Trademark registration is a crucial means of protecting a company’s brand, especially for businesses operating in the Japanese market. Trademarks not only help distinguish a company’s products or services but also prevent unauthorized use of similar or identical marks, safeguarding the company’s intellectual property. However, the trademark registration process in Japan is relatively complex, involving multiple steps including trademark search, classification selection, application submission, and examination procedures. This article will provide a detailed analysis of the entire trademark registration process in Japan, helping businesses better understand the registration procedure and avoid common mistakes.
I. Basic Concepts of Trademark Registration
A trademark is a sign that distinguishes the goods or services provided by one company from those of others. Trademarks can include words, graphics, letters, numbers, as well as color combinations and sounds. In Japan, trademark registration is protected by the Trademark Act, granting exclusive rights to registered trademarks, while unregistered trademarks lack corresponding legal protection.
Before applying for a trademark, applicants need to understand the basic elements of trademark registration, such as the types of trademarks, scope of use, and the differences between trademarks and other forms of intellectual property protection. For example, trademarks differ from patents or design rights in that they primarily protect brand identities rather than specific technological innovations or design solutions.
II. Preparation Work Before Trademark Registration
Thorough preparation is key to ensuring a successful trademark application. For any business or individual seeking to register a trademark in Japan, understanding and complying with relevant regulations in advance can effectively reduce the risk of trademark application rejection and enhance the comprehensiveness and legality of trademark protection. Trademark search and classification selection are two crucial steps before trademark registration.
The Importance of Trademark Search
Conducting a trademark search before submitting a trademark application is an indispensable step. Its purpose is to confirm whether the proposed trademark conflicts with any registered or pending trademarks, thus avoiding application rejection or infringement disputes due to similar trademarks. Through trademark searches, companies can avoid falling into infringement litigation or being forced to modify their trademarks after registration.
Trademark searches not only protect the interests of applicants but also safeguard the rights of existing trademark holders. The Japan Patent Office (JPO) has relatively strict examination standards for trademark similarity. Therefore, even if a trademark design appears distinctive or unique, it may still be rejected due to similarity with existing trademarks in certain elements (such as pronunciation or appearance).
(1) Content of Trademark Search
Trademark searches can be conducted using the trademark search database provided by the Japan Patent Office (J-PlatPat). Applicants can search for the following types of information through this platform:
Existing registered trademarks: This includes all trademarks registered within Japan. Applicants need to ensure that their trademark is not similar to these registered trademarks in terms of text, graphics, color combinations, sounds, etc.
Pending trademark applications: Even if a trademark has not received final registration approval, pending trademarks can still pose a potential threat to newly applied trademarks. Therefore, searching for pending trademarks is an important step in ensuring application success.
Similar trademarks: Trademark similarity is not limited to identical trademarks but also includes similar ones. Similar trademarks may resemble the applied trademark in pronunciation, appearance, or meaning, potentially causing consumer confusion. Therefore, applicants need to pay special attention to searching for similar trademarks to ensure their proposed trademark has significant overall distinction.
(2) How to Conduct a Trademark Search
When conducting a trademark search, applicants can query based on the trademark’s text, graphics, category, and other elements. The specific steps are as follows:
Enter keywords or trademark graphics: Applicants can input the trademark text or upload trademark graphics in the trademark database for exact or fuzzy searches. Fuzzy searches help discover trademarks that are similar but not identical to the applied trademark.
Select applicable trademark categories: Trademark searches are not just about searching for the trademark itself but also need to consider the categories of goods or services to determine trademark similarity. By selecting appropriate trademark categories, applicants can conduct more targeted searches.
Analyze search results: Through the results from the trademark search database, applicants can view trademarks similar to their proposed trademark and assess whether they pose a threat to their application. If significant similarities with existing trademarks are found, it is advisable to redesign or adjust the trademark.
(3) Legal Basis for Trademark Searches
According to Article 4 of the Trademark Act, any trademark similar or identical to existing registered trademarks cannot be registered. Especially in identical or similar categories, trademark similarity may cause consumer confusion, so the law clearly requires thorough searches and analysis before trademark application.
Moreover, Article 13 of the Trademark Act stipulates that trademark holders enjoy exclusive rights, and similar trademarks used without permission will be considered infringement. Therefore, conducting comprehensive trademark searches before registration can effectively reduce potential legal risks.
Trademark Classification Selection
Trademark registration must be filed within specific categories of goods or services. This process requires applicants to choose appropriate categories based on the actual scope of use for their trademark. Correct classification selection not only affects the success rate of trademark registration but also determines the scope of legal protection for the trademark.
(1) Introduction to the Nice Classification System
Japan adopts the Nice Classification system, an internationally used trademark classification standard that divides goods and services into 45 main classes. Classes 1 to 34 are for goods, while classes 35 to 45 are for services. Each class is further divided into multiple specific items. When submitting a trademark application, applicants must choose appropriate classes based on their actual business content.
(2) How to Choose the Correct Classes
When selecting trademark classes, applicants need to carefully evaluate the goods or services involved in the trademark to ensure that the chosen classes cover all of the company’s business activities. Improper class selection may result in insufficient trademark protection scope, failing to provide adequate legal basis for future rights protection.
Trademark classification selection involves several key aspects:
Clarify the scope of goods or services: Before selecting classes, applicants should first clarify which goods or services the trademark will be used for. For example, if a company mainly produces electronic products, it is advisable to choose Class 9 “Scientific Instruments”; if providing software services, Class 42 “Technical Services” can be selected. After determining the business scope, applicants can apply for trademark registration in the corresponding classes.
Consider future business development plans: Trademark registration is not only for current goods or services; applicants also need to consider possible future business expansions. For instance, if a company plans to enter other industries in the future, it can simultaneously apply for trademarks in relevant classes to avoid the hassle of re-registration in the future.
Cross-domain trademark registration: For businesses operating across multiple domains, it is advisable to register in multiple classes to ensure comprehensive trademark protection. For example, a company producing smart home devices might need to register in both Class 9 “Electronic Products” and Class 11 “Household Appliances”.
(3) Legal Basis for Classification Selection
Article 6 of the Trademark Act clearly stipulates that when applying for a trademark, the goods or services class must be specified, and after registration, the trademark is limited to use within that class of goods or services. Therefore, correct classification selection is one of the important steps in trademark registration. In practice, even if trademark registration is successful with incorrect class selection, it may still face issues of insufficient protection scope in actual use.
For example, if an appliance company only registered its trademark in Class 9 “Electronic Products” when applying, but its products also include “Household Appliances” in Class 11. If the company did not register in Class 11, when other companies apply for similar trademarks in the same class, the original trademark holder will not be able to object to that trademark, thus losing trademark protection for some of its products.
(4) Practical Steps for Classification Selection
Browse the Nice Classification directory: Applicants can view specific categories and item descriptions of the Nice Classification through the official website of the Japan Patent Office. Each category lists in detail the goods or services for which trademarks can be registered, and applicants can screen suitable categories one by one based on their actual business content.
Multi-class registration strategy: For companies whose products or services cover multiple industries, it is advisable to adopt a multi-class registration strategy. For example, if a company produces and sells electronic products while also providing repair services, it should register trademarks in both Class 9 “Electronic Products” and Class 37 “Repair Services”.
Avoid selecting overly narrow or broad categories: Choosing overly narrow categories may result in insufficient trademark protection scope, while choosing overly broad categories may increase trademark registration fees and bring inconvenience to subsequent management. Therefore, applicants need to reasonably select appropriate categories based on actual circumstances to ensure effective trademark protection.
(5) Relationship Between Classification Selection and Trademark Rights
Correct selection of trademark classification directly affects the scope of trademark protection. Registration of goods or services under each class can only protect the exclusive rights to that class of products or services. The scope of trademark rights does not automatically extend to other classes. Therefore, if trademark holders wish to use the trademark in multiple fields, they must register in multiple classes.
For example, if a company produces electronic products and wishes to launch a clothing line in the future, the company needs to register trademarks in both Class 9 and Class 25 separately. This multi-class registration not only prevents others from applying for the same trademark for use in other fields but also effectively expands the scope of trademark protection, preventing competitors from using similar trademarks in different fields.
Furthermore, trademark classification selection not only affects the exercise of trademark rights but also plays an important role in trademark infringement litigation. If a trademark owner has not registered a trademark in a certain class, they cannot file a lawsuit against infringement in that class. Therefore, applicants should fully consider their business scope when registering trademarks and reasonably conduct multi-class registration to ensure comprehensive trademark protection.
(6) Considerations for Classification Selection
Avoid blindly selecting irrelevant categories: Although registering trademarks in multiple categories can expand the scope of trademark protection, applicants should avoid selecting categories unrelated to their actual business scope. If the trademark registration categories are too broad, it may increase registration fees and subsequent maintenance costs. Additionally, categories not actually used may face revocation risks in the future. Therefore, applicants should reasonably select the required goods or service categories based on the company’s actual business conditions and future business development plans.
Focus on categories relevant to actual operations: For companies planning future business expansion, selecting relevant categories is crucial. For example, if a company currently mainly operates in electronic products but plans to expand into related software services in the future, the company should consider registering in both goods and service categories to ensure trademark protection for future business areas.
Consider the long-term value of multi-class registration: Multi-class registration not only provides broader trademark protection for enterprises but can also increase the market value of the brand. If a company intends to promote the same brand in different industries, multi-class registration can enhance the legal status of the brand in different fields and strengthen the market competitiveness of the trademark.
(7) Legal Protection in Classification Selection
The choice of trademark classification not only affects the trademark registration process but also directly determines the scope of legal protection for the trademark. In trademark infringement disputes, courts usually determine whether infringement has occurred based on the registered categories of the trademark. Therefore, applicants should ensure that the selected categories cover all of the company’s business content and adopt a multi-class registration strategy when necessary to avoid gaps in trademark rights.
According to relevant provisions of the Trademark Law, the exclusive right to a trademark is limited to its registered categories. If the goods or services used by an enterprise in its operations exceed the scope of registered categories, the trademark does not enjoy legal protection for these goods or services. To avoid this situation, applicants should carefully study relevant categories when submitting applications to ensure that trademark registration covers all their business activities.
For example, if an electronics company registers a trademark under Class 9 “Electronic Products” but also provides after-sales services, the company’s trademark may not be legally protected when providing after-sales services if it has not registered in Class 37 “Repair Services”. Therefore, when selecting trademark classifications, applicants should comprehensively consider all involved goods and services to avoid legal issues due to insufficient trademark protection in future operations.
III. Trademark Application Process
The trademark registration process in Japan is a relatively complex and highly standardized procedure. Applicants need to prepare relevant documents according to the requirements of the Japan Patent Office (JPO), submit applications, and go through multiple reviews before finally obtaining trademark rights. To ensure successful application, it is crucial to understand the specific operational steps of each link. The following will explain in detail the key links in the trademark application process, from document preparation to application submission to preliminary examination, to help applicants successfully complete trademark registration.
Preparation of Application Documents
The first step in the trademark application process is preparing the application documents. This is the foundation of the entire process, and the accuracy of the application documents directly determines whether the trademark examination can proceed smoothly. The JPO has strict format requirements for application documents to ensure that each application complies with the relevant provisions of the Trademark Law. Application documents usually include the following important parts:
(1) Basic Information of the Applicant
The basic information of the applicant is the most fundamental content in a trademark registration application, including the applicant’s name, address, contact information, etc. Whether it’s an individual application or a corporate application, the applicant’s basic information must be filled out completely. For corporate applications, the registered name and enterprise code of the company also need to be provided. This information is crucial during the trademark examination period, ensuring that the JPO can contact the applicant when necessary and providing a legal basis for subsequent trademark use and rights protection.
(2) Trademark Sample
The trademark sample is one of the core contents of the application documents. If applying for a graphic trademark or combination trademark, the applicant must provide a specific sample of the trademark. There are strict requirements for the submission of trademark samples, and applicants need to ensure that the sample is clear and accurate to allow the JPO to conduct an accurate examination. According to the JPO’s regulations, trademark samples should comply with certain format specifications, such as requirements for size, resolution, color, etc. If the trademark is a black and white sample, the applicant can use different color versions in subsequent use; however, if a color trademark is submitted, subsequent use of the trademark must be consistent with the color at the time of registration.
(3) Designated Goods or Service Categories
According to the requirements of the Trademark Law, trademark applications must clearly specify the categories of goods or services for which they are used. The JPO adopts the Nice Classification system, and applicants need to select appropriate categories based on their actual business scope when applying. Applicants can choose one or more categories for registration but need to ensure that each category matches their actual goods or services. The choice of goods or service categories is crucial because the scope of trademark protection is limited to the categories specified at the time of registration. If the applicant’s subsequent operations involve new goods or services that are not listed in the registered trademark categories, they may not be able to enjoy trademark protection.
(4) Application Fees
When applying for a trademark, applicants need to pay application fees according to the JPO’s fee standards. Application fees usually include a basic application fee and additional fees for each category. The registration fee for trademarks varies depending on the number of categories, and applicants need to pay corresponding fees for each chosen category. Therefore, applicants need to be cautious when selecting categories to avoid unnecessary cost increases.
(5) Precautions for Preparing Application Documents
When preparing application documents, applicants need to pay special attention to the accuracy of all information, especially the trademark sample and goods/service categories. If the trademark sample is blurry or does not comply with regulations, it may lead to the rejection of the trademark application. In addition, the filling of goods or service categories must be consistent with the applicant’s actual business scope to ensure that the trademark’s protection scope comprehensively covers business needs. Any form of error or omission may lead to delays or failures in the trademark application process.
Furthermore, applicants also need to understand the language requirements for trademark applications. In Japan, trademark applications must be made in Japanese, and all trademark sample descriptions, application documents, and supplementary materials also need to be in Japanese. This may be a challenge for foreign companies or individual applicants, so it is recommended that applicants engage professional trademark agents or lawyers to assist in preparing application documents to ensure compliance with the JPO’s language and format requirements.
Application Submission
After preparing all necessary application documents, applicants need to formally submit the trademark application to the Japan Patent Office. There are two ways to submit applications: applicants can choose to submit electronically through the online system or submit paper application documents by mail.
(1) Online Submission
The JPO encourages applicants to submit trademark applications through its online system, which not only speeds up the application processing but also reduces submission errors in paper documents. Applicants can upload application documents through the JPO’s trademark application system and pay application fees online. The advantage of online submission is that applicants can check the application progress at any time and make corrections and modifications promptly.
(2) Mail Submission
For applicants unfamiliar with the online system or preferring traditional methods, mail submission is also an option. Applicants can mail application documents to the trademark department of the JPO. The application documents must include all necessary materials, including trademark samples, applicant information, goods/service categories, and payment receipts. Compared to online submission, mail submission may take slightly longer to process, and applicants need to wait for the JPO to confirm receipt of the application documents and begin the review.
Application Number After Submission: Regardless of the submission method, applicants will receive an application number after submission. The application number is the unique identifier for the trademark application, and applicants can use this number to inquire about the application’s progress at any time. The trademark examination process by the JPO may take several months, during which applicants can check the status of the application through the JPO’s official website or trademark agents, including preliminary examination results, correction requirements, etc.
Preliminary Examination
After the trademark application is submitted, the JPO will conduct a preliminary examination of the submitted documents. The purpose of the preliminary examination is to confirm the completeness of the application documents and whether the format meets the requirements, ensuring that the basic conditions for trademark application are met. The preliminary examination is usually completed within a few weeks after the application is submitted, and the JPO examiners will check the following aspects:
(1) Examination of Trademark Sample
The trademark sample is an important part of the preliminary examination. Examiners will check whether the trademark sample is clear and whether it meets the JPO’s submission requirements. For example, whether the size of the trademark sample is compliant, whether the resolution is high enough, whether the color of the color trademark is consistent with the description in the application documents, etc. If there are issues with the trademark sample, the applicant will receive a correction notice requiring the resubmission of a qualified sample.
(2) Examination of Goods or Service Categories
During the preliminary examination stage, examiners will also verify whether the goods or service categories filled in by the applicant are correct and comply with the Nice Classification standards. Incorrect goods or service categories may lead to inaccurate trademark protection scope and may even result in the JPO rejecting the application. Therefore, applicants must ensure that their business scope is consistent with the selected categories when filling in the categories.
(3) Examination of Applicant Information
The accuracy of applicant information is also a key part of the preliminary examination. Examiners will check whether the applicant’s name, address, contact information, etc., are filled in correctly. If the applicant’s information is incomplete or incorrect, the JPO may require the applicant to make corrections.
Correction Procedure: During the preliminary examination stage, if the JPO finds that the application documents are incomplete or incorrect, the applicant will receive a correction notice. The correction notice usually specifies the content that needs to be modified or supplemented and provides a deadline for correction. Applicants must complete the correction within the specified time, otherwise, the trademark application may be rejected. The correction procedure is crucial for the success of the trademark application, and applicants should respond promptly to the JPO’s notice and ensure that all corrected materials meet the requirements.
Preparation for Substantive Examination Stage
Once the trademark passes the preliminary examination, the trademark application will enter the substantive examination stage. Substantive examination is the core link of trademark examination, where the JPO will conduct a detailed examination of the trademark’s distinctiveness, legality, and whether there are conflicts with existing trademarks. At this stage, applicants need to be prepared to address potential issues such as rejections and oppositions, and maintain timely communication with the JPO to ensure the smooth progress of the examination.
IV. Substantive Examination of Trademarks
In the trademark registration process in Japan, substantive examination is a crucial step to ensure that the trademark complies with the provisions of the Trademark Act. This phase is conducted by examiners at the Japan Patent Office (JPO), who perform an in-depth review of the trademark’s registrability, similarity, and classification to ensure that the applied trademark meets legal requirements and does not infringe upon the rights of other trademark holders. Substantive examination is the core component of the entire trademark registration process, and its outcome directly determines whether the trademark can successfully obtain registration rights. Therefore, understanding the content and standards of substantive examination is vital for successful trademark registration.
Content of Substantive Examination
Substantive examination of trademarks is a key step in the entire registration process, primarily conducted by JPO examiners who perform an in-depth analysis of the trademark application. The examination content includes:
Registrability of the trademark: Whether the trademark complies with the requirements of the Trademark Act, possesses distinctiveness, and does not violate public order and morality.
Similarity of the trademark: Examiners will search existing trademark databases to determine whether the applied trademark is similar to existing trademarks. If similar trademarks are found, the application may face the risk of rejection.
Classification of goods or services: Examiners will verify whether the designated categories of goods or services comply with the actual business scope and are consistent with the trademark’s intended use.
Examination of Trademark Registrability
During the substantive examination process, examiners will first determine whether the trademark possesses registrability. According to the Trademark Act, the following types of trademarks generally lack registrability:
Descriptive trademarks: For example, trademarks that merely describe the characteristics, functions, or uses of goods or services lack distinctiveness and cannot be registered as trademarks. For instance, if a company wishes to register “Smartphone” as a trademark, it would be rejected due to its direct description of the product.
Trademarks violating public order and morality: Any trademark that contradicts public order or social morality will be rejected, such as those involving illegal activities or containing discriminatory or insulting content.
Misleading trademarks: If a trademark is likely to mislead the public into believing that the goods or services possess certain characteristics or origins, the JPO will reject the trademark application.
Similarity Examination
Trademark similarity examination is a core part of the substantive examination. Examiners will search trademark databases to check whether the applied trademark is similar to existing registered trademarks or pending applications. Similarity not only refers to identical or similar graphics or text but also includes the pronunciation, meaning, and overall impression of the trademark.
The purpose of similarity examination is to protect the rights of existing trademark holders and prevent consumer confusion due to trademark similarity. If an examiner determines that the applied trademark is too similar to an existing trademark, they may issue a rejection notice to the applicant. The applicant can then modify the trademark or file an objection based on the examiner’s opinion.
Examination of Goods and Services Classification
Examiners will also review the categories of goods or services in the trademark application to ensure that the applicant’s chosen categories align with their actual business scope. If examiners find that the applied categories do not match the actual business situation, they may require the applicant to modify or supplement the relevant categories.
For example, if a company applies for a trademark for electronic products but only selects food categories in the application, this may lead to a category mismatch, and examiners will require modifications.
V. Trademark Registration Publication and Opposition
Trademark Publication
If a trademark successfully passes the substantive examination, the JPO will publish the trademark registration application in its official gazette. The publication period typically lasts for two months. During this period, anyone can file an opposition to the trademark, claiming that it does not meet registration requirements or infringes upon their existing trademark rights.
The publication period is established to ensure transparency in trademark registration and provide an opportunity for public participation in the review process. During this period, applicants can check the status of their application through publicly available trademark information while also monitoring for any potential oppositions.
Opposition Procedure
In the opposition procedure, third parties filing an opposition need to provide sufficient reasons and evidence to prove that the applied trademark violates the provisions of the Trademark Act. Common grounds for opposition include similarity to existing registered trademarks, lack of distinctiveness, or violation of public order. The JPO will assess whether the trademark meets registration requirements based on the materials submitted by both parties.
For trademark applicants, upon receiving an opposition notice, they must promptly submit a rebuttal to ensure the smooth progression of their trademark application. When submitting a rebuttal, applicants typically need to provide evidence of trademark use, explain the trademark’s market influence and usage history to prove its legitimacy and distinctiveness.
The review cycle for opposition procedures is usually lengthy, as both parties’ opinions and evidence require detailed examination. After completing the opposition review, the JPO will make a final decision. If the opposition is upheld, the application may be rejected; if the opposition is not sustained, the trademark application will proceed to the registration stage.
Options After Failed Opposition
If a trademark applicant fails in the opposition procedure, the trademark application will be rejected. However, the applicant can still choose to file an administrative lawsuit, requesting the court to review the JPO’s decision. The administrative litigation process is relatively complex and usually requires the applicant to provide more detailed legal bases and technical support. Although the litigation process is time-consuming and resource-intensive, it may be the last resort to ensure brand rights for some important trademarks.
VI. Maintenance and Management After Trademark Registration
Validity Period of Trademark Registration
According to the Trademark Act, trademark registration is valid for 10 years from the date of grant. During the validity period, the registrant enjoys exclusive rights to the trademark, and any unauthorized use will constitute infringement. After the validity period expires, the registrant can extend the trademark’s validity by submitting a renewal application.
Trademark renewal applications can be submitted within 6 months before the expiration of the validity period. If the registrant fails to submit a renewal application within the specified time, the trademark rights will automatically expire. However, the JPO allows a 6-month grace period after the expiration date during which the applicant can still submit a renewal application with additional fees to maintain the trademark’s validity.
Maintenance after trademark registration not only includes renewal but also requires periodic review of the trademark’s usage to ensure its actual application in commercial activities. According to the Trademark Act, if a registered trademark has not been used for three consecutive years, any third party can file a cancellation request with the JPO to revoke the trademark registration. Therefore, trademark owners should ensure that their trademarks are actually used in the relevant categories of goods or services.
Trademark Use and Protection
The use of registered trademarks must align with the goods or services categories specified at the time of application. If trademark owners use the trademark beyond the scope of categories designated during registration, they may face risks of trademark use invalidation or infringement. Therefore, trademark owners should pay special attention to the scope of use when using their trademarks to ensure compliance with legal requirements.
Furthermore, trademark owners need to regularly monitor the market to prevent unauthorized use of identical or similar trademarks by others. Trademark infringement includes unauthorized use of registered trademarks or signs similar to registered trademarks that may cause consumer confusion. If infringement is detected, trademark owners can file an opposition with the JPO or initiate trademark infringement litigation in court, demanding cessation of infringement and compensation for damages.
Japanese trademark law stipulates relatively strict penalties for trademark infringement, including injunctions and damage compensation. Therefore, once trademark owners discover infringement, they should immediately take legal measures to ensure their brand rights are not violated.
Trademark Assignment and Licensing
After trademark registration, trademark owners can authorize others to use their trademark rights through assignment or licensing. Trademark assignment refers to the transfer of trademark ownership to another party, while trademark licensing allows others to use the trademark within a certain scope while the ownership remains with the original trademark owner.
During the trademark assignment process, both parties need to sign an assignment agreement and submit an assignment application to the JPO. After confirming that the assignment application is correct, the JPO will transfer the trademark rights to the assignee. Trademark licensing does not require a change of ownership, but both parties still need to sign a licensing contract and file it with the JPO.
It should be noted that the scope of trademark assignment or licensing should be clearly defined, including categories of use, duration, geographical scope, etc., to ensure the legal validity of trademark rights. If the licensing or assignment process does not comply with relevant regulations, it may lead to trademark rights disputes or invalidation. Therefore, when conducting trademark assignment or licensing, it is recommended that trademark owners engage professional legal counsel to ensure the legality and effectiveness of the contract.
VII. Trademark Dispute Resolution and Cancellation Procedures
Trademark Cancellation Procedure
In certain circumstances, third parties can apply for the cancellation of a registered trademark’s validity through a cancellation procedure. According to the Trademark Act, if a registered trademark has not been used for three consecutive years, any third party can apply to the Japan Patent Office (JPO) for cancellation of the trademark. The cancellation procedure aims to prevent trademark registrants from “occupying” trademark rights without actual use, which would lead to a waste of trademark resources.
In the cancellation procedure, the applicant needs to provide evidence demonstrating that the trademark has not been used in the relevant categories. The trademark owner can rebut the cancellation application by providing evidence of trademark use (such as advertisements, product packaging, sales records, etc.). If the trademark owner fails to provide sufficient evidence, the JPO will cancel the trademark registration.
Trademark Invalidation Declaration
Trademark invalidation declaration refers to the process where any third party can apply to the JPO to declare a trademark invalid after its registration, based on specific grounds. Common reasons for invalidation include:
The trademark lacks distinctiveness or conflicts with public interest.
The trademark is similar to an existing registered trademark, infringing upon others’ trademark rights.
The trademark registration involved fraud or improper conduct.
The invalidation declaration procedure is similar to the opposition procedure. The applicant needs to submit grounds for invalidation and relevant evidence, and the JPO will make a decision based on the opinions and evidence from both parties. Once an invalidation declaration is established, the trademark will lose legal protection, and the trademark owner will no longer enjoy exclusive rights to the trademark.
Trademark Infringement Litigation
Trademark infringement litigation is an important means for trademark owners to legally protect their trademark rights after discovering infringement. According to the Trademark Act, any unauthorized use of a registered trademark or a sign similar to a registered trademark that causes public confusion constitutes trademark infringement. Trademark owners can file a lawsuit to demand cessation of the infringing acts and seek compensation.
In trademark infringement litigation, the plaintiff needs to provide evidence proving the validity of their trademark registration, the defendant’s infringing acts, and the actual damages caused by the infringement. When adjudicating cases, courts will conduct a comprehensive assessment based on the similarity of trademarks, the relevance of goods or services categories, and the likelihood of public confusion.
VIII. Conclusion
Trademark registration is a crucial legal means to protect a company’s brand, and Japan’s trademark registration procedure has strict legal norms and operational processes. Through steps such as trademark search, classification selection, application submission, publication, and opposition, applicants can ensure that their trademarks receive adequate legal protection in the Japanese market. However, registration is only the first step; subsequent use, management, and maintenance are equally critical. Businesses need to ensure the continued validity of their trademarks through reasonable strategies and legal means.
We hope this article has provided a detailed guide and reference for companies planning to register trademarks in Japan, helping them to successfully complete trademark registration and protect their brand rights.
