- Introduction
“2007 Partial Revision of Design and Related Industrial Property Laws” has been approved by the Japan Diet. Included in this revision is a provision to allow the registration of service marks designating “retail sales and wholesale.”
As of June, 2006, examination standards and procedures have not been worked out. Nonetheless, in view of the interest in the area, we would like to provide some preliminary comments on trademarks for “retail sales and wholesale” services.
- Background
Until now, retail services such as bringing a variety of products together and displaying them was considered to be connected to the sales of products and did not fall under the category of “service” according to the trademark law. As a result, trademarks for retailers were protected as “product marks” because the products were being “handed over.”
However, this approach was not very practical. For example, the retailer’s trademarks are used for advertising banners in the store, uniforms of the employees, shopping carts, and shopping bags provided at the cashier. Do consumers view these trademarks as identifying the specific place at which the product originated? Instead, it is more natural to consider them as marks that stand for the retailer’s service itself, such as creative displays and selections of goods for the convenience of consumers. Furthermore, since the in-store trademarks uses described above are not related directly to a specific product, it is questionable whether these trademarks are really used as a “product mark.” Also, there is a growing world-wide recognition that retailing is a “service.”
These factors led the inclusion of language to protect the retail sales service as a “designated service” in the “2007 Partial Revision of Design and Related Industrial Property Laws.”
- Contents of the Revision
(1) Time of enforcement
Although the date on which the law will come into force has not been decided, it will be within one year of the date on which it passed the Diet. Nonetheless, it is widely predicted that it will come into force on April 1, 2007.
(2) Indication of a “designated service”
Although it is most certain that this service will fall under Class 35, the specific indication is yet to be determined. It is likely that indications such as “Provision of retail sales and wholesale of ITEM for the convenience of customers,” or “display and selection of ITEM” will be used. Since “Retail Store Service” is permitted in the international registration under the Madrid Protocol, we hope that it will not be an unusual indication by international standards.
(3) Relations to the conventional “product mark”
The “product mark” and “retail sales service mark” will almost certainly be cross-searched. We will provide further on the scope of the cross-search when it becomes available.
(4) Transition measures
All “retail sales service mark” applications filed during the three months following the date on which the law comes into force will share the same application date. (The applications listing “retail sales service” that are filed during this transition period will be called “special applications for retail sales service marks.”)
As a result of this special application procedure, it is likely that a number of marks will be found similar to one another and they will have the same application date. Well-known marks filed by their proprietors will be given a higher priority (Art. 4, Sec. (1)(x)). If similar marks are not well known, an order for consultation will be issued. The applications for the trademarks that are actually used can claim a “special provision based on the usage” and will be given a high priority. If more than one of the similar applications can claim the “special provision based on the usage,” or if none of the similar applications can claim the special provision, and consultations fail, registration will be determined by lot(supplementary provisions 7 and 8.)
Furthermore, existing retailers can continue to use their marks even if another party registers the mark after the revision comes into force.
As mentioned above, a great many details have yet to be worked out. We will provide further details on this matter as more details are disclosed.
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