issue 14/16)
Preemptive Trademarks Are Not Abandoned
On May 17, 2016, the Japan Patent Office (JPO) made an announcement regarding preemptive trademark applications.
In recent years, some individuals and companies have filed a large number of "preemptive trademark applications", for example, well-known phrases of other persons. According to the JPO, most of such trademark applications are flawed applications for which no payment of the fee is made, and thus will be dismissed. However, the Trademark Act and the Trademark Law Treaty, to which Japan acceded, provide that a filing date is admitted even if no payment of the fee is made. Furthermore, a process for dismissal of the application requires a certain time period. Thus, if a trademark search is conducted before the process is completed, the trademark that has preemptively been applied for is shown as a search result.
The JPO advises not to abandon filing a trademark application in the above case, stating that even if a payment of the fee is made, a trademark is not registered in a case where:
1. A trademark filed for registration is not to be used for goods or services pertaining to a business of the applicant; or
2. A trademark application is, for example, a preemptive application for registering another person's well-known trademark.
05-02-2016 (Newsletter Issue 8/16)Trademark Examination Guidelines RevisedThe Japan Patent Office (JPO) extensively reviewed and revised the contents and structures of the Trademark Examination Guidelines to make trademark examination more understandable for users. The revised Trademark Examination Guidelines will be applied in trademark examinations conducted on or after April 1, 2016.
It is expected that with the revision it will be easier to register a trademark or a corporate catch-line.
For further information, please see here (in Japanese only).
05-02-2016 (Newsletter Issue 8/16)Search-Related Data on Design Registration ApplicationThe Japan Patent Office has begun including notification of search-related information with all notices of decision of registration of design drafted on or after April 11, 2016. This is part of an initiative to provide information relating to design examination. The notifications will provide information regarding the Japanese design classification for which a prior design search was performed during examination of a design registration application.
For further information on the notification, please click here
04-05-2016 (Newsletter Issue 6/16)
Official Fees Reduced
The official registration and renewal fees have been reduced as of April 1, 2016.
The trademark registration fee has been reduced from JPY 37,600 to JPY 28,200 per classification. The trademark renewal fee has been changed from JPY 48,500 to JPY 38,800 per classification.
The fee for trademark rights based on international registration is equivalent to the above registration and renewal fee.
Source: AXIS Patent International, Japan
04-05-2016 (Newsletter Issue 6/16)
Accession to Singapore Treaty
WIPO has announced the accession to the Singapore Treaty on the Law of Trademarks by Japan on March 11, 2016. The Treaty will enter into force on June 11, 2016.
The said instrument contained the following declaration:
"Pursuant to Article 29(1) of the Treaty, the provisions of Article 3(1)(a) and 1(b), Article 5(1) and (4), Article 7(2), Article 8(5), Article 11 and 13(1)(a), (1)(c), (2), (4) and (5) shall not apply to defensive marks".
03-16-2016 (Newsletter Issue 5/16)Revised Examination Guidelines for DesignsThe Japan Patent Office informed that with regard to the implementation of Chapter 4 of Part 7 of the Design Examination Guidelines（March 11, 2016 Revised Edition), the Section “74.4.3 Creative Difficulty” shall be applicable to the applications for design registration which will be examined on or after April 1, 2016, and those other than Section “74.4.3 Creative Difficulty” shall be applicable to the applications for design registration filed on or after April 1, 2016.
For further information, please click here
03-16-2016 (Newsletter Issue 5/16)Japanese Translation of Nice ClassificationThe Japan Patent Office (JPO) released the “International Classification of Goods and Services in Japanese translation with Similar Group Codes” corresponding to the International Classification of Goods and Services 10th edition, version 2016.
The International Classification of Goods and Services, 10th edition, version 2016 is applied to the applications on or after January 1st, 2016.
The Japanese translation of the Nice Classification can be accessed in an alphabetical list with similar group codes here. For further information, please see JPO's website here.
02-17-2016 (Newsletter Issue 3/16)Examination Guidelines AnnouncedThe Japan Patent Office announced the Examination Guidelines for Similar Goods and Services (corresponding to the Nice Classification, 10th Edition, Version 2016) and released the Guidelines in English.
The Examination Guidelines for Similar Goods and Services are applied to applications on or after January 1st, 2016.
The Examination Guidelines for Similar Goods and Services can be accessed here with further information on the implementation.
02-02-2016 (Newsletter Issue 2/16)
Official Fees Soon Reduced
The Japan Patent Office (JPO) has announced it will reduce two of its official fees for trademarks. The registration fee shall be reduced from JPY 37,600 to JPY 28,200 and the renewal fee from JPY 48,500 to JPY 38,800 effective as of April 1, 2016.
Source: Hogan Lovells, Japan
05-27-2015 (Newsletter Issue 8/15)International Design Registration System Now Available On May 13, 2015, the Geneva Act of the Hague Agreement officially entered into force in Japan.
The Geneva Act is an international treaty aiming to simplify applicants’ registration procedures for industrial designs in multiple countries and to reduce their costs for such procedures. It enables applicants to file a design application in multiple countries by filing a single international application directly or via a domestic office to the International Bureau of the World Intellectual Property Organization (WIPO).
The Geneva Act also enables integrated control of the design rights that were granted in multiple countries.
For more information, please click here
04-15-2015 (Newsletter Issue 6/15)Examination Guidelines RevisedThe Japan Patent Office (JPO) has revised the examination guidelines for similar goods and services (corresponding to the Nice classification, 10th edition, version 2015).
The examination guidelines has been reviewed and corrections of erroneous description concerning of some English entries in these guidelines have been made.
The list of changes from the version publicized on February 4, 2015, to the version publicized on April 10, 2015 can be seen here and here
04-15-2015 (Newsletter Issue 6/15)Nice Classification in Japanese ReleasedThe Japan Patent Office (JPO) released the "International Classification of Goods and Services in Japanese translation with Similar Group Code" corresponding to the International Classification of Goods and Services 10th edition, version 2015.
The International Classification of Goods and Services 10th edition, version 2015 is applied to the applications on or after January 1, 2015.
To access the "International Classification of Goods and Services in Japanese translation with Similar Group Code" please click here
Correction of erroneous description concerning can be seen here
03-18-2015 (Newsletter Issue 4/15)Examination Guidelines Announced The JPO announces that responding to the new revision of Nice Classification (NCL10-2015) based on Nice Agreement Concerning the International Classification of Goods and Services for Registration of Marks, the Examination Guidelines for Similar Goods and Services has been revised.
The examination guidelines for similar goods and services is applied to the applications on or after January 1st, 2015.
For more information on the guidelines, please click here
03-18-2015 (Newsletter Issue 4/15)Non-Traditional Trademarks Soon RegisterableThe Japanese Ministry of Economy, Trade and Industry (METI) has published on January 23, 2015 that the long-planned amendments of Japanese IP laws have passed the parliament and will enter into force on April 1, 2015,
The amendments include that non-traditional trademarks like colours, sounds, movements, holograms and position marks are registerable.
Further, applicants of designs can file one application at one office instead of having to file the same application in several countries where protection is needed. This will lower the costs (adaptation to the Geneva revision of the Hague agreement).
For further details, please see the METI website (Japanese only).
03-18-2015 (Newsletter Issue 4/15)
Accession to Geneva Act of the Hague Agreement
On February 13, 2015, the government of Japan deposited its instrument of accession to the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs with the Director General of the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
The Act will come into effect for Japan on May 13, 2015, three months after the deposit.
09-16-2014 (Newsletter Issue 14/14)
Non-Traditional Trademarks Soon Registrable
The latest amendment of the Trademark Act in Japan (“Amendment”) was announced on 14 May 2014. There are two important changes in the Amendment. First the amendments would allow new trademarks to be composed of sounds, colours, holograms, motions, or positions ("New Trademarks"). Second, there are three new groups, including non-profit organizations (NPO) that can hold regional collective marks (as reported in our Newsletter Issue 13/14). The Amendment with regards to the New Trademarks will likely enter into force on 1 April 2015.
Under the present law in Japan, registrations of trademarks are limited to characters, figures, signs and three-dimensional shapes, any combination thereof, or any combination thereof with colours. The New Trademarks introduced by the Amendment are sound marks, colour per se marks, hologram marks, motion marks, and position marks. Additionally, although touch marks, texture marks, taste marks, olfactory marks or combinations of New Trademarks (i.e. multimedia marks) have not been added so far, the new law delegates the power to add such marks to the Japanese administrative authority, the Ministry of Economy, Trade and Industries (“METI”). Therefore, no further amendments to the Trademark Act would be required to add these additional types of new trademarks.
The New Trademarks could be registered in Japan through the Madrid System as well.
Source: Hogan Lovells, Tokyo, Japan
09-02-2014 (Newsletter Issue 13/14)
More Entities Entitled to Register Regional Collective Trademarks
On 11 June 2014, the Japanese Patent Office (JPO) announced that a “Cabinet Order Specifying the Effective Date of Part of the Act of Partial Revision of the Patent Act” was made public.
The Cabinet Order specifies the effective date of revised provisions of Japan Trademark Act, Article 7-2 (i), (expansion of entities entitled to resister regional collective trademarks). It came into force on 1 August 2014.
According to the revision, in addition to cooperative associations covered by the existing Trademark Act, associations commerce and industry, chambers of commerce and industry, and specified non-profit corporations (NPO) were newly added as entities entitled to register “regional collective trademarks”.
07-22-2014 (Newsletter Issue 12/14)
Accession to Locarno Classification
Japan acceded to the Locarno Agreement, an international classification for industrial designs, on 24 June 2014. The said agreement will enter into force with respect to Japan on 24 September 2014.
04-17-2012 (Newsletter Issue 6/12)Revision of the Trademark PracticeThe Japanese Patent Office has revised the domestic rule for judging the similarity of goods and services according to the 10th edition of the Nice Classification.
Some example of the revision of the judgement of similarity of goods can be seen here
Source: Shiga International Patent Office, Japan
03-18-2011 (Newsletter Issue 5/11)Bail–out Measures The Japanese Patent Office (JPO) is informing about the following actions and bail-out measures due to the natural disaster that occured on March 11th, 2011 in Japan.
1. Requests for assistance to IP Offices in various countries/regions
JPO has made requests to all the IP Offices in countries and regions where applications were filled over the last three years from Japan (a total of 90 Offices and institutions) to take bail-out measures on legal period etc. for the Japanese applicants and agents who were not able to carry out the prescribed procedures or contact the Offices due to the Earthquake.
2. Collecting and disclosing information on bail-out measures
JPO has collected information on the bail-out measures for earthquake disasters available in IP Offices in various countries/regions. The information on bail-out measures announced by IP Offices in response to JPO’s request and the information is posted on the JPO website and updated as needed. Please refer to the link below for carrying out procedures regarding foreign applications.
The JPO is still accepting electronic applications as usual. Clients who are unable to file electronic applications due to the Earthquake can carry out the Emergency Procedures (excluding PCT international applications) in Japanese only.
For more information please click here
07-20-2009 (Newsletter Issue 1/09)
3D-Shapes Only Non-Traditional Trademarks Registrable Under Japanese Trademark Act
Three-dimensional shapes are the only non-traditional trademarks that can currently be registered under the Japanese Trademark Act. In practice, however, registration of three-dimensional shapes is often rejected by the Japanese Patent Office due to a lack of distinctiveness.
The following marks cannot be protected in Japan: invisible marks (like sounds, tastes, smells and textures), a color or combination of colors (e.g., colors without any shapes) and shapes of marks that are moving or changing (e.g., holograms and moving images).
Legal basis is the Trademark Act of 1959, last amendment in force since April 1, 2016.
Japan is a member of the Madrid Protocol.
The trademark law has been revised to permit registration of marks for retail or wholesale services (Law No. 55 of 2006, passed in the Diet in June of 2006 and effective as of April 1st, 2007).
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition pursuant to Section 2, Paragraph 1 (i) and (ii) of the Unfair Competition Prevention Law.
Japan follows the first-to-file system.
Nice classification, 11th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, graphics, symbols, three-dimensional forms, or any combination of the mentioned signs, colours and any combination of a colour and the mentioned combination of signs. Sounds, movements, holograms and position marks can be registered as well.
The following trademark types are registrable: trade marks, service marks, defensive marks and collective marks.
The application is filed at the JPO.
Multiple-class applications are possible.
An applicant who wishes to file a Japanese trademark application from overseas must be represented by a Japanese trademark attorney, who should be contacted before any steps regarding an application are taken.
A power of attorney is not required at the time of filing a new application. However, a power of attorney is required in some special situations, such as demanding an appeal and responding to the Notification Refusal with respect to the International Registration etc. The applicant has to file an original power of attorney executed by the applicant, however, it is not necessary to notarize or legalize the document.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and a substantial examination which includes an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The applicants expect to receive a first office action/decision to grant a trademark registration about 4 to 8 months following the filing date.
The trademark application is published in the Trademark Gazette (Shohyou Koukai Kouhou) before substantive examination, approximately one month after the filing date of the application. After registration, the trademark is again published in the Trademark Gazette (Shohyou Kouhou) approximately one month after issuance of the trademark registration certificate.
The opposition period is 2 months from publication date of the registration.
Details regarding the Opposition Period against designation of IR Mark
are available in our publication on this topic here
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months from the expiration date of the Trademark (Penalty imposed).
Further practical details are available in our publication on this topic here
Basically, the JPO does not request the applicants to file any evidence of use of the mark. However, if the applicants designate many categories of goods/services in one class, the applicant has to file (i) evidence of use of the mark in Japan or (ii) a declaration showing intent to use of the mark and a business plan in order to obtain registration.
After the Registration:
Beginning 3 years following the registration date, a registration will become vulnerable to non-use cancellation. If after the registration date, the trademark is not used by the owner or its licensee for a 3-consecutive-year period, the trademark can be cancelled by a non-use cancellation trial. It is important that the owner remains vigilant about using the mark properly in Japan.
Further practical details are available in our publication on this topic here
The official fee for filing an application is JPY 12,000.00 for first class and JPY 8,600 for each additional class. The official fee for filing a defensive application is JPY 24,000 and JPY 17,200 for each additional class. The registration fee is JPY 28,200 with effect of April 1, 2016. There is no publication fee required.
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here
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