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Those of you in the apparel industry are probably familiar with trademarks. According to statistics on the number of trademark applications published by the Japan Patent Office, in the 98,000 years from XNUMX to XNUMX, an astonishing XNUMX trademarks were applied for in the clothing category (Class XNUMX).
This is the third highest number of applications in the product field, following Class 9 (various machinery and equipment/software-related), which ranked first, and Class 30 (confectionery/foodstuffs-related), which ranked second. These figures show how proactively people in the apparel industry are filing trademark applications.
Now, a large number of applications means that a large number of brands are being created, so it is an industry in which there is a high risk of committing trademark infringement, of someone else using a similar trademark, or of poor quality imitations appearing.
”HARAKENZO more " We have created this page to support those in the apparel industry and to let them know about the "know-how" of trademark registration that is specific to the industry.
Have you carefully selected your categories?
Well, when we talk about products in the apparel industry, the most common is "clothing." From the top of the body, there are "hats," "clothes," "belts," "pants," and "shoes," and for innerwear, there are "underwear" and "socks." The products we wear are diverse.
All of these products belong to Class 25. So what about the following products that are also worn or carried around?
- "sunglasses"
- "bag"
- "wallet"
- "Various wearable accessories"
- "clock"
- "business card holder"
- "umbrella"
None of these belong to Class 25, but to different categories. In other words, even if a store mainly sells clothing, depending on the type of products it sells, it may be necessary to register products other than those in Class 25. Therefore, it is important to carefully consider the contents of the products that are actually being sold and the products that are expected to be sold in the future, and to carefully select the necessary categories.
For example, the products "clothing" and "bags" are presumed to be dissimilar products, and identical or similar trademarks may be registered by different rights holders.
For example, if your company registers a trademark only for "clothing," your company's product "bags" that you sell with the same trademark may accidentally adopt the same trademark and infringe on the trademark rights (designated product: bags) of another person who has obtained a trademark registration.
1) From the perspective of fast track examination and accelerated examination
As of October 2018, 10, a fast track examination system has been introduced for trademark examination.
This refers to an examination procedure in which, for all trademark registration applications that specify only the goods and services (hereinafter referred to as "standards, etc.") listed in the "Similar Goods and Services Examination Guidelines," "Trademark Law Enforcement Regulations," or "International Classification of Goods and Services (Nice Classification)" and have not been amended, the initial examination results will be notified approximately two months earlier than the normal examination procedure.
In addition, in the case of a trademark registration application that specifies only the above-mentioned criteria and that proves the use or preparation to use the trademark, the accelerated examination system can be used, which significantly shortens the examination period to approximately 1.8 months.
It is believed that apparel industry-related products and services can be sufficiently covered by the products listed in the similar products and services examination criteria, and therefore the fast track examination and accelerated examination are available.Affinityis considered to be very high.
The following designated goods and services are all listed as they are in the similar goods and services examination criteria.
Similar products and services examination criteria
- Class 9
"Sunglasses" "Smartphone cases" - Class 14
"Watches," "key chains," and "decorations" - Class 18
"Bags," "wallets," "business card holders," "umbrellas" - Class 25
"Hats," "Clothes," "Belts," "Pants," "Underwear," "Socks," "Shoes" - Class 35
"Provision of benefits to customers in the retail or wholesale business of footwear"
"Provision of benefits to customers in the retail or wholesale business of bags and pouches"
"Providing convenience to customers in the retail or wholesale business of personal items"
In addition, those in the apparel industry likely hold numerous exhibitions each season throughout the year. If you plan to announce a new product with a new name at one of these exhibitions and there is a short period until the exhibition, you can reduce the risk of trademark infringement by other companies in the same industry by taking advantage of the accelerated examination system, under which the first examination results are available in approximately 1.8 months from the date of application.
② Active display of products and services
Although the fast track and accelerated examination procedures mentioned above will no longer be available, there may be cases where products that focus on materials or products that are specialized for a particular purpose need to be more proactively labeled.
Although these are merely examples, many of the goods and services listed below have been examined and adopted, and therefore no rejection reasons have been issued due to the goods and services being unclear (as of April 2019, 4).
Name of the product or service adopted in the examination
- Class 9
"Sunglasses containers," "glasses and sunglasses cases," and "smartphone straps"
"Calf leather smartphone case or cover" - Class 18
"Baby carriers," "eco bags," and "environmentally friendly shopping bags" - Class 25
"Jeans clothing," "Denim clothing and jeans clothing," and "Rain jackets"
"Water-repellent clothing" "Clothing made of down" - Class 35
"Planning a character goods manufacturing business"
"Providing benefits to customers in the retail or wholesale business of sunglasses"
"Providing benefits to customers in the retail or wholesale business of seals and stickers"
"Providing bargain information to consumers"
"Management advice regarding franchise stores"
Therefore, those who handle a wide range of products need to carefully select their categories and products.”HARAKENZO more " We are always available to answer your questions, so please feel free to contact us.
Have you registered a trademark for retail services etc.?
As some of you may already know, since April 2007 it has been possible to register trademarks relating to retail and other services in Japan.
This protects trademarks used by retailers and wholesalers, and specific industries in which many trademark applications are filed include those operating retail businesses such as the apparel industry, as well as convenience stores, supermarkets, and bookstores.
Retail services, etc., belong to Class 3, the same category as advertising services, etc., and Class XNUMX was the category for which applications were filed most frequently in the XNUMX years from XNUMX to XNUMX (and was in third place when the goods category was also included).
As such, Class 35 has a large number of applications, but when filing an application for retail services, if the application specifies retail services that handle too many different products, the Japan Patent Office will notify you of rejection, stating that it has doubts as to whether you are actually using the service or have plans to use it.
In this case, you can avoid the rejection in the following ways:
(A) Actual use: Submit photos or catalogs of the product showing the trademark.
(B) Future use: Submit (i) a “business plan” and (ii) “intention to start using the trademark” for the products you plan to use the trademark on.
(C) Not used at all: Products that are not used are excluded from the scope of retail services, etc.
At first glance, the above (A) to (C) may seem difficult to deal with, but if you respond appropriately, all of them can be resolved without any problems. Therefore, even if you are notified of the reasons for refusal, it is important not to give up easily.
In addition, in the above (A) and (B), false applications cannot be made. In other words, submitting fake photos of products that are not actually sold, or fabricating a business plan or other documents to obtain a trademark registration for products that you are not planning to use, are fraudulent acts that may be subject to criminal punishment, so please do not do such acts.
Notable rulings
・Case to set aside a trial decision H29 (Gyo-Ke) 10207 (March 2019, 3) Puma Parody Case
There have been five decisions related to the famous parody trademark case, Seesa Case (Seesa vs. Puma). The Patent Office rejected all the invalidation requests, but the courts overturned two of the decisions.
To everyone who manufactures products overseas
In order to reduce manufacturing costs, many companies manufacture clothing overseas and import it to sell in Japan. If clothing is manufactured overseas and a trademark is affixed to it, it goes without saying that trademark registration is required in Japan when importing the product to Japan, but it is important to note that, in principle, trademark registration is also required in the country where the trademark is affixed to the clothing.
If, for example, someone else in that country holds trademark rights for a similar trademark, and the act of using the trademark constitutes an infringement of that person's trademark rights in that country, your goods may be seized before being imported into Japan.
Clothing is manufactured in many countries overseas, including East Asia, including China, and in recent years, Southeast Asia and South Asia. Each country handles trademarks in different ways, and there is also know-how required for trademark registration, so please feel free to contact us regarding this matter.
”HARAKENZO more " supports everyone in the apparel industry.
The apparel industry is one that general consumers have frequent contact with on a daily basis, and with the large number of similar trademarks and counterfeit products in circulation, it is an industry in which the trust of those who use trademarks can easily be lost from those who purchase inferior products.
For this reason, those of you in the apparel industry may find yourself facing situations in which you have no choice but to be conscious of intellectual property rights issues.”HARAKENZO more " We are prepared to do our utmost to protect the intellectual property of everyone in the apparel industry. Please feel free to contact us for any inquiries.