table of contents
Introduction
JapanBelow is information that will help you protect your trademark rights.
We hope that this page will be of some help to our customers in protecting their intellectual property rights in Japan.
<Average review period> *As of April 2018
Currently, the examination period from application to registration (approval) is approximately 6 to 12 months.
Trademark rights in Japan
A. Target of trademark registration
(1) Type of trademark
- Regular trademark
- collective trademark
- Regional collective trademark
(2) Targets of protection for trademarks that can be applied for
■Traditional trademark
- ① Character trademarks: trademarks consisting of hiragana, katakana, kanji, or Latin characters
- ② Figurative trademarks: trademarks consisting of marks and characters
- 3) Three-dimensional trademark: A trademark consisting of a three-dimensional character figure, etc.
- ④ Trademark that combines ① to ③ above
■New trademark (from April 2015, 4)
- ① Trademark consisting only of colors
- ② Position trademark
- ③ Sound trademark
- ④ Motion trademark
- ⑤ Hologram trademark
B. Overview of the trademark system
(1) First-to-file registration principle
Japan's trademark law adopts the "first-to-file, first-to-register" system.
- First-to-file system: A system in which when there are competing applications for identical or similar trademarks specifying the same or similar goods or services, the trademark that was filed first is registered preferentially.
- Registration principle: A system in which a trademark can be registered even if it is not actually used, as long as there is an intention to use it in the future and certain conditions are met.
- In light of the above, it is important to consider filing applications for trademarks you plan to use in advance in preparation for your planned business or export to Japan.
(2) Substantive examination
In Japan, after going through a "formality examination" to determine whether the application documents are properly filled out, a substantive examination is conducted.
In the substantive examination, it is determined whether the registration is substantive or not.
[Main reasons for refusal for which the examiner determines that registration is not allowed]
- Doubts about the use and intention to use a trademark (Trademark Act (hereinafter referred to as the Act) Article 3, Paragraph 1, Heading)
- Lack of discernment (Article 3 of the Act)
- Public interest standpoint/grounds for non-registration in relation to another person's trademark (Article 4 of the Act)
- Incomplete description of designated products/categories (Article 6 of the Act)
C. About trademark rights
(1) Creation of rights
- After substantive examination, the decision (or trial decision) to the effect that the trademark should be registered is delivered.
⇒Pay the registration fee within 30 days
⇒Trademark rights arise from the date of registration.
(2) Term of existence
- 10 years from the date of registration
- Renewal possible (renewal procedure period: in principle, from 6 months before the expiration date of the trademark right to the expiration date)
- Even after the term of trademark rights has expired, renewal procedures can be carried out within six months. However, additional fees are required.
(3) Classification (goods or services)
- 1 application multiple classification system
- Described according to the categories specified by government ordinance in accordance with the Nice classification
- Comprehensive labeling as described in the Similar Goods and Services Examination Standards is permitted.
(4) Documents required for application, etc.
- Application
- Payment of application fee
*The following is only if necessary*
- If priority is claimed: Priority certificate (can be submitted within three months from the filing date)
- In the case of collective trademarks: a certificate stating that the applicant is eligible
- For regional collective trademarks:
- Document certifying that the applicant is eligible
- A certificate showing that the name of the region included in the trademark has a close relationship with the designated goods/services
(2022) Main office fees *As of November 11
- Application fee: 3,400 yen + (number of categories x 8,600 yen)
- Registration fee
- For 5 year installments: Number of divisions x 17,200 yen
- For 10 years: Number of divisions x 32,900 yen
- Renewal cost
- For 5 year installments: Number of divisions x 22,800 yen
- For 10 years: Number of divisions x 43,600 yen
(6) Flow from application to registration
*If certain conditions are met, it is possible to apply for accelerated examination.
(7) Reasons for cancellation
① Registration opposition system
In cases where a trademark that should not have been registered has been registered by mistake, you can request a second hearing by filing an opposition to the registration. The opposition must be filed within two months of the publication of the trademark gazette. If this period has passed, you will need to file an invalidation trial to request correction of the registration.
② Invalidation trial system
If a trademark that should not originally have been registered is mistakenly registered during examination, or if it becomes unfair to grant trademark registration after the fact, it is necessary to invalidate the flawed trademark registration. This is a trial conducted to retroactively extinguish a trademark right.
③ Cancellation trial system
This is a procedure for extinguishing trademark rights in the future when it is inappropriate to keep them in existence even if the trademark was registered without any defects due to subsequent circumstances. There are five types of cancellation judgments:
- Cancellation trial due to non-use (Article 50 of the Act)
This is a trial seeking the cancellation of a registration on the grounds that neither the trademark owner, the exclusive licensee, nor the ordinary licensee has used the registered trademark in Japan continuously for more than three years prior to the registration of the request for trial. - Cancellation trial due to unauthorized use by trademark owner (Article 51 of the Act)
This is a trial requesting the cancellation of registration in cases where the trademark owner intentionally causes confusion with another person's products by using the trademark in a similar manner. - Cancellation trial due to unauthorized use by licensee (Article 53 of the Act)
The Trademark Law imposes an obligation on license holders to use registered trademarks legitimately, and also imposes a duty on trademark rights holders to supervise usage rights holders. This is a judgment requesting the cancellation of registration on the grounds of violation of such supervisory duties. - Cancellation trial due to unauthorized use of trademark right holder due to transfer of trademark right (Article 52-2 of the Act)
As a security measure to prevent confusion of origin due to the transfer of trademark rights, a trial requesting cancellation of registration in cases where misidentification and confusion arises among consumers due to the use of a registered trademark by different rights holders as a result of transfer. is. - Cancellation trial due to improper registration of an agent (e.g. agency) (Article 53-2 of the Act)
This is a trial requesting the cancellation of registration in cases where an agent, etc. has registered a trademark without obtaining the consent of the person who owns the rights to the trademark.
D. Dealing with rights violations
(1) What is trademark infringement?
- Acts of using registered trademarks for designated goods and services
- Acts of using trademarks within the scope of similarity to registered trademarks
- Preliminary acts of trademark use (possession for assignment, etc.) within the scope of a registered trademark or its similarity
(2) Measures against infringement
① Civil measures
- Right to request an injunction
- Right to claim compensation for damages
- Right to request credit recovery measures
- Right to claim return of unjust enrichment
②Criminal measures
Fine (subject to both penalties), imprisonment, or both
③ Complaint to customs
By following certain procedures, you can request an import/export suspension at customs.
E. treaty
The status of membership in the main treaties is as follows.
| treaty of paris | WTO agreement | trademark law treaty | madpro | nice agreement |
| Join | Join | Join | Join | Join |