Different Principles of Trademark Protection

As might be expected, the principles of trademark protection in the United States and Japan are different. The Japanese trademark law is based on a first‐to‐file rule. Thus, there are no requirements regarding use of a trademark, and a mark which is not being used can be registered. It is therefore possible to keep a stock of trademarks registered in preparation for future use. Regarding goods and services, goods can be designated which are not used in connection with the mark applied for. Thus, an applicant can designate a wide variety of goods. In terms of renewals, proof of use of the mark is not necessary, making it possible to maintain a registration for a mark which is not in use. A registered mark will only be cancelled when another party requests cancellation based on non‐use. The registration can be cancelled when the mark is not used for three consecutive years.

Judgement of the Similarity of Trademarks and Goods

The judgement of similarity of marks is deeply related to the matter of transliteration. In the examination at the Japanese Patent Office (JPO), marks written in English letters are transliterated and written in Japanese characters called “katakana”, which is a phonetic alphabet used to represent words imported from abroad. The similarity of marks would be judged based on these transliterations which could affect the citing of prior marks during examination. In some cases, there may be various transliterations for a mark written in the English alphabet resulting in the citing of prior marks with the same sounds corresponding to each of the transliterations. Another problem is that even if the alphabetical spellings are different, there are cases in which the marks written in “katakana” are the same. For example, light, right, write, wright, lite, and raito would all be transliterated as ライト. This is because there are only about 50 sounds in the Japanese language, and Japanese people find it difficult to distinguish the different pronunciations of “l” and “r”.

Judgement of the Similarity of Goods and Services

The basic rules for judging the similarity of goods and services are standardized in Japan. Codes called “similar group codes” are established for all goods and services. If we look at the similar group codes of the goods, we can easily judge if they are similar or not. For example, since the same similar group code is given to cameras, cell phones, and televisions, we can see that they are similar to each other. Some of the advantages of this system are that it is easy to predict the registrability of a mark and the examination will proceed more smoothly and quickly.

Our Recommendations to American Companies

In light of the above examination practice and rules, we recommend taking into consideration how your trademark would be written in “katakana” characters when deciding which mark you should file. This is because Japanese consumers are accustomed to “katakana” and marks written using English letters would be written in “katakana” in newspaper articles, magazines and on the Internet.

You should probably register some marks beforehand that might be used in the future and choose a mark later when you actually start using the mark. In Japan, this is common in the automobile, confectionary and cosmetics industries. Since a great deal of marks are stocked despite not being used and old marks which have not been in recent use are still registered, it is believed that perhaps 80% of the registered trademarks are not used in Japan.

You should consider obtaining broad protection for your business and preventing another party’s use or registration regarding the goods surrounding your core business. It should be noted that there are certain limitations to the range of goods and services which can be designated in a single application. If you exceed these limitations, you would need to file evidence to prove use of the mark in connection with the designated goods. When designating goods, we recommend adopting descriptions of broader concepts which have been accepted by the JPO: for example, descriptions like “clothing”, “chemicals”, “cosmetics”, and “computer programs” are accepted. Of course, descriptions which are too broad and vague will not be accepted.

Advantages and Disadvantages of Using the Madrid Protocol

As is known, use of the Madrid Protocol is cost‐effective when designating many countries. In addition, it is easy to manage international registrations. However, considering the examination at the JPO, an Office Action regarding the description of goods is likely to be issued on an international registration based on a US registration. If you file directly with the JPO, it is possible to communicate with the JPO before filing and avoid most of these kinds of unnecessary Office Actions. Furthermore, since US registrations only designate a limited range of goods for which the marks are actually used, the scope of the rights is very limited. But if you were to file directly in Japan, it would be possible to cover a wide range of goods with broader descriptions unrelated to the registration in the US. Under Japanese practice, US‐based descriptions tend to be too specific and thus we sometimes need to file an explanation of the goods in response to an Office Action. Therefore, in terms of the scope of goods for which you actually use the mark, you should use the Madrid Protocol, but if you wish to obtain broader protection or register marks for future use, it would be better to file directly in Japan.