Introduction:
Trade Marks in Japan are regulated by the Trademarks Act, 1959 and as per article 2 of the act Trademark means any “characters, figures, signs or three-dimensional shapes, or any combination thereof which is used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item)”.In order to file application for the registration of trademark or collect any information regarding trademark, Japan has a portal that deals with all IPR matters “Japan Patent Office (JPO)”. A mark is registered for a period of ten years and may be renewed every ten years.
Filing Procedure:
Application:
In order to file application for the registration of the trademark, the applicant shall[1] submit an application to the Commissioner of the Patent Office along with the prescribed documents. The application must contain the name, domicile or residence of the; graphical representation of the trademark; and the designated goods or designated services along with the class in which they fall. If the applied mark is a three dimensional shape or solely a character, then a statement mentioning the same must be submitted along with the application. A right of priority based on an application for registration of a trademark filed in a country of the Union to the Paris Convention may be claimed by the applicant. The fee for filing application for the registration of a trademark is 6,000 yen per case plus 15,000 yen for each class.
Examination[2]:
If the statement of intent to register a trademark is unclear; or the name of the applicant for trademark registration is not stated or the statement thereof is not sufficient to identify the applicant; or the trademark for which a registration is sought is not stated in the application; or the designated goods or designated services are not stated, then the Commissioner of the Patent Office shall require the applicant to amend the application within the time allotted by the Commissioner. If the application is not amended within stipulated time, the Commissioner of the Patent Office may dismiss the said application. Also the application can be refused on the ground that the mark is not registrable pursuant to the provisions of a relevant treaty or application is not in line with article 6. An amended application may be refused by examiner by a ruling along with the reasons for refusal. In such a case the applicant may file a request for a trial under Article 45(1).
Further if[3] the examiner encounters that a similar/identical mark in relation to similar/identical services is found during examination and such mark is either filed prior to the applicant or is a registered mark then the same shall be notified to the applicant along with an opportunity to submit a written opinion with thin prescribed time.
In case no grounds of refusal[4] are found in the application, the examiner shall render a decision to the effect that the trademark is to be registered.
Publication And Opposition:
An opposition may be filed at Commissioner of the Patent Office within two months of publication of the mark if the mark is in violation of a treaty or a similar/identical mark in relation to similar services as that of the applicant is already registered. The examination as well as decision making shall be conducted by a panel consisting of three or five appeal examiners. An appeal may be made to the appeal examiner whose decision shall be final and non-appealable.
Conclusion:
Where[5] two or more applications for similar/ identical trademark is filed to be used in connection with identical or similar goods or services, only the applicant who filed the application on the earlier date shall be entitled to register the trademark in question. If preceding marks are filed on the same day, the by consultation amongst applicants one applicant is selected for the registration of that mark. A trademark in Japan may be cancelled on the basis of non-use for a continuous period of 3 years.
[1] Article 5 of the act
[2] Article 5-2 of the act
[3] Article 15-3 of the act.
[4] Article 16 of the act.
[5] Article 8 of the act.
DUCTUS EDGE 