Japan is a “first-to-file” jurisdiction, meaning that it is necessary to register a trademark in order to obtain proprietary rights over it. However, in exceptional cases, well-known trademark can be protected even if they have not been filed yet.
Trademark applications in Japan must be filed with the Japan Patent Office (JPO).
Japan is also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.
It is not necessary for a trademark to be used in Japan for it to register. However, if it is not used during a term of five years after the registration, it will become vulnerable to cancellation actions based on lack of use.
If you register a combined trademark (which includes both word elements and figurative elements) in Japan, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
During the examination process, any third party can provide useful information for examination to the Trademarks office, such as any grounds making the trademark unfit for registration. This third party does not have to have any prior right or interest in the trademark; in fact, they can remain anonymous if they so wish.
Once the trademarks office has completed the formal and substantive examinations and the trademark registration is granted, a certificate will be issued and the grant will be published. Third parties then have a period of two months to oppose the registration, based on prior rights to the trademark or absolute grounds of irregistrability.
Registered trademarks in Japan are valid for a renewable term of ten (10) years which starts on the registration date. Renewals can be requested as early as six (6) months before the expiration date, and as late as six (6) months afterwards upon payment of a late renewal fee.
For trademark search reports the trademark must be composed of the Latin alphabet and will only consider other trademarks in the Latin alphabet. If you wish to register a trademark that is composed of katakana characters (Japanese writing) the trademark search must consider trademarks written in katakana characters (Japanese writing). Please contact us if this is the case, additional fees will apply.