1 Legal framework
1.1 What is the statutory or other source of trademark rights?
Trademark rights are established based on the Trademark Act.
1.2 How do trademark rights arise (ie, through use or registration)?
In Japan, trademark rights arise through trademark registration and an examination procedure is necessary in order for trademarks to be registered.
1.3 What is the statutory or other source of the trademark registration scheme?
Trademark Act, Chapter II: "Trademark Registration and Applications for Trademark Registration".
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
Under Article 2 of the Trademark Act, any characters, figures, signs, colours, three-dimensional shapes or any combination thereof may serve as trademarks. Sounds, position, motion and hologram trademarks can also be registered.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
The applicant must either be using the trademark or intend to use the trademark in the near future (ie, within three to four years of registration).
The requirements that an identifier must meet in order to function as a trademark are as follows:
- It must be used by a party in connection with a product which that party produces, certifies or assigns as its business; or
- It must be used by a party in connection with a service which that party provides or certifies as its business (except those provided for in the first point above).
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
Generally, a trademark which does not allow consumers to identify certain goods or services as those pertaining to a particular business is ineligible to function as a trademark (Article 3(1) of the Trademark Act).
For example, the following trademarks are ineligible:
- a trademark that consists solely of a mark that indicates, in a common manner, the common name of the goods or services (Article 3(1)(i));
- a trademark that consists solely of a mark that indicates, in a common manner, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including packaging), price or method or time of production or use of goods; or the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision of services (Article 3(1)(ii)); and
- a trademark consisting solely of a very simple and common mark (Article 3(1)(iii))
The following are also ineligible to function as trademarks:
- a mark which allows customers to identify certain goods or services as those pertaining to a particular business other than the applicant's (Article 4(1)(x)–(xv)); and
- a mark which is likely to mislead as to the quality of the goods or services (Article 4 (1)(xvi)).
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The registration process is controlled by the Japan Patent Office (JPO).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The JPO charges the following fees for each step:
- Trademark application: ¥3,400 + ¥8,600 per classification.
- Registration fee: ¥28,200 per classification.
- Renewal fee: ¥38,800 per classification
The JPO provides a schedule of fees on its website at www.jpo.go.jp/e/system/process/tesuryo/hyou.html.
3.3 Does the trademark office use the Nice Classification scheme?
The JPO began to use the International Classification of the Nice Agreement from 1 January 2012.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The applicant must identify the goods or services for which the mark will be used (and the classes of goods or services as provided by Cabinet Order, as specified in Article 6(2)).
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
Yes. The applicant must either be using the trademark or intend to use the trademark in the near future (ie, within three to four years of registration).
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
3.7 What types of examinations does the trademark office perform other than relative examination?
The JPO will conduct:
- an examination of the designated goods or services (eg, whether they are sufficiently clear to specify the scope of rights);
- an examination of the registration requirements (eg, whether the mark will be used for goods or services relating to the applicant's own business, and whether it is distinctive); and
- an examination on grounds of eligibility for registration (eg, whether the mark is identical or similar to the national flag).
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
For example, Articles 4(1)(i), (vii) and (viii) of the Trademark Act provide that a trademark is ineligible for registration if:
- it is identical or similar to the national flag, the imperial chrysanthemum crest, a decoration, a medal or a foreign national flag (Article 4(1)(i));
- it is likely to cause damage to public policy (Article 4(1)(vii)); or
- it contains the portrait of another person or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those whose registration has been approved by the person concerned) (Article 4(1)(viii)).
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
Even if the trademark is a descriptive mark, it may be able to be registered as a ‘regional collective trademark'.
For example, an association as defined in Article 7 can register a well-known but descriptive mark consisting solely of characters that indicate, in a common manner:
- the name of the region; and
- the common name of the goods or services.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
Even before the application is published, a third party can provide information to the JPO that the trademark cannot be registered pursuant to any of the following provisions of the Trademark Law:
- Article 3;
- Article 4, Paragraph 1, Item 1, Items 6 to 11 or Items 15 to 19;
- Article 7-2, Paragraph 1; or
- Article 8 Paragraph 2 or Paragraph 5.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No. The applicant must either be using the trademark or to intend to use the trademark in the near future (ie, within the next three to four years).
3.12 How much time does it typically take from filing an application to the first office action?
According to the JPO Status Report 2020, the first office action pendency for trademark examinations in 2018 was 7.9 months on average.
3.13 How much time does it typically take from filing an application to publication?
According to the JPO Status Report 2020, the total pendency for trademark examinations in 2018 was 9.3 months on average.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
An appeal may be filed with the Japan Patent Office (JPO) against a decision to refuse registration within three months of issuance of the decision (which may be extended to four months in the case of a foreign applicant).
The appeal will be examined by an appeal board, which is typically comprised of three appeal examiners.
An appeal can also be filed against a decision of the JPO at the examination stage.
The applicant can amend the specified goods or services, and/or the mark, as long as the gist of the application is not changed by this amendment. An amendment which changes the gist of the application will be refused by the examiner; this decision can be appealed before an appeal board of the JPO.
4.2 What is the procedure for appealing a trademark office refusal?
If the appeal board finds no reasons for rejection of the application, it will issue an appeal decision of registration. If the appeal board finds that the reasons for rejection in the decision of rejection issued by the examiner (before the appeal) were not overcome, it will issue an appeal decision of rejection. If the appeal board finds that there are other reasons for the rejection, it will issue a notice of reasons for rejection and the applicant can file remarks.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
A party that receives an unfavourable decision from the appeal board may file an appeal to the IP High Court requesting cancellation of the decision within 30 days of the issue of the decision (this period may be extended for a foreign applicant).
5.1 Can a third party oppose a trademark application?
Yes, a third party can file an opposition for one or more designated goods or services, raising relative and/or absolute grounds for rejection.
5.2 Who has standing to oppose a trademark application?
Any third party may file an opposition against the registration of a trademark.
5.3 What is the timeframe for opposing a trademark application?
An opposition may be filed against the registration of a trademark within two months of publication of the registered trademark. The opponent must file substantial arguments against registration within 30 days of the deadline for filing the opposition (this period can be extended by an additional 60 days in the case of a foreign opponent).
5.4 Which body hears oppositions?
An appeal board of the Japan Patent Office.
5.5 What is the process by which an opposition proceeds?
Once an opposition is filed, an appeal board will examine the registration. Oppositions are customarily conducted on the basis of written documents. If and when the appeal board determines that the registration should be revoked, a notice of reasons for revocation will be issued. The trademark owner can file remarks in response to the notice.
If a trademark is registered in contravention of the Trademark Act (eg, if it is registered despite the existence of a confusingly similar trademark), the registration will be deemed not to have existed from the date of registration
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Only a trademark owner which has received a decision of revocation can file an appeal to the IP High Court requesting cancellation of the decision; other parties cannot appeal a decision on opposition.
Irrespective of whether an opposition is filed, and irrespective of the decision on the opposition, an interested party can file a nullity action.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Well-known trademarks without registration are protected under the Unfair Competition Prevention Act. Other trademarks are not protected without registration.
6.2 What legal rights are conferred by a trademark registration?
The registration of a trademark has the following main effects:
- A granted trademark right is effective throughout Japan and the owner (and/or a licensee) can use it exclusively for the designated goods and services;
- Where another party uses an identical or similar trademark for an identical or similar range of goods or services, this constitutes infringement, and the trademark owner (and/or an exclusive licensee) may demand that the infringer cease the infringing acts and pay damages; and
- The trademark owner can register a third party as an exclusive licensee or a non-exclusive licensee.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
Basically, the same rights as for non-descriptive marks.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The following remedies against trademark infringement are available:
- injunctive relief;
- compensation for damages;
- destruction of infringing articles;
- presumption of negligence (the infringer is presumed negligent in the act of infringement); and
- infringement prevention.
7.2 What remedies are available against trademark dilution?
The use by another party of a similar trademark for a similar range of goods or services constitutes infringement, and the remedies set out in question 7.1 are thus available.
Furthermore, for well-known trademarks, a defensive trademark system is available in order to prevent trademark dilution in Japan. The owner of a well-known trademark can apply for a defensive trademark for goods or services that it does not intend to use. If, as a result of examination by the Japan Patent Office, a defensive trademark is registered for designated goods and services, the owner of the defensive trademark can request an injunction.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
Yes. The Trademark Act provides various other remedies.
7.4 What is the procedure for pursuing claims for trademark infringement?
The trademark and/or its exclusive licensee can file a complaint of trademark right infringement with the district court.
Generally, but not necessarily, before commencing an infringement lawsuit, the trademark owner and/or its exclusive licensee may send a warning notice to the infringer.
7.5 What typical defences are available to a defendant in trademark litigation?
The typical defences in a trademark action are as follows:
- an argument that the mark the defendant is using is not identical or similar to the registered trademark;
- prior use (where a mark has been fairly and continuously used by the defendant to such extent that it has become well known as a designation of the defendant's goods or service before the filing of an identical registered trademark; in such case the defendant has a right to continue using the trademark based on prior use) (Article 32 of the Trademark Act);
- descriptive fair use (eg, fair use of the name, price and/or amount of a product) (Article 26);
- nominative fair use (eg, fair use of the defendant's name) (Article 26);
- an argument of invalidity;
- an argument of cancellation;
- non-commercial use of the trademark;
- abuse of the trademark right; or
- conflict with a patent, design or other IP right (eg, if the defendant owns a patent whose filing (or priority) date is before the date of filing of the trademark, the defendant can continue to implement the patented invention).
7.6 What is the procedure for appealing a decision in trademark litigation?
An appeal to the IP High Court.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The term of a trademark is 10 years from the date of registration. This may be renewed every 10 years thereafter.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
In order to maintain or renew a trademark registration, a request for renewal must be filed six months before the trademark right expires. Additionally, a renewal fee of ¥38,800 per classification must be paid at the same time as filing the request to renew the trademark right.
8.3 What are the grounds for cancelling a trademark registration?
A third party can file a cancellation action:
- under Article 50 of the Trademark Act, on the grounds that the trademark has not been used for more than three years;
- under Article 51 of the Trademark Act, on the grounds that the registered trademark is being unfairly used by the trademark owner in a way that would cause confusion with the goods or services of others, or that would mislead as to the quality of the trademark owner's goods or services; (Article 51);
- under Article 51 of the Trademark Act, on the grounds that the registered trademark is being unfairly used by a licensee in a way that would cause confusion with the goods or services of others, or that would mislead as to the quality of the licensee's goods or services (Article 53);
- under Article 52-2 of the Trademark Act, where the owner of a registered trademark transfers the trademark rights for some of the designated goods or services and the third party thus has similar trademark rights to the trademark owner, but the trademark owner then uses its trademark to cause confusion with the third party's trademark for the purpose of unfair competition; and
- under Article 53-2 of the Trademark Act, where a trademark application was filed without the approval of a person who has rights pertaining to the trademark in a foreign country.
In addition, under Article 46 of the Trademark Act, any interested party can file a nullity action on the grounds that the trademark did not meet the requirements for registration.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
If the renewal fee is not paid, the registration expires.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
As explained in question 8.3, third parties can bring cancellation actions under Articles 50, 53 and 52-2.
Third parties can also file oppositions to registration.
8.6 What is the procedure for appealing a decision cancelling a registration?
An appeal to the IP High Court.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
9.2 Must trademark licences be recorded with the trademark office or other governing body?
An exclusive licence must be recorded with the Japan Patent Office.
A non-exclusive licence need not be recorded. However, if it is not recorded, a non-exclusive licence will have no effect as against third parties.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
Yes. A third party can file a cancellation action based on the grounds that the registered trademark is being unfairly used by a licensee in a way that would cause confusion with the goods or services of others, or that would mislead as to the quality of the licensee's goods or services.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
Well-known foreign trademarks that have not been registered are protected under the Unfair Competition Prevention Act.
A cancellation action under Article 53-2 is also available, as explained in question 8.3.
Furthermore, foreign trademarks that are not registered in Japan may be protected under Article 4(1)(xix) of the Trademark Act, which provides that:
no trademark may be registered if the trademark:
is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if the trademark is used for unfair purposes…
Additionally, the Japan Patent Office Examination Guidelines for Trademarks provide the following clarifications on trademarks that are well known among foreign consumers: "The trademark must be well known in one country other than Japan but is not necessarily required to be well known in several countries. In addition, when the trademark is well known abroad, the fact as to whether or not the trademark is well known in Japan is disregarded."
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes, registration of a mark is permitted based on an original trademark application filed in a member country of the Paris Convention or the Madrid Protocol.
A trademark application may be filed with the Japan Patent Office claiming priority based on a trademark application filed in a member country of the Paris Convention within six months of the priority date.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.