CASRIP Newsletter - Fall 1995, Volume 2, Issue 3
Through all of summer to autumn, development in Japanese patent law was relatively slow. Japanese intellectual property professionals and scholars have been busy dealing with legal issues in multimedia since the Ministry of Education is now reviewing public opinions in that area. Another area of interest to IP professionals is trademark law since the Japanese Patent Office is drafting a revision to Japanese trademark law. The major purpose of this revision is to meet the requirements of the Trademark Law Treaty. (That Treaty was drafted by the World Intellectual Property Organization (WIPO), an agency of the United Nations.) Under discussion are the following major aspects of trademark law:
(1) Revision to meet treaty requirements
a. Introduction of multi-class application system
Under current law, applicants must designate only one class of goods or service in one application. The revision makes possible to designate in one application multi-classes of goods and services on which trademarks would be used.
b. Simplifying the renewal of registration
Under current law, in renewing a trademark registration, the Japanese Patent Office must determine whether the registered trademark has not become unregisterable due to public policy reasons, and whether it has actually been used. The revision would remove that substantive examination.
c. Abolition of duty to give public notice for transferring trademark ownership
Current law imposes on parties a duty to give public notice before transferring trademark ownership. Under the new law, the transfer of trademark ownership does not require public notice.
(2) Measures to reduce non-use trademarks
a. Standing to request a cancellation trial
Current trademark law limits the standing to request a cancellation trial for unused trademarks to interested parties. The revision would give standing to anyone to bring cancellation trials against unused trademarks.
b. Strict Application of Use Requirement
Under current law, any use within three years from the date of the renewal application can work as a defense against a rejection on ground of non-use. Even a token use immediately before the renewal application may prevent a rejection. The new law would not count any use within three months from the renewal application as a defense to the rejection of non-use.
c. Retroactive effect of trademark cancellation
Under the new law, once the trial decision to cancel the registration becomes final, the effect of cancellation becomes retroactively effective to the first date of the three year non-use period established through the trial. This would prevent any recovery of damage by the trademark owners who do not use their marks.
d. Abolition of associated trademark systems
Under current law, trademark owners can register marks similar to their own marks as associated marks. Many of these marks, however, have never been used and were registered only for defensive purposes. The new law would abolish the associated trademark system.
(3). Prompting the procedure to grant a registration
a. Post-grant opposition procedure
The new law would move the opposition procedure from pre- grant to post-grant.
b. Expansion of the scope of use
Current law requires a relatively strict identity to establish the use of trademark to renew a registration and to avoid a cancellation. The new law would enable trademark owners to establish their use if the difference between the registered mark and the mark in actual use is insignificant.
(4). Protection of Well Known Foreign Marks
Current law gives very limited protection to trademarks which are known only outside Japan. Japan was criticized for insufficiently protecting foreign marks because it grants registrations to trademarks filed by a person other than the owner of the mark which is well known outside Japan. The new law would adopt statutory language to prevent a person other than the foreign trademark owner from lawfully obtaining trademark registration.
(5). Expansion of registerable subject matter
Three dimensional trademark (trade dress) is currently protected under the unfair competition law but is not registerable under current trademark law. The new trademark law would make possible trademark registration for three dimensional trademarks.
The JPO draft will be reviewed by the industrial property committee in December and will be submitted to Parliament early next year.
- Toshiko Takenaka