JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
2.2 Requirements for Trade Mark Protection Trademark Act The core requirements for obtaining trade mark reg- istration are: • distinctiveness, as reflected in Article 3, Paragraph 1of the Trademark Act; • the absence of absolute grounds for refusal, such as public policy grounds under Article 4, Paragraph 1; and • the absence of relative grounds for refusal, includ- ing conflicts with prior rights under Article 4, Para- graph 1. As a general rule, use is not required for registration in Japan. Even where a mark lacks inherent distinctiveness, it may be registered if it has acquired distinctiveness through use pursuant to Article 3, Paragraph 2 of the Trademark Act. Evidence typically includes sales fig- ures, market share data, marketing materials and con- sumer survey evidence, where available. UCPA Under the UCPA, unregistered indications of goods or business may be protected where they are well known or famous. In particular: • the use of an identical or similar indication to a well-known indication, where such use causes a likelihood of confusion, constitutes unfair competi- tion under Article 2, Paragraph 1, Item 1; and • the use of an identical or similar indication to a famous indication as one’s own indication of goods or business constitutes unfair competition under Article 2, Paragraph 1, Item 2, regardless of likeli- hood of confusion. 2.3 Trade Mark Registration System As noted in 2.1 Legal Framework and Protectable Signs , unregistered marks may be protected under the UCPA where they are well known or famous. How- ever, registration under the Trademark Act is the pri- mary and most reliable means of obtaining exclusive rights and enforcing them.
Trade mark applications are filed with the JPO, and multi-class applications are permitted. After formal- ity and substantive examination, the JPO issues a notice of refusal if grounds for refusal exist, to which the applicant may respond with arguments or amend- ments. If no refusal grounds remain, the mark pro- ceeds to registration upon payment of the registration fee. Japan is also a member of the Madrid Protocol, and international registrations designating Japan are available. Registration is generally completed within approxi- mately seven to eight months from filing, although accelerated examination is available in eligible cases. Applicants without a domicile or residence in Japan must appoint a local representative. Official fees for a single-class application amount to JPY44,900, comprised of a filing fee of JPY3,400 plus JPY8,600 per class and a registration fee of JPY32,900 per class. A notable recent development is the introduction of a consent system for conflicts with prior trade marks, allowing greater flexibility in resolving conflicts with earlier registrations. 2.4 Term, Use and Maintenance A trade mark registration is valid for ten years from the date of registration. It may be renewed every ten years by filing a renewal application and paying the pre- scribed renewal fee, upon which the registration will be renewed. No substantive examination or verifica- tion of use is conducted in connection with renewal; if the renewal formalities are complied with, trade mark rights may be maintained indefinitely. Use of a trade mark is not necessary for maintain- ing a registered trade mark. Therefore, the owner of the registration does not need to file any proof of use when renewing the trade mark right. However, if a registered trade mark has not been used for the des- ignated goods or services for a continuous period of three years or more, it may become subject to a non- use cancellation trial. In principle, the “use” referred to here must constitute trade mark use, which includes not only use by the trade mark owner itself, but also use by its licensees.
159 CHAMBERS.COM
Powered by FlippingBook