The Japan Trademark Law follows “first to file” rule under which a registration is granted to the person who is first to file a trademark application, whether or not he or she began to use the mark before others.
Article 4 (1)(Xi) of the Trademark Law
“No trademark shall be registered if the trademark is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services relating to the said registered trademark, or goods or services similar thereto.”
Provided that a senior mark has yet to be registered at the time of a junior application, but expected in due course, Article 8(1) is applicable.
“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on different dates, only the applicant who filed the application for trademark registration on the earlier date shall be entitled to register the trademark in question.”
Article 4(1)(xi) and 8(1) provides a decisive solution to deal with conflicting marks filed in different dates based on the “first to file” rule.
What happens when conflicting marks are filed on the same date?
Article 8(2), (4) of the Trademark law stipulates that the JPO requests applicants to negotiate voluntarily to determine which party is entitled to be a registrant.
“Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on the same date, only one applicant who is to be determined by consultations among the applicants who filed such applications shall be entitled to register the trademark in question.”
Given applicants failed to reach an agreement, the JPO conducts a lotteryto select either applicant for registration in accordance with Article 8(5).
The lottery is conducted using a lottery machine.
“Where no agreement is reached in the consultations held pursuant to paragraph (2) or no report is submitted within the designated time limit set forth in the preceding paragraph, only one applicant, selected by a lottery in a fair and just manner conducted by the Commissioner of the Patent Office, shall be entitled to register the trademark in question.”
This can offer us a valuable lesson.
Get good luck on your side to win a trademark registration in addition to complying with “first to file” rule!
Procedures for the public lottery can be seen at Trademark Examination Manual.
Masaki MIKAMI – Attorney at IP Law (Japan)