カテゴリー: New Trademark Law

Japan: trademark registration of era names will be banned

The Japan Patent Office (JPO) revised its screening criteria to prevent all era names from being registered as trademarks.

The amendment came as the country prepares for the change in May of the current era name following the abdication of Emperor Akihito on April 30, 2019. Japan will start using the new name from May 1 when Crown Prince Naruhito ascends to the throne. The government announced to unveil the new era name on April 1, a month before the Imperial succession, to mitigate the impact of the change on people’s lives.

There was concern that the JPO might be flooded with requests to register the new era name for trademarks during the last month of the Heisei Era, which commenced on Jan. 8, 1989.


According to the JPO, more than 100 trademark registration applications for merchandise and company names using “Heisei” were filed in January of that year.

Under previous criteria, there was room for era names, except Heisei, to be registered as trademarks.
The revised guidelines to ensure trademarks do not feature any era name now clearly state that all era names, in principle, cannot be used for trademarks.

However, even after the revision, familiar product and corporate names already using old era names, such as Meiji Holdings Co. and Taisho Pharmaceutical Co., will continue to be treated as exceptions.

Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

Japan: Trademark Law Revision Act of 2018 in force on June 9

The Japan Trademark Law Revision Act of 2018 (Act No. 33) passing congress on May 23, 2018, was promulgated on May 30 and becomes effective on June 9, 2018.

Revision act sets a high bar for requisite in dividing a trademark application under Article 10 (1) of the Trademark Law.

 

Article 10(1) of the Trademark Law – Dividing TM application

Dividing trademark application is beneficial to applicant who wants to maintain a prior-application right for every goods/services designated under initial application because division admits divided application to have retroactive effect as if it was filed on the same date with initial application.

Currently, applicant is allowed to divide trademark application as long as the application satisfies following requirements.

  1. Initial application is pending in examination, appeal, or re-examination (Parent application),
  2. Junior application (Child application) relates to the identical mark with Parent application,
  3. Child application designates goods/services within the scope of goods/services originally designated by Parent application, and
  4. Parent application deletes the divided goods/services from designation simultaneously at the time of filing Child application.

For your reference, old Article 10(1) provided that:

“An applicant for trademark registration may file one or more new applications with regard to part of an application which designates two or more goods or services as its designated goods or designated services, provided that the application for trademark registration is pending in examination, trial examination or retrial examination, or that a suit against a trial decision to refuse the application is pending in court.”

 

Additional requirement for divisional application

From June 9, 2018, in addition to the above, applicant is required to pay an official fee of Parent application.

Where applicant divides trademark application without paying official fee imposed on Parent application, the Japan Patent Office (JPO) does not allow retroactive effect to Child application. Namely, Child application is examined for registrability based on its actual filing date.

JPO decided to revise the article to prevent an entity with fraudulent intent from repeatedly dividing trademark application regardless of non-payment of official fee.

Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM