January 29, 2013

KOJI MURAI

JPAA International Activity Center

JTA International Activity Commitee

Upcoming Revision of Trademark Law and Design Law in Japan

IP Practice in Japan Committee Pre-Meeting

2013 Mid-Winter Institute

1. Current state of trademark protection in Japan

2. New and proposed amendments to the Japan Trademark Law

3. New and proposed amendments to the Japan Design Law

1 ． Current State of Trademark Protection in Japan

Traditional Marks

Japan Trademark Law 

Article 2 (Definitions, etc.) (1) "Trademark" in this Act means any

character(s), figure(s), sign(s) or three-dimensional shape(s), or any combination thereof, or any combination thereof with colors (hereinafter referred to as a "mark") which is:

(i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or

(ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item).

Traditional Marks1. Character(s)2. Figure(s)3. Sign(s) 4. Three-

dimensional shape(s)

5. Any combination thereof

6. Any combination thereof with colors

(JPO website)

2. New and Proposed Amendments to the Japan Trademark Law

Non-traditional Marks

Types of Trademarks to be Protectable Under Amended Trademark Law

1. Motion Marks2. Holograms3. Colors 4. Position

Marks 5. Sounds

1. Scents2. Tastes3. Texture

(touch) Marks 4. Trade Dress

Protectable NOT Protectable

Registrability Requirements (1)

Motion, Hologram and Position Marks:

Marks solely consisting of undistinguishable letters or figures are not registered unless obtaining the secondary meaning

Registrability Requirements (2)

Color Marks: A secondary meaning is required. Color marks without delineated contours, particularly single or double colors or distinctiveness are not registrable.

Sound Marks: Marks consisting only of elements

indispensable to secure the functions of the goods or the services cannot be registered(example: ; 3D mark with position mark; hologram mark with figure mark, )

Examination of New Type Marks

1. Determination of similarity 2. Functional trademarks

Determination of Similarity

As with existing types of trademarks, determination of similarity will include consideration of letters, figures, etc., as well as comparison of elements of the new trademarks.

Marks will be compared to existing marks, as well as new types of marks. (e.g., sound mark with letter marketc.).

Marks consisting solely of elements indispensable to secure the functions of the goods or the services are considered functional, and cannot be registered. (e.g.; sound of emergency siren)

Determination of Functional Mark

Application Requirements for a New Type Trademark

Identification of type Specimen Detailed explanation of trademark Documentation to establish acquisition of secondary meaning Electronic media with elements such as motion or sounds

Proposed Amendments (1)Transitional Measures

Right to continue use of a trademark used prior to enactment of the revised Trademark Law is considered necessary.

Definition of Trademark

Trademarks are marks which enable consumers to recognize the goods or services as being connected with a certain person’s business.

There are proposals to incorporate “distinctiveness” into the definition of a “trademark”.

Proposed Amendments (2)

Definition of “Use”

Because use of a sound cannot be recognized by sight and because phonetic use of a word trademark may fall under the “use” of a new sound trademark, a new definition of “use” must be codified.

Proposed Amendments (3)

Establishment of a system to cancel registrations that have lost their distinctiveness

Currently, there is no procedure in Japan for cancelling a registration for a mark that has lost distinctiveness. As an increasing number of jurisdictions worldwide do provide systems for cancelling or vacating marks which have become generic, there is a perceived need to consider introducing such a system in Japan.

Proposed Amendments (4)

Possible Schedule for Amendments to the Japan Trademark Law

JPO Draft Report: November 2012

Public Comments: December 17, 2012 to January 16, 2013

Final JPO Report: February, 2013Bill proposal to National Diet:

March 2013Amended law takes effect in

2014

Points to Remember

These types of marks will become protectable in Japan from 2014:

Motion marks Hologram marks Color marks Position marks Sound marks

2. New and Proposed Amendments to the Japan Design Law

Image design

Hague Agreement Concerning the International Registration of Industrial Designs

THANK YOU FOR YOUR ATTENTION.

KOJI MURAIkmurai@giplaw-osaka.co.jp