Trademark registration in Japan

How to register a trademark in Japan?

Trademark registration in Japan is done through the Japan Patent Office (JPO).

Japan's trademark system provides protection for marks such as logos that are used in the trade of goods and services. By allowing trademarks to identify the origin of goods and services, and to identify their qualities and disclose them, the trademark system protects the business reputation of persons using trademarks. This contributes to the development of Japanese industries and protects the interests of consumers. Japan's trademark system is regulated by the Trademark Law. Japan's design system is also regulated by the Design Law, which protects shape, pattern, colour and other characteristic, attractive and functional designs, relating to their external appearance.
The design system protects new designs as the property of their author, promoting the use of designs and thus encouraging the creation of new designs and contributing to the development of Japanese industry.

Trademark system in Japan

• Equality for Japanese and foreigners.
• Japan's Trademark Law offers equal protection to both Japanese nationals and foreigners.
• The same trademark registration process and conditions apply to those residing in Japan and abroad.
• Therefore, those who do not currently live in Japan and companies that do not currently have their headquarters or branches in Japan can also enjoy protection of their trademarks through this system for future expansion into the Japanese market.

First application rule

For a trademark to be registered in Japan, it does not have to be currently in use (either in Japan or abroad).

If the trademark owner intends to use the trademark in the future, it can be registered in Japan as long as certain requirements are met.

Hence, it is very important for any foreign company planning to expand into Japan in the future to consider applying for trademark registration in Japan before entering this market. However, it should be noted that the trademark must be used within three years of registration and may otherwise be invalidated.

Use of the trademark once within the three-year period is sufficient to prevent cancellation of the trademark rights.5.2.3 Scope of protectionAccording to the Trademark Law, trademarks are divided into the following categories:

Validity and time limit for the registration of trade marks

Validity of registration
When a trade mark is registered, it is protected against unauthorised use by any other person of identical or similar trade marks. Such use may constitute a breach of civil or criminal law. Trade mark owners will be disadvantaged by the illegal sale of counterfeit trade mark goods. Therefore, trading in such counterfeits is severely punishable under Japanese law, and in many cases, sellers of well-known counterfeit branded goods are guilty of criminal (as opposed to civil) offences.

Renewal
Once registered, a trademark is protected for 10 years from the date of registration, unless the trademark is subsequently invalidated or cancelled. Protection can be renewed for 10-year periods.

Protection of world-famous trademarks

Because the Japanese trademark system generally operates on the first application principle, trademarks cannot be protected if the trademark owner does not apply for trademark registration with the Japan Patent Office. However, world famous trademarks are an exception, as they may be protected if they are famous in Japan.

Cancellation of a trade mark

Non-use of trademarks
According to the Trademark Law of Japan, trademarks can be registered even if they are not in use at that time, in accordance with the rule of first registration. However, you should be fully aware that if that mark is not used within three years of registration, a third party may file a petition for cancellation of that mark. It should be noted that "using" a trade mark does not only involve incorporating the mark directly on a product; printing the mark on a brochure together with an image of the product, using the mark in an advertisement of the goods such as in a newspaper, or displaying the goods showing the mark on a website on the Internet also constitute "use".

Cancellation of trademarks by agents or representatives

The Japanese trademark system protects the right of authorisation owed to trademark owners. For example, if foreign goods or services are provided in Japan, and the relevant foreign company enters into an agency agreement with a Japanese company, if such local agent applies for registration of the foreign company's trademark without due cause, the duly authorised trademark owner may file an application for cancellation of the Japanese registration and thus may recover its rights to the trademark.

The registration process in Japan

Steps from application to registration
If the examination process goes well, the examination will be completed in a minimum of about three months, but in general it takes about six months from the time of submission of the application. After that, registration usually takes another one to two months. In other words, it normally takes about eight months from application to completion of the whole process.

International trade mark registration in Japan

In principle, to obtain the right to a trademark in Japan from abroad, an application for registration must be filed with the Japan Patent Office. However, there are two other alternative methods, which are set out below.

Applying under the Paris Convention
If you intend to apply for registration of a trade mark only in Japan, or in a few countries, it is a good idea to file your application under the Paris Convention.

Applying under the Madrid Agreement
Japan is also a signatory to the Madrid Agreement, so this is another alternative when applying for international registration of a trade mark that includes Japan. Under this system, it is possible to file an international application and register trademarks in certain countries under the umbrella of the application originally filed in your own country. This is a particularly convenient system for business groups with interests in many countries around the world.

Register and file your trademark application in Japan

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