@Introduction of Japanese Trade Mark System _ NEWPON

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Trade Mark

Trade marks and service marks, which are collectively called trade marks, are utilized to identify source of goods and services respectively. In this regard, an proprietor of such trade marks desires for the public to recognize the trade marks so that the public will seek to purchase goods of the proprietor or to be provided services by the proprietor of the trade marks. In short then, trade marks generally become known in public through the expenditure of large sums of advertising money by the proprietor.

Please refer to outline of the Japanese Trade Mark System below and if you have any questions and/or requests please let us know by email.

Our schedule of trade mark services and fees is provided for your review and consideration.



Japanese Trade Mark System

General

    Upon registration at the Japan Patent Office(JPO), an exclusive right to a trade mark is established. The granted trade mark right is effective throughout Japan, and its proprietor can use it exclusively with respect to the designated goods and services.
    The Japanese trade mark system is a first-to-file system. Any words or designs with or without colors, three dimensional marks and collective marks may be registered as trade marks. Service marks may also be registered, and multi-class applications are acceptable.
 

Application

    Applicant needs to submit to the JPO an application for trade mark registration having the following requirements of (1) applicant's full name, address and nationality, (2) details of the mark, and (3) goods and/or services to be covered must be itemized.
    Where applicant desires to register a trademark consisting of a three-dimensional shape, the application shall contain a statement indicating thereof. We can file an application for a trade mark written in standard characters, which are appointed by the JPO comprising alphabet and Japanese characters. Where applicant desires to register a trademark as standard characters, the application shall contain a statement indicating thereof.
    There is a limitation on number of items of goods or services to be designated in one class from the respect of cost fairness among applicants. The number is defined according to number of domestic similarity groups. A multi-class application is allowed if an additional fee shall be paid for each additional class in the same application. Official fee for an application is 12,000 JPY and additional fee in two or more classes is 8,600 yen per class.
    Neither prior use nor any evidence of use is required. Any person who intends to use the mark may file an application. However, as described above, we need to submit evidence of use in Japan or intention of use for all goods or services designated in the trade mark application to eliminate reasons for provisional rejection if we receive a notice of a preliminary rejection by the Examiner stating;
    It is understood that a trademark which is effected registration is currently used or will be used in the near future under Principal Paragraph of Section 3-1 of the Trademark Law. However, goods (services) are designated over a wide range in class ** in this application for a trademark registration. Under such a situation there causes a doubt whether applicant is using or going to use a trade mark of this trade mark application in the near future with respect to all of the designated goods (services).
    Therefore, it is impossible to say that this application for a trademark registration fulfills the necessary conditions stipulated in Principal Paragraph of Section 3-1 of the Trademark Law.
 
Examination

    Under the first-to-file system, a trade mark filed prior to other applications for trade marks which are identical with or similar to will become registered. Thus, it is always advisable to file an application as soon as possible in order to secure an earlier filing date.
    All applications are examined to determine whether they meet the substantive requirements; in particular the examination is made regarding the distinctiveness of a mark and similarity to third partiesf prior registrations and applications. Request for accelerated examinations can be made under certain conditions.

    Trade marks which do not enable consumers to differentiate the applicant's goods or services from those belonging to other parties shall be refused. Additionally, trade marks which are unregistrable for reasons of public interest or for the protection of private interests shall also be refused.
    If there is any reason to reject the application, the Examiner shall issue a preliminary notice of reasons for rejection and the applicant can file an argument and/or an amendment to overcome the official notice. The usual period of time is three months for foreign residents, extendible up to four months with official fee of 2,100 JPY. If the reasons for refusal are not eliminated, a decision of reasons for rejection shall be issued.

    If there is no reason for rejection or the applicant can overcome the official notice, an official decision for registration of the application shall be issued and the application shall be registered upon the payment of a registration fee and thereafter a Certificates of Registration for a Trade Mark is issued by the JPO.

    Japan has no system for disclaiming any descriptive word contained in a trade mark application. If an application for a trade mark including a famous geographical name is filed, the Examiner will request that the applicant restrict the goods covered by the application to those made in or related the country where the place indicated by the geographical name is located, and the trade mark would be registered accordingly.
    An official action for a trade mark application is generally received after about 8 months or later after the filing of the application. The registration fee is 28,200 JPY per class. It is possible to pay the registration fee in two installments.
 

Appeal of a Decision for Rejection

    If there is dissatisfaction with a decision of rejection of a trade mark application, an appeal against the decision can be filed with the Trial Board of the JPO. A notice of appeal can initially be filed within three months from issue date of the decision.
    The appeal is examined by three Trial Examiners based only upon the reasons for the appeal and the evidence filed by the applicant. An official decision is issued upon completion of the examination.
    If there is dissatisfaction with that official decision, the applicant can file a court action before the Tokyo High Court seeking revocation of the decision.
 

Opposition

    The registration is published in the Official Gazette for opposition. Any person can file an opposition against it with the Commissioner of the JPO within two months from the publication date. Since no extension of this period is allowable, opposition must be filed within those two months in order to secure title as an opponent. An opponent must then file substantial reasons for the opposition and evidence supporting those reasons must then be filed within three months after that expiration of the opposition term.
    A copy of the opposition is sent to the proprietor by the JPO, but the proprietor is not required to take any action at that time. The Examiners of the Trial Board of the Patent Office shall examine the opposition and, if they consider it unreasonable, they will issue an official decision dismissing the opposition and maintaining the opposed registration.

    On the other hand, if they consider the opposition to be reasonable, they shall issue a preliminary notice of cancellation of the registration and request the proprietor to file a response to the notice. After examining the response, they will issue an official decision maintaining or canceling the registration.
    The proprietor who receives a decision canceling a registration can file a court action seeking the revocation of the decision before the Tokyo High Court. However, an opponent who receives a decision dismissing an opposition cannot file an appeal against the opposition decision itself. Instead, the opponent can file for a trial for invalidation of the registration with the JPO based on the same reasons as those for the opposition. An official decision in an opposition is generally received in about 6 months or later after the filing of the opposition.
    If you would like to know more, please see the Japanese Opposition System issued by The World Intellectual Property Organization (WIPO).

            

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