When entrepreneurs commence their business activities, they look forward to giving their business activities a boost and a unique identity right from the time of its beginning. To achieve a greater place of success and to maintain a competitive place in the dynamic business world, businesses obtain Intellectual Property to create a unique image separate from its competitors. Intellectual Property (IP) has now become a vital part of today’s dynamic business world. Trademark registration in Japan is important for businesses operating in Japan to give it’s brand a unique image. There are several benefits of trademark registration in Japan. The preliminary step in the process of trademark registration is Trademark Search.
Steps to register a trademark in Japan
The Process of Trademark Registration follows a list of activities:
- Trademark Search is conducted to know whether a trademark is available or not for registration.
- The authorities accept applications on a first-to-file basis, then go through a formality examination and a substantive examination.
- The Commissioner of the Patent Office shall lay open the trademark application at the time of filing.
- If no valid reasons for refusals of trademark registration are found within the time limit or Official action(s) are overcome by amendment or argument, the examiner shall render a decision for the trademark registration.
- Upon payment of the registration fee by the applicant, the trademark right acquires registration.
- Upon registration, the necessary details like the mark, goods and services, owner’s name and address are ready for publishing in the trademark bulletin for opposition purposes.
Also Read: Trademark Application Status
Major Points for registering Trademarks in Japan
- Authority- The relevant authority for Trademark Registration in Japan is the Japan Patent Office. No other authority can provide registration to trademarks than the Japan Patent Office.
- Legislation- The Japan Trademark Act is the most applicable legislation.
- Registrable Trademarks- Words, logos, and three-dimensional marks are capable of registration. Non-traditional marks such as colors, sounds, positions, motion, and hologram marks are also registrable.
- Non-Registrable Trademarks- Scents, flavors, and textures are not capable of registration as trademarks in Japan.
- Route of filing– The standard route is national filing. While an option to use the Madrid System is also available.
- Territories– Trademark registration in Japan covers only Japanese areas, towns, and cities.
- Owners– Only a legal and natural person can own a trademark.
- The complete process of trademark registration requires an average of 6-12 months until a mark obtains registration.
- It may take a much longer time if any party objects to trademark registration.
- Collective marks are recognizable under certain conditions.
- But certification marks are unrecognizable.
- Through extensive use nationwide, a trademark can acquire distinctive character.
Power of Attorney
- Registration in Japan does need a Power of Attorney when filing if the applicant applies directly before the Japan Patent Office.
- However, trademark registration requires a POA to respond to an office action if WIPO issues a Provisional Refusal for an International Registration filed via the Madrid System.
- If the authorities refuse the application and the applicant wants to appeal to the Board of Appeals, it may need a POA.
- Power of Attorney does not require notarization and legalization.
Basic Details for Trademark Registration in Japan
The requirements and documents for trademark registration are:
- A mark, class(es), goods and services’
- Applicant Name
- Address of the applicant
- A convention priority claim(if applicable) is the important and necessary information.
- Motion marks, three-dimensional marks, color marks, sound marks, and standard character marks should be specified to that effect.
How the applicant can claim priority?
- The applicant may claim a priority upon filing.
- They can file the priority certificate at a later stage without paying any official fees for late filing.
- The time provided is 3 months after the date of registration.
- If the applicant misses the opportunity to file the trademark, the examination proceeds simply without priority.
Parties who can oppose the trademark registration
- Essentially, anybody can file an opposition against a trademark registration.
- Even when opposition to trademark registration is based on a prior right, the prior right does not have to be owned by the opponent.
An applicant may overcome an objection to a trademark application through argument and/or amendment of the goods/services or can acquire distinctiveness through use. To avoid opposition, it is important to undertake Trademark Search effectively.
Adequate representation of a trademark
- A trademark is adequately represented by what is indicated on the application form.
- If a wordmark is in the “standard characters”, which are specific characters designated by the Commissioner of the Patent Office, it is sufficient to specify to that effect.
- A sound mark is adequately represented by a staff notation or an equivalent description of the sound, as well as a CD-R or a DVD recorded in MP3 format.
- A color mark is adequately represented by a specimen together with a color chart or a color coordinate system that specifies the colors.
- One or more photographs or diagrams/illustration represents a position mark, hologram mark or motion mark to describe the position, holography, and motion, respectively, together with a complete description of the mark.
Classification of Goods and Services
- Trademark Classification of Goods and Services is according to the Examination Guideline which is based on the Nice Classification System.
- It is permissible to claim whole-class headings only when headings are by the Examination Guideline.
- This would give protection to the whole class, necessitating that the applicant understands that its goods/services of interest fall into the same category with any of the headings.
- If the applicant is not sure whether a particular good/service can come under a heading, a specific description is mandatory.
- The description “all goods in class” is not permissible for trademark registration.
- There are a total of 45 Classes of Trademark.
Validity
- A trademark is valid for 10 years after which the trademark has to be renewed.
- Trademark renewal is important to continue having trademark rights.
- A trademark is renewable when an applicant files for registration of renewal and pays a renewal fee.
- The authorities allow a six-month grace period for a late renewal but at double the official fees.
Unregistered Trademark rights in Japan
- Trademarks that do not have registration can get protection under the Unfair Competition Prevention Law if the trademark is well-known.
- Whether a mark is well-known or famous it is judged on a case-by-case basis.
- However, it would not be easy to prove at the court that a mark is well-known or famous enough to get protection under the Unfair Competition Prevention Law.
Also Read: Registered Trademark
CONCLUSION
When an entrepreneur commences its business activities, they desire that their brand is different and unique from other competitive brands. Obtaining trademark registration thus becomes necessary, Japan is a vast market place, operating business in Japan gives a boost to the business activity. A trademark search is conducted to know whether any party owns the trademark or not.
If you are looking for registering your trademark, our experienced and dedicated experts will provide you with all the necessary information regarding your queries. So what you are waiting for? Visit our Trademart Cart and provide your business with a unique identity. We also provide Trademark registration in India, Trademark Registration in the USA, and many more services. For further information, give us a call at +91 8750008585 and we will guide you most possibly.
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