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Overview of New Japanese Trademark System for Retail or Wholesale Services
Due to the revision of the Japanese Trademark Act effective April 1, 2007, more effective protection has been extended to marks for retail or wholesale services that are indicated in ways that have indirect relevance to specific goods.
Before April 1, 2007, protection for marks in respect of services provided by retailers or wholesalers used in ways that had indirect relevance to goods (e.g., signboards for shops, entrance mats, shopping carts, and cash register’s plastic bags) were unclear and insufficient. After April 1, 2007, marks used for services including gathering together a variety of goods, providing explanations to customers, arranging goods to enable customers to conveniently view the goods, mail order services, catalog sales, and sales through televised shopping programs or via the Internet have come to be protected as service marks. As a result, marks used on shop signboards, entrance mats, shopping carts, and cash register’s plastic bags are now deemed as subject matter for protection under the revised Trademark Act.
Please note that marks used in ways that have direct relevance to specific goods, e.g., marks indicated on packaging, wrapping paper, containers, tags, and catalogues having clear relevance to the goods, should seek protection in each of the corresponding classes of goods.
An example of acceptable description is “retail services or wholesale services for XX (specify goods to be handled)”. If a wide variety of specific retail services are listed in a trademark application, and if more than eight similarity codes (goods or services group) are assigned within a single class, submission of proof of use or intention of use will be required by the examiner. This rule also applies to cases (i) where an individual has designated “general retail services”; and (ii) where an examiner could not finally determine that an applicant as a legal entity conducts “general retail services” as described in an application.
Please also note that the examiner will cross-search for prior marks that have been registered or applied for in areas of designated goods that have been deemed to be similar to the goods traded under retail services as listed in the application. For example, if there is a prior registered mark with respect to “clothing (Class 25)”, an application with respect to “retail services for clothing (Class 35)” will be rejected due to that prior registered mark. Therefore, search costs for retail marks will inevitably increase as searches must be conducted for both retail services as well as goods.