Comprehensive Guide to Trademarks in Japan

In Japan, trademark rights are acquired by trademark registration, and trademark registration requires an examination procedure.

What is the legal or other basis for trademark protection in Japan?

The Trademark Act is used to establish trademark rights. Specifically, trademark Act Chapter II: “Trademark Registration and Applications for Trademark Registration”.

What is the definition of a trademark?

Any characters, figures, signs, colours, three-dimensional shapes, or any combination thereof could be used as trademarks under Article 2 of the Trademark Act. Trademarks for sounds, position, motion, and holograms can all be registered.

The applicant must be currently using or planning to use the trademark in the near future (ie, within three to four years of registration).

The following are the conditions that an identifier must fulfill in order to function as a trademark:

• 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).

Article 3(1) of the Trademark Act states that a trademark that does not allow consumers to identify certain products or services as belonging to a certain company is unsuitable to operate as a trademark.

The following trademarks, for example, are not able to register:

• 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))

In addition, the following are ineligible to be used 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; and
• a mark which is likely to mislead as to the quality of the goods or services.

Procedure for registering a trademark in Japan

The Japan Patent Office (JPO) supervises the registration procedure. From January 1, 2012, the JPO began using the Nice Agreement’s International Classification.

The applicant must specify the goods or services for which the mark will be used (as well as the categories of goods or services specified by Cabinet Order). The applicant must also be using the trademark or intending to use it soon (ie, within three to four years of registration).

After the filling the application to the JPO, 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).

A trademark is ineligible for registration under the Trademark Act 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)).

Even if the trademark is just descriptive, it may be eligible for registration as a’regional collective trademark.’

An organization, as defined in Article 7, might, for example, register a well-known but descriptive mark consisting merely of characters that represent, in a common way:

• the name of the region; and
• the common name of the goods or services.

A third party can tell the JPO that the trademark cannot be registered under any of the following articles of the Trademark Law before the application is published.

The average first office operation number of pending for trademark examinations in 2018 was 7.9 months, according to the JPO Status Report 2020. In 2018, the response time for trademark examinations was 9.3 months.

An appeal against a decision to reject registration can be filed with the Japan Patent Office (JPO) within three months of the decision’s issuing (which may be extended to four months in the case of a foreign applicant).

An appeal board, usually consisting of three appeal examiners, will consider the case. At the examination stage, an appeal can be made against a JPO decision. 

The applicant may change the specified products or services, as well as the mark, as long as the application’s content is not affected. The examiner will reject any modification that affects the content of the application; this decision can be challenged to the JPO’s appeal board.

If the appeal board determines no cause for the application’s denial, it will issue a registration appeal determination. If the appeal board determines that the reasons for rejection in the examiner’s judgment of rejection (prior to the appeal) were not addressed, an appeal decision of rejection will be issued. If the appeal board determines that there are further reasons for the denial, it will issue a notice of grounds for rejection, and the applicant will have the opportunity to make remarks.

Within 30 days of receiving an unfavorable decision from the appeal board, a party may submit an appeal with the IP High Court, asking revocation of the ruling (this period may be extended for a foreign applicant).

Oppositions of a Trademarks in Japan

Any third party can register an objection to one or more specific products or services, citing relative and/or absolute reasons for rejection.

An opposition to a trademark registration may be submitted within two months after the registered trademark’s publication. Within 30 days of the opposition date, the opponent must provide substantive grounds against registration (this period can be extended by an additional 60 days in the case of a foreign opponent).

An appeal board will examine the registration when an opposition has been submitted. Typically, oppositions are performed via written materials. A notification of reasons for revocation will be given if and when the appeal board deems that the registration should be cancelled. In response to the notification, the trademark owner can file the remarks.

If a trademark is registered in violation of the Trademark Act (for example, notwithstanding the existence of a confusingly similar trademark), the registration shall be considered invalid from the date of registration.

Only a trademark owner who has received a revocation judgment can appeal to the IP High Court, seeking that the decision be canceled; other parties cannot appeal an opposition ruling.

An interested party can bring a nullity action regardless of whether or not an opposition is filed, and regardless of the outcome of the opposition.

Infringement occurs when another party uses a comparable trademark for a similar range of products or services, and the remedies listed in question 7.1 applicable.

Furthermore, a defensive trademark system is provided in Japan to prevent trademark dilution for well-known brands. A defensive trademark can be applied for by the owner of a well-known brand for products or services that it does not plan to utilize. If a defensive trademark is registered for specified products and services after inspection by the Japan Patent Office, the owner of the defensive trademark can seek an injunction.

A complaint of trademark infringement can be filed in district court by the trademark and/or its exclusive licensee.

Before filing an infringement lawsuit, the trademark owner and/or its exclusive licensee may send a warning notice to the infringer, however this is not always the case.

Finally, 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.

Within six months after the priority date, a trademark application may be submitted with the Japan Patent Office claiming priority based on a trademark application filed in a member nation of the Paris Convention.