IP Information

Intellectual Property News in Japan

2018/04/02

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.
 
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/41-100-03.pdf
 
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.
 
Example:

Goods Sub-class
soya bean paste 31A01
soy sauce 31A02
sugar 31A03
cooking salt 31A04
Umami seasonings 31A05
Sub-Class Total 5
When you add “seasonings, other than spices” ->
Goods Sub-class
soya bean paste 31A01
soy sauce 31A02
sugar 31A03
cooking salt 31A04
Umami seasonings 31A05
Seasonings, other than spices 31A01 31A02 31A03 31A04 31A05
Sub-Class Total 1

 

 
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.
 
Example:

Goods Sub-class
soya bean paste 31A01
soy sauce 31A02
sugar 31A03
cooking salt 31A04
Umami seasonings 31A05
Seasonings, other than spices 31A01 31A02 31A03 31A04 31A05
Sub-Class Total 5

 
WARNING:
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).

2017/11/01

1) Design Search

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:

https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage

 

2) The registration process

 2-1 The information necessary for filing a design application

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.

 

2-2 Registrable designs

The following designs are registrable:

  • Shape, patterns or colors, or any combination thereof, of an article (including a part of an article), which creates an aesthetic impression through the eye.

 

> 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.

 

2-3 Classification of article

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.

 

2-4 Filing Fee (Application Fees)

One design application: 16,000 yen

Note that the above amounts are official fees only and do not include our service fees.

 

3) Examination

> 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:

  1. The design should be a shape, patterns or colors, or any combination thereof, of an article, which creates an aesthetic impression through the eye.
  2. The design should be utilized industrially.
  3. The design should have novelty.
  4. The design should be innovative.
  5. The design should not be liable to injure public order or morality.
  6. The design should not be liable to create confusion with an article pertaining to another person’s business.
  7. The design should not consist solely of a shape that is indispensable for securing functions of the article.
  8. The design should not be identical with or similar to the prior filed design of another person.

 

> 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.

 

4) Registration

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.

 

5) Appeal

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.

 

6) Publication of Design Gazette

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.

 

7) Invalidation trial

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.

 

8) Annuity payment

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.

 

9) Registered Design Notice

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.

 

10) Hague Agreement – The International Design System

Japan joined the Hague Agreement in May 2015. Accordingly, you can file an international application designating Japan to register a design.

 

2017/01/01

1) Trademark Search

All trademark applications undergo an official database search for prior marks, but it takes several months for this process to be completed. Accordingly, it is always advisable to conduct a trademark search before filing an application in order to avoid unnecessary costs caused by adopting marks which conflict with someone’s prior right.

The Japanese Patent Office (JPO) provides a trademark database available on the internet for free which is called as “Japan Platform for Patent Information (J-PlatPat).” On this database you can search trademark applications and registrations, well-known Japanese marks as well as acceptable identifications of goods or services, etc., at the following link:

https://www.j-platpat.inpit.go.jp/web/all/top/BTmTopEnglishPage

2) The registration process

2-1 The information necessary for filing a trademark application

We need the following information and documents for filing a trademark application in Japan.

– A specimen or depiction of the trademark
– A list of goods/services to be covered by the application
– The applicant’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 trademark application, no Power of Attorney is required.

2-2 Registrable marks

The following signs that are capable of distinguishing the goods or services of one entity from another are registrable as a trademark:

– Words, devices, three-dimensional shapes or any combination thereof, or any combination thereof and colors

In addition to regular trademark registrations, collective marks, regional collective marks, defensive marks*, and service marks may also be registered.

* A defensive mark is a trademark applied for by a trademark owner of a famous mark for goods and or services other than the goods/services designated in the original trademark registration. The registration of a defensive mark can prevent a third party from registering and using a mark which is identical to the defensive mark on the goods/services designated in the defensive mark registration. A defensive mark registration is immune to cancellation action based on non-use of the mark.

> Non – Traditional Trademarks
As from April 1, 2015, non-traditional trademarks, such as Motion Marks, Hologram Marks, Color per se marks, Position Marks and Sound Marks, are registrable in Japan.

2-3 Classification

Japan has adopted the 11th edition of the International Classification as of January 1, 2017.

> Class Headings:
The class headings of the Nice Classification are not accepted because they are considered to be too broad.

> Multi Class application:
Multi-class applications are available in Japan.

> Retail Services:
The JPO has been accepting the registration of retail and wholesale services since April 1, 2007.

2-4 Filing Fee (Application Fees)

  1. a) One trademark in one class: 12,000 yen.
    b) One trademark in multiple classes: 12,000 yen for the first class, and an additional 8,600 yen for each additional class.Note that the above amounts are official fees only and do not include our service fees.

3) Examination

The JPO examines whether an application fulfills the substantive requirements such as distinctiveness, the existence of prior applications/registrations etc., as well as the formal requirements. It will generally take 4 months to 7 months until a first official action (decision of registration or notice of refusal) is issued.

> Accelerated Examination
In the case of an emergency, the examination can be accelerated upon request. The acceleration of trademark examination is accepted if the trademark application only designates the goods/services to which the applied mark has actually used, or it is an emergency case (the applied mark is being used by an unauthorized party, etc.)

> 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 the Office Action is 3 months from the date of the issuance of the notification. Under the current practice, a 1 month extension of this deadline and a subsequent 2 month extension are available.

> Amendment of Goods/Services
An applicant can amend identifications of goods and services designated in a trademark application after filing at any time during the examination, in order to limit or clarify the original goods and services. However, the amendment of goods/services cannot be made beyond the scope of the original goods and services at the time of filing.

Please note that, as for Madrid Protocol applications, an amendment is allowed before the JPO only within the fixed term in which a response to the provisional refusal can be filed.

> Amendment of Trademarks
Only very minor amendments are allowed to the trademark itself.

Please note that with respect to Madrid Protocol applications, the amendment of trademark is not allowed.

> Letter of Consent/Co-existence Agreement
The JPO does not accept the submission of a letter of consent or the like to overcome the conflicting prior mark in Japan.

4) Registration

If the JPO examiner finds no reason for refusal of registration, the examiner issues a decision of grant of the trademark. 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 is 28,200 yen per class which covers only the official fees.

The duration of a trademark registration is 10 years from the registration date.

5) Appeal

If the trademark application is eventually refused by the examiner, regardless of submitted arguments, 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.

6) Opposition

After registration, the trademark is published in the Trademark Gazette for opposition purposes. Anyone may file an opposition within 2 months from the date of publication. The deadline for filing the opposition is NOT extendable.

7) Invalidation trial

An invalidation trial is available to attempt to have a trademark registration cancelled. Any person who has a legal interest can file an invalidation trial against the trademark registration based on a prior registration, the lack of distinctiveness, or unregistered famous mark, etc. An invalidation trial can be filed at any time after registration, but certain reasons for an invalidation of registration, such as the lack of distinctiveness and/or a prior registration, etc. cannot be claimed as grounds for an invalidation trial after 5 years from the registration date.

8) Non-use Cancellation

If the registered trademark has not been used over the past three years, anyone can request a cancellation trail against the registration based on non-use.

An owner of a trademark registration has the burden of proof to prove that the mark has been used over the past three years by the owner or a licensee, or that there is a justifiable reason which excuses non-use. It is not necessary for the plaintiff to submit any evidence proving the non-use of the trademark at the time of filing the non-use cancellation trial. If the owner does not submit any evidence showing the use of the mark with respect to any of the goods/services which are sought to be cancelled, the JPO will issue a trial decision to order that the registration be cancelled.

9) Renewal

A request for renewal must be submitted within 6 months before the expiry date. If no request has been filed in time, late renewal is still possible within a grace period of 6 months by paying a surcharge of double the amount of the usual renewal fee.

Neither proof of use nor a signed Power of Attorney is required to renew the registration.

The renewal fee is 38,800 yen per class which covers only the official fee.

10) Registered Trademark Notice

It is not compulsory to put a registered trademark symbol after the registered trademark. The use of registration trademark symbol will not give you any additional legal protection. Under the Japanese trademark Law, a notice of trademark registration is done by displaying the phrase “Registered Trademark” and its registration number.
The circled capital letter “R” is not an official trademark registration notice in Japan, but it is commonly used in the marketplace.

11) Madrid Protocol

Japan joined the Madrid Protocol in 2000. Accordingly, you can file an international application designating Japan to register a mark.