Japanese Trademark FAQs
Other Japanese Trademark FAQs
Q.Does a license have to be recorded at the Japanese Patent Office?
Generally, it is not an obligation to record a license of a trademark at the JPO. However, an exclusive license (senyou shiyouken in Japanese) must be recorded at the JPO in order to be effective against third parties.
In Japan, there are two types of licenses, non-exclusive and exclusive. The exclusive license provides strong rights to the licensee compared with other countries. For example, an exclusive licensee can sue for infringement and recover damages. Furthermore, under the scope of the exclusive license, even the trademark owner is restricted in its use of the mark.
Q.What are the viable options when a trademark application is rejected?
An examiner’s rejection based on conflicting marks may be overcome by deleting goods from the goods description that are in conflict with the cited marks.
If it is not possible to delete conflicting goods, it is necessary to forcefully argue dissimilarity of the mark per se, possibly supported by past JPO or court decisions or other supporting documents.
If it appears to be difficult to overcome the rejection, one option is to file a non-use cancellation request against the cited registration, but only if three years have passed since the cited mark was registered.
Another option is to negotiate with the owner of the cited registration for either an assignment or a license of the cited registration. In Japan, mere consent from the registrant is not a basis for registration.
If your trademark application is rejected due to lack of inherent registrability but you desire to use the mark in Japan, you may need to make sure that the mark is really not registrable in Japan so that no one else is able to obtain registration of the mark. For that purpose, it is necessary to file an argument or even an appeal if your application is finally rejected. Meanwhile, if you can prove that your mark has acquired distinctiveness through long and extensive use, you may be able to obtain registration for the mark.
Q. Is marking of a registered trademark required in Japan?
It is not required to mark products or services that are the subject of a trademark registration, although it is highly recommended. Recently, as in western countries, R in circle has been used for registered marks and TM has been used for unregistered marks. False marking is punishable by imprisonment with labor not exceeding three years or to a fine not exceeding 3,000,000 yen.
Q.Is it compulsory to record a change of registrant's name and address in Japan?
It is not compulsory to record a change of registrant’s name and address in Japan. However, it is strongly advisable to record such changes once they occur for the following reasons:
i) It is often difficult to record the changes after a significant passage of time because it is hard to obtain the necessary documents; and
ii) Proper recordal of the changes will prevent the unnecessary citation of your prior registrations. The JPO takes a very strict attitude with regard to formality matters. Therefore, the JPO considers two entities with different names or addresses to be different even if they are the same entity.