FAQ

Q1: What can be a “Trademark” in Japan?

A1: “Trademark” can be characters, figures, symbols, three-dimensional shapes, or any combination thereof, or any combination thereof and colors, that is:

• used in relation to goods by a person who manufactures, certifies and assigns such goods in the course of trade; or
• used for services by a person who provides, certifies such service in the course of trade.

Therefore, sounds or smells cannot be a “Trademark”.

Q2: Is “registration” necessary for protection of a trademark in Japan?

A2: Yes, the registration is necessary. Under the Japanese Trademark Law, a trademark is protected only after the trademark is registered at the Patent Office. Namely, even if the trademark has been used in Japan, the owner of the trademark cannot request injunction to prevent the use of the mark by a third party under the Trademark Law. However, such a request may be possible under Unfair Competition Prevention Law if the trademark has become well known in Japan.

Q3: Is “use” in Japan necessary for registration of the trademark?

A3: No, “use” is not required for registration. However, intent to use is necessary under the Trademark Law, although there is no need to submit a statement thereof. If a registered trademark has not been used for three years, a third party may seek to have the right revoked by demanding a cancellation trial at the JPO.

Q4: How is a well-known trademark protected in Japan?

A4: If a trademark is well known in Japan in relation to goods/services, a third party cannot be allowed to register the trademark that is identical with or similar to the well-known trademark. However, as mentioned above, the owner of the well-known trademark cannot request injunction to prevent the use of the mark by a third partyunder the Trademark Law, unless the well-known mark is registered.

Q5: What type of shape can be registered as 3D trademark?

A5: A three-dimensional shape per se must be distinctive. Namely, a three-dimensional trademark solely indicating the shape of goods or their packaging in a common way (e.g., the shape of bottle for whiskey) is not considered to have distinctiveness. In addition, a three-dimensional trademark, consisting solely of the shape of the goods or their packaging with the shape being indispensable to secure the functions of the goods or their packaging, is not to be registered.

Q1: What do I need to do to obtain trademark registration?

A1: Japan adopts the substantive examination system for trademark registrations. Therefore, you must file an application for trademark registration at the Patent Office, identifying the trademark and the designated goods/services. Multiple-class applications are accepted and cheaper than a collection of single class applications, but a multiple-class application sometimes causes delay in the examination.

If a trademark application does not satisfy the requirements of the trademark registration, such as distinctiveness, first to file rule, the application will not be registered. Usually, we suggest a search before filing an application to determine whether there are any prior trademark registrations that are similar to or identical with your trademark.

Q2: I have already obtained a trademark right in my home country.Can I enjoy the priority benefit from such a right in obtaining a trademark right in Japan?

A2: If your home country is a party to the Paris Convention, you may file an application claiming priority based on the application filed in your country within six months of the filing date.

If a priority is claimed effectively, examination of a corresponding Japanese trademark application will be made based on the filing date of your home country application.

Q1: How long is a trademark right protected?

A1: Trademark right may be protected indefinitely as long as the trademark owner desires. However, since the term of registration for trademark right is 10 years, the owner of the registration must renew it before the expiration of the term. To maintain the trademark right indefinitely, the trademark right owner needs to renew it every 10 years.

Q2: Are there any way to revoke a registered trademark?

A2: Yes.
(1) Opposition

Within two months of the publication date of the registration, any person can demand an opposition against the trademark registration.

(2) Invalidation Trial

If the opposition was not successful, you can demand an invalidation trial at any time after the registration. However, only those who have interests in the trademark registration may demand invalidation.

(3) Cancellation Trial

If the registered trademark has not been used over the past three years, any person can request a cancellation trial against the registration. This trial is sometimes effective when the registered trademark is cited as a prior registration against your pending application.

Q3: If the registered trademark has become famous in Japan, is there any way to protect the registered mark in addition to the trademark registration?

A3: Yes. If your registered mark has become famous in Japan, you may obtain Defensive Mark protection, which expands the scope of your trademark right to goods/services beyond those covered by the trademark registration. In addition, injunctions under the Unfair Competition Law may be possible.