Trademark Registration in Japan
JAPAN?S TRADEMARK LAW- A CUT ABOVE THE REST
-Shantanu Jugtawat*
?Trademarks have significance not only for private consumers but for corporations that sell goods and furnish services as well. Long ago, in an economy of face-to-face trade and of craftsmen and women, merchants considered credibility (or reputation) to be a vital asset. The more credible the merchant was, the more goodwill he or she acquired. At one point, merchants use the word “goodwill” as a mark to indicate consumer satisfaction, on other occasions the word was used to indicate a quality business organization. Marks are more unique in today?s highly developed distribution economy, but trademarks still play a role of immeasurable importance in facilitating economic activities.
Trademarks play a vital role in day-to-day choices made by the consuming public. Consider the effect of trademarks on those who purchase goods and receive services, consumers. Consumers rely on trademarks; for example, to more easily facilitate repeat purchases of goods or services based on a previous pleasurable experience or a manufacturer?s reputation for quality. Trademarks enable consumers to make repeated purchases without extensive research?*.
A trademark registration system was also implemented that, over time, encouraged the emergence of “trademark as property. ” As the economy developed further, trademarks became recognized as important intellectual property. As a result of the evolving intellectual property perspective, a number of revisions of trademark legislation have been attempted and various interpretative studies have developed regarding Trademark Law. Because trademarks have great significance for consumers in the distribution economy, future Trademark Law examinations and interpretive studies should significantly take into account the perspective of consumer protection.
Section 1. Functions of Marks
Trademarks are signs that are associated with the exchange of goods and services. A “sign” is a mark; its function is identification. A trade ?sign? is a representation enabling an article to be identified and distinguished from others on the basis of its origin.
Under the Trademark Law of Japan, marks are defined as “characters, figures, symbols, three-dimensional shapes or any combination thereof, or any combination thereof with colors. ” (Article 2, Paragraph 1)
Japan’s Trademark Law protects trademarks and service marks. As is the case with patent applications, a resident agent (usually a lawyer or patent agent) must prosecute the trademark application and as with the processing of patent applications, Japan’s trademark registration process can be slow. Any company planning on doing business in Japan should file for trademark registration as early as practicable .
Unfair Competition and Trade Secrets:
The only protection available for a trademark in Japan prior to registration is under the Japanese Unfair Competition Prevention Law. Under this law, the owner of the mark must demonstrate that the mark is well known in Japan and that consumers will be confused by the use of an identical or similar mark by the unauthorized user. In 1990, Japan enacted amendments to the law that provided some protection from theft of trade secrets, such as know-how, customer lists, sales manuals, and experimental data. The law, which was amended completely in 1993, also provides for injunctions against wrongful use, acquisition, or disclosure of a trade secret by any person who knew or should have known that the information in question was misappropriated. The judicial process, however, makes the enforcement of rights without loss of trade secrets difficult.
Effectiveness of Trademarks
The trademark in Japan is valid only when it is registered for a certain category of goods. Thus it is possible to have the same trademark for different categories of products, without problem. The registration is with the Patent Agency.
However, to use the same trademark, or a similar one, for the same category of goods would violate the trademark. The trademark rights holder would then be able to seek an injunction and compensatory damages. There is also a possiblity of criminal penalties of five years imprisonment and 5 million yen in fines. This is obviously taken quite seriously, so it is advisable that adequate trademark research be carried out before using one. Nevertheless, even if another party had registered a trademark before you, if you have been using it from before, and it is well known among users, you may continue to use it. It is still advisable to make due research and timely registration in order to avoid conflict. Another exception is that if even a party registers a trademark first, if they do not use it for 3 years without suitable reason, another party can file an application for the cancellation of the trade mark in question.
Requirements for Registering a Trademark. –
Trademark registrations are made with the Patent Agency. The first to file gets the rights. The rights arise from the moment the moment it registered . As much as possible the symbol of the trademark should have characteristics such that as much as possible it can be distinguished from the products of services of other companies . There are two times when similarity becomes a problem. At the time of application and at the time of infringement. There are three aspects that are looked at in determining similarity. There is similarity in external appearance. Here if the trademark is looked at externally, and the lettering, drawings and markings look similar. Secondly is similarity in impression. If two trademarks have similar meanings there could be a similarity in impression. Finally, there is similarity in name, if they have similarity in sound. Thus Sony and Somy may fall in this category. In reality even experts often disagree in this area and there is a great Probaility existence of involving in litigation on these issues.
Obtaining Protection of Trademarks: Time priority in seeking registration is the major factor which enables one to exclude other potential users of a trademark in Japan. In terms of the time frame for obtaining registration, an application will typically be approved in two to three years from the date of filing if it is not contested. Electronic filing procedures have been created to streamline the application process. Neither current use nor the intention to make future use of a mark in commerce is a requirement for obtaining registration.
The following (among other) information must be included in an application for registration of a trademark in Japan:
(a) The applicant’s name (and, for companies, the representative’s name), address and place of incorporation;
(b) The specific “International Class(es)” in which registration of the trademark is desired. Also, the subclasses of goods and/or services in relation to which use is to be registered must be designated, including any desired limitation to specific goods and/or services contained in a subclass.
Invalidation Trial of Trademark Registration
(1) In the following cases, an interested person or an examiner may demand a trial to invalidate the registration of a trademark or the supplementary registration of designated goods. In such a case, if two or more designated goods are covered by the trademark registration, a demand for an invalidation trial may be made for each of the designated goods:
(i) the registration has been effected contrary to proviso of Article 3, Articles 6 to 8, Article 12(2) (second sentence), (5), and (7) to (9) of this Law or contrary to Article 25 of the Patent Law applied under Article 5 of the Law;
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