Q. What is a trademark?
Ans. A trademark is any sign used to distinguish a trader’s goods or services from those of its competitors. The sign may be a word or words, a symbol or device, a label, a color or colors, a shape or 3-D shapes, or any two of these elements used in combination. As from April 2015, a motion, hologram, a sound, and position mark can be registered as trademark in Japan. Properly used and promoted, a trade mark may become the most valuable asset of a business. Trade marks such as TOYOTA and APPLE are household names and serve as indications of origin of the goods as well as indications of quality.
Q. Can I register a sound in Japan?
Ans. Yes. The Trademark Law of Japan has introduced the registration of sound mark. The standard is fairly high, and the JPO has approved 110 sound trademarks among 517 applications by the end of Feb. 2017. While the trademark application procedures are similar to that of a standard mark, the description must be accompanied by an audio or video reproduction of the sound.
Q. When can I register my trademark?
Ans. You can register your trademark at any time as long as you have a genuine intention to use or continue using the mark.
Q. Is it necessary to register my Business Name / Company Name as trademark in Japan?
Ans. No. It is not mandatory to register your Business Name or Company Name as trademark in Japan even if you are trading under a name other than your own personal name. However, to put yourself in the best possible position to stop competitors from copying your name/brand, you need to register it as a trademark.
Q. Can two or more persons have the same trademark?
Ans. Yes. Provided their respective uses are not likely to cause deception or confusion to consumers.
Q. Is it required to file a statement of use of the trademark at the time of filing an application?
Ans. No. Use of mark prior to filing an application is not mandatory in Japan. Trademarks that are not in use prior to registration can also be registered.
Q. Can a multi class trademark application be filed in Japan?
Ans. Yes. Under the Japanese Trademark Law, multi-class trademark applications can be filed. If you have an idea to register your trademark covering more than two classes, we propose to use a multi-class application from a cost-saving point of view.
Q. Is it necessary to register my trademark written in Japanese character?
Ans. It depends. If your trademark is composed of unfamiliar letters to ordinary Japanese consumers, it is likely that your trademark can be pronounced in a different way contrary to your expectation. If so, we propose to register your trademark written in Japanese character (Katakana) for the purpose of avoiding third party trademark registration pronouncing the same with your expectation.
Q. What are classes?
Ans. When you file a trademark application in Japan, you must indicate the goods and services that you are using your trademark with (or that you plan to use your trademark with). All goods and services are classified into 45 different categories, called International Classes. These were defined by a treaty called the Nice Classification System (after Nice, France). The JPO provides a guide of acceptable wording and corresponding classes. If the specific items you want to include in your trademark registration are not listed there, it can be helpful to discuss your application with an experienced attorney. See https://www2.j-platpat.inpit.go.jp/SH1/sh1e_search.cgi?TYPE=000&sTime=1458524681254.
Q. Can I export my products to Japan using ® symbol beside a registered trademark in my country, but not registered in Japan?
Ans. The Japanese Trademark Law has the provision to prohibit affixing an indication of trademark registration or an indication confusing therewith to an unregistered trademark. The ® symbol is likely considered as a confusing indication of trademark registration in light of common trade practice at present.
Q. What happens if a registered trademark is not used?
Ans. If you fail to use your trademark for the goods or services for which it was registered for an uninterrupted period of three years in Japan, the trademark is subject to cancellation, unless reasonable causes have prevented use of the trademark, independent of the owner’s will. Any third party may file a non-use cancellation action with the JPO.
Q. Does the Japanese Trademark Law bestow protection to unregistered trademarks?
Ans. Yes. The Japanese Trademark Law contains the provision to refuse/invalidate third party trademark application which is identical with or confusingly similar to unregistered trademarks on the condition that the unregistered trademarks become popular among relevant public. Besides, a prior use of the unregistered trademarks defends against enforcement of third party trademark rights.
Q. How long does it take for a trademark to be registered in Japan?
Ans. Without any complications, such as a rejection by the JPO examiner or an objection by your competitors, the average time to get the trademark application processed and registered is about 6 to 8 months.
Q. How long does a trademark registration last?
Ans. The initial term of registration is 10 years from the filing date. The registration can be renewed indefinitely for further periods of 10 years each. If you do not pay your renewal fee by the next renewal date, your mark will expire. However, you are allowed an extra six months from the renewal date in which to renew your registration, but you will have to pay a fee for late renewal. Following this six-month period, there is a further six-month period, i.e. a total of up to one year after the renewal date, in which you may apply to restore your mark.
Q. Can I stop someone using my registered trademark as a domain name?
Ans. You may well be able to stop them if they are trading in the same area of business and particularly if you can show that they are acting in bad faith.