Japan became the 42nd member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as the "Madrid Protocol") on March 14, 2000, and since then, Japanese applicants began to file bundles of international applications with the Japanese Patent Office (JPO) in English. At the same time, international trademark applications fkom member states of the Madrid Protocol designating Japan were transferred to the JPO for substantial examination.
Who May Apply?
The first applicant of a trademark is entitled to registration under the first-to-file rule (Article 8). There are no use requirements at the time of the filing and anyone with the intention to use a mark may register it. Overseas applicants not domiciled or residing in Japan must appoint a Japanese trademark agent who is domiciled in or resides in Japan. Applicants of international trademark applications via the Madrid Protocol designating Japan must appoint a Japanese trademark agent to file responses to notifications of provisional refusal issued by the JPO.
What Can Be Registered?
A registrable trademark must have certain distinctiveness so that it can function to indicate the origin of the goods and services and to distinguish one's goods and services from those of others. The examination standard relating to the matter of registrability is determined by the goods and services upon which the mark is intended to be used. As in other states, the standard varies with the field of industry and sometimes involves subjective judgment.
If a trademark lacks registrability, it may be registered if the applicant proves with ample evidence that it has acquired distinctiveness through long and extensive use in relation to certain goods and services (Article 3(2)). Trademarks consisting of or containing the portrait of, or the name, appellation, or trade name of another person can be registered only with the consent of that other person. Three-dimensional marks are registrable effective April 1, 1997. In order to indicate a three-dimensional trademark, one can submit pictures no larger than 8 x 8 cm. Almost all the three-dimensional trademarks accepted so far relate to mascot dolls or the combination of a product configuration or its packaging with a pronounceable word mark. When a threedimensional trademark consists of a product shape, it will be rejected "as consisting only of the shape that traders and consumers recognize as the shape of the goods or the shape of the packaging." (Intellectual
Property Board, Q&As relating to the revision of the Trademark Law, dated December 13, 1995). As with an ordinary trademark, a threedimensional trademark can be protected if the applicant proves it has acquired distinctiveness through actual use by submitting ample evidence under Article 3(2).
Standard characters: If desired, a trademark indicated in "standard characters" designated by the Commissioner of the JPO is registrable by including an appropriate request upon filing a new application. Service narks: Applications for registration of service marks have been accepted beginning April 1, 1992.
During the six month-transitional period following the introduction of service mark applications, any party could file new applications for service marks without being rejected on account of the existence of identical or similar marks. Ten years have passed since then and the JPO is using reputation accumulated through actual use to determine which, if any, coexisting service marks should be renewed.
What Cannot Be Registered?
Provisions relating to unregistrable trademarks such as marks identical with or similar to the Imperial Chrysanthemum, a national flag, a Red Cross emblem, etc. under Article 4 (1) (i) to (xvi) have remained almost unchanged. As for the relative reason of rejection, JPO checks its database and cites identical or similar marks covering identical or similar goods and services with earlier registration and application dates if they exist (Article 4(l)(xi)). In order to overcome cited trademarks, applicants will need to file arguments, limit the goods and services by filing amendment, cancel the cited mark with respect to the goods and services by way of filing nonuse cancellation trials, assign or waive the cited trademarks by way of negotiations with the owners. Under the current practice, a letter of consent is not available.
Trademarks liable to be misleading as to the quality of the goods and services are rejected (Article 4 (1) (mi)). In 1994, provisions to harmonize protection of indications of the geographical origin of wines or spirits were added (Article 4(l)(mii)). After the revision made in 1996, a new provision was added to reject applications for trademarks that are identical or confusingly similar to trademarks well-known among consumers in Japan or abroad, or as indicating the goods or services as being connected with another person's business that the applicant is using with unfair intention in respect of such goods or services (Article 4(1) (xix)). This provision was added to strengthen the protection of famous and wellknown trademarks. The law has a long-standing provision relating to the rejection of trademarks liable to contravene public order or morality (Article 4(l)(vii)), but the newly added provisions clarified what should be rejected.
Trademarks consist of sounds, smells and tastes are not accepted. Trademarks that consist only of color are not accepted, either. Retail services: At the present time, retail services are not protected in Japan. Those who engage in retail services are encouraged to obtain a registration for the relevant goods. It may be advisable to obtain a service mark designating services such as providing information on commodity sales in Class 35.
When a person has been using a mark in good faith prior to the filing of an application for an identical or similar trademark by a third party in relation to identical or similar goods and services and the mark has become well-known among consumers as indicating the goods and services connected with his business at the time of the filing of the application, such person has the right to use trademark by virtue of prior use (Article 32). This right is an exception to the firstto- file rule. When a person's use is claimed to constitute an infringement of the trademark right of another, the person can successfully defend his interest by proving his right to use the trademark by virtue of prior use. A right to claim indemnity: Unlike an invention, a utility model, or a design, a trademark, being a selected word or device, cannot be legally protected unless it has matured to a registration.
Under the 1999 revision of the law, if the applicant warns the unauthorized user of the particulars of his pending application, he will be able to demand monetary compensation retroactively when the mark is finally registered. The amount of the compensation is equivalent to the damage in trade caused by the unauthorized use. Overseas clients whose trademark has acquired a reputation abroad but has not yet been registered in Japan may benefit from this provision.
Trademark applications are filed electronically nowadays and applicants do not need to submit application papers. Upon filing a new application, clear prints or digitized data (preferably.gif or.jpeg) for the trademark to be filed are necessary for electronic reproduction.
A signed power of attorney, without a notarization or legalization, is required only when formality officials call for it. However, it will be advisable to execute a power of attorney and return it to your Japanese trademark attorneys for future use. General powers of attorney are also available. Convention priority: If a Japanese application claims convention priority, the applicant must submit a certified copy of the basic application within three months of the Japanese filing date.
Evaluation & Review
When a new application is filed, the JPO first checks the formality requirements and then assigns the cases to an examiner in charge. The examiner reviews both the absolute and relative reasons of rejections stipulated in Articles 3 and 4 according to the latest examination standards. The examiners onen render official actions relating to the description of goods and services according to the provisions of Article 6. In that case, the applicant can amend the goods and services
as the Examiner recommends. Or, if the goods and services are so new that no acceptable descriptions can be found within the JPO's records, the applicant can file an explanatory note reciting structure, purpose of use, and method of use of the goods and services together with reference materials for the examiner.
After Japan's accession to the Madrid Protocol, international registrations with Japan as one of the designated states were added to the object of relative examination. These applications will be examined and, if necessary, the JPO will issue a Notification of Provisional Refusal within 18 months from the international registration date. One can easily check the JPO's Web site to obtain particulars of these international registrations as well as ordinary national registrations and applications.
On average, the JPO issues a first action about six to eight months after filing. However, the time required varies from class to class. Accelerated examination system: The JPO started an accelerated examination system and accelerated appeal examination system for trademarks in 1997. Those who wish to obtain earlier registration will need to submit a written statement requesting accelerated examination accompanied with materials for the Examiner's reference.
However, recently, substantial examination has speeded up and the first action is received within six to eight months or so and consequently this system does not appear to offer a significant advantage.
The trademark expires 10 years from the date of registration (Article 19(1)) but can be renewed indefinitely. A request for renewal shall be made no earlier than six months prior to the expiration of the term (Article 20(2)). Registration may also be renewed during a six-month grace period following the expiration date of the registration by paying the renewal fee and the penalty. The penalty equals the renewal fee for a timely renewal.
Upon request, renewals can be made in five-year installments. Owners of products with shorter life cycles may prefer this option.
If a registered trademark has not been used by the owner or the licensees for three consecutive years, it becomes vulnerable to an attack for nonuse.