Partial revision of the Japan Trademark Law in force on May 27, 2019

Partial revision of the Japan Trademark Law which aims to amend the Article 31 (1) was promulgated on May 17, 2019 and takes effect on May 27, 2019.

 

Non-exclusive license for famous mark owned by public entity

Existing Trademark Law permits to register a mark which is identical with, or similar to, a famous mark representing (i) the nation, (ii) a local government, (iii) an agency thereof, (iv) a non-profit organization undertaking a business for public interest, or (v) a non-profit activity for public interest [Article 4(1)(vi)], provided that an applicant of the mark corresponds with the public entity from (i) to (iv), or an individual who is managing (v) [Article 4(2)].

 

Article 31 is a provision pertinent to “non-exclusive trademark license”.

Under the existing law, owner of trademark right (licensor) may grant a non-exclusive permission for the use of its mark to another [Article 31(1)]. In the meantime, the article has an exceptional clause and disallows a non-exclusive license for the use of registered mark which was granted based on Article 4(2).

 

New Revision

According to announcement from the Japan Patent Office, “Recently, public entity aiming to encourage regional development and collaboration with industry gets involved in necessity to advertise or promote goods or products originated from the entity. Inter alia, universities/colleges are desirous to secure financial resources, publicize achievements of academic research and increase publicity of the school by means of granting permission for the use of famous mark to a business entity”.

 

By the revision, the exceptional clause is deleted from Article 31(1).

From May 27, 2019, it enables an owner of trademark right for famous mark, i.e. (i) the nation, (ii) a local government, (iii) an agency thereof, (iv) a non-profit organization undertaking a business for public interest, or (v) an individual who manages non-profit activity for public interest, to grant “non-exclusive license” permission for the use of its famous mark.

It should be noted that the revision does not apply to “exclusive trademark license” provided in Article 30 (1). It remains impermissible. 

WTR report: The first individual in history to have filed over 100,000 trademark applications

A notorious and incredibly prolific trademark application filer in Japan, Ikuhiro Ueda, is causing headaches for brands in Japan.

As the figures below show, the rate of the filings – both using the applicant name ‘Ikuhiro Ueda’ and his legal entity name ‘Best Licensing Co’ – stepped up in 2016 and 2017, reaching 24,500 and 32,000 applications per year respectively. The sheer number of applications from Ueda accounted for 18.5% of all trademarks to the JPO in 2017, and even reached over 30% in the first two months of this year.

As the graph shows, there was a dip in 2018. This was due to an attempt from the Japanese government to quell the rate of filings from entities like Ueda. A new law, the ‘Trademark Law Revision Act of 2018’, came into force on June 9 last year and introduced stipulations that – in theory – erected a hurdle to the mass filing of trademark applications without paying fees. However, that revision was not enough to permanently slow the number of applications. As the below graph shows, applications from Ueda-related entities did significantly picked up again in December 2018.

According to CompuMark’s Robert Reading, he is now the first individual in history to have filed over 100,000 trademark applications. To put the activity into context, the table below looks at the trademark activity of the world’s largest companies – and shows Ueda comfortably out in front.

While Ueda’s trademark application portfolio is unmatched, so too is his success rate – although presumably not in the way he wants. “Amazingly, Ueda only has three registered trademarks – so just one in every 30,000 applications actually succeeds, which translates to a success rate of 0.0028%”, Reading further reveals.

(Excerpt from WTR online report dated April 11, 2019 by Tim Lance)


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

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