TRADEMARK:SOEI Patent & Law Firm

1: When filing a trademark application in Japan, is it better to file an international application or file it directly?

If the applicant wishes to manage the renewal procedures after the registration collectively, it is more convenient and less expensive to file the application through international application.

However, the preferred terminology used to designate the goods/services is strictly limited in Japan and the terminology for the goods/services (especially a new service) in one country may be different from the preferred terminology in Japan. Thus, the applicant may be able to file an application using terminology in accord with the Japanese practice by filing the application directly.

2: Can applicants use the Class Headings in the Nice International Classification to designate goods/services directly in Japan?

No. the requirements for the indications of designated goods or services are very strict in Japan and the indications in the Class Headings in the Nice international classification cannot be directly designated. The following linkhttp://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/kijun/kijun2/ruiji_kijun9_eng.htmto the JPO homepage provides links to the Examination Guideline and lists of the preferred terminology for goods/services in Japanese and English. (Click on the links in the table to reach the PDF document)

3: How are similar goods/services identified?

The Examiner identifies similarities in designated goods/services by using the table of “similar group code” prepared by the JPO. Applications are filed in accordance with the Nice International Classification, and these “similar group codes,” which supplement the Nice International Classification, are used to determine if the goods/services designated in the present application are similar to those designated in another application or registration. Each of the goods/services designated in the present application is assigned a similar group code(s) using this table, and, if a good/service designated in the present application has the same similar group code as a good/service designated in a prior application or registration, the examiner will always deem the goods/services having the same similar group code to be similar to each other. For example, vegetable juice in Class 32, Copra in Class 31 and almond paste in Class 30 all have the same similar group code (30F04). Thus, if the present application designates vegetable juice in Class 32 and the prior mark designates almond paste in Class 30, the Examiner will deem the goods designated in the two marks to be similar.

4: Is there restrictions on filing a trademark application for an unused mark?

Yes. If the number of similar group codes for the designated goods/services in one class exceeds seven, the applicant must provide proof of use or intent to use the mark with respect to all the goods/services designated in the class. If such documents cannot be submitted, the applicant must file amendments to reduce number of similar group codes for the designated goods/services in the class to seven or less. This rule is in force since April 1, 2007.

5: I have already obtained a trademark right in my home country. Can I enjoy the priority benefit from this right when applying for a trademark in Japan?

If your home country is a party to the Paris Convention, the TRIPS Agreement or the Trademark Law Treaty, you may file an application claiming priority based on the application filed in your country within six months of the filing date.
If the JPO accepts the priority claim, examination of the corresponding Japanese trademark application will be made based on the filing date of the home country application.