First-to-file, first-to-register system
Japanese Patent Law follows the “principle of registration”. In other words, even if a trademark is currently not in use (be it in Japan or overseas), it can be registered if the applicant intends to use it in the future and if certain conditions are met.
Accordingly, it is important, when planning an extension of business or exports into Japan, to study beforehand the possibility to file the trademarks intended for use on this occasion.
The “principle of use” can be perceived as the opposite to the principle of registration. In a system following the principle of use, a trademark cannot be registered if it is not currently in use.
Another existing system is the “first-to-file system”. Under this system, in the case that two applications for identical or similar trademarks designating identical or similar goods or services are in competition against each other, the trademark filed earlier will be registered in priority.
Defensive mark system
In principle, a trademark right can be enforced only against the use of a trademark identical or similar to the registered trademark in Designated goods or services identical or similar to the registered trademark’s goods or services. However, in the case of very famous trademarks, a risk of confusion exists even with trademarks in dissimilar goods or services, which can result in damages to the goodwill of the owner of the trademark.
Japanese Trademark Law has therefore implemented the Defensive mark system, designed to protect the goodwill of the owner of a famous trademark by extending, under certain conditions, the scope of the trademark right to dissimilar goods or services as well.
It must be noted that the fees related to filing and registration are slightly different in the case of an application for a defensive mark.
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Japanese Trademark Registration No. 4372691(extract from the JPO Report on famous Japanese trademarks)
Owner of the right: NTT DOCOMO, INC..
Classes: International classification 35 36 38 39 41 42
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Japanese Trademark Registration No. 4372691 Defensive mark No. 1
Owner of the right: NTT DOCOMO, INC.
Classes: International classification 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 42
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Collective trademarks
Trademarks belonging to the members of a business group, being collectively used by the said members and indicating the common nature of the goods or services related to the business activities of the group are called “collective trademarks”.
Due to their specificity compared to other trademarks, special conditions must be met in order to obtain the registration of a trademark application as a collective trademark. For example, organizations such as foundations, corporations or Chambers of Commerce and Industry are not eligible for the registration of collective trademarks.
Regional collective trademarks
Trademarks based on a place name or a product or service name and having reached a certain level of fame in a distinct area can, under certain conditions, be registered by groups as “regional collective trademarks”.
The registration of a “regional collective trademark” makes it possible to take measures against counterfeit goods or companies trying to take advantage of the notoriety of the trademark. It is also a good way to make both the product (or the service) and the region better known to the public and more attractive, while emphasizing the distinct features of the product against similar products.
Retail and wholesale service trademarks
On April 1, 2007, the Japan Patent Office introduced a new class of Designated services related to the sale of goods, thus enabling retailers and wholesalers (hereafter referred to as “retailers”) to register the trademarks they use in their business activity.
Retailers can therefore protect under the “Retailer and wholesaler service trademark system” the trademarks that they use for example on shop signs, shopping carts, shopping bags, salesclerks’ name tags, receipts, advertising material and so on.
Thanks to this system, businesses active in domains that until now could not enjoy a satisfactory protection of their trademark rights, such as distribution, mail-order selling or Internet selling, can obtain trademarks rights in this specific domain and thus protect their goodwill at a low cost.
Description of the early examination system
In the case of a trademark application for which it is necessary to obtain urgently a grant of right, it is possible to request the Japan Patent Office (JPO) to begin the examination process earlier than usual – provided that certain conditions are met.
These conditions may be detailed as follows.
(1) The applicant or the licensee is currently using or is sufficiently advanced in his/her preparation to use the trademark related to the application in the designated goods and/or designated services, and the early registration of the application presents a character of urgency.
* It is necessary to meet one of the following requirements in order to be able to state that the registration of the trademark application presents a character of urgency:
a) It has been made clear that, without the consent of the applicant, a third party is currently using or is sufficiently advanced in his/her preparation to use, in the same designated goods and/or services or in similar designated goods and/or services, the trademark related to the application or a trademark similar to the trademark related to the application
b) A warning from a third party regarding the use of the trademark related to the application has been received
c) A request for use of the trademark related to the application has been made by a third party
d) The applicant has filed an application for the trademark related to the present application with a patent office or a governmental body other than the JPO
2) The applicant or the licensee is currently using or is sufficiently advanced in his/her preparation to use the trademark related to the application in all the designated goods and/or services of the application.
* In the case that the designated goods and/or services of the application include goods and/or services in which the trademark is not being used or goods and/or services in which the level of preparation to use the trademark cannot be recognized as sufficient, it is necessary to file an amendment erasing the said designated goods and/or services before or at the time of filing the request for early examination.
Opposition to the registration
In the case that a trademark that should not have been registered in the first place has been registered, it is possible to request a re-examination of the case by filing an Opposition to the registration. The Opposition must be filed within two months after the date of publication of the trademark in the Japanese Trademark Gazette. Once this deadline is passed, it is necessary to file a Trial for invalidation in order to obtain a revision of a mistaken registration.
Trial for Invalidation
When a trademark that shouldn’t have been registered has been mistakenly registered or when it subsequently appears that a trademark was unfairly registered, it is possible to invalidate the registered trademark. The trial procedure that allows for a retroactive dismissal of the trademark right is called Trial for Invalidation.
Trial for Rescission
If, for reasons that appeared after registration, it becomes inappropriate to maintain a trademark that had been originally registered without defect in the examination process, it is possible to dismiss the trademark by filing a Trial for Rescission. There are five types of Trial for Rescission, as described below.
●Trial for Rescission due to lack of use (Article 50 of the Japan Trademark Act)
A Trial for Rescission due to lack of use can be filed in order to request the rescission of the registration in the case that neither the owner of the trademark right nor the exclusive licensee nor a non-exclusive licensee have used the registered trademark in Japan in the three years preceding the filing of the Trial for Rescission.
●Trial for Rescission due to unfair use by the owner of the right (Article 51 of the Japan Trademark Act)
A Trial for Rescission due to unfair use by the owner of the right can be filed in order to request the rescission of the registration in the case that the owner of the right has deliberately attempted to cause confusion with the product or service of a third party through the use of the registered trademark in connection with similar products or services.
●Trial for Rescission due to unfair use by the licensee (Article 53 of the Japan Trademark Act)
Japanese Trademark Law imposes at the same time a duty of fair use of the registered trademark to the licensee and a duty of control of the licensee to the owner of the right. Accordingly, a Trial for Rescission due to unfair use by the licensee can be filed in order to request the rescission of the registration in case of violation of the said duty of control.
●Trial for Rescission due to unfair use by the owner of the right following a transfer of the right (Article 52-2 of the Japan Trademark Act)
A Trial for Rescission due to unfair use by the owner of the right following a transfer of the right can be filed in order to request the rescission of the registration when, as a result of a transfer of the right, the use of the registered trademark by the separate owners of the right is causing confusion in the mind of the consumer. This serves as a protective measure against the confusion that can appear with regards to the source of a trademark following a transfer of the right.
●Trial for Rescission due to unfair registration by a representative (for example by an outlet) (Article 53-2 of the Japan Trademark Act)
A Trial for Rescission due to unfair registration by a representative can be filed when a representative has registered the trademark without the consent of the entity entitled to the rights related to the trademark.
OSAKA 
