タグ: New Trademark Law

Japan: Trademark Law Revision Act promulgated on May 21, 2021

Posted on

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 feeExistingRevised act
Filing feeJPY28,200/classLess than JPY32,900/class (17% increase)
Registration feeJPY38,800/classLess 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.

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

Posted on

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.