Home to famous Pokemon and Nintendo, Japan can boast of world-class trademarks. But although Japan is a member of most international intellectual property treaties (such as Paris Convention, Nice Agreement, and Madrid Protocol), there are still some aspects that you might consider when filing your trademark in Japan. We covered some important parts for you to consider courtesy of our partners Ryuka firm, an IP law firm based in Japan.
- Filing trademark application
- Registrable trademarks: You can register trademarks that have the following properties: marks with color, movement, and position; colors per se; sounds; and even holograms. However smell as a trademark is not registrable.
- “Katakana” expressions: Katakana translations have similar scopes and protection in international firms with English trade names. But when another competing trademark has a similar alphabetical outlook (spelling), but not in meaning or sound, the Katakana version is not similar to the competing mark, and vice versa.
- Katakana Trademark or Alphabetical Trademark -It depends on how people see. For most, the Katakana often used. But if the image is from a foreign country, the Alphabetical TMs are more often used. But most importantly, it should be filed in both.
- Any slight intent to use sufficient for filing and registering trademark – In the U.S entitling designated more goods and added goods generally suggested not a priority. However, Japan class divided into subclasses. For example, the subclasses > 22 (in a class) required to declare an intent to use a simple business plan. This form is necessary to be sent.
- Prior use of the unregistered trademark does not provide exclusive rights – you must use it for a fair purpose and used without termination.
- If classes are improper, a new class cannot be added to Madrid application – Japan has different classes and some goods fall into this.
- Japan Patent Office (JPO) is very strict regarding the description of goods/services. The international standard of goods/services is sometimes rejected. It was advised to choose from the JPO’s list of “Acceptable Descriptions” of the goods/services, which can be viewed in English via www.ryuka.com/goods. But, please note that recent updates to the JPO list might not always be reflected in the English version.
- If goods/services are not found in the “Acceptable Descriptions” when submitting pamphlets and printouts from a website, a detailed explanation should be provided. Also, the examiner will suggest a description. But, if the examiner’s suggestion is not acceptable, detailed information about the goods/services should be provided with appropriate description of it.
- Goods/Services can only be limited after the application is filed – In broadening the goods/services, it is necessary to include the broader description of the goods/services in the original application to support further limitation.
- No POA (Power of Attorney) nor other signed document is required for filing an application – It only required or needed in the following: Trademark, classes and goods/services that have the certified copy of the priority application that was due within three months of filing date; name and address of applicant and priority information (six months).
- Within a half year, a substantive examination is typically carried out. The applicant must prove that the use of the trademark and a counterpart application is substantially prepared and filed abroad.
- The similarity analyzed differently at the JPO – The term “Trademarks” in the Japanese language was largely based on phonetics which often differ from the true pronunciation. For example, “r” and “I” pronounced the same in Japan as are “ce” and “se”. While in terms of the goods/services, the JPO mechanically consider the goods and services similar to whether they fall into the same subclass.
- Non-use cancellation can easily be filed in Japan: The requester has no initial burden of proof because cancellation is routinely filed in Japan. Also, the trademark owner must prove the used for any challenged goods in the last three years or make a justifiable reason for non-use of it. If the challenged goods/services are not proved, they are canceled. If the cited trademark is maintained, the applicant can still change the designated goods/services at the JPO (if Madrid, at WIPO).
- Other typical grounds of refusal includes : lack of distinctiveness, the trademark means or implies a product/service type, but the designated goods/services are not limited to such product/service; the similar trademark is famous in Japan or abroad; and/or trademark contains full or stage name of the other person or its famous abbreviation.
- For overcoming lack of distinctiveness, for example, there is a secondary meaning through long and extensive use. Also, a unique concept is being implied by the trademark. Then, it does not indicate the quality of goods/services to consider general consumer perceptions. To ensure the trademark not registered by a third party, an appeal and confirm rejection will need. The other examination will refer these appeal decisions.
3. After registration
- Any party may file opposition within two months of granting the trademark.There are three or five trial examiners involved . If there is a reason for cancellation found, the trademark owner may respond. If canceled, an appeal must be filed to the High Court.
- Trademark can be assigned for a portion of goods/ services.
- In requesting a non-use cancellation, it’s okay to use the licensee. Also, the following differences of trademark is acceptable: there are the same characters in a different style, and/or different characters with the same pronunciation and concept. For example, a trademark is registered in Roman Letters but in actual use, it is in Japanese Katakana Syllables.
- Trademark registration can be renewed every 10 years within the 6 months before expiration and 6 months after expiration with a 100% surcharge.
This ended the important parts to note of about the trademark practices in Japan. If there are any inquiries, you can visit ryuka.com.jp.