What is trademark?
Trademark serves as a source designator distinguishing his products from others. Trademark can be words, logo, figure, 3D and new type marks such as sound, position, color per se, hologram, motion. Cuurent JPO practice allows slogans to be registered. Work mark can be any type of languages including foreign languages. We use Kanji, Hiragana, and Katakana as Japanese language, and can file in English, Chinese, and other languages. Simple filing style is to use standard letters, but when you use the standard letters, all words must be in a line and the same font size. Filing a sound mark application requires a code or sound file. JPO currently does not accept any filing of scent mark. As other types of trademarks, collective mark and regional collective mark are available.
Who can file trademark application?
Anyone including natural persons. and legal persons can file the trademark application. If the trademark is owned by two or more persons, you can include all of the persons who own the mark.
Where is a trademark application filed?
JPO (Japan Patent Office) is the sole governmental agency handing industrial property matters. JPO is located in Kasumigaseki 3-4-3, Tokyo JAPAN, 100-8915(postal code).
How long will it take from filing to registration?
It generally takes five to eight months from its filing to its registration. Examination result typically comes around six or seven months, and if the examination result shows allowance, JPO awards the registration after the payment of the registration fee. If the examination result shows rejection, the applicant can submit amendment and written argument to overcome the rejection. This prosecution process generally takes one to three months. The applicant may request an accelerated examination where in an urgent situation, to expedite the examination within, e.g., two months.
What is classification?
Classification is a system classifying the designated goods and services into one or more classes. Because the Japanese trademark system, likewise most of foreign countries, uses the Nice classification, the applicant requires to put the designated goods and services in one or more of 45 classes. JPO further uses similar group codes assigned to each goods and services identification, and such similar group codes are helpful to distinguish what is confusingly similar from what is not confusingly similar.
What is required information for a trademark application?
E-filing is usually done in Japan, and the trademark application is a file in a HTML format to be electronically sent to JPO. The trademark application must contain the applicant’s information, a mark specimen, and the identification of designated goods and services. POA (Power of Attorney) is not required unless JPO needs it. The applicant’s information includes address (or domicile), name, nationality. The mark specimen is a JPEG file or other type image files containing the mark of words and/or figures. The identification of designated goods and services is generally a description of the goods and services selected from the Japanese classification table, but the applicant may use his own description. The Japanese classification table in most parts corresponds to the internationally harmonized Nice classification.
Does anybody know the fact of filed trademark applications?
After filing a trademark application, the contents of the application are published through a website called “J-platpat” operated by INPIT. This mean the fact that somebody filed a trademark application comes to be known to the public two or three weeks later from the filing date. The J-platpat database is free and searchable by anybody, and English version is also available.
What is the substantive examination?
Substantive examination is conducted by JPO examiners to determine as to whether the mark in the trademark application is to be registered. During the examination process, the examiner examine whether the mark has a distinctiveness as required under Section 3, Japanese Trademark Law, and also examine whether the mark conflicts other marks as required under Section 4. One of the crucial point is whether the applied mark is conflicting with, or in other words, confusingly similar to any pre-existing registered trademark owned by other (Sec. 4 (11), Japanese Trademark Law). If the examiner finds any reason to reject the application, the examiner issue an Office Action (notice of rejection reasons) to the applicant in informing a period to respond the Office Action. If the examiner finds no reason to reject the application, the examiner provides a notice of allowance.
What is the amendment of the trademark application
The applicant can amend the application about applicant’s information and the identification of the designated goods and services. If the Office Action states that the identification is ambiguous, the applicant can amend the identification to be more accurate. The applicant may amend the identification to make the designated goods and services to be deleted partly or re-classified. If the deletion negates the conflict with other’s marks, the amendment is successful. JPO these days requires the designated goods and services of each class should be within seven groups on the basis of the similar group codes unless the applicant proves a reasonableness that he can use the mark in excess of the seven groups.
Is consent workable in Japan?
Consent is an agreement permitting use of the applicant’s mark between the applicant and the third party where the applicant’s mark is conflicting with the pre-existing registered trademarks of the third party. Japanese Trademark System does not have such a rule of consent. Alternatively, if the applicant receives the Office Action including Sec. 4(11), the applicant may negotiate such a third party to do receive and assign the trademark back. When the third party receives the transfer of the trademark, the mark no longer conflicts the third party’s pre-existing registered mark, because the applied mark is owned by the third party upon reception of the applied mark. Such transfer negates the rejection reason, and after receiving the allowance, the third party returns the ownership of the mark back to the original applicant. This process is so-called to as “assign back or assignment back” and needs cooperation of the third party though the examiner thinks conflicting. Generally, it involves monetary compensation for such cooperation.
What fees are required to acquire the trademark registration?
In general, to acquire a trademark registration, the applicant may have to pay official fees and attorney fees. We provide estimates of our attorney fees as our fee schedule, which is available upon a request for quote. The official fees are typically two stages, first stage for the application fee and the second stage for the registration fee of the successfully prosecuted application. The application fee is 3,400(jpy) + 8,600 (jpy) per class at 2017.6 (one class filing 12,000 (jpy). The registration fees can be paid for either five years or ten years. The registration fee for ten years is 28,200 jpy per class while the registration fee for five years is 16,400 jpy per class, at 2017.6.
What is opposition proceeding?
Opposition can be submitted by anyone who disagree the decision of JPO. The opposition period begins the published date of the trademark registration and lasts for two months. The published date is generally one month after the registration date. The opposition fee as the official fee is 3,000 + 8,000 per class (jpy). The opposition should contain some reason that the registration is to be reversed. An opponent who resides outside Japan must appoint a representative in Japan.
How long is the duration of the trademark?
The duration of the trademark registration is ten years from the registration date. Renewal payment can be paid by anybody from six months before the expiration date to the expiration date. Delayed renewal payment can be paid within six months after the registration date with a fine equal to a half of the original fee without any reason, and can be paid within one year with a legitimate reason for unpaid. If the applicant/registrant pays only first half of the registration fee, the trademark right will come to end when all rescue means has gone.
Is a trademark registration transferable?
Likewise other ownership of the intellectual property, the trademark ownership is transferable to others. If you have a collective mark or a regional collective mark, transfer of such a mark can be done only when some conditions are met.
Is circle R required?
There is no obligation to place the circle R on a package or tag next the registered trademark. Under the Japanese Trademark Law, placing of a word of “Registered trademark xxxxxx (in Japanese)” is an official way to express the mark is registered, but no penalty is imposed when noticing no word.
Is a registration subject to cancellation?
If the trademark owner or licensee does not use the trademark about any portion of designated goods and services for three years in the territory of Japan, the registration may be subject to a cancellation procedure. If an applicant receive an Office Action saying a reason of Sec. 4(11) confusingly similar to other’s registered trademark, one method to achieve the registration is to file the cancellation appeal based on non-use in targeting the cited registered trademark. A typical proceeding of the cancellation appeal takes a half year when no answer is made by the trademark owner and nearly a year when both parties respond to each other.
What is parallel importation?
Parallel importation refers to the import of goods outside the distribution channels contractually negotiated by the manufacturer(from the site of WIPO). If an importation satisfies the elements of parallel importation, the importer does not infringe any trademark right of the trademark holder. The elements for parallel importation are: first, the mark placed on the parallel imported goods is legitimately placed by the trademark holder or his licensee; second, the trademark owner in the original country is the same person of the trademark holder in Japan, or relates to the trademark holder in Japan as viewed as the same source of the goods; third, the parallel imported goods are evaluated as not substantially different in term of quality from the goods sold by the trademark holder in Japan. If imported goods are sold very cheap due to low quality, or the package is replaced with another one, the imported goods may not be legitimate and may infringe the trademark right of the owner in Japan.