The whole procedure from filing to registration is shown in the flow chart below.
The international registration of a trademark nowadays is commenced in accordance to the framework of the Madrid Protocol and became the standard proceeding for a cost-effective registering a “worldwide” trademark right. The Madrid protocol provides the registrant to conveniently obtain protection for trademark registration registrant in various countries at foreseeable costs.
Nevertheless, the convenience for the trademark holder often ends when extending the territorial protection using the Madrid Protocol into Japan, because the Japanese Patent Office may issue a provisional refusal, which requires the appointment of a local representative in Japan.
The resolution of the reasons for provisional refusal can be frustrating due to predicament with regard to Japanese linguistic pitfalls as well as examiner’s point of views with regard to classification etc. This said, and -although a Madrid Protocol trademark registration designating Japan is deemed to be a Japanese trademark registration filed on its international registration date- there are some differences in the proceedings between such an international trademark registration and a domestic trademark registration, and certain points unique to Japan such as the three different local alphabets (Katakana, Hiragana and Kanji) etc. have to be taken in consideration when designating Japan.
Japanese national Trademarks (via the Paris convention treaty or domestic marks)
The local registration of a domestic mark or extending it to a small number of countries via the Paris convention treaty maybe a cost-effective way, assuming that an registrant seeks registration of a trademark only in Japan and not for a bundle of other countries worldwide. The domestic registration procedure takes about six months from the filing date of a direct trademark registration.
In case of a provisional refusal the registration proceedings are prolonged by about three months, whereas delays in the payment of the registration fees may further slowdown the registration processing.With regard to the Paris convention treaty a trademark registration directly with the JPO has to filed at the patent office of a signatory state within 6 months after the priority date established at the JPO. A multi-class trademark registration r can be filed at the JPO.
In principal, registerable trademarks include any characters, figures, signs or three-dimensional shapes, colors, or any combination thereof, and sounds, whereas smells and fragrances cannot be registered as a trademark.
In particular, word marks consisting only of western language letters of the (Roman-) Alphabet, Arabic numerals, and characters of the Japanese alphabets (Katakana, Hiragana, Kanji) designated as standard characters by the Japan Patent Office can be designated a “standard character mark”.
Moreover, three-dimensional marks adequately describing a three-dimensional shape can be filed, whereas drawings that cannot be combined into a single three-dimensional view and marks containing both, two- and three-dimensional nodes may suffer rejections.
In addition, colors, sounds and other marks such as motion marks comprising of text and/or a design, which moves or transforms over time, and hologram marks, which comprise of text and design which holographically change over the point of view, can be filed at the JPO. For a successful color mark registration, the mark maybe comprises of a single color or a combination of multiple colors and maybe specify (a) specific position(s) on goods, etc. The registrant may choose a sound mark if the mark consists of music, voices, sounds, etc. that can be perceived aurally. In case the position of mark is of importance for the registrant’s business, a position mark that consists of text or designs that are placed in a specified position of articles or goods maybe provides best protection for the registrant’s brand.
In any case, the registrant has to provide the following information upon filing the mark at the JPO:
the mark as the subject for which trademark registration is sought;
the designated goods or services and the international classification of said designated goods or services, whereas a mark can be filed in multiple classes for said designated goods and services. Please note that JPO does not accept all class headings of the Nice Agreement, but does allow certain designations unique to Japan as listed in the JPO’s Examination Guideline.
the registrant’s name and address;
Though it is not required to provide a power of attorney at the time of filing, it is necessary for the representative to file a power of attorney in case of formal changes to the registrant’s name, the status of the registration (abandonment/withdrawal) or at the time of filing an appeal. Thus, we suggest to provide us with power of attorney at the time of taking over representation in order to order to timely and effectively react to official correspondence from the JPO.
If claiming a foreign priority date for a first filed foreign trademark registration under the Paris convention treaty, the filing date, the country name and the registration number are required. A priority document has to be filed within 3 months from the filing date of the registration.
Note:For foreign registrants extending their international registration to Japan or filing a national trademark registration, we strongly recommend to commence a research of the target trademark before filing an registration in Japan.
With regards to envisaged and designated goods and services the registrant should keep in mind that not all class headings of the Nice Agreement are accepted, but certain designations unique to Japan including retailing and wholesaling differ and may limit the scope of allowance.
If a trademark registration was filed a formality examination is commenced at the JPO. The bibliographic data and the formal data of the trademark registration as filed are checked against the data already provided to the JPO and if not coinciding a formal notice for correction is issued by the JPO.
Note:In particular due to different transcription of foreign languages into Japanese language or a change of address of the registrant etc., for example when filing for a renewal with based on updated registrant information or when changing the local representative such formal notice may be issued.
The substantive examination comprises the examination of absolute or relative grounds for refusal. The reasons for rejection or a decision of registration are notified to the registrant in a first office action.
From the start of the formal and substantial examination to the issuance of first office action it takes approximately 6 to 7 months.
If the trademark registration meets specific requirements expedited examination is available. For a trademark registration that has a corresponding foreign registration such requirement is fulfilled.
Note:With regard to the indication of designated goods/services not all classification headings of the Nice Agreement are accepted by the JPO without filing amendments of the indications to clarify to scope of the indication with regard to the Japanese practice, in particular if the indication is deemed too vague or ambiguous.
If no reason for refusal for the subject of the registration was determined, a decision of registration is issued. In this case, the registration proceedings will be concluded with the payment of the registration fees and the trademark right comes into force with said registration fee payment. Thus, the in best (earliest) takes approx. 8 to 9 months case from filing date to establishment of the trademark right.
In case that there are reasons for refusal a notice for reasons for refusal (or in case or an international trademark registration, a provisional refusal) is issued as a first office action. The registrant can file a written argument and an amendment to overcome the notified reasons for refusal in the office action. The term for a response to the office action for a foreign registrant is 3 months. This term can be extended by 3 months.
A response to a notice for reasons for refusal (provisional refusal for an international trademarks) issued to a foreign registrant has to be filed by a local representative within 3 months.
Note:With regard to a provisional refusal for an international trademarks the most likely hurdle to overcome is the predicament to the territorial extension of the international trademark in Japan is the verification of "use" or "intent to use".
Though the JPO does not require any documents to verify "use" or "intent to use" of a trademark, the JPO is most likely issuing a notice of reason for provisional rejection that considers the scope of the indication as being too broad if there is doubt about the field of business of an registrant designating an registration for so-called "general retail services or wholesale services”, a corporation designates its registration for so-called "general retail services or wholesale services which cannot be verified or a trademark registration designates a plurality of retail services or wholesales services with regard to "specific goods" which are categorized into two or more similar codes.
In order to overcome such reasons for provisional refusal for an international trademark, a declaration of use or intent-to-use, or limitation of the designated goods/services by an amendment can be filed at the JPO.
Moreover, as there no equivalent to a letter of consent system in Japan, a consent letter is not efficient for resolving the reasons for a provisional refusal on the similarity to a prior registered trademark.
Furthermore, in contrary to the filing of a national trademark registration, the division and conversion of an international trademark registration extended to Japan is not allowed for Madrid Protocol trademark filings designating Japan.
n case the written argument and amendment cannot convince the primary examiner, a decision of refusal is issued and the trademark registration is rejected in the first instance examination proceedings.
If the registrant is not satisfied with the findings of the first instance examiner, an appeal against the decision of refusal can be filed within 3 months after the issuance date of the decision. The appeal trial against the decision of refusal is headed by a board of appeal trial examiners, and if said board of appeal decides that the reasons for refusal were resolved, an appeal decision to register the trademark right is issued. In case the reasons could not be resolved, an appeal decision of refusal is issued and the appeal is dismissed. This second instance decision of the board of appeal is commenced at the JPO and can be further appealed.
The appeal trial proceedings take approx. 6 to 9 months. For filing an appeal and to start the appeal trial a power of attorney of the trademark registrant is necessary. Thus, in case the registrant data are not up-to-date or there were in between mergers, name changes, assignments etc., such changes maybe need to be recorded in official register.
Thus, in order to provide a proper power of attorney to take over the representation of the case it is necessary to keep the representative informed about the registrant data.
Note:The filing for a recordal of such register changes may take time, therefore it is important for the registrant to keep in mind to update the registrant /proprietor information of trademark registration from time to time or to notify the local representative in order to avoid unnecessary signature on erroneous documents etc.
Within 30 days after the dispatch date of the notice of the decision for registration was issued, the registrant has to pay the registration fees which include the official registration fees for 10 years.
This registration fee can be paid by splitting it into two installments for five years by the payment of a surcharge. The registration fees for the first five years must be also paid within 30 days from the issuance date of the Decision for Registration, whereas for the last five years the registration fees must be paid within five years from the registration date of the trademark.
For all renewal fee payments after the first 10-years registration term the renewal fees must be paid from the registration date of the trademark. That payment maybe commenced 6 months before the registration date of the trademark, and the protective term of trademark right may be renewed any number of times by the payment of renewal fees in due time.
In case of late payment past due to the absence of renewal fee payment by the registration date of the trademark of the 10-years registration term, the renewal of the protective term can be applied within 6 months after registration date of the trademark by payment of the double official renewal fees.
Note:The JPO does not accept direct payments from registrants residing outside Japan. The payments should be made by an appointed of a local representative such as a patent attorney.
In case the payment of the registration fee for the first 10-years term or the first 5-years installment thereof were paid, the trademark will be published in the official trademark gazette. The publication date of the trademark registration in the official trademark gazette is the base date for the filing term of an opposition against the grant of the trademark registration.
The filing term of an opposition against the grant of the trademark registration is within two months from the publication date of the trademark registration in the official trademark gazette (publishing date means date of public notice in the online gazette via the internet).
Once the copy of the opponent’s filing documents was sent to the trademark right proprietor, the board of appeal examiners starts with the examination of opposition. During the examination, any reasons for revocation may be examined ex officio, even if it is not pleaded by the opponent.
However, despite the ex-officio examination of the board of appeal, the trademark is only examined for each designated goods or services as stated in the filing documents of opponent. Moreover, if two or more oppositions are filed against the same registered trademark by the same or different parties, examination will be in principle be combined irrespectively of the fact whether there were different designated goods, services, reasons and/or supportive evidence filed in each of the respective opposition proceedings, and no particular notice of the combination will be issued by the JPO.
The opponent can withdraw the request for an opposition trial only before notice of the notice of reason for revocation.Though the examination is an ex parte documentary proceeding and the examination of oppositions is generally conducted on the basis of documents, there are exceptional cases, where an oral examination may be conducted by chief examiner of the board of appeal, or based on a request filed by trademark right proprietor or less likely based on the request of the opponents.
As a result of the ex-officio examination a notice of reason for revocation is issued to the trademark right proprietor, if the board of appeal trial examiners intends to render a decision for revocation of a trademark right.
In accordance to the notice of reason for revocation the trademark right proprietor and the opponent are notified of the ex officio reasons for the revocation of the trademark.The trademark right proprietor and the opponent are given opportunities to submit a statement of their written arguments within 3 months from date of issuance of the notice of reason for revocation.
The trademark right proprietor may submit a statement of his respective written argument to the notified reason for revocation within 3 months from date of issuance of the notice of reason for revocation.
Nevertheless, the trademark right proprietor can file his opinion by means of a written statement can at any time after the above copy of the opponent’s documents have been received and the notice of reason for revocation was issued.
The trademark right proprietor can extend this due date by filing a three-months extension in two steps: a one-month extension followed by an additional two-months extension can be filed by payment of the respective official fees. On the other side, the opponent can also file a written argument to the notified reason for revocation.
However, neither of the parties can file any amendments to the merit of the opposition trail, namely the trademark right proprietor cannot file an amendment to the registered trademark right and the opponent cannot amend the grounds for opposition and add new grounds once the period for submission of supplementary grounds is expired at the beginning of the opposition procedure.
A notice of a decision to maintain the trademark right may issued instead of a notice reason for revocation, if the allegations of the opponent were not sufficient to convince the board of appeal to issue notice reason for revocation, because there were no such reasons provided by the opponent, the opponent made a fraudulent request for the opposition trial etc. or other irregularities which lead to a dismissal of the opposition. The decision on an opposition trial is published in the trademark gazette. Public file inspection of the opposition proceedings and the related documents is available on request.
The opponent has no remedy to appeal this final decision by filing court trial against the opposition trial decision at the Tokyo Intellectual Property High Court. (reformatio in peius). However, the opponent can file an invalidation trial against maintained trademark, if unresolved conflicts between the interested parties remain.
n case the opposition was not dismissed on the bases of irregularities, the notice of a decision to maintain is issued approx. 3 months after the filing of the written argument against the notice reason for revocation.
The decision of the board of appeal is a decision to uphold the registered trademark because the reason for revocation were deemed to be overcome or a decision for revocation of the registered trademark right, whereas if the reasons for opposition only partly revoke the designated goods or services of a registered trademark right, the decision effects only the opposed part while upholding remaining designated goods or services the registered trademark right. In this case, a double decision is issued for both, the revoked parts and the maintained parts of designated goods or services the registered trademark right and published as one decision in the same record in the trademark gazette.
In case decision completely revokes a registered trademark right, the revoked the registered trademark right is retroactively deemed never to have existed. Public file inspection of the opposition proceedings and the related documents is available on request.The opponent has no remedy to appeal this final decision by filing court trial against the opposition trial decision at the Tokyo Intellectual Property High Court. (reformatio in peius). However, the opponent can file an invalidation trial against (partially) maintained trademark right, if unresolved conflicts remain between the interested parties remain.
Unlike in case of the opposition trail against a registered trademark right only an interested party may request a trial to invalidate a registered trademark right. The invalidation trial is an inter-parte proceeding. Invalidation can be trialed at the JPO or at a civil court in case of an infringement motion against the registered trademark right.
The ground for the request for an invalidation trial maybe similar grounds to those available in the opposition trial. In such case, an invalidation trial based such similar grounds may not later than five years after the date of the trademark registration.
In addition, the reasons for invalidation may include grounds regarding the use of the registered trademark right. In such case, an invalidation trial based non- or improper use or unfair competition may be filed even after a registered trademark right has expired or has been abandoned by the trademark right proprietor. A request for invalidation trial can be filed during the term for filing an opposition or while an opposition proceeding is pending. If filed while opposition are pending, the opposition proceedings in principle takes precedence over the invalidation trial.
However, in case the trial request was filed prior to start substantial examination of the opposition, and if the merit to the invalidation provides prima facie evidence or in case that there is any conflict between the trademark right proprietor and the opponent which needs immediate attention (such as an unjustified claim for infringement damages based on the registered trademark right), the trial for invalidation can take precedence over the opposition proceedings. The decision which proceedings to stay is subject to the decision of the board of examiners.
In case the invalidation trial that is based on reasons similar grounds to those available in the opposition trial, the invalidation trial takes approx. 12 months. In case it is an invalidation trial that is based on the cancellation due to non-use of the registered trademark right, the invalidation trial takes as short as approx. 6 months. A revocation based on cancellation can be filed if the registered trademark has not been used for three years or more after its registration date.
During the trial period oral hearings are scheduled in a approx. 3 months rhythm until the court/board of appeal trial examiners reaches a decision. Before each oral hearing preparatory documents are exchanged between the parties and the court/board of appeal trial examiners. Due to the complexity of proceedings invalidation trials are more expensive than opposition trials.
After 2 to 3 oral hearings a decision of decision for Invalidation of a registered trademark right will be issued by the court/board of appeal examiners.The decision either upholds the registration of the trademark right and maintains the rights of the trademark proprietor or nullifies said registration and the rights.
In between, as in the opposition proceedings, the decision also can partly nullify the designated goods or services of a registered trademark, whereas the decision effects only the nullified part while upholding remaining designated goods or services the registered trademark. In this case, a double decision is issued for both, the revoked parts and the maintained parts of the designated goods or services of the registered trademark right, and the two decisions are published in one notice of decision.
Once the decision to invalidate a registration has become final, in principle, the registered trademark right (or its nullified part) is retroactively deemed never to have existed.
If the trademark right proprietor is dissatisfied with the decision of the board of appeal trial examiners at the JPO to (partially) revoke the registered trademark right, the trademark right proprietor may file a court trial against the opposition trial decision at the Tokyo Intellectual Property High Court within 120 days of the issuance date of the opposition decision. This term cannot be extended.
Note:In case of court trial against the opposition decision the foreign appellant needs to be represented by an attorney at law, and a power of attorney together with notarized company register of the appellants data (in case of company) must be filed at the time of filing the request for trail at Tokyo Intellectual Property High Court.
If the trademark right proprietor or the opponent is dissatisfied with the decision of the board of appeal examiners at the JPO or judge of the civil district court, the trademark right proprietor or the demandant of the failed invalidation motion may file a court trial against the invalidation trial decision at the Tokyo Intellectual Property High Court within 120 days of the issuance date of the opposition decision. This term cannot be extended.
Note:In case of court trial against the invalidation trail decision issued by the JPO, the foreign appellant needs to be represented by an attorney at law, and a power of attorney together with notarized company register of the appellants data (in case of company) must be filed at the time of filing the request for trail at Tokyo Intellectual Property High Court.
The Supreme Court of Japan is the last remedy of the parties of law suit at the Tokyo Intellectual Property High Court are dissatisfied with the decision of appeal court judges.
