Japan Trademark Introduction
Trademark protection rule
Japan’s trademark law follows the “First-to-file” rule, which indicates that protection will be given to the trademark that is registered earlier vis-a-vis those who come late to file in the same trademark class, even though he/she may have used the mark for a while .
Under the principle of territoriality, trademark could only be protected in registered regions. Hence, protection is legally valid and limited only within Japan if the applicants register his/her trademark there, and vice versa. Businesses that fail to register their trademark in Japan will have very limited legal protection in Japan against trademark infringement. Corporation should apply overseas trademark if they want to expand their business, so as to avoid the infringement of trademark against or by a third party.
Renewal of registration
Noted that trademark will be removed from registration if applicants do not apply for renewals of registration within a specific period.
Japan Trademark Types
|Distinguish its own goods/services from others|
|/||Distinguish the goods or services provided by a juridical person (e.g. corporations, members of an association or any other groups) from non-members|
|Regional Collective Trademark|
|Regional collective trademark has been implemented in Japan starting from 2006, which allows trademark that consist of regional and product names to be accepted for registration.|
|Defensive trademark creates a wider protection for a well-known trademark, which can prohibit a third party from using or registering a famous for goods and services but dissimilar to those of famous trademark.|
(Sources：Japan Patent Office)
Japan Trademark Application Procedure
Application procedure normally takes 8 – 12 months, with 2 months of publication for opposition after the issuance of the acceptance notice.
Below is the procedure of applying Japan trademark,
Japan Trademark FAQ
Japan Trademark Application
Q2：What do I need when I apply the trademark?
1. Application form：Should clearly state the basic information of applicants, including but not limited to name, address, nationality etc.
2. Classes of goods and services applied
4. Copies of ID documents (Individual application) / BR certificate (Corporation application)
Japan Trademark Objection
Q2：Why my trademark is objected by JPO?
A2：Reasons include (1) High similarity with another registered trademark, (2) Violation of trademark law, (3) Indistinctive characteristics, (4)Conflict with prior rights etc.
Q3：What should I do if the trademark is objected by JPO?
A3： Applicant should submit a written argument to JPO within 3 months from the receipt of notification, against a notification of reasons for refusal. JPO will made the decision of refusal if applicant’s written argument is not accepted. Applicant can appeal examination to JPO against decision of refusal. Should you have any inquiries about appealing examination, please feel free to contact our IP consultant anytime.
Q4：How much for appealing examination?
A4：Appealing fee varies based on the case situation. Should you have any inquiries about appealing examination, please feel free to contact our IP consultant anytime.
Japan Trademark Opposition
Q3：What should I do if my trademark is opposed by a third party?
A3：Overseas applicants can submit a written argument within 3-months from the notification of reasons for revocation. Should you have any inquiries about trademark opposition or procedure, please feel free to contact our IP consultant.
Q4：What if I do not submit written argument to JPO when my trademark is opposed by a third party?
A4：Applicant will be treated as withdrawal of application if he/she does not submit the materials to JPO within specific periods. JPO will make the decision of revocation then.
Q5：If I failed to object a trademark, can I apply trademark opposition with the same reason again?
A5：Anyone is not allowed to apply the trademark opposition with the same evidence or same reason after the decision is made.
Q6：What should I submit if I want to oppose a trademark?
A6：Applicant has to submit the following documents, including but not limited to:
1. Opposition form
2. Information of opposed trademark
3. Reason of opposition with clear evidence