Hajime ASAMURA (COO, Patent Attorney)
Chizuko TAKAHARA (Partner, Patent Attorney)
In Japan, registration and protection of ordinary services have been allowed under the Trademark Law since 1992. However, in respect of the services (hereinafter referred to as the "Retail Services") related to the provision by retailers and wholesalers (hereinafter referred to as the "Retailers"), services such as assortment of products were regarded as incidental activities accompanying the sales of products, and registration and protection thereof under the Trademark Law were not allowed until April of last year (2007). Until then, protection was offered under the Unfair Competition Prevention Law only when specific problems arose.
It was, however, difficult to present evidence and the like due to the complicated procedures required in receiving protection under the Unfair Competition Prevention Law for trademarks used in the Retail Services. Also, other countries began to allow registration and protection of the Retail Services under trademark laws. Because of these factors, Japan has started the system of registration and protection of retail service marks as service marks since April 1, 2007 by amending a part of the Trademark Law, in view of the attraction of customers and the economic value of the Retailers' trademarks, and with the intention to match the Japanese system on an international basis.
According to the Japan Patent Office (JPO)'s Examination Initiation Schedule for applications for trademark registration, the first examination was completed in respect of the applications for retail service marks filed during the grace period (April 1, 2007 - July 2, 2007) which deems all the applications filed during such period to have been filed on the same date of application. We will summarize the current conditions of the applications for registration of retail service marks in Japan, and the condition of examination, as well as the contents of the reasons for refusal and the method to overcome the refusal, and other matters, to be used as reference when filing applications for registration of retail service marks in future. Also, we will briefly mention some information we have about the systems for protection of retail service marks in countries other than Japan at the end of this report.
(1) Number of applications for retail service marks
The number of applications for retail service marks filed between April 1 and December 14 of 2007 was approximately 19,000 cases, and the number of same applications filed within the above-mentioned grace period lasting for three months from April 1, 2007 was approximately 17,000 cases. The JPO officially started the examination for applications for retail service marks since early November of 2007, and as of October 2008, they are working on the examination for applications for retail service marks filed during August and September of 2007. (From the JPO's Examination Initiation Schedule for trademark applications)
(2) Need to register retail service marks, and the merits thereof as well as the points to be careful
· If the trademarks are continuously used in Japan for the Retail
Services of one's own business and not for the purpose of unfair competition
prior to March 31, 2007, they will be allowed to be used continuously within
the scope of the business even if identical or similar trademarks are registered
by others, provided that registration must be obtained for the retail service
marks if enlargement of business is being planned.
· Also, since the right for continuing use will not be allowed against the lawsuit of infringement by the owners of the trademarks for products or the trademarks for services other than the Retail Services, registration must be obtained for retail service marks.
· In addition to the price tags, folded leaflets, and the like which were protected in the existing trademarks for products, trademarks used on the signboards of stores, shopping carts, shopping baskets, uniforms of store staff, information boards in the sales floor, and the like will also be protected, therefore providing merits to register retail service marks.
· The cost of procedures involved in registering a wide variety of products is expensive when obtaining registration for trademarks for products, but since trademark rights can be obtained for a single category in the Retail Services, it becomes possible to obtain the rights at a lower cost.
(3) Contents of the reasons for refusal and the method to overcome the refusal
Of the reasons for refusal for applications for registration of retail service marks, such as the introductory clause of Section 1, Article 3 of the Trademark Law, infringement of Item 11, Section 1, Article 4 of the same law, infringement of Section 1 or 2 of Article 6 of the same law, and infringement of Section 2 or 5 of Article 8 of the same law, we shall mainly make mention of the following points:
Infringement of the introductory clause of Section 1, Article 3
· If the same applicant designates the Retail Services belonging to more than one similar-group-code beyond the category of the Retail Services that are similar, a Notification of Reasons for Refusal will be issued on the grounds of the introductory clause of Section 1, Article 3 of the Trademark Law as a measure against nonuse of trademarks. In such case, registration can be obtained by submitting the document confirming the current condition of using or the intention to use the trademark. If, however, the Retail Services for such designation is reduced to a single similar-group-code, the refusal can be handled without submitting the document confirming the current condition of using or the intention to use the trademark.
· The Retail Services in Japan can be classified broadly into "General Merchandise Retail Services" and "Special Merchandise Retail Services," whereas the former is given the similar-group-code of "35K01" for the services provided by "department stores" and supermarkets, and the latter is given individual similar-group-codes, respectively, for the services provided in association with the retail or wholesale of various products being handled. Amendment from "General Merchandise Retail Services" to "Special Merchandise Retail Services" or vice versa is not permitted as the change of the gist, and it is necessary to clearly distinguish between "General Merchandise Retail Services" and "Special Merchandise Retail Services" from the beginning when filing the application.
Infringement of Item 11, Section 1, Article 4
· If there is more than one application for an identical or similar trademark to be used in the same or similar Retail Services, the earliest application shall be registered except for during the grace period.
· If there is more than one application for retail service marks, or more than one application for trademarks for products handled in the Retail Services, and if the trademarks are identical or similar, the earliest application shall be registered even during the grace period.
· The relationship of which application was filed earlier during the grace period of three months after the start of the amended law in the case where the application designating the Retail Services and other goods and services conflicts with other applications, the applications shall be deemed to have been filed on the same date in respect of the Retail Services only, but for other goods and services, the examination shall be based on the actual application dates.
Infringement of Section 2 or 5 of Article 8
· According to Section 4 of Article 7 of the Supplementary Provisions of the amended law, the competitive applications for registration of retail service marks that are filed during the grace period of three months after the start of the amended law shall be deemed to have been filed on the same date even if the actual filing dates are different. In such case, the following methods are available as methods for dealing with an official order.
· For the trademarks which have been used in Japan prior to March 31, 2007 for the Retail Services for one's own business and not for the purpose of unfair competition, make a claim that the special case based on use is applicable pursuant to the provisions of Article 8 of the Supplementary Provisions of the amended law. In such case, the application for registration of retail service marks filed during the grace period for such use shall be registered in priority to any other grace-period applications for registration of retail service marks that are not used.
· However, for grace-period applications for retail service marks claiming that the special case based on use be applicable, if one trademark is well-known whereas the other is not yet well-known, the grace-period application for the retail service mark which is not yet well-known shall be refused pursuant to Item 10, Section 1, Article 4 of the Trademark Law. Further, for grace-period applications for retail services for well-known trademarks, if either well-known trademark is deemed prominent and may cause confusion as to the origin, the trademark which is inferior in terms of publicity shall be refused based on Item 15, Section 1, Article 4 of the Trademark Law.
· If no special case based on use is applicable as described above, only one applicant for trademark registration who is selected by mutual accord of the applicants, or when no mutual accord is reached, who is selected by the lot drawn by the Commissioner of the Japan Patent Office, shall be granted the trademark registration.
(4) The following describes the current conditions of the systems for protecting retail service marks in countries other than Japan. (As of January, 2007)
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