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Before you apply
1. How long does it take for an application to be registered?
It usually takes from one and a half to two years to obtain a trademark registration if no office actions are issued. If an office action is issued, it may take an additional 6 months.
2. Is there a way to expedite examination?
Yes, it is possible to shorten the time prior to receiving the first action by taking advantage of the accelerated examination system for trademark applications. This system is useful if there is a possible infringement of your mark which has not yet been registered in Japan. If you have a corresponding trademark application pending in a foreign country, you are qualified to apply for accelerated examination. You can file the request when you file the application or even after you have filed the application. However, you must explain the reasons for expediting the examination along with any related documentation and the results of a trademark search.
3. What is registrable as a trademark in Japan?
Registrable marks must be distinctive. Three dimensional marks are registrable. However, sound or smell is not registrable in Japan.
Marks that are not considered as distinctive include common names of goods, very simple marks including two initials represented in a simple common design, descriptive marks (i.e., marks indicating in a common way, the origin, place of sale, quality, raw materials, use, quantity, etc).
However, it may be possible to obtain registration of the above mentioned marks if the applicant can establish that consumers recognize the goods or services as being connected with its business as a result of long and extensive use of the mark.
4. Are three-dimensional trademarks allowed in Japan?
Since 1997 three-dimensional trademarks have been registrable in Japan. However, the Japanese Patent Office has been very strict in applying the examination standards especially to marks that relate to the shape of the designated goods or their packages, or to the shape of the goods used in order to offer the designated services. Generally, if the shape can be recognized as no more than the shape of the designated goods (including their packages) or the goods used in connection with offering the designated services, the shape cannot be registered as a three dimensional trademark unless it has acquired distinctiveness through long and extensive use.
For example, it is very difficult to register a fanciful shape of a beverage bottle if the bottle is still recognizable as a bottle. In this case, we often recommend seeking design protection.
5. Is proof of use required to obtain trademark registration?
Use is not required to obtain a trademark registration. Proof of use is also not required at the time of renewal of registration. Proof of use is, however, necessary if a non-use cancellation request is filed against a registration which is more than three years old.6. What is the non-use cancellation system in Japan?
If a registered mark is not used for more than three years in Japan, the registration is vulnerable to a third party's cancellation request based on non-use. Any person may file a non-use cancellation request. The burden of proof of use is on the registrant. A non-use cancellation request may be filed with respect to all of the designated goods or a part of the goods in the registration. Under this provision, use of the mark within the three month period prior to the filing of the cancellation request is not a defense if the person requesting cancellation can prove that the registrant knew the cancellation proceeding was likely to be filed. Therefore, it is possible to seek an assignment of a trademark from a trademark owner who has not been using his mark and if such an assignmentcannot be negotiated within 3 mos, to file the cancellation request.7. Are marks well-known outside Japan protectable in Japan?
In order to strengthen protection of famous marks, Art. 4-1-19 was introduced in 1997. This law expressly states that registration of a trademark right shall not be granted when the mark has been applied for with an unjust intention (e.g., intention to gain unjust profits or to do damage to another person). This provision allows protection of trademarks that have high recognition outside Japan, regardless of the level of recognition within Japan.
Our firm has successfully used this provision to prevent registration of several marks that are similar to the title of our foreign client's women's magazine, which is well known in several foreign countries, but is less known in Japan.
8. Is it possible to prevent others from using marks identical to or similar with a trademark in a pending application?
No. In Japan, trademark rights become effective once the applied for mark is registered. Unlike in the U.S., mere use of the mark will not provide any enforceable rights against third party use. In the case of unregistered well-known marks, it may be possible to take legal action against a third party's use based on Unfair Competition Law. Otherwise, you can apply for an accelerated examination in order to obtain registration earlier.
9. What is the term and how can the mark be renewed?
The term of a trademark right is 10 years from the date of registration. The term can be renewed for another 10 years, but a request for renewal must be filed within six months before the term expires. Even after expiration, a request for renewal may be accepted by paying an extra fee, if the request is filed within six months after the expiration.
The renewal fee may be paid in either a lump sum at the time of the renewal request or in two installments. The first installment (which is about 75% of the lump sum amount) must be paid at the time of the renewal request and the second installment must be paid no later than 5 years prior to expiration of the trademark right. The total cost of the installment option is about 40% higher than the lump sum option. However, if the owner of a trademark right plans to use the trademark on short life cycle goods, payment in installments may be a good option because the owner can decide whether to renew the trademark right at the time of the second payment.
10. What are the forms of trademark registration specified under the Japanese Trademark Law?
In Japan, in addition to regular trademark registrations, collective mark registrations, defensive mark registrations are available. A collective mark is one used or intended to be used by members of an aggregate corporation,industrial business cooperative association and other associations.
A defensive mark registration can be obtained for a mark that is identical with one's own well-known registered mark for goods or services other than those registered to prevent others from using it for such goods or services that may cause confusion among the public. For obtaining a defensive mark registration, no intention to use the mark is required.
In Japan, there are no provisions for certification mark registrations. Associated mark registrations, which are registrations of similar marks for similar goods or services by the same party, have been abolished.