TRADEMARK:SOEI Patent & Law Firm

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

“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.

 

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

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 be distinctive. 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.

 

3: In Japan, can sounds, smells, and position marks be registered as trademarks?

Sounds, smells, and position marks cannot currently be registered as trademarks but the JPO is considering of expanding the range of registerable trademarks to include sounds and position marks. Thus, there is a possibility that that they will be registerable in the future.

 

4: In Japan, can trademarks be registered for retail services?

Yes. As of April 1, 2007, trademarks designating retail service for consumers can be registered. When filing an application for a trademark covering retail service, the applicant must designate the service related to retail sales in Class 35.

 

5: Is “registration” necessary to protect a trademark in Japan?

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 obtain an injunction to prevent the use of the mark by a third party under the Trademark Law. However, it may be possible to obtain an injunction under the Unfair Competition Prevention Law if the trademark has become well known in Japan.

 

6: Is “use” in Japan necessary for registration of a trademark?

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.

 

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

Japan has a 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 slows down 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.

 

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

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

 

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

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.

 

10: Is there a letter of consent system in Japan?

No. The Examiner will ignore a letter of consent.

 

11: Is there a disclaimer system?

No. There are discussions about the possible introduction of disclaimer system, but no decision has been made yet.