Trade and Service Marks

– Trademark Law, enforced April 1, 1960, as revised by Law of 1975, effective from January 1, 1976.
– Different Revisions introduced from 1991 to 2019.
– Revision by Law of 2021, effective from October 1, 2022.
– Last Revision by Law of 2023, effective within one year from June 14, 2023.
– Geographical Indication Act, effective from June 1, 2015.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), effective from July 27, 1970.
– Convention Establishing the World Intellectual Property Organization (WIPO), effective from April 20, 1975.
– Madrid Agreement for the Prevention of False Indication of Source, revised at Lisbon in 1958.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, revised at Geneva in 1977, since February 20, 1990.
– WTO’s TRIPS Agreement, effective from January 1, 1995.
– Trademark Law Treaty, effective from April 1, 1997.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, effective from March 14, 2000.
– Singapore Treaty on the Law of Trademarks, effective from June 11, 2016.

Filing

Applicant: an individual or a corporate body (firm, company, corporation, etc.) with an exception regarding collective marks that can be filed only by non-profit corporations.

Foreigners or nationals not living in the country: must appoint an agent residing in Japan.

Trademarks of foreigners: can be registered even if they are not registered, applied for or used in the home country.

Kinds of protection: (1) ordinary mark; (2) three-dimensional mark; (3) sound mark, motion mark, color per se mark, hologram mark and position mark; (4) defensive mark (a widely-known mark registered for goods or services dissimilar to those of the original mark); (5) collective mark; and (6) regional collective mark. 

Exceptions: smells cannot be registered.

Marks for services: service marks have been accepted since April 1, 1992, and examined, granted, protected, etc., on the same conditions as for trademarks for goods, unless otherwise referred to. (The term “trademark” includes a service mark herein.) Service marks for retailers’ services have been accepted since April 1, 2007 in class 35 with the definitions such as “retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and livingware, carrying all goods together”, “providing retail services or wholesale services for (specific goods)” or the like. Mere selling and whole selling of goods are registered in classes 1-34 for goods.

Priorities: six months from the first filing; term for filing the certificate: three months after the filing date.

Amendment of application: the trademark applied for cannot be amended, but a part of the designated goods or services can be deleted.

Division: an application with two or more designated goods can be divided into one, two or more new applications, provided that the applicant has paid the fees for the original application.

Bona fide intention to use a mark: an applicant is required to have a bona fide intention to use the mark in Japan for the goods or services designated in an application.

Distinctiveness: a trademark need not be new, but must be distinctive. A trademark/service mark is considered as not distinctive when composed only of: (1) a common name of goods or services; (2) marks customarily used on goods or services; (3) extremely simple marks or a mark indicating the place of origin, place of sale, the nature, quality, materials, use or any other features of the goods or services; (4) other marks by which consumers are unable to recognize that the goods or services are related to a particular source.

Not registrable: (1) the national flag, the Chrysanthemum Crest, medals of merit, badges of honor or foreign national flags; (2) the national crest or any other emblem belonging to any member country of the Paris Convention, WTO or TLT; (3) marks which indicate the United Nations or other international organizations, except those that are well-known or unlikely to cause misunderstanding as to the relation to said organizations; (4) a red cross on a white ground, the appellation “Red Cross” or “Geneva Cross”; (5) seals or signs designated by the government or local public entities; (6) well-known marks which indicate the State or local public entities or the like; (7) trademarks which are likely to be detrimental to public order or good morals; (8) trademarks including portraits of others, well-known names, trade names, well-known pseudonyms without the other person's consent, or trademarks including the other person's name, where there is no strong connection between the name and the applicant, or where the applicant has a dishonest purpose (effective within one year from June 14, 2023); (9) prizes of exhibitions; (10) trademarks widely recognized among consumers as indicating goods or services relating to the business of another person and which are used on such goods or services; (11) trademarks which are identical with or similar to previously registered trademarks; (12) trademarks which are identical with a registered defensive mark of another person and which are used on the designated goods or services under such defensive mark registration; (13) trademarks identical with or similar to the marks registered under the law concerning seeds and seedlings; (14) trademarks which are likely to cause confusion with regard to the goods or services relating to the business of another person; (15) trademarks which are likely to be misleading as to the nature or quality of the goods or services; (16) trademarks including geographical names in WTO member countries, etc. used for wines and spirits, not corresponding to the true origin of wines and spirits; (17) three-dimensional trademarks which are composed only of functional features; (18) trademarks identical or similar to third party’s trademarks, which are well-known in Japan or another country, provided that they are deemed to be used for unjust purposes.

First-to-file-system: like the Japanese patent system, the Japanese trademark system employs a first-to-file system. This system provides that if one or more applications conflict with another, the application that was filed first is registered. In the unlikely event that two or more applications are filed for identical or similar marks on the same day for identical or similar goods or services, the parties involved are given the opportunity to decide which one may obtain registration. If no agreement can be reached within a specified time limit the Director General will draw lots.

Madrid Protocol applications: an international application designating Japan is treated as a national application having been filed in Japan on the international registration date for examination purposes. It cannot be divided into two or more in order to avoid refusal.

Classification: the 11th Edition of the International Classification, 2018 version, is used for filing on or after January 1, 2018. Goods and services are classified in 45 classes.

Multi-class application: available for goods or services as from April 1, 1997. 

Electronic filing: trademark applications to the JPO should be filed online, at which time an application number is immediately issued.

Territory covered: the whole territory of Japan.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney is not required for filing an application, but is required for filing an appeal against the final refusal (no legalization is required) (general power of attorney acceptable);
2. An electronic file in .jpg format of a mark, unless standard characters are adopted;
3. Certified copy of the basic application, if Convention priority is claimed.

Filing without one or more requirements: the same as for “Patents“.

Protection of Geographical Indications (GI): on June 1, 2015, the Geographical Indication (GI) Protection System was established by the Ministry of Agriculture, Forestry and Fisheries of Japan (MAFF). The purpose of this system is to protect the name of regional brand products which have obtained a high quality and reputation. The name which can be protected is basically a combination of a geographical name and a product name. However, it is possible to obtain a registration without including a geographical name, if a place of production can be imagined from the name itself. When a registration is issued, the registered geographical indication and the following GI mark can be used with the products and/or their containers and invoices. For an application, it is necessary to attach: (a) the product specification (specific standards for origin, method and quality that should be met); and (b) rules concerning production process management (guidelines for quality control by producer groups) along with the application form.

Examination

Provisional publication: any application is laid open upon filing.

Basic flow: if the trademark applied for on or after April 1, 1997, meets all the requirements for registration, a decision to register the trademark application is issued before publication for opposition.

Accelerated examination and appeal examination: may be requested by an applicant when he/she or his/her licensee has commenced or is commencing use of the mark provided that there is an actual need to accelerate the registration progress, e.g. when a third party is using a similar trademark. However, evidence supporting this need must be submitted to the JPO.

Examination: all trademark applications are subject to formality and substantive examination to determine whether there is an absolute and relative ground(s) for refusal, including whether an earlier filed identical or similar mark exists for identical or similar goods/services. When an application satisfies the requirements for registration, a decision of registration is made and a notice of the decision is sent to the applicant or their representative. To have the trademark registered, the applicant must pay the registration fee. If an application does not satisfy the requirements for registration, an Examiner issues a notice of preliminary refusal with a supporting reason(s). The applicant is given an opportunity to respond by filing an argument and/or amendment. A response must be filed within three months (for foreign applicants). If the applicant fails to overcome the reason(s) for refusal, the Examiner issues a decision of refusal.

Bona fide intention to use a mark: with respect to all trademark/service mark applications filed on or after April 1, 2007, the JPO most probably issues a preliminary refusal as having reasonable doubt whether the applicant has a bona fide intention to use the mark for all the goods or services designated in the application, particularly where: (a) a broad range of goods or services are designated in each class; (b) a service mark application designating general retailing or wholesaling service (such as department store service) is filed by an individual; (c) two or more retailing or wholesaling services that are not similar to each other are designated in one application. In order to overcome such refusal, an applicant has the following options: (1) file evidence in support of the fact that the applicant is engaged in manufacturing, selling or advertising of the goods or providing the services covered by the application; or (2) file a declaration and evidence in support of the fact that the applicant has a real intention to start within 3-4 years business(es) of manufacturing, selling or advertising of the goods or providing the services covered by the application in Japan.

Publication: the application is published in the Official Trade Mark Gazette upon registration. Any person may file an opposition within two months from the date of publication.

Letters of consent: accepted in order to overcome an objection based on a prior application or registration provided there is no risk of confusion between the applicant's goods/services and the cited trademark owner's goods/services (effective within one year from June 14, 2023).

Dealing with rejection: if the application is rejected based on a prior mark, conflicting goods or services may be deleted to avoid the citation. If it is not possible to delete conflicting goods, it is necessary to forcefully argue dissimilarity of the mark. Arguments supported by past JPO or court decisions or other supporting documents can prove persuasive. If overcoming the rejection appears difficult, one option is to file a non-use cancellation request against the cited registration. However, this can be done only if three years have passed after the cited mark was registered. Another option is to negotiate with the owner of the cited registration for an assignment of the cited registration. Before letters of consent were accepted, the measure referred to as "assign-back" was frequently taken for similar result by successfully negotiating with a prior registrant; if an applicant assigns its pending application to the prior registrant owning a registration for a similar mark, the JPO withdraws the rejection and issues a decision for registration. The applicant has only to have the application/resulting registration re-assigned from the prior registrant. This measure cannot be taken for Madrid Protocol international applications without transferring the basic application/registration to the same party. If the trademark application is rejected due to lack of distinctiveness, proof that the mark has acquired distinctiveness through long and extensive use of exactly the same mark may be enough to warrant registration of the mark. If this option is not available, and use of the mark in Japan is still desired, it may be necessary to ensure that the mark is not registrable in Japan so that no other party is able to obtain registration of the mark. For that purpose, filing an argument or even an appeal to confirm rejection is frequently undertaken.

Dispute about ownership: not provided for.

Application kept secret: not possible.

Appeal: an appeal against the final decision for rejection of an application can be filed within three months of the delivery of the decision.

Protection

Registration fee: an applicant must pay the registration fee within thirty days from the decision for registration. The registration fee may be first paid only for five years in installments. If the registration fee for the second five years is not paid by the expiration date of the first five years, the registration expires. For international applications filed under the Madrid Protocol, the second individual fee must be paid. Otherwise, the international registration is cancelled with respect to Japan.

Delivery of document: a certificate of registration, indicating the registration number assigned to the trademark, is delivered by mail. It is normally twelve months from the filing of the application before receipt of a certificate of registration.

Beginning of protection: from the date of registration.

Kind of property: in principle, registration confers a property right and is, in some respects, favored to the right established by extensive use in Japan of an unregistered trademark.

Duration – extension: ten years from the date of registration and renewable every ten years.

Registration/renewal fees: payment of registration/renewal fees is available in two installments, except for defensive marks (term of grace for payment of second installment of registration fee: six months from expiration of first five years, subject to payment of a surcharge).

Renewal: trademarks are renewable every ten years from the date of registration. In renewing a multi-class registration, it is permissible to delete one or more classes. The renewal fee may be first paid only for five years in installments. If the renewal fee for the second five years is not paid by the expiration date of the first five years, the registration expires. Requirements for renewals: power of attorney is no longer required for renewals. Evidence of actual use is also not required as of April 1, 1997.

Latest term for renewal: an application for renewal must be filed within six months before the date of expiry.

Term of grace for renewal: six months from the expiry date, subject to payment of a surcharge.If, for some reason beyond the control of the registrant, an application for renewal cannot be filed within the six-month period, a further six months will be granted.

Provisional registration: not provided for.

Compulsory character of registration: not provided for.

User rights: prior use by one party of an unregistered trademark which is widely known to consumers in Japan cannot be barred by another party who owns a trademark right in respect of a trademark identical with or similar to the former.

Obligation to use: there is no obligation to use a mark, but if a registered trademark has not been used for three consecutive years after registration, a cancellation trial may be filed by any third party.

Marking of registered goods or services: not compulsory, but desirable.

Text of marking: “Registered Trade Mark” with the registration number.

Correction of registration: if a mistake is made in the registration by an official of the Patent Office, it may be corrected ex officio.

Modification of the mark: not possible.

Changes in the list of goods or services: not possible, but a part of the designated goods or services can be deleted.

Licenses: two kinds of licenses are provided for: (1) the right of exclusive use and (2) the right of ordinary (non-exclusive) use. The granting of a license for the use of a trademark is freely allowed provided an agreement as to the conditions for licensing is reached between the owner of the trademark and a third party. There need be no special relationship between the owner of the trademark and the third party. An exclusive license does not take effect unless recorded. An exclusive license grants an undivided interest to an exclusive licensee. An exclusive license may be transferred only in combination with the business in which it is worked, or only with the consent of the trademark owner. This does not include transfer by inheritance or other general succession. An exclusive licensee may not grant a non-exclusive license to another without express permission from the trademark owner. A non-exclusive license does not give the licensee the right to sue those who infringe. Non-exclusive licenses also do not have to be registered to be given effect as such. However, like the exclusive license, registration of the non-exclusive license prevents the trademark owner from granting a conflicting license to a third party.

Assignment: a trademark right can be assigned with or without the goodwill of the assignor. The assignment may only be signed by the assignor; notarization is not necessary for the recordation procedure. A registered trademark or trademark application may be assigned for one or more of the specified goods or services. The transfer of the right from a trademark application is not effective until the Director General of the Patent Office is notified and accepts the transfer. Furthermore, except in cases of inheritance or other general succession, the transfer of a registered trademark is not effective until it is recorded.

Modification of Protection after Registration

Right of prior user: a prior user of an unregistered but widely known trademark is entitled to file an invalidation trial against the registration of a trademark identical with or similar to the unregistered trademark (provided he does so within five years of the date of registration) unless the registration was filed in bad faith.

Exception for service marks: a person who had been using his/her service mark with no intention of unfair competition before September 30, 1992, can continue the use within the same scope and area. A person who had been using his/her service mark for retailing or wholesaling likewise before April 1, 2007 can enjoy similar rights.

Opposition: post-grant opposition system is adopted as from April 1, 1997; within two months of the date of publication of registration, anyone can raise an opposition by submitting to the Patent Office a statement of opposition together with evidence. The term for raising an opposition cannot be extended. The reasons for opposition and evidence can be supplemented within thirty days (a further two-month grace period is granted to foreigners). The reasons for opposition are basically the same as those for rejection of a trademark application. The opposition is examined by a group of three or five trial Examiners. If the Examiners find a reason to cancel the registration, the owner is notified and given an opportunity to respond. If the grounds for the opposition are not overcome, the Examiners render a decision to cancel the registration. In cases in which the opposition is limited to part of the designated goods or services, that part of the registration is cancelled. If the owner is dissatisfied with the decision of cancellation, an action can be filed with the Intellectual Property Court.

Compulsory licenses: not provided for.

Expropriation: not provided for.

Invalidation: an invalidation trial against a registration can be filed at the Patent Office if the grounds for filing such a trial are those mentioned above in Section 3. under “Not registrable“.

Non-use cancellation of a registered trademark: any third party may request a trial for cancellation of a registered trademark on the grounds of non-use for the last three years. In order to avoid cancellation of the registered trademark in question, the registrant must submit evidence of use, which proves the actual use of the trademark in respect of any one of the designated goods or services relating to such demand by himself or by a licensee within three years. A registered trademark is regarded to be in use if the registrant uses another trademark consisting of the same characters in a different style, or consisting of different characters but the same name and concept. For example, a registered trademark consisting of Roman letters is considered to be in use if the proprietary uses a trademark consisting of Japanese Katakana letters (phonetically the same as Roman letters) that have the same name and concept as the registered trademark. The use by a licensee is also considered the use of a registered trademark.

Trial system: four primary trials exist to comprise the trial system, namely: (1) trial against decision of refusal; (2) trial for invalidation of trademark registration; (3) trial for cancellation of trademark registration (due to non-use); and (4) trial for cancellation of trademark to avoid confusion over source. Three or five trial Examiners handle all of the trials. There are other additional trials, e.g. trial for the cancellation of a registered trademark due to abuse. A party may appeal to the Tokyo High Court if a decision is unsatisfactory.

Validation of invalidated marks or services: restoration is possible by virtue of re-trial. A demand for re-trial should be made within thirty days of the day on which the demandant became aware of a reason for re-trial. However, re-trial may not be demanded once three years have elapsed from the day on which the judgment in trial became finally binding.

Provisions for restoration: see “Validation of invalidated marks” above.

Registration of invalidated marks: an application for registration of an invalidated trademark is regarded as a new application.

Infringement and penalties:  infringement of a trademark right occurs when a party other than the owner or a licensee: (1) uses a mark similar or identical to the registered mark for similar or identical goods or services; (2) holds goods for delivery or assignment if those goods are similar or identical to the designated goods and show a mark similar or identical to the designated mark; (3) assigns, delivers, or holds for assignment or delivery materials to be used in applying such a mark, manufactures or imports materials to be used in applying such a mark; (4) possesses materials used for applying such a mark on such goods; or (5) manufactures, assigns, delivers or imports, in the course of business, materials to be used solely for making articles to be used in applying that mark. "Import" under the Trademark Law includes the act by a person in a foreign country of sending goods to Japan by mail, etc. or of having a third party bring goods into Japan. These acts may constitute trademark infringement when done by an overseas vendor in connection with counterfeit goods. In the case of infringement, an injunction and compensation for damages may be obtained through civil suits. A fine of not more than 300 million Yen (on a legal entity) or 10 million Yen (on a natural person) and/or imprisonment with hard labor not exceeding ten years may be imposed through criminal proceedings.

Miscellaneous

(1) Associated trademark system: abolished as from April 1, 1997.

(2) Protection of well-known or famous trademarks under Unfair Competition Prevention Law: the use, etc., of a mark identical or similar to a third party’s well-known trademark, which may cause confusion as to the origin of goods of the third party, or the use, etc., of a mark identical or similar to a very well-known trademark of a third party, likely to cause confusion or not, will be vulnerable to an injunction, damages, or other sanctions under the Unfair Competition Prevention Law (as amended).