5.2 Japan's trademark system
5.2.1 Equality for both Japanese and foreign nationals
Japan's Trademark Law offers equal protection for Japanese and foreign nationals; the same trademark registration process and conditions apply to those residents in Japan and overseas. Therefore, by offering proper trademark protection to people who do not currently live in Japan and companies presently without head offices or branches in the country, Japan's trademark system encourages future expansion into the Japanese market by overseas businesses.
5.2.2 Principle of registration
Trademarks do not have to be currently in use (either in Japan or overseas) in order to be registered in Japan; if the trademark owner has the intention of using the trademark in the future, it can be registered in Japan as long as certain criteria are met. Thus, it is very important for any foreign business that thinks it might expand into Japan at some time in the future to consider applying for registration of trademarks in Japan before entering the Japanese market. Note, however, that trademarks must be used within three years after registration, or they may be nullified. Using your trademark just once within those three years is enough to prevent your trademark rights from being cancelled.
5.2.3 Scope of protection
Under Japan's Trademark Law, trademarks are categorized as follows.
(1) Trademark consisting of characters. (e.g. Japanese characters and alphabetical characters)
(4) Three-dimensional trademarks (this is a new addition to the law included in a revision in 1996; at present, dolls, spheres and three-dimensional signs are protected).
(2) Trademarks consisting of devices or symbols.
(3) Trademarks consisting of characters and devices/symbols.
There is also a system known as Collective Trademark Registration, which was included in the law in the 1996 revision. While this differs from the types of trademark protection described above, it provides for the registration of trademarks by any group comprised of businesses (with the exception of groups that are not official bodies corporate) for the purpose of allowing all members of the group to use the trademarks. Specifically, the system aims to protect the unique brands and names used by groups formed to revitalize regional economies and specific industries.
A system called the Regional Collective Trademark system was also introduced by a legal amendment in 2005 in order to protect and strengthen regional brands. This allows the registration of marks consisting of a regional name and generic name for a commodity or service, such as Matsuzaka-Gyu (beef produced in the Matsuzaka region in Japan) and Aomori-Ringo (apples produced in the Aomori region in Japan), provided that certain requirements, such as being sufficiently well-known in a certain area, are met.
Formerly, a collective trademark application by the Society of Commerce and Industry, the Chamber of Commerce and Industry and NPO Corporation were not accepted. However, according to a revision of the Trademark Law in 2014 (Enforcement on August 1, 2014), the Society of Commerce and Industry, the Chamber of Commerce and Industry and NPO Corporation are now entitled to file collective trademark applications.
5.2.4 Start of “New-type trademark” protection
Formerly, "New-type trademark" has not been in the scope of protection of trademarks. However, many Japanese companies have been requested to protect these trademarks, and in view of the fact that these trademarks can gain a practical use by protection, the amendments for the protection of the trademarks were approved in fiscal 2014 and came into force on April 1, 2015. Thus, the trademark system of all of the said new-type trademarks has been started. The subjects of the protection are (1) Sound marks (2) Color per se marks without delineated contours, (3) Motion marks, (4) Position marks and (5) Hologram trademarks, which have already been broadly protected overseas. Examples of "Color per se marks without delineated contours" and “Motion marks” are as follows.
Color per se marks without delineated contours：
Apl No. 2015-30535
NEXT Co.,LIFULL Co., Ltd.
Reg No. 5816758
Toray Industries, Inc.
5.2.5 Protection of trademarks about retailers, etc.
According to a revision of the Trademark Law in 2006 (Enforcement on April 1, 2007), "Retail services, etc." may now be accepted as designated services for the purpose of protection for the names of retail and wholesale stores and the names of mail-order businesses (including online sales).
Therefore, it is now possible to register the names of stores, such as retail outlets, as well as the names of individual products.
5.2.6 Similarity of trademarks
Trademarks must be unique in order to be registered; the sound, the appearance and the meaning of every trademark must not be similar to any other trademark.
This refers to the sound of the trademark as well as the pronunciation of any characters used therein. Going by the standard of English language education in Japan, it can reasonably be assumed that most Japanese people will be able to understand the pronunciation of English words or Japanese words written in alphabetical characters correctly. However, the same cannot be said for words of other languages. Therefore, in order to avoid confusion, it is preferable to add Japanese kana characters showing how to pronounce the trademarks consisting of words in foreign languages other than English to ensure that the proper pronunciation is protected.
This refers to the meaning inferred from the trademark. In the case of a trademark in a foreign script, the words "Black Cat", for example, would conjure up the image of a black cat in the minds of Japanese people, however the German words "Schwarze Katze" or the Spanish words "Gato Negro" would not immediately spark the appropriate feline image in people's minds, and it is possible that they are recognized as coined words which do not have a specific meaning. Therefore it is possible that such trademarks could not exclude other trademarks which do cause people to imagine a black cat if registered as trademarks. In this situation, it may be better to obtain separate protection for a trademark which consists of a Japanese translation of the original foreign-language phrase.
Trademarks consisting of characters that Japanese people are unable to recognize as written characters, such as Mongolian or Hindi, are treated as trademarks consisting of devices. This means that the trademark owner is unable to reap any benefits that a trademark consisting of written characters may have, so one idea is to apply for a separate registration of trademarks consisting of a Japanese translation or Japanese characters denoting the pronunciation of the foreign-language phrase.