To obtain a trademark registration in Japan, it is necessary to meet the requirements given below, based on any of which most Decisions of Rejection have been issued.

 

We think, however, that it would be almost impossible for overseas applicants to have a practical understanding of them.

 

Therefore, we provide you with the Examination Guidelines issued by the Japan Patent Office (JPO) and information about Opposition/Trial cases, in addition to the requirements for trademark registration, so that you could understand them as practically as possible. The former is official rules for construction and enforcement of the requirements for trademark registration, and the latter is concerning Opposition/Trial cases where Decisions by examiners were cancelled and which are at the very limit of whether to allow registration or not.

 

These will be very helpful in estimating registrability of your trademark under the Japanese Trademark Law. Especially, we think that when you receive a Notification of Reasons for Rejection from the JPO, they will play a significant role in determining whether to file an Argument against the Official Action.

 

Note: Opposition/Trial cases are to be gradually supplied to each requirement for registration.

 

o       DISTINCTIVENESS OF TRADEMARKS

A trademark must essentially be distinctive in relation to goods/services to be covered, and this quality shall be regarded as lost if it comes under any of the followings [Japanese Trademark Law, Article 3 (1)]:

 

(1) A trademark which consists solely of a mark indicating, in a common manner, the common name of the goods or services [Article 3 (1) (i)].

 

Click here to have the Examination Guideline concerning this Article.

Click here to have Opposition/Trial cases over this Article.

 

(2) A trademark which is customarily used in connection with the goods or services [Article 3 (1) (ii)].

 

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Click here to have Opposition/Trial cases over this Article.

 

(3) A trademark which consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision [Article 3 (1) (iii)].

 

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Click here to have Appeal Trial cases over this Article.

Click here to have Opposition or Invalidation Trial cases over this Article.

 

(4) A trademark which consists solely of a mark indicating, in a common manner, a common surname or name of a juridical person [Article 3 (1) (iv)].

 

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Click here to have Opposition/Trial cases over this Article.

 

(5) A trademark which consists solely of a very simple and common mark [Article 3 (1) (v)].

 

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(6) In addition to those listed in each of the preceding items, a trademark by which consumers are not able to recognize the goods or services as those pertaining to a business of a particular person [Article 3 (1) (vi)].

 

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Click here to have Opposition/Trial cases over this Article.

 

Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person [Japanese Trademark Law, Article 3 (2)].

 

Click here to have the Examination Guideline concerning this Article.

Click here to have Opposition/Trial cases over this Article.