Response to Provisional Refusal under the Madrid Protocol

When an applicant receives a provisonal refusal under the Madrid Protocol from the Japan Patent Office, the applicant should immediately contact a Japanese associate for a legal advice. In response to the refusal, there are the following options. Filing of an argument stating that the trademark is not similar to a cited trademark and/or designated goods, or services are not similar […]

Registrable Trademark (Art. 2)

Any characters, figures, signs, or three-dimensional shapes, or any combination thereof, or any combination thereof with colors, can be registered as a trademark. Color, sound and smell cannot be registered as trademarks. A word mark which is comprised of texts only such as alphabet, numerals, and Chinese characters can be filed as a simple text trademark. A definition of […]

General Grounds for Refusal (Art. 4)

 Article 4(1) defines nineteen grounds for refusals. The followings are typical grounds for refusal for trademark applications, which a patent and trademark attorney often receives from the Japan Patent Office. Trademark which breach of the principles of ordre public or morality (Art. 4(1)(7)) Trademark which contains a portrait or name of a person other than an applicant […]

Similarity (Art. 4(1)(10) and (11))

According to the Japanese trademark Law Article 4(1)(10) and (11), the following trademark is unregistrable. (10) Trademark which is identical with, or similar to, another party’s trademark which is well known to consumers (11) Trademark which is identical or similar to prior registered trademark When determining similarity between trademarks, three factores which are appearance, sound and idea  are considered.  […]

Distinctiveness (Art. 3(1))

According to the Japanese Trademark Law Article 3(1), the following marks are unregistrable due to lacking of distinctiveness. Trademark solely consisting of a mark indicating the common name of the goods or services in an ordinary manner (a trademark “watch” for goods “watch”) Trademark traditionally used with respect to particular goods or services (a trademark […]

Examination Procedure

Upon filing of a trademark application, the formality division of the Japan Patent Office examines formality requirements of the trademark application. After the formality examination, the examining division of the Japan Patent Office examines the trademark application The examining division examines whether the application has grounds for refusal. Usually the substantial examination takes 6-8 months to forward a […]

Required Information for Japanese Trademark Application

In order to register a trademark with the Japan Patent Office, a trademark application must be filed. The application requires basic information, such as the following: The trademark The goods or services for which the owner of the trademark intends to use the trademark The International Class to which the goods or services belong The name and the […]