The Japan Trademark Law Revision Act of 2021 (Act No. 42) passing congress on May 14, 2021, was promulgated on May 21.
Hot topics of trademark-related revision are:
1. On-line oral hearing
Under the current law, the Japan Patent Office (JPO) has no choice but to hold an oral hearing for administrative proceedings only when the parties are physically present in the oral proceedings. The revised act enables the JPO to hold oral proceedings by video conference.
2. Notifications by email
Under the current law, trademark applicant via the Madrid Protocol gets to know the status of registration only by means of receiving written notification from the JPO. The revised act allows the JPO to electronically send registration notifications to the applicant via the International Bureau by email.
3. Customs enforcement
In view of an increasing number of counterfeits imported for private use, the revised act restricts the counterfeits that were exported from a foreign country via postal mail by a business entity even if purchased by a private person in Japan and constitute trademark infringement at the time when they enter the territory of Japan.
4. Payment of second official fee for registration via the Madrid Protocol
Article 68-30 of the revised act looks attractive to Madrid users indeed. The Madrid users are no longer required to pay a second official fee to the JPO in order to accomplish trademark registration in Japan.
5. Fee increase
The revised act increases official fees for trademarks by more than 10%. Details will be decided by the JPO.
|Official fee||Existing||Revised act|
|Filing fee||JPY28,200/class||Less than JPY32,900/class (17% increase)|
|Registration fee||JPY38,800/class||Less than JPY43,60/class (12% increase)|
When does the revised act come into force?
The revised act is set to become effective within a year from the promulgation date.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM