1. Implementation of a Letter of Consent Policy
According to the Japanese Trademark Law it is not possible to register a trademark deemed similar to a mark that is already registered (Article 4 (1)(xi)). Until now, the Japanese practice did not allow for similar marks to be registered even if the applicant had consent from the prior rightsholder. However, this amendment will allow for the adoption of a Letter of Consent policy, and the JPO will permit registration of a mark by consent as long as the marks in question will not cause confusion among consumers and traders. The likelihood of confusion will be determined by the JPO Examiner, and if the marks are deemed confusing the submission of a Letter of Consent may not be sufficient to overcome a reason for rejection involving the citation of a prior mark.
2. Trademarks Including People’s Names
Currently, registration for a trademark that includes the name of another person (first and last) cannot be obtained without the consent of the person or people with the same name, which is often logistically impossible (Article 4 (1)(viii)). If the Examiners found anyone with that same name as that of the applied-for trademark, to date they would issue an Office Action requesting submission of consent from all persons with that name. However, after this amendment takes effect, if the same-named person is not already well known or in some way already famously associated with the goods/services (or field) in question, the JPO will no longer demand submission of authorization. This amendment is in response to many complaints, particularly from the fashion design industry, where designer’s names are commonly used as trademarks.
3. Simplification of Declarations Regarding the Exception to Lack of Novelty of Design
Under the Design Act, in principle, if a design is published before the application is filed, it cannot be registered. However, if a declaration is submitted within one year from the publication, it will be treated as an exception that the design was not published. In the past, when a design creator, etc. published a design multiple times, it was necessary to submit a certificate for each of the multiple times. With this amendment, only a single submission will be necessary.
4. Imitations Prohibited in the Metaverse
The Unfair Competition Prevention Law prohibits the act of making a dead copy (imitation of another person’s product) within three years of its sale/release (Article 2 (1)(iii) ). However, since data does not inherently have a “form”, until now it was not clear whether or not this regulation would apply to dead copies of fashion and/or product designs in the so-called “Metaverse.” However, the upcoming revision will make it clear that this the scope of this regulation will include the Metaverse. In other words, due to the revision, the act of copying other people’s products on the Metaverse has been and will continue to be prohibited.
For International Applications or subsequent designations filed after April 1, 2023, the Japan Patent Office (JPO) will no longer utilize its current payment system consisting of two-part individual fees. In accordance with the revision of the Trademark Act, as of April 1, 2023 the JPO will shift to a payment system wherein all fees must be paid at the time of filing.
The JPO has also adopted a new policy whereby the certified copy of a registration decision is electronically sent to the either the IR applicant or their International Bureau (IB) representative via the IB (but not to the local representative in Japan).
These changes will apply to applications or subsequent designations whose filing date is on or after April 1, 2023.
The Trademark Examination Manual has been revised, effective April 2, 2018.
In Japan, when an application designates a number of sub-classes in a single class that is more than the stipulated amount, under Article 3.1 of the Trademark Act an Office Action may be issued requiring submission of either a) proof of use or b)-1 a Declaration of “Intent to Use” and also b)-2 a business plan.
Through April 1, 2018 the “stipulated amount” mentioned above regarding standard goods and services (excluding retail services) was “eight or more,” and the stipulated amount for retail services was “two or more.” However, regarding the treatment of the former case (goods and services, excluding retail services), due to the revision, the stipulated amount of sub-classes that can be designated without triggering an Office Action was raised from seven (7) to twenty-two (22), effective April 2, 2018. In addition, the way in which these sub-classes are counted was also changed.
Manner of Counting Sub-Classes to Date
Several sub-classes that were attributed to a single specification of goods were counted as “one” sub-class. Due to this, by adding a specification of goods that has several sub-classes, the total number of sub-classes could technically be reduced.
|When you add “seasonings, other than spices” ->
Manner of Counting Sub-Classes as of April 2, 2018
From now on, each sub-class attributed to a specification of goods will be counted individually. Accordingly, unlike as was possible previously and indicated above, there is no way to reduce to total number of calculated sub-classes.
|soya bean paste
|Seasonings, other than spices
|31A01 31A02 31A03 31A04 31A05
While this revision actually raised the ceiling on the stipulated number of sub-classes allowed (up to 22), because of the change in the way the sub-classes are counted, an application designating the same goods or service as previously might still be the recipient of an Office Action (Reason for Refusal).
Only registered designs are published in the Design Gazette. In other words, as pending design applications and refused design applications are not made public, you cannot know them by conducting the pre-filing search. In this sense, a pre-filing design search is very limited and is seldom used in practice.
The Japanese Patent Office (JPO) provides a design database available on the internet for free which is called as “Japan Platform for Patent Information (J-PlatPat).” On this database you can search for only design registrations already published, etc., at the following link:
We need the following information and documents for filing a design application in Japan.
– A common name of article under design
– Formal drawings or photos consisting of 6 views (front, rear, top, bottom, right side and left side views)
– The applicant’s formal name, address and nationality
– The designer’s formal name, address and nationality
> Priority Claim
It is possible to claim a priority right under the Paris Convention. If you wish to claim the priority right, please inform us of the filing date and the country name of the first application. A certified copy of the first application as filed has to be submitted within 3 months from the filing date of the Japanese application.
> Power of Attorney
Please be advised that, when filing a design application, no Power of Attorney is required.
The following designs are registrable:
> Partial Design
A part of the shape, etc. of the article can also be protectable as a Partial Design.
> Related Design
If the applicant files plural similar design applications simultaneously, one design can be registered as a Principal Design and other designs can also be registered as a Related Design to that Principal Design.
A design application shall be filed for each design in accordance with a classification of articles as provided by an Ordinance of the Ministry of Economy, Trade and Industry.
A multi-design application cannot still be allowable. A single application covers only one design of one article, except where a specific set of plural articles such as a set of “tea cups and dishes” is allowable.
One design application: 16,000 yen
Note that the above amounts are official fees only and do not include our service fees.
> Formality Check
An application document submitted to the JPO will be checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made if necessary documents are missing or required sections have not been filled in.
> Substantive Examination
The JPO examines whether an application fulfills the following requirements et al:
> Office Action
When the JPO examiner finds any reason for refusal of registration, the examiner issues a preliminary notice of refusal. The initial term for responding to this notification is 3 months from the date of the issuance of the notification. Under the current practice, only a 1 month extension of this deadline is available.
> Argument and/or Amendment
An applicant may submit either an argument against a preliminary notice of refusal or an amendment that would nullify the reasons for refusal.
If the JPO examiner finds no reason for refusal of registration, the examiner issues a decision of grant of the design application. The applicant must pay the registration fee within 30 days from the issuance of the grant decision. Otherwise, the application will be dismissed. The registration fee, namely, the 1st to 3rd year annuities in a lump is 25,500 yen, which covers only the official fees.
The duration of a design registration (excluding a Related Design registration) is 20 years from the registration date, but the duration of a Related Design registration has the same duration as the Principal Design registration.
If the design application is eventually refused by the examiner, regardless of submitted argument and/or amendment, the applicant can file an appeal before the Trial and Appeal Board of the JPO within 3 months from the issuance of the final refusal decision. The appeal deadline is NOT extendable.
After registration, the design is published in the Design Gazette to inform the public of the establishment of the design right, but except for the design which the applicant requested that it be kept in secret for a period of less than 3 years from the registration date. There is NO opposition system under the current Japanese Design Law.
An invalidation trial is available to attempt to have a design registration cancelled. As a rule, any person can file an invalidation trial against the design registration based on a non-industrial utilization, lack of novelty, non-innovativeness, etc. An invalidation trial can be filed at any time after registration.
4th and subsequent year annuities must be paid by each payment due date. Even if no payment is made in time, late payment is still possible within a grace period of 6 months by paying a surcharge of double the amount of the usual annuity.
The annuity is 16,900 yen for each year from 4th to 20th year, which covers only the official fee.
It is not compulsory to put a registered design symbol after the registered design. The use of registration design symbol will not give you any additional legal protection. Under the Japanese Design Law, a notice of design registration is done by displaying the phrase “Registered Design” and its registration number.
The circled capital letter “R” is not an official design registration notice in Japan, but it is commonly used in the marketplace.
Japan joined the Hague Agreement in May 2015. Accordingly, you can file an international application designating Japan to register a design.