English
Yes, for a broader and stronger protection in Japan, we recommend registering your trademark in local characters.
If the trademark is registered only in its original version (Latin characters), the protection does not always properly protect its equivalent in the local language. This means that a third party could use or register the same trademark (or a similar one) in local characters.
In additional to the legal benefits, the registration and use of the trademark in local characters can also have commercial benefits. The public in Japan will recognize your brand more easily if they are able to read and correctly pronounce the mark.
Registering your trademark in its original version, as well as local transliteration/translation, will provide a greater protection from any possible infringements.
The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in Japan.
If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).
In this case, proceeding with two trademark applications has the following advantages:
- Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
- You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
- Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.
If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.
The average time frame for the registration approval is 6 months, if no objections or oppositions arise.
No. The registered mark will be protected only in Japan.
Yes. A power of attorney is a requirement for completing the application.
No. Applicants do not gain any benefit from pre-filing use of the mark.
Yes. Non-use of a registered mark makes it vulnerable to cancellation.
Any sign or mark that can be replicated graphically and can distinguish a good/service from others is registrable:
- Names
- Words
- Motion
- Devices
- Holograms
- 3-dimensional shapes
- Trade dress
- Slogans
- Colours
- Sounds
The sequence of trademark application in Japan is as follows:
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Examination – The trademark office will examine the application in terms of:
- Deceptiveness
- Distinctiveness
- Clarity
- Classification
- Formalities
- Conflict with earlier registrations
- Violation of morals or public policy
- Unauthorized use of a stage name, pen name, or portrait of a person
- Similarities with a mark that has recently expired (within one year)
- Marks that mislead the consumers about the good’s or service’s quality
- Conflict with a name that is being used for rice
- Registration – A registration certificate will be granted if the application passes the examination phase.
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Publication – The following details will be made available to the public so interested parties can oppose if need be. Note that there will be no print version of the publication rather it will be saved in a DVD format.
- Mark
- Goods/services
- Name and address of applicant
- Citizenship and country of incorporation of the applicant
- Date and number of application
- Date when the mark was first used
- Trademark representation
- Information about priority claim
- Specimen
These marks are non-registrable according to Japan’s trademark laws:
- Marks that are against the principles of morality or signs that oppose public policy
- Generic words or marks with common meaning
- Marks that consist of flags, emblems and names of states, regions, nations and international organizations
- Marks that are lacking in acquired distinctiveness
- Marks that are primarily used as a surname
- Marks that are primarily used as a name of a geographical location
- Marks that use a signature, portrait or name of a person without authorization
Yes. Nice Classification us being used in Japan. One application suffices for all the classes of goods/services that the trademark will cover. Multiple applications are also allowed.
Yes. The filing date in home country can be used as the filing date in Japan if:
- Home country is a Paris Convention member
- Filing date in home country does not exceed 6 months prior to filing date in Japan
- Home country is a WTO (World Trade Organization) member
- International registration can be based in Japan
The mark must be used within 3 years after the registration date and within any 3 consecutive years during its term of validity. Minimal use is necessary and it must occur in this jurisdiction.
The registered mark is valid for 10 years starting on the registration date.
The first renewal date will be 10 years from the date the registration was granted.
Yes, it is legal to use a mark for goods/services even if it is not yet registered.
Rights are established through registration. However, a well-recognized mark is still protected in Japan even if it is not registered.
Japan’s trademark office is available online at: http://www.jpo.go.jp/
Yes. Before you can apply for registration, it is mandatory that there is actual use of the mark or at least an intention to use the mark.
Applications can be opposed based on:
- Rules regarding registrable marks
- Rules regarding non-registrable marks
Any interested party may initiate the opposition.
Cancellation against registration is possible on the following grounds:
- Marks is disparaging to a person’s dignity
- Bad faith
- Prohibited marks
- Mark is used in a deceptive or misleading manner
- Mark uses a protected badge or emblem
- Mark contradicts moral standards or opposes public order
- Geographical indication
- Mark uses a protected armorial bearing, flag or state emblem
- Generic or too common marks
- Functional, misleading, deceptive, disparaging, non-distinctive, or descriptive marks
Yes. Owners of a registered mark in Japan obtain these rights:
- Exclusive right to use the mark
- Right to object to succeeding conflicting applications
- Right to petition for the cancellation of a succeeding conflicting registration
- Right to take a legal action against third parties for infringing the sign
- Right to obtain payment or damages from third parties due to infringement
- Right to authorize third parties to use the mark
- Right to petition for the confiscation (by customs authorities) of counterfeit goods
The opposition period will begin on the date the Official Gazette was issued and will end two months after that date.
Yes. Japan is a Madrid Protocol signatory.
No, it is not necessary to submit periodic statement of use.
You must renew the mark every 10 years.
The first renewal date will be 10 years from the date the registration was granted.
No documentation is needed for renewals.
You have 6 months to renew the mark after its expiration date.