Trademark

Summary
  1. Legislation
    The law governing trademark protection in Japan is governed under the Trademark Act
  2. Definition
    A trademark as defined as a way to ensure the maintenance of business confidence of persons who use the trademarks and thereby to contribute to the development of the industry and to protect the interests of consumer
  3. Criteria
    A trademark can be any

      1. Character
      2. Figure
      3. Sign
      4. Three-dimensional shape
      5. Any combination thereof

    A trademark will be denied registration if:

      1. The mark consist of solely a mark indicating, the common name of the goods or service
      2. The mark is customarily used in connection with goods and services
      3. Consist of a mark, in the case of goods, the place of origin, place of sale quality, raw material, efficacy, intended purpose, quantity shape, price, the method or time of production or use. In the case of service, the location of provision, quality, articles to be used , efficacy, intended purpose, quantity, modes, price or method or time of provision
      4. The mark consist solely of a very simple and common mark
      5. The mark confuses the consumers as to recognizing the goods or services as those pertaining to a business of a particular person.
      6. Not Registrable Trademarks as listed in Article 4 of the Patent Act
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Madrid Protocol
    Japan is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months
    Japan is also a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization. This allows for the mark to seek protection in member countries. However, this does not grant an internationally recognize trademark as that does not exist. It merely provides a mean for member countries to apply their respective laws to consider if the mark may be protected
  5. Rule of Priority
    Japan practices a ‘First-to-file’ system, which recognizes the first person to file the patent which is not necessarily the first inventor
  6. Duration and renewal
    A trademark once granted will last for a term of 10 years. It can be renewed for another term for unlimited amount of time.
Procedure/Timeline
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  1. Applpication
    An application can be made by filing all the necessary documents and be submitted to the Japan Patent Office.
    Once an application has been made, the Japan Patent Office will publish the content of an application in the Official Gazette.
  2. Formality Examination
    The application once submitted will be examined to ensure that the application fulfills the necessary procedural and formal requirements
  3. Substantive Examination
    Another examination will be made as to whether the application fulfills the substantive requirements. Should the examiner determine that the application does not fulfill the substantive requirements, a notification of reasons for refusal will be sent to the applicant.
    If there is no issue, a decision of registration will be made and the applicant will be required to pay the registration fee to register the trademark.
  4. Notification of Reasons of Refusal
    A notification of reasons for refusal will be issued to the application should any issue arise from the application of the mark.
    The applicant then has the opportunity to respond to the issues raised either by a written argument to state and defend the reasons for using the mark or by making the necessary amendments.
    Should the examiner still not be satisfied with the amendments or argument, a decision of refusal will be issued. The applicant can appeal against the decision and can be appealed to the Intellectual Property High Court and further on to the Supreme Court.
  5. Registration
    Once all issues has been resolved, a declaration of registration will be granted. The applicant will then have to pay a fee for the trademark right to be enforced.
  6. Publication
    The trademark once registered and has come into force, the contents of the mark will be published on the trademark gazette.
  7. Opposition
    Any individual can apply for an opposition to the decision to register the mark with the Commissioner of the JPO
Requirements/ Documents
The following information/documents are required to make a trademark application in Japan.

  1. The applicant’s name and address
  2. The description for the goods or services which will apply
  3. A list of relevant classes
  4. Request to register the trademark
  5. Representation of a trademark
  6. List of goods and service
Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    The law governing patents in Japan is the Patent Act 1959
  2. Definition
    A patented invention refers to an invention which is which highly advanced in its creation by utilizing the laws of nature which a patent has been granted for.
  3. Criteria
    In order for an application to be filed in Japan the invention must be

      1. Novel
      2. Inventive
      3. Utility

    The invention also must not harm public order, morality or public health

  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    Japan is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, Japan is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  5. Rule of Priority
    Japan practices a ‘First-to-file’ system, which recognizes the first person to file the patent which is not necessarily the first inventor.
  6. Duration and Renewal
    A patent once granted has a term of 20 years from the filing date.
    An annual maintenance fee is to be paid.
Procedure/Timeline
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  1. Application
    An application for an invention can be submitted to the Japan Patent Office
    The application will pass through a simple formalities check in which to see if the application fulfills the necessary procedure and formal requirements.
  2. Publication(Unexamined Application)
    The JPO will publish the contents of the application on the Official Gazette after 18 months from the date of filing.
  3. Examination
    A published application does not guarantee a patent will be granted. A formal request for the application to be examined must be made. Failure to make a formal request may result in the application be deemed withdrawn and cannot be patented from then on.
    The examiner will consider if the application meets certain requirements in order for an invention to be patented.
  4. Notification of Reasons of Refusal
    Should the examiner find a reason to refuse the granting of the patent, a Notification of Reasons for Refusal will be issued to the applicant.
    The applicant has the opportunity to argue in favor of his invention by submitting a written argument or make the necessary amendment to the application.
    Should the examiner still deem the arguments or amendments made by the applicant still unsatisfactory, a Decision of Refusal will be given.
    The applicant in the interest of still prosecuting the invention, can appeal against the Decision of Refusal can report all the way to the Intellectual Property High Court and further on to Supreme court.
  5. Grant
    When no objections have been raised or all objections raised have been dealt with, the examiner will give a decision to grant the patent for the application.
  6. Registration
    Upon the necessary payments being made for the patent, the patent will come into effect as it is entered in to the Patent Register. A patent number and a certificate of patent is given to the applicant.
  7. Publication
    The contents of the patent is then later published in the Register will be published in the Patent Gazette.
  8. Invalidation
    After publication, any individual can appeal for an examination for invalidation to dispute the validity of the right if the patent registration has a flaw.
Requirements/ Documents
The following information/documents are needed to make a patent application in Japan:

  1. Specification
  2. Claims
  3. Drawings and abstract
  4. Full name and address of each inventor
  5. Full name and address of each applicant
  6. A request to grant patent in Japan

Note: All application must be filed in English or Japanese. Both the translation and the original copies are to be submitted during filing.

PCT National Phase Application
The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

  1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
  2. Payment of national fee
  3. Furnishing of a translation if the international application was filed in any other language other than English
  4. A copy of international application, except where not required by that Office (if necessary)
  5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
  6. An oath or declaration of the inventor
  7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Industrial Design

Summary
  1. Legislation
    The law governing Industrial Design in Japan is the Design Act 1959
  2. Definition
    “Design” refers to the shape, patterns or colors or any combination thereof, of an article which creates an aesthetic impression.
  3. Criteria
    An application for industrial design may be granted if the design is:

      1. Novel
      2. Original artistic solution
      3. Utility

    The following restrictions are imposed by legislation upon the application for industrial design:

      1. A design that is publicly known in Japan or a foreign country
      2. A design which has been made available through an electric telecommunication in Japan or a foreign country
      3. Design similar to previous designs
      4. A design which is liable to disturb public order or morality
      5. A design which may cause confusion with another individual/company’s business
  4. Membership
    √ Hague Agreement Concerning the International Deposit of Industrial Designs
    √ Paris Convention for the Protection of Industrial Property
    Japan is part of Hague Agreement Concerning the International Deposit of Industrial Designs a treaty administered by the World Intellectual Property Organization. This allows for an international registration of Industrial design to exist. Which in this case allows for the applicant to file a single international deposit with WIPO or the national office of a country party to the treaty and it will be protected in as many member countries of the treaty.
    Besides that, Japan is also party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Rule of Priority
    Japan practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor.
  6. Duration and Renewal
    An industrial design patent once granted will be valid for 20 years from the date of registration.
Procedure/Timeline
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  1. Application
    An application can be submitted on paper or electronically to the Japan Patent Office
  2. Examination
    Once the application has been accepted, an examiner will determine if the application meets the legislative requirements.
    If the examiner finds the application not compatible with the necessary requirements, a notification of reasons for refusal will be issued to the applicant. The applicant then has the opportunity to respond with a written argument to justify the grounds for refusal or make the necessary amendments.
    However, if the argument or amendments made are still considered insufficient to the examiner, a Decision of Refusal will be issued. The applicant in the interest of continued prosecution of the design, can appeal against the Decision of Refusal.
  3. Registration
    Should the examiner deem that the application fulfills all necessary requirements, the design will be registered and a certificate of design registration will be given upon payment of the registration fee
  4. Publication
    Once all the design has been granted, a design gazette will be published containing the contents of the right of design registration in order to inform the public of it being an granted patent
  5. Invalidation
    After publication, any individual can appeal for an examination for invalidation to dispute the validity of the right if the design registration has a flaw.
Requirements/ Documents
The following information/documents are required for an industrial design application in:

  1. Applicant and designer’s name and address
  2. Drawings and description of the industrial design
  3. Specified goods
Documents
Downloadable Forms
Agents
Fee