How to file trade marks in Japan

An increasing number of foreign companies have been applying to register their trade marks in Japan in recent years. According to statistics provided by the Japan Patent Office, the total number of classes designated in trade mark applications filed by foreign companies has increased by 21.3% between 2010 and 2014, and the number of Madrid Protocol applications designating Japan has increased by 15.2% in the same time period. In addition, non-traditional trade marks were introduced in 2015. Considering the increasing importance of trade marks in Japan, brand owners need to bear in mind a series of key tips so that they obtain trade mark rights appropriately and efficiently and overcome any problems that may arise.

Japanese trade mark law is based on a first-to-file rule. This means that the requirements regarding use of a trade mark are not strict, and a mark which is not being used can be registered. However, if the scope of the designated goods or services in one class is too broad, or if the designated retail or wholesale services are dissimilar to each other, the examiner will doubt use or intent to use of the applied-for trade mark and issue office actions.

If you limit the scope of the designated goods or services, the rejection can be overcome. In the case of retail or wholesale services, you have to keep only the retail or wholesale services which are similar to each other, and delete the rest. You can seek protection for the deleted goods or services in divisional applications. However, in the case of Madrid Protocol applications, current practice does not allow you to file divisional applications.

If you confirm that, before filing an application, the scope of the designated goods or services in a class is not too broad or the retail or wholesale services are similar to each other, you can avoid office actions and reduce costs.

If you prove that you are conducting business relating to the designated goods or services, the rejection can be overcome. In order to prove it, you can submit materials such as catalogues, photographs of shops, invoices and online articles. In this case, you do not have to limit the designated goods or services. If you submit the materials together with an application, you can avoid office actions and reduce costs.

The rejection can be overcome by stating that you intend to use the applied-for trade mark within three or four years from the application date. The statement has to be accompanied with a business plan relating to the designated goods or services. In this case, you do not have to limit the designated goods or services. If you wish to obtain a right with a broad scope and have not started business relating to the designated goods or services, this measure is recommended. If you submit the statement and business plan together with an application, you can avoid office actions and reduce costs.

In many cases, the descriptions of goods or services designated in applications filed by foreign applicants, especially Madrid Protocol applications, do not conform to Japanese standards and are rejected. Depending on the number of designated goods or services, overcoming the rejection can cause delays.

To avoid office actions, it is advisable to refer to the goods/service lists provided by the JPO, which contain acceptable descriptions. Even if the designated goods or services are not included in the lists, you might avoid office actions by submitting an explanation of the goods or services at the time of filing an application.

When responding to office actions, you can explain the rejected goods or services instead of amending them. In this case, the examiner can accept the original descriptions, or propose alternative descriptions based on the submitted explanation.

Many Madrid Protocol applications designate the service "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods" in Class 35. However, this service is believed to be unclear and can create office actions.

In Japanese practice, this description can be interpreted in two ways. It is important to understand the difference between the two ways to appropriately amend the description.

"To avoid office actions, it is advisable to refer to the goods/service lists provided by the JPO, which contain acceptable descriptions"

In the business support service interpretation, the word "others" means sellers. This means that the service is a kind of business support service and is designed to help companies or people selling goods to consumers. The subject service does not cover retail or wholesale services.

If you intend to register a business support service, the description should read "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods (other than retail services and/or wholesale services.)".

In the retail or wholesale service interpretation, the word "others" means consumers. This means that the subject service is retail or wholesale services. If you intend retail or wholesale services, the description should read "Retail services and/or wholesale services for [specific goods]".

Business support services and retail or wholesale services are deemed as dissimilar to each other. Therefore, if you wrongly designate an unintended service without understanding the difference between the two interpretations, your registration cannot prevent third parties from registering identical or similar trade marks for the service you originally intended to designate, and you cannot use the registered mark for that service due to these third party registrations.

When a trade mark receives a refusal based on lack of distinctiveness, in some cases, the applicant abandons the application without filing arguments, not realising that, by making a proper assessment of the chances of success and filing appropriate arguments, it may be possible to overcome these refusals.

Judgment of whether a trade mark consisting of a foreign word is distinctive or not is based on the average recognition of Japanese consumers. This means that distinctiveness would be judged based on whether that word can be understood by Japanese consumers. In terms of foreign words which are not easily understood by the average Japanese consumer, it is possible to successfully argue that the trade mark is not descriptive since the meaning cannot be understood. However, it depends on the field of the designated goods or services. For instance, French words are deemed to be easily understood in the confectionery field and the cosmetics field. It is important to carefully look into precedent decisions and the conditions of the actual market when analysing the distinctiveness of a trade mark.

Judgment of the distinctiveness of foreign geographical names in the JPO has become stricter. However, if the foreign geographical name is not commonly recognised in Japan, there is a possibility that a trade mark merely consisting of such a name can be registered. In order to prevent refusals based on lack of distinctiveness, it may be worth consulting with a Japanese attorney about the chances of success before filing the application.

When a trade mark describes the quality of the designated goods or services, a refusal asking for a limit to the goods or services may be issued. For instance, if the word "wool" is included in the trade mark applied for, limiting the designated goods to goods made of wool could be requested. This refusal is often issued along with the reason that the trade mark lacks distinctiveness.

The above mentioned refusal can be overcome by filing arguments stating that the trade mark does not directly describe the quality of goods. Another way to easily overcome such a refusal is to file amendments to limit the designated goods or services as written above. Even if such a limitation is made, a trade mark right can be enforced against another party's use in connection with similar goods. This means that, in reality, the disadvantage of such a limitation is not substantive.

If it is clear that the above mentioned refusal would be issued and that it is difficult to overcome such a refusal, it is advisable to file the application designating goods or services with the appropriate limitation.

When refusals based on conflict with prior trade marks are issued, it is sometimes difficult for foreign applicants to understand the reason why the marks were cited.

In order to understand and accurately address refusals based on prior trade marks, it is important to understand the standards for judging the similarity of trade marks in Japan.

"Judgment of whether a trade mark consisting of a foreign word is distinctive or not is based on the average recognition of Japanese consumers"

In the examination at the JPO, marks written in English letters are transliterated and written in the phonetic Japanese characters used to represent words imported from abroad. The similarity of marks would be judged based on these transliterations, which could affect the citing of prior marks during examination. In some cases, there may be various transliterations for a mark written in the English alphabet, resulting in the citing of prior marks with sounds corresponding to each of the transliterations. Another problem is that even if the spellings are different, there are cases in which the marks written in the Japanese phonetic alphabets are the same. This is because there are only about 50 sounds in the Japanese language.

If a foreign applicant wishes to clarify the transliteration of a trade mark written in the English alphabet, it is advisable to file the trade mark along with the transliteration written in Japanese letters. The usual way is to indicate the transliteration in the second line right underneath the trade mark written in the English alphabet. By filing the trade mark with the Japanese transliteration, it may be possible to reduce the number of prior trade marks cited.

The basic rules for judging the similarity of goods and services have been standardised in Japan. Codes called "similar group codes" are established for all goods and services. If we look at the similar group codes of the goods, we can easily judge if they are similar or not. For example, since the same group code is given to cameras, cell phones, and televisions, we can see that they are similar to each other. Some of the advantages of this system are that it is easy to predict the registrability of a mark when conducting prior mark searches, and the examination will proceed smoothly and quickly. However, sometimes the judgement of similarity using the similar group codes does not conform to the situations in the actual market. Therefore, in some exceptional cases, it is possible to argue dissimilarity of the goods or services even if they are judged to be similar according to the similar group code system.

There are situations in which the conflict with a prior citation is critical and the conflict cannot be overcome by filing amendments or arguments.

If the cited prior mark has not been used for three consecutive years after registration, the mark can be cancelled in a non-use cancellation. Since the use requirement is not as strict in Japan, it is said that around 80% of registered trade marks are not used in Japan. Therefore, filing a non-use cancellation trial is often recommended to overcome a refusal based on a prior mark.

In Japan, unfortunately, letters of consent from the owner of the prior mark are not accepted. As an alternative, it is common to temporarily unify the ownership of the trade mark applied-for and the cited mark to overcome a refusal citing a prior mark. In particular, if the owner of the prior mark agrees to cooperate, that owner can first assign their trade mark to the applicant, and after the application has been registered, the prior mark can be assigned back to the owner. Another way is to assign the application to the owner of the prior mark, and have it assigned back after it has been registered. We hope the above tips come in useful when prosecuting trade marks in Japan.

Tomohiro Gyoda
		Tomohiro Gyoda handles trade mark and design cases for foreign clients, particularly related to trade mark and design prosecution, searches, oppositions, and trials. Gyoda also has experience preparing patent specifications and translating patent-related documents such as office actions, expert opinions, and litigation documents from English or German into Japanese, or from Japanese into English or German. He has a BS from Department of German, European and American Studies I at Tokyo University of Foreign Studies. His background includes working for a private IP translation company before joining a private practice law firm.

Satoko Kubo
		Satoko Kubo handles trade mark and design cases for foreign clients. She has experience in trade marks searches, filing trade mark and design applications, enforcement, oppositions and trials. She also specialises in unfair competition law, copyright law and domain name disputes. She has a BA from the School of Law of Keio University