Procedures for Obtaining a Trademark Right

What is a Trademark?

A trademark is a mark used by a manufacturer, dealer or service provider in respect of goods or services in order to differentiate them from goods and services offered by other parties which are of the same or a similar type.

Effects of Registering a Trademark

(1)A granted trademark right is effective throughout Japan, and its owner is able to use it exclusively in respect of the designated goods and services without exclusion by any other party.

(2)The use by another party of an identical or similar trademark in respect of an identical or similar range of goods or services constitutes infringement, and the trademark owner may claim the infringer to cease the infringing acts and payment of damages

Application

In order to obtain a trademark right, an applicant must fill out the forms prescribed in the relevant ordinances and submit them to the Japan Patent Office.

Publication of Unexamined Application

The JPO will publish the content of an application in the Official Gazette after filing.

Formality Examination

An application document submitted to the JPO will be checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made where necessary documents are missing or required sections have not been filled in.

Substantive Examination

An examination will be made of whether the application fulfills the substantive requirements. The following trademarks will be refused as they are deemed not to meet the substantive requirements.

(i)Trademarks which do not enable consumers to differentiate the applicant's goods or services from those belonging to other parties

(ii)Trademarks which are unregistrable for reasons of public interest or for the protection of private interests

Notification of Reasons for Refusal

Where an application fails to meet the substantive requirements, a notification of reasons for refusal will be sent.

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 refusal.

Decision of Registration

If it is ultimately judged that there are no reasons for refusal, a decision to register a trademark will be made.

Decision of Refusal

If a written argument and an amendment can not eliminate the reasons for refusal, and if the examiner judges that the trademark can not be registered, a decision of refusal will be made.

Appeal against Decision of Refusal

When dissatisfaction is in the decision of refusal of the examiner, the applicant may appeal against the decision of refusal.

Appeal Examination (against the decision of refusal)

An appeal examination against a decision of refusal is performed by a collegial body of three or five appeal examiners.
Decision of the appeal examiners is called appeal decision.
When it is judged, as a result of appeal examination, that the reasons for refusal was solved, an appeal decision to register a trademark is performed, and when the reasons for refusal is judged that the reasons cannot cancel and the trademark cannot be registered, an appeal decision of refusal is performed

Registration (Registration Fee Payment)

With the payment of the registration fee, the registration of the trademark right will take place and the trademark right will come into force.

Publication of a Trademark Gazette

As for the trademark right which has been registered and come into force, the contents are published on the trademark gazette.

Opposition

Any person may file an opposition to the decision to register a trademark with the Commissioner of the JPO.

Appeal for Invalidation / Revocation

Even after a trademark is registered, any person may appeal for invalidation of the trademark if it has a flaw.
Moreover, if the trademark has not been used after registration for three years or more, an appeal for revocation may be charged.

Appeal Examination (Invalidation / Revocation)

An appeal examination of invalidation/revocation is performed by a collegial body of three or five appeal examiners.
About invalidation, if the appeal examiners judge that there is no flaw in the decision to register a trademark, they will make a decision to maintain the trademark registration. If however they judge that the decision to grant was flawed, they will make a decision to revoke the trademark right.
About revocation, when a right holder cannot prove using the trademark, an appeal decision of revocation is performed, and the trademark right is revoked.

Intellectual property High Court

An applicant who is dissatisfied with an appeal decision of refusal of an appeal against decision of refusal, and an interested party who is dissatisfied with an appeal decision of invalidation, revocation or maintenance, may appeal to the Intellectual Property High Court.

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