Basic Legal Information on Japan – Protection of Trademark in Japan

by：Takuma Yoshioka、Poom Kerdsang、Saiful Aziz

This is the second in a series of articles from GVA LPC providing basic legal information to foreign companies and individuals who are planning to do business in Japan. This series of articles will highlight Japanese laws and regulations which are central to their need to smoothen their business venture into the Japanese market.

For foreign companies that are planning to venture into the Japanese market, it is vital to consider protecting their intellectual property rights. Intellectual property rights refer to an assignment of property rights through patents, copyrights, and trademarks. The protection of intellectual property is crucial as this would protect their business from unwarranted competition from other companies. Unprotected intellectual property rights would allow others to tap into the market share by utilizing such intellectual property without any ramifications. It should be noted that taking legal action for infringement of unprotected intellectual property rights can be an uphill battle which in turn would be time and money-consuming.

This article will look into the protection of intellectual property rights under the Japanese trademark law. Trademark refers to any mark such as character, name, figure, sign, symbol, three-dimensional shape or colour, or sound that identifies or distinguishes a company’s goods or services.  A trademark allows a company to establish a unique connection to their goods or services.  As a company gains momentum on the sale of its goods or services through using its trademark, it will attain a reliable ‘brand image’ or ‘goodwill’ within the market and the public. Thus, the protection of the trademark is essential, because such protection will protect the company’s business from unscrupulous companies that will exploit the created ‘brand image’ by using similar or identical trademarks.  

The main law that governs trademark rights in Japan is the Trademark Act No. 27 of 1959 (“Act”) and the authority that administers matters related to trademark is the Japan Patent Office (“JPO”).  In principle, the Act offers equal rights to both Japanese and foreign nationals to enjoy the protection of trademark rights in Japan, provided that, the same rights are extended to Japanese in the country of the foreign national.  Having such equal rights would allow foreign companies that have yet to establish a head office or branch in Japan, to register their trademark in preparing to expand their business into Japan without having a presence in Japan. However, the Act provides that only residents of Japan may conduct any procedure concerning a trademark application, directly with the JPO. Therefore, for foreign companies that are yet to be established in Japan, it is necessary to appoint a representative in Japan to file a trademark application on their behalf.

The Act extends its protection to marks, with or without colours, that consist of (i) characters, including but not limited to, Japanese characters and alphabetical characters, (ii) devices or symbols, (iii) characters and devices or symbols, or (iv) three-dimensional marks.  The trademark should be used in connection with goods or services of an entity that provides or certifies such goods or services as a business in Japan. Registration of trademarks in connection to retail services, such as the name of stores, the name of an online-order business, or the name of products may also be protected under the Act.

All applications for the registration of trademarks must be made to JPO. A registered trademark would provide the right holder the exclusive use of the trademark with the specific goods or services that the trademark is registered.  The more types of goods or services that a trademark is registered, the wider the protection of such a trademark will have in Japan.

The Act prescribed that the right of a registered trademark shall expire after 10 years from the date of registration. The trademark owner may choose either to pay for the 10 years registration fee in a one-time payment or two 5-year instalments. In the case of payment in instalments, the registration fee for the remaining 5 years may not be paid before it is due, effectively making the registration period to be 5 years.  However, renewal for the trademark is allowed under the Act.  It is worth noting that, nothing in the Act prohibits multiple renewals, as such the right of renewal of the trademark right can be made as many times as necessary to protect the trademark in Japan. 

Foreign companies that intend to register their trademark in Japan should be aware that Japan adopts the “first to file” system, this means that if two identical or similar trademarks are being filed at a different time, the first to file for the registration would be granted the protection of trademark right under the Act, provided such trademarks are qualified for being registered, regardless whether the later-filed trademark has been used earlier or previously. It should be stressed that the protection of the trademark right under the Act extends only within Japan and it is considered a ‘locally’ protected right.  Therefore,  foreign companies may not be able to register their trademark in Japan if there already exists an identical or similar trademark that has been registered under the Act, even if their trademark has been registered and widely used in their own country. However, if the trademark of the foreign company is internationally ‘well known’ both in Japan and overseas, the foreign company may seek to invalidate the third party’s registered trademark from JPO and seek to reinstate its’ trademark right as the rightful owner under the Act. 

It should be noted that a trademark does not have to be currently in use in Japan for it to be registered under the Act. This is an advantage for foreign companies, as the process of the registration of trademarks can be made whilst still making other necessary financial or corporate arrangements before entering the Japanese market. However, a registered trademark needs to be used at least once within three (3) years from the date of registration, to avoid any action taken by a third party to nullify the registration of the trademark. To show that the trademark is being ‘used’, it is sufficient to use the trademark in online advertisement materials that specifically target the Japanese market.

It is worth noting that the average period, from the date of filing to issuing the first action of the examination for the applicant, will take approximately 6 months. If there is no objection to the application during the examination, it will take another 1 or 2 months after the examination for the trademark to be registered. However, in the event that there are any issues relating to the formalities or any other quality of the application, the period processing period might be extended.

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