Trademark Registration in Japan

Legislation-A TRADEMARK above the rest
-Shantanu Jugtawat *

"Brands are meaning not only for consumers but for businesses that sell goods and provide services. Long ago, in an economy in the face of trade and craftsmen, traders considered credibility (or reputation) that is a vital asset. The more credible the merchant was, goodwill more than he or she purchased. In one point, traders use the word "goodwill" as a mark to indicate customer satisfaction, on other occasions the word is used to indicate the quality of business organization. Brands are more unique in today's highly developed distribution economy, but brands still play a role of inestimable importance to facilitate economic activities.
Brands play a vital role in everyday decisions made by the public consumer. Consider the effect of trademarks on those who purchase goods and receive services, consumers. Consumers rely on trademarks, for example, to better facilitate easily repeat purchases of products or services on the basis of previous experience pleasant or reputation of a quality manufacturer. Trademarks allow consumers to subsequent purchases without a thorough investigation '*.
A trademark registration system was carried out also that, over time, favors the appearance of "trademark as property." As the economy developed further, the marks were recognized as important intellectual property. As a result from the perspective of the evolution of intellectual property, a series of revisions of trademark law have been tried and several interpretive studies have been developed in connection with the Trademark Law. Because the marks are very important to consumers in the distribution economy, the future of the Trademark Law examinations significantly and interpretive studies should 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 brand, its function is identification. A trade "sign" is a representation allowing an article to be identified and distinguished from others on the basis of their origin.
Under the Trademark Law of Japan, the 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 Trademark Law protects trademarks and service marks. As in the case of patent applications, a resident agent (usually an attorney 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 planning the company to do business in Japan must apply for registration of trademarks as soon as possible.
Unfair competition and trade secrets:
The only protection available for a brand in Japan before registration is under the Japanese Unfair Competition Prevention Law. Under this law, the trademark owner must demonstrate that the mark is well known in Japan and that consumers are confused by the use of an identical or similar mark by the unauthorized user. In 1990, amendments enacted the law provided some protection against theft of trade secrets such as know-how, customer lists, sales manuals and experimental data. The law, which was completely changed in 1993, also provides for injunctions against wrongful use, acquisition, or disclosure of a trade secret by any person knew or should have known that the information in question was misappropriated. The trial, however, makes the enforcement of rights, without loss of trade secrets difficult.

Effectiveness of Marks
The trademark in Japan is valid only when it is registered for a particular product category. Therefore, it is possible to have the same trademark for different categories of products without any problems. The registration is with the patent office.

However, using the same brand, or similar, for the same category of goods would violate the trademark. The owner of the trademark rights would be able to request an injunction and compensatory damages. There is also a possibility of criminal penalties of five years in prison and 5 million yen in fines. This is obviously taken very seriously, so it is recommended that adequate research is conducted marks before using one. However, even if the other party had registered a trademark before you, if you have been using before, and is well known among users, can continue to use it. It is still advisable to research proper and timely registration in order to avoid conflict. Another exception is that even if a party registers a first mark, if not used for 3 years for no reason appropriate, another party may file an application for cancellation of the trademark.

Requirements for registration of a mark. –
Mark Records are made with the patent office. The first file is rights. The rights arising from the time when you registered. To the extent possible, the symbol of mark must be such that the extent possible, can be distinguished from products of services of other companies. There are two times when similarity becomes a problem. At the time of the request and at the time of the offense. There are three aspects to look at in determining similarity.There a similarity in external appearance. Here if the brand is viewed abroad, and letters, pictures and brands are similar. Secondly, a similarity in print. If two brands have a similar meaning may have a similarity in print. Finally, there is a similarity in name, if they have similarity in sound. So, Sony and Somy may fall into this category. Actually even experts often disagree in this area and there is a great Probaility to engage in litigation on these issues.

Obtaining protection marks: temporal priority in seeking registration is the main factor that allows one to exclude other potential users of a brand in Japan. As the deadlines for obtain registration, an application is generally approved in two or three years from the filing date if it is not disputed. Electronic filing procedures have been created to simplify the application process. Neither current use nor the intention to make future use of a mark in commerce is a requirement for registration.
The following (Among others) the information must be included in an application for trademark registration in Japan:
(A) The applicant's name (and, for enterprises, the representative name), address and place of incorporation;
(B) the specific "International Class (es)" in which you want to register the mark. In addition, the subclasses of goods or services in connection with the use to be registered must be designated, including any limitation to specific goods desired and / or services contained in a subclass.

Invalidation Trial of Trademark Registration

(1) In the following cases, an interested person or the examiner may require a trial to invalidate the registration of a trademark or the supplementary registration of designated goods. In this case, if two or more designated products are covered by the registration of the mark, a petition for annulment of a trial can be made for each of the goods:
(I) the registration has occurred against the proviso to article 3, Articles 6-8, Article 12 (2) (second sentence), (5) and (7) to (9) of this Act or contrary to Article 25 of the Patent Act under Article 5 of the Act, amended on August 22, 1997 •

(Ii) it has been affected in violation of a treaty;

(Iii) Registration has been affected on the basis of an application filed by a person who is not a successor in ownership of the right deriving from the trademark application;

(Iv) after registration, the owner of the trademark right is no longer capable of enjoying such right under Article 25 of the Patent Act under Article 5 of this Act, or the record no longer complies with a treaty.
(2) A trial for invalidation under paragraph (1) may be requested even after the extinguishment of a trademark right.

(3) Where a trial decision invalidating a trademark registration has become final and conclusive, the trademark right is deemed never to have existed, however, when the trial decision to invalidate a trademark right has existed, however, when the trial decision invalidating a trademark right has become final and conclusive under paragraph (a) (iv) the trademark right is deemed not to have existed from the time the trademark registration first fell in that paragraph.

(4) Where a trial under paragraph (1) has been asking the presiding trial examiner shall notify the contents of the demand for the exclusive licensee of the right trademark and other persons having any registered right on the mark.
Article 72. Invalidation Trial of Registration for the renewal of trade mark rights within

(1) In the following cases, an interested party or the examiner may ask a court to invalidate the registration of the renewal of the validity of a trademark right. In this case, if two or more designated products are covered by the registration of the renewal of term of trademark rights, a demand for an invalidation trial may be made for each of the goods:
(I) removed on August 22, 1997 •

(Ii) the registration of renewal has been affected violation of Article 43 (2);

(Iii) The registration of renewal has been requested by a person who owns the trademark right concerned.
(2) A trial for invalidation under paragraph (1) can apply even after the extinguishment of a trademark right.

(3) Where a decision to invalidate the registration of proof of renewal of the term of a trademark right has become final and conclusive, the registration of the renewal of the mandate is deemed never existed.

(4) Article 71 (4) shall apply mutatis mutandis to the request for invalidation trial under paragraph (1).
Article 73. Of First Instance for Cancellation of Trademark Registration

(1) A test may require the cancellation of registration of a trademark if the trademark falls into any the following paragraphs:
(I) deleted August 22, 1997 •

(Ii) The owner of the trademark right intentionally uses a trademark similar to the trademark on the designated goods or uses the registered trademark or a mark similar to it, similar products with products in a way that may mislead in terms of product quality or is likely to cause confusion with goods related to the business of another person;

(Iii) neither the owner of the right brand or exclusive or nonexclusive license, has been the continued use of the trademark for over three years on the designated goods in the Republic of Korea, without cause before the trial date for cancellation;

(Iv) The trademark owner is entitled under the terms of Article 54 (1) (second sentence) (5) or (7) to (9), amended on August 22, 1997 •

(V) A member of the association causes another person to use their collective mark contrary to the provisions of the statutes of the association;

(Vi) A collective mark has become deceptive as to the quality of goods or cause confusion among consumers with products related to the activities of another person with a change in the statutes of the association under Article 9 (3);

(Vii) A brand falling under the main sentence of Article 23 (1) (iv) has been registered and the owner of the original trademark requests a trial for cancellation within five years from the date of registration of the mark;

(Viii) The licensee of the exclusive or nonexclusive use the trademark or a similar mark, for products designated, or similar goods directly, so that could mislead consumers about the quality of the goods or cause confusion among consumers with products related to the activities of another person, however, this provision does not apply where the holder of the trademark right has taken appropriate, or

(Ix) similar trademarks are the property of different owners of the trademark right, causing a transfer of trademark rights and a rights holder uses his trademark for the purposes of unfair competition in relation to identical or similar to the goods of its own trademark, causing consumers misleading as to quality of products or have a confusion between its products and products in relation to the other shareholders. Added on August 22, 1997 •
(2) deleted August 22, 1997 •

(3) Where a cancellation trial is requested for reasons referred to in paragraph (a) (iii), an essay for cancellation may be imposed for a portion of the goods if the goods covered by the registration of marks arc two or more.

(4) In case of a cancellation trial is requested for a reason referred to in paragraph (a) (iii) whether the defendant can not prove that the trademark has been used in the Republic of Korea in three years before the date of application for trial in one or more of the goods to which the demand relates, the owner of trade mark rights can not avoid cancellation of registration of the trademark for the goods, however, this provision shall not apply where the defendant can show good cause for non-use of the trademark. Last Updated August 22, 1997 •

(5) The reasons for the cancellation will not be affected when the facts that gave rise to a demand for a cancellation trial no longer exist after the trial demand is made for reasons referred to in paragraph (a) (ii), (iii) (V) (vi), (viii) (ix). Amended on August 22, 1997 •

(6) A trial for cancellation under paragraph (1) only may be demanded by an interested party, unless demanded a trial for reasons referred to in paragraph (a) (ii), (vi) (viii) or (ix) may be required by anyone. It was amended on August 22, 1997 •

(7) Where a trial decision ordering the cancellation of trademark registration has become in final and conclusive, the trademark right became extinguished from that moment.
DefensiveMeasures:
A party may oppose the registration of a mark (reference some or all of the goods and / or services) within two months of its publication in the Official Gazette of the Patent Office Gazette.
Brands trade are published after being approved for registration. As mentioned above, the reasons for success oppose a trademark registration are essentially the same that available to the Patent Office to deny registration.
The criteria include not prohibit the registration mark (however, the distinctive character may be similarity acquired through the use of official symbols governmental or otherwise, similar to an existing brand name known, similar to a previously registered mark, the likely to mislead or cause confusion, unregistrability for other technical reasons,

Process time and money
Obtaining and protecting patent and trademarks in Japan can be slow and costly. While the process to safeguard such rights might seem prohibitive, lack of protection would enable competitors Japan to copy your product or production process, even if you have a U.S. Patent or trademarks. While intellectual property rights have been acquired, pirating technology and designs can be produced in Japan, as it would in almost any country. Each company in a trading or licensing agreement should understand clearly what their rights and obligations regarding intellectual property rights acquired or developed subsequently by the other.
Japan Trademark Law protects trademarks and service marks. As for patent applications, a resident agent (usually an attorney or patent agent) must prosecute the trademark application. As with the processing of patent applications, trademark registration in Japan is slow process, although processing times have improved. It takes an average of 2.8 years to process a trademark registration in Japan, compared with an average of 13 months in the United States. Any company planning to do business in Japan must apply for registration of trademarks as soon as possible.
The only protection available to a trademark in Japan prior to enrollment is under the Japanese Unfair Competition Law. Under this law, the trademark owner must show that the brand is well known in Japan and that consumers are confused by the use of an identical or similar mark by the unauthorized user. Copy of U.S. brands, especially in the fields of sporting goods and apparel, occurs frequently and some smaller unscrupulous companies will file applications for trademark registration for a brand of U.S. brand, which in his opinion, will be very popular in Japan.

Japan enacted amendments to the Unfair Competition Act in 1990, providing some measure of protection against theft of trade secrets trade, such as know-how, customer lists, sales manuals and experimental data. The law, which was amended completely in 1993, provides for actions for injunctions against wrongful use, acquisition, or disclosure of a trade secret by anyone who knew or should have known that information in question was misappropriated. One problem with the judicial process remains despite a 1996 amendment, and makes the application of civil rights without the loss of trade secrets difficult.
5.4.2 Cancellation of proxy records
The Japanese system of trademark protects the right of holders of marks duly authorized. For example, when foreign goods or services based in Japan are provided, and where the foreign company in question has come to an agency agreement with a Japanese company, if the local agent applies for registration of the mark of the company abroad without just cause, the duly authorized trademark owner may file a petition for cancellation of the Japanese record, and therefore can recover its trademark rights.
Application and registration fees
Naturally, the grant application and registration of a design incurs expenses. The fees for this process in Japan are as follows.
1. Application fees
a. ¥ 16,000 for design
b. Note that the above amount is the official rate only, not including attorney's fees patent fees for design drawings, etc.
2. Registration fees
A fee is required to register a design, but these rates differ of trademarks. The design fee for the first year is ¥ 8,500 and an annuity to be paid every year to maintain the validity design rights. Annuities are the following.
1-3 years: 8500 yen per year
4-10 years: 16.9 thousand yen per year
Years 11-15: 33 800 yen per year
Similar designs: 8,500 yen (flat rate)

Remember that if you engage a patent attorney, fees will be charged also of the previous registration fee, which may include fees for the work involved in paying the official fees.
5.8.2 of the application to register
If the review process goes smoothly, a design may be registered in just three months from the time of application. Generally, however, the test takes about six months, and enrollment has one or two months. Allow about eight months after the application to complete the process.

Trademark Law
The 2005 revision of the Japanese Trademark Law introduces the regionally based collective mark. The review is designed to promote business credit, increase industrial competitiveness and revitalize local economies.
Before the revision, a mark which is the combination of the name of a region and its products or services can not be registered as a word mark unless acquired national recognition or combined with other designs or letters with a distinctive character. The problem was that the applicant could not exclude others from free-ride use of such word marks until the mark gained recognition throughout the country, which usually requires large investment and a long period of marketing efforts. Another problem is that the applicant for registration of a mark that includes certain words and figures could not prevent the use by third parties the words themselves, or mark which comprised the same words and other figures.
The official boundaries of the law gives the key points of the review:
1. Requirements for registration of regionally based collective marks
ü Cooperative business associations and other associations established under special laws of the state of legal persons and foreign legal persons for the same shall be entitled to obtain a regionally based collective mark.
ü A trademark registration a regionally based collective mark may be obtained when, as a result of the use of the mark has become widely known among consumers as an indication the applicant or its members products or services.
ü The marks can be registered as regionally based collective marks consisting of the name of the production area of goods where the applicant or its members have been using the mark before the filing, the place where services are delivered, or other relevant areas recognizes them close relationshipto products or services.
2. Opposition to registration of regionally based collective trademark, invalidation of the trademark registration
a. Any person may file an opposition to registration of a regionally based collective mark has been done in violation of the requirements for registration.
b. When an application for registration has been conducted in violation of the requirements for registration of a regionally based collective mark, an invalidation of the registration procedure may be required. In addition, when a collective trademark regional base becomes not meet the requirements for registration, an invalidation of the registration procedure may be required.
Therefore, the revised law allows a business group, as a cooperative business association to register a trademark, which is a combination of the name of a region and its products or services, before the acquisition nationally recognized brand. This protects local businesses against a free-ride of their brands. The review of the Japanese Trademark Law, the addition of regionally based collective marks, will become effective on April 1, 2006.
The review of Japanese Unfair Competition Law and related laws came into force on November 1, 2005

ELABORATION PROCEDURE FOR OBTAINING THE TRADEMARK

(1) Application
In order to obtain a trademark right, the applicant must fill out the forms provided in the relevant ordinances and submit them to the Japanese Office Patent.
(2) Publication of unexamined application
The JPO will publish the contents of an application in the Official Gazette after the presentation.
(3) examination of the formalities
A paper submitted to the JPO is checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made when the necessary documents are missing or required sections have not been filled in.
(4) Substantive examination
A test is made whether the application meets the requirements background. The following brands will be rejected because they are not deemed to meet the substantive requirements.
(I) The brands that do not allow consumers to distinguish products the applicant or services belonging to other parties
(Ii) trade marks can not be registered for reasons of public interest or for the protection of the interests private

(5) Notification of grounds for refusal
Where an application does not meet the substantive requirements, a notification of reasons for refusal will be sent.
(6) Written argument / Amendment
An applicant may submit either a written argument against a notification of reasons for refusal or an amendment that would nullify the reasons for rejection.
(7) Decision of Record
If it is ultimately believes there is no reason for refusal, the decision to register a mark be made.
(8) Decision of refusal
If a written argument and an amendment can not eliminate the reasons for refusal, and if the examiner judges that the mark can not be registered, a decision to refuse was made.
(9) Appeal against the decision to refuse
When dissatisfaction is in the refusal of the examiner, the applicant may appeal against the decision of refusal.
(10) Appeal Examination (against Decision for refusal)
An examination of the appeal against a decision of refusal is performed by a bench of three or five appeal examiners.
Decision appeal examiners is called the appeal decision.
When considered as a result of examining the appeal, that the reasons for refusal was solved, a decision on the appeal to register a trademark is done, and when the reasons for refusal is considered that the reasons can not be canceled and the brand can not be registered, a decision on the appeal of the denial is made
(11) Registration (Fee Payment)
By paying the registration fee, registration trademark law will be held and trademark law to take effect.
(12) Publication of a Trademark Gazette
As for the trade mark has been registered and entered into force, the contents are published in the Trademark Gazette.
(13) Opposition
Any person may file an opposition to the decision to register marked with the Commissioner of the JPO.
(14) Appeal of Invalidity / Revocation
Even after a trademark is registered, any person may bring action for annulment of the mark if you have a defect.
On the other hand, if the mark has not been used after registration for three years or more, an action for annulment may be charged.
(15) Appeal Examination (Invalidation / Revocation)
A review of the application for invalidation or revocation is performed by a collegial body three or five appeal examiners.
About nullity, if the appeal examiners judge that there is no error in the decision to register a mark, there will be a decision to maintain the registration of the mark. However, if they judge that the decision to grant was defective, it will take a decision to revoke the trademark right.
About the revocation, when a right holder can not try to use the mark, a decision on the appeal of revocation is performed, and trademark law is revoked.
(16) Intellectual Property High Court
An applicant who is dissatisfied with a decision on the appeal of the denial of a appeal against the refusal, and an interested party who is dissatisfied with a decision on the appeal of the annulment, revocation or maintenance, may appeal to the Intellectual Property High Court.

Conclusion

"Imagine for a moment a world in which brands in the property are not protected. Counterfeiters and forgers seeking to profit from the goodwill of merchants with skill and quality products, broke to flood the market with knock-offs and imitations. Consumer confusion about the true source results in the inadvertent purchase of goods of low quality. From a trader (or corporation) perspective, the incentive to build a reputation through sincere effort and scrupulous business practices is lost. The likely outcome of such a system is a random distribution economy bordering disorder and chaos. "
Like the Japanese patent system, the system Japanese brand has a system of first applicant. Under this system, if one or more applications conflict with another application that was shown on record. In the unlikely event that two or more applications are filed for identical or similar marks in the same day for identical or similar goods or services, the parties involved have the opportunity to decide what one can obtain registration. If no agreement is reached within a specified period, the Director-General draw.
Due to the first file system and the low threshold to show intent, many large companies in Japan have created their own brand by registering the banks of many different brands. Many of these marks are never used. Approximately one third of all trademarks have never been used. More than two thirds of all the trademarks are not currently in use. The Japanese system allows a party to demand proof of the cancellation of the Registration of Marks (due to lack of use).
The request should include the brand, products or services, the applicant name and address and the applicant's area of business, and must be accompanied by a filing fee. No power attorney is required. If the mark can be represented using common characters, a sample is not necessary. However, if the mark is a figure, sign, three-dimensional mark, or any combination thereof, including characters, with or without colors, a sample must be submitted. A trademark may consist of characters, figures or signs. It can also be a combination thereof. Assuming that can be represented graphically, a mark can be any combination of characters, figures, or signs with colors. Three-dimensional marks can also be registered. The sounds and smells can not be registered. Japanese law allows multi-class applications. This means that the designation of more than one forty-two classes of goods and services allowed in a single application.
Under Japan's Trademark Law, trademarks can be registered even if they are not in use at the time under the rule of first file. However, if a mark is not used at all within a period of three years following registration, an interested party may file a petition for cancellation of the mark. Indeed, the "use" of a brand is not limited to the display of the mark directly on a product the impression of a mark in a booklet along with an image of the product, the use of the mark in advertising for products such as in a newspaper, or display of products the mark on a Internet website, constitute the "use."

References

· Dr. Sheona Ono 'Description Japanese Trademark Law ", 2nd edition

Review · 'Guidelines for the brand in Japan'-Japanese Patent Office in February 2003

Permits · 'guidelines and Adobe trademarks. Retrieved September 3, 2006.

Geoffrey Pullum · K "Guide to using the right brand" Retrieved on 05 December 2006.

Danny Bronski · "MAKING HIS MARK: BASICS OF MARKS OF EMPLOYERS OF TECHNOLOGY

Danny Bronski "A sensible approach to ensure · Mark NOTICES PROTECTION '

· Gregory H. Guillot 'All about the brands'

Sites Web

· Japan External Trade Organization-http: / / www.jetro.go.jp/en/invest/setting_up/laws/section5/page3.html

· Http: / / www.marcaria.com/

Mark organizations
· INTA The International Trademark Association

WIPO · World Intellectual Property

WIPO · brands Business homepage

About the Author

Shantanu Jugtawat,national Law Institute University,Bhopal

Welcome to WIC