(Provisional Translation)
Trademark Law*
as amended by Law No. 220 of December 22, 1999)
TABLE OF CONTENTS
Articles
Chapter I: General Provisions
Purpose 1
Definitions, etc. 2
Chapter II: Trademark Registration and Applications Therefor
Registrability of Trademarks 3
Unregistrable Trademarks 4
Applications for Trademark Registration 5
According of the Filing Date, etc. 5bis
Unity in Application 6
Collective Trademarks 7
First-to-File Rule 8
Special Provisions for Time of Filing of Application 9
Priority Claim Declared as Governed by the Paris Convention 9bis-9ter
Amendment of Designated Goods, etc. or the Trademark for which Trademark Registration is Sought and Change of Gist 9quater
Division of Trademark Applications 10
Conversion of Applications 11-12
Publication of Applications 12bis
Application mutatis mutandis of Patent Law 13
Money Claim, etc. Prior to Registration of Establishment of Trademark Right 13bis
Chapter III: The Examination
Examination by Examiner 14
Examiner's Decision of Refusal 15
Notification of Reasons for Refusal 15bis-15ter
Examiner's Decision that a Trademark is to be Registered 16
Declining of Amendments 16bis
Application mutatis mutandis of Patent Law 17
Application mutatis mutandis of Design Law 17bis
Chapter IV: The Trademark Right
1. The Trademark Right
Registration of Establishment of Trademark Right 18
Term of Trademark Right 19
Request for Registration of Renewal of Term 20
Restoration of Trademark Right 21
Restriction on Effects of Trademark Right Restored 22
Registration of Renewal of Term 23
Division of Trademark Right 24
Transfer of Trademark Right 24bis
Transfer of Collective Trademark Right 24ter
Demand for Indication to Prevent Confusion Resulting from Transfer of Trademark Right 24quater
Effects of Trademark Right 25
Limits of Trademark Right 26
Scope of Registered Trademark, etc. 27
28-28bis
Relationship with Another's Patent Right, etc. 29
Rights of Exclusive Use 30
Rights of Non-Exclusive Use 31
Right of Corporation or Association Members 31bis
Right to Use Trademark by Virtue of Prior Use 32
Right to Use Trademark Due to Use Prior to Registration of Demand for Invalidation Trial 33
Right to Use Trademark after Expiration of Term of Patent Right, etc. 33bis-33ter
Pledges 34
Application mutatis mutandis of Patent Law 35
2. Infringement
Injunctions 36
Acts Deemed to be Infringement 37
Presumption, etc. of Amount of Damage 38
Application mutatis mutandis of Patent Law 39
3. The Registration Fee
Registration Fee 40
Time limit for Payment of Registration Fee 41
Payment of Registration Fee in Installments 41bis
Payment of Registration Fee by an Interested Person 41ter
Refund of Registration Fee 42
Surcharge Registration Fee 43
Chapter IVbis: Opposition to Registration
Opposition to Registration 43bis
Ruling 43ter
Formal Requirements of a Written Opposition, etc. 43quater
Designation of Trial Examiners, etc. 43quinquies
Trial Clerk 43quinquies-bis
Conduct of Trial Examination, etc. 43sexies
Intervention 43septies
Taking of Evidence and Preservation Thereof 43octies
Trial Examination Ex Officio 43novies
Combination or Separation of Trial Examination 43decies
Withdrawal of Oppositions 43undecies
Notification of Reasons for Revocation 43duodecies
Formal Requirements of Ruling 43terdecies
Application mutatis mutandis of Provisions on Trial 43quater decies
Chapter V: Trial
Trial Against Examiner's Decision of Refusal 44
Trial Against Ruling to Decline Amendment 45
Trial for Invalidation of Trademark Registration 46-47
[Deleted] 48
[Deleted] 49
Trial for Cancellation of Trademark Registration 50-55
Special Provisions for Trials Against Examiner's Decision of Refusal 55bis
Application mutatis mutandis of Patent Law 56
Application mutatis mutandis of Design Law 56bis
Chapter VI: Retrial and Litigation
Demand for Retrial 57-58
Restriction on Effects of Trademark Right Restored by Retrial 59-60
Application mutatis mutandis of Provisions of Trial 60bis
Application mutatis mutandis of Patent Law 61
Application mutatis mutandis of Design Law 62
Actions Against Trial Decisions, etc. 63
Relationship Between Administrative Appeal and Litigation 63bis
Chapter VII: Defensive Marks
Registrability of Defensive Marks 64
Conversion of Applications 65
Term of Right Based on Defensive Mark Registration 65bis
Registration of Renewal of Term of Right Based on Defensive Mark Registration 65ter-65quinquies
Registration of Renewal of Term of Right Based on Defensive Mark Registration 65sexies
Registration Fees 65septies
Time Limit for Payment of Registration Fees 65octies
Payment of Registration Fee by an Interested Person 65novies
Refund of Registration Fee Paid by Mistake or in Excess 65decies
Dependence of Right Based on Defensive Mark Registration 66
Acts Deemed to be an Infringement 67
Application mutatis mutandis of Provisions on Trademarks 68
Chapter VIIbis: Special Provisions under the Protocol of the Madrid Agreement
1. Application for International Registration
Application for International Registration 68bis-68ter
Later Designation 68quater
Request for Renewal of International Registration 68quinquies
Request for Recordal of Change in the Ownership of International Registration 68sexies
Application mutatis mutandis of Provisions on Application for Trademark Registration 68septies
Delegation to Ordinance of the Ministry of Economy, Trade and Industry 68octies
2. Special Provisions Relating to Application for International Registration
Trademark Application Based on Request for Territorial Extension 68novies
Special Provisions for Time of Filing of Application for International Trademark Registration 68decies
Special Provisions for Time of Filing of Application 68undecies
Special Provisions for Division of Applications 68duodecies
Special Provisions for Conversion of Applications 68terdecies
Special Provisions for Matters Published in Trademark Gazette Relating to Publication of Applications 68quater decies
Special Provisions for Proceedings for Priority Claim under the Paris Convention, etc. 68quindecies
Special Provisions for Rights Resulting from Applications for Trademark Registration 68sedecies
Dealing with Applications for International Trademark Registration Resulting from Change in the Ownership of an International Registration 68septies decies
Special Provisions for New Application for Trademark as Amended 68duodevicies
Special Provisions For Registration of Establishment of Trademark Right 68undevicies
Effects of Extinguishment of International Registration 68vicies
Term of Trademark Right Based on International Registration 68unvicies
Special Provisions for Registration of Renewal of Term 68duovicies
Special Provisions for Division of Trademark Rights 68tervicies
Special Provisions for Transfer of Collective Trademark Right 68quater vicies
Special Provisions for Surrender of Trademark Rights 68quinvicies
Special Provisions for Effects of Registration of Trademark Rights 68sevicies
Special Provisions for Registration in Trademark Register 68septies vicies
Special Provisions for Amendments of Proceedings 68duodetricies
Special Provisions for Exceptional Provisions on Trademark with Two or More Designated Goods or Designated Services 68undetricies
Individual Fee for Trademark Rights Based on International Registration 68tricies
Delegation to Ordinance of the Ministry of Economy, Trade and Industry 68untricies
3. Special Provisions for Applications for Trademark Registration, etc.
Special Provisions for Trademark Registration Subsequent to Cancellation of International Registration 68duotricies
Special Provisions for Application for Trademark Registration Subsequent to Denunciation of Protocol 68tertricies
Special Provisions for Reasons for Refusal 68quater tricies
Special Provisions for Registration of Establishment of Trademark Right 68quintricies
Special Provisions for Term 68setricies
Special Provisions for Opposition to Registration 68septies tricies
Special Provisions for Trial for Invalidation of Trademark Registration 68duodequadragies-68undequadragies
Chapter VIII: Miscellaneous Provisions
Amendment of proceedings 68quadragies
Exceptional Provisions on Trademark Right with Two or More Designated Goods or Designated Services 69
Exceptional Provisions on Trademarks, etc. Similar to Registered Trademarks 70
Registration in Trademark Register 71
Issuance of Trademark Registration Certificate, etc. 71bis
Request for Certification, etc. 72
Indication of Existence of Trademark Registration 73
Prohibition of False Marking 74
Trademark Gazette 75
Fees 76
Application mutatis mutandis of Patent Law 77
Transitory Measure 77bis
Chapter IX: Penal Provisions
Offense of Infringement 78
Offense of Fraud 79
Offense of False Marking 80
Offense of Perjury, etc. 81
Dual Liability 82
Administrative Penalties 83-85
Attached Table (Related to Section 76)
GENERAL PROVISIONS
1. The purpose of this Law shall be to ensure the maintenance of the business reputation of persons using trademarks by protecting trademarks, and thereby to contribute to the development of industry and to protect the interests of consumers.
2.-(1) "Trademark" in this Law means characters, figures, signs, three-dimensional shapes or any combination thereof, or any combination thereof with colors (hereinafter referred to as a "mark"):
(i) which are used in respect of goods by a person who produces, certifies or assigns such goods in the course of trade;
(ii) which are used in respect of services by a person who provides or certifies such services in the course of trade (other than as in (i) above).
(2) "Registered trademark" in this Law means a trademark for which a trademark registration has been effected.
(3) "Use" with respect to a mark in this Law means any of the following acts:
(i) acts of applying the mark on the goods or their packaging;
(ii) acts of assigning, delivering, displaying for the purpose of assignment or delivery, or importing, the goods on which or on the packaging of which a mark has been applied;
(iii) acts of applying a mark to articles for use by persons to whom the services are provided (including articles assigned or leased-hereinafter the same) when providing services;
(iv) acts of providing services by use of articles to which a mark has been applied for use by persons to whom the services are provided when providing services;
(v) acts of displaying, for the purpose of providing services, articles to which a mark has been applied and supplied for use in the provision of services (including articles for use by persons to whom the services are provided when providing services-hereinafter the same);
(vi) acts of applying a mark to articles related to the provision of such services belonging to persons to whom the services are provided when providing services;
(vii) acts of displaying or distributing advertisements relating to the goods or services, price lists or business papers with respect to the goods or articles on which a mark has been applied.
(4) Acts of applying a mark to goods or other articles to which a mark is applied as prescribed in the preceding subsection shall include acts of having goods or their packaging, articles that are supplied for use in the provision of services and advertisements relating to goods or services shaped into a mark.
(5) In this law, it shall be premised that there may exist services in the scope of similarities of goods and there may exist goods in the scope of similarities of services.
TRADEMARK REGISTRATION AND APPLICATIONS THEREFOR
3.-(1) Any person may obtain a trademark registration of a trademark to be used in respect of goods or services in connection with his business, except in the case of the following trademarks:
(i) trademarks which consist solely of a mark indicating, in a common way, the common name of the goods or services;
(ii) trademarks which are customarily used in respect of the goods or services;
(iii) trademarks which consist solely of a mark indicating in a common way, the origin, place of sale, quality, raw materials, efficacy, use, quantity, shape (including packaging shape) or price of the goods, or the method or time of manufacturing or using them; or the location of provision of the services, quality, articles for use in such provision, efficacy, use, quantity, modes, price or method or time of the provision of services;
(iv) trademarks which consist solely of a mark indicating, in a common way, a commonplace surname or name of a legal entity;
(v) trademarks which consist solely of a very simple and commonplace mark;
(vi) in addition to those mentioned in each of the preceding paragraphs, trademarks which do not enable consumers to recognize the goods or services as being connected with a certain person's business.
(2) In the case of a trademark falling under paragraphs (iii) to (v) of the preceding subsection, where, as a result of the use of such trademarks, the consumers are able to recognize the goods or services as being connected with a certain person's business, trademark registration may be obtained notwithstanding the preceding subsection.
4.-(1) Notwithstanding Section 3, trademark registration shall not be effected in the case of the following trademarks:
(i) trademarks which are identical with, or similar to, the national flag, the imperial chrysanthemum crest, a decoration, a medal of merit, or a foreign national flag;
(ii) trademarks which are identical with or similar to, a State coat of arms or other emblem (other than a national flag) of a country party to the Paris Convention (meaning the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958 and at Stockholm on July 14, 1967-hereinafter referred to as "the Paris Convention"), a Member of the World Trade Organization or a contracting party to the Trademark Law Treaty which have been designated by the Minister of Economy, Trade and Industry;
(iii) trademarks which are identical with, or similar to, a mark indicating the United Nations or any other international organization and designated by the Minister for Economy, Trade and Industry;
(iv) trademarks which are identical with, or similar to, the Red Cross ensign on a white ground or the title Red Cross or Geneva Cross;
(v) trademarks comprising a mark identical with, or similar to, an official seal or sign which indicates supervision or certification by the Government of Japan or by the Government of a country party to the Paris Convention or a Member of the World Trade Organization or a contracting party to the Trademark Law Treaty, or by a local public entity and which has been designated by the Minister for Economy, Trade and Industry, which are used on goods or services identical with, or similar to, the goods or services in respect of which such seal or sign is used;
(vi) trademarks which are identical with, or similar to, a famous mark indicating a State or a local public entity or an agency thereof or a non-profit organization or enterprise working in the public interest;
(vii) trademarks liable to contravene public order or morality;
(viii) trademarks containing the portrait of another person or the name, famous pseudonym, professional name or pen name of another person or the famous abbreviation thereof (except where the consent of the person concerned has been obtained);
(ix) trademarks comprising a mark which is identical with, or similar to, a prize awarded at an exhibition held by the Government or a local public entity (hereinafter referred to as the "Government, etc.") or at one which is not held by the Government, etc. but has been designated by the Commissioner of the Patent Office or at an international exhibition held in a foreign country by its government, etc. or a person authorized thereby (except where the recipient of such a prize uses the mark as part of his trademark);
(x) trademarks which are well known among consumers as indicating the goods or services as being connected with another person's business, and trademarks similar thereto, and which are used in respect of such goods or services or similar goods or services;
(xi) trademarks which are identical with, or similar to, another person's registered trademark applied for prior to the filing date of the trademark application concerned and which are used on the designated goods or designated services [meaning the goods or services designated in accordance with Section 6(1) (including its application under Section 68(1))-hereinafter referred to as "the designated goods or designated services"] covered by the trademark registration referred to or on similar goods or services;
(xii) trademarks which are identical with another person's registered defensive mark (meaning a mark registered as a defensive mark-hereinafter referred to as a "registered defensive mark"), and which are used on the designated goods or designated services covered by the defensive mark registration;
(xiii) trademarks which are identical with another person's trademark (other than a trademark which had not been used by that person during a period of at least one year prior to the day on which the trademark right became extinguished) where one year has not elapsed since the date of extinguishment of the trademark right (or the date on which a ruling that a trademark registration is to be revoked or a trial decision that a trademark registration is to be invalidated becomes final and conclusive-hereinafter referred to as the "date of extinguishment of the trademark right"), or with a trademark similar to such a trademark, and which are used in respect of the designated goods or designated services covered by the trademark right or in respect of similar goods or services;
(xiv) trademarks which are identical with, or similar to, the name of a variety registered under Section 18(1) of the Agricultural Seed and Seedlings Law (Law No. 83 to 1998), and which are used on the seeds or seedlings of the variety concerned or in respect of similar goods or services;
(xv) trademarks which are liable to cause confusion with goods or services connected with another person's business (other than the trademarks mentioned in paragraphs (x) to (xiv));
(xvi) trademarks liable to be misleading as to the quality of the goods or services;
(xvii) trademarks comprising a mark indicating an origin of wines or spirits in Japan which has been designated by the Commissioner of the Patent Office or a mark indicating an origin of wines or spirits in a Member of the World Trade Organization prohibited to be used on wines or spirits not originating in the region in that member, which are used in respect to wines or spirits not originating in the region in Japan or that member;
(xviii) trademarks consisting solely of a three-dimensional shape of goods or their packaging with the shape being indispensable to secure the functions of the goods or their packaging;
(xix) trademarks which are well known among consumers in Japan or abroad as indicating the goods or services as being connected with another person's business, and trademarks identical with or similar thereto, and which are used by the applicant for unfair intention (intention to gain an unfair profit, intention to cause damage to such another person and other unfair intentions-hereinafter the same) (other than the trademarks mentioned in each of the preceding paragraphs) in respect of such goods or services.
(2) Where registration of a trademark falling under paragraph (vi) of the preceding subsection is applied for by the State, a local public entity or an agency thereof or a non-profit organization working in the public interest or a person carrying on a non-profit enterprise working in the public interest, the said paragraph shall not apply.
(3) In the case of a trademark falling under paragraphs (viii), (x), (xv), (xvii) or (xix) of Subsection (1), the respective provisions shall not apply where the trademark does not fall under the respective paragraph at the time when the trademark application is filed.
(4) Where a trial decision that a trademark registration is to be canceled under Section 53bis has become final and conclusive and the demandant in the trial applies for registration of the trademark covered by the registration canceled by the trial decision, or a trademark similar thereto, paragraph (xiii) of Subsection (1) shall not apply.
5.-(1) Any person desiring a trademark registration shall submit a request to the Commissioner of the Patent Office together with any necessary document; the request shall state the following:
(i) the name and the domicile or residence of the applicant for a trademark registration;
(ii) the trademark for which registration is sought;
(iii) the designated goods or designated services and the class of goods or services as prescribed by Cabinet Order referred to in Section 6(2).
(2) Where a person desires a trademark registration with respect of a trademark consisting of three-dimensional shapes (including their combination with characters, figures, signs or colors or any combination thereof, hereinafter referred to as "three dimensional trademark"), the request shall contain a statement to that effect.
(3) Where a person desires a trademark registration with respect of a trademark consisting of characters designated by the Commissioner of the Patent Office (hereinafter referred to as "standard characters"), the request shall contain a statement to that effect.
(4) In the portion of the statement of the trademark for which the registration is sought, any part which is in the same color as a section for a trademark to be stated shall be deemed not to form part of the trademark. However, this provision shall not apply where an area to be colored is specified and it is stated on the sheets that the color to be applied is the same as that of the section.
5bis.-(1) The Commissioner of the Patent Office shall decide to accord as the date of a trademark application the date of submission of the request with respect to the trademark application unless the application falls under any of the following paragraphs:
(i) the indication that a trademark registration is sought is not clear;
(ii) the name of the applicant is not stated, or the statement is not considered sufficient to the extent to enable the identification of the applicant;
(iii) a trademark for which the registration is sought is not stated; or
(iv) designated goods or designated services are not stated.
(2) Where the trademark application falls under any of the paragraphs of the preceding subsection, the Commissioner of the Patent Office shall invite the applicant to make the required correction in writing, designating an adequate time limit.
(3) Correction to a trademark application shall be effected by filing a correction in writing with respect to the correction (hereinafter referred to as a "correction in writing").
(4) The Commissioner of the Patent Office shall decide to accord as the date of the trademark application the date of submission of the correction in writing when the person whom he has invited to make the correction under Subsection (2) has complied with the invitation within the time limit designated in accordance with that subsection.
(5) The Commissioner of the Patent Office may dismiss the trademark application when a person whom he has invited to make the correction in accordance with Subsection (2) fails to do so within the time limit designated in accordance with that subsection.
6.-(1) An application for a trademark registration shall relate to a single trademark and shall designate one or more items of goods or services in respect of which the trademark is to be used.
(2) A designation under the preceding paragraph shall be made according to the classes of the classification of goods and services, prescribed by Cabinet Order.
(3) The classes of goods and services referred to in the preceding subsection shall not be determinative of the scope of similarity of goods or services.
7.-(1) Aggregate corporation established under the provision of Section 34 of the Civil Code (Law No. 89 of 1896) or industrial business corporative association and other associations established under the special law (excluding those which are not legal entities), or foreign legal entities corresponding thereto shall be entitled to obtain a collective trademark registration with respect of a trademark for use by their members.
(2) For the purposes of the provision of Section 3(1), "his business" in that section shall read "their members' or their own business."
(3) Any person desiring the registration of a collective trademark under Subsection (1) shall submit to the Commissioner of the Patent Office with respect to a trademark application under Section 5(1) a document proving that the applicant is a legal entity referred to Subsection 1.
8.-(1) Where two or more trademark applications relating to identical or similar trademarks which are to be used on identical or similar goods or services are filed on different dates, only the earliest applicant may obtain a trademark registration for the trademark concerned.
(2) Where two or more trademark applications relating to identical or similar trademarks which are to be used on identical or similar goods or services are filed on the same date, only one applicant, agreed upon after mutual consultation among all the applicants, may obtain a trademark registration for the trademark.
(3) Where a trademark application is a surrendered, withdrawn or dismissed or where an examiner's decision or trial decision on a trademark application has become final and conclusive, such application shall, for the purposes of the two preceding subsections, be deemed never to have been made.
(4) The Commissioner of the Patent Office shall, in the case of Subsection (2), order the applicants to hold consultations for an agreement under that subsection and to report the result thereof, within an adequate time limit.
(5) Where no agreement is reached in the consultations under Subsection (2) or where the report under the preceding subsection is not made within the time limit designated in accordance with that subsection, registration of the trademark concerned may be obtained only by one applicant chosen by the drawing of lots conducted in a fair and just manner by the Commissioner of the Patent Office.
9.-(1) In the case of a trademark used in respect of goods exhibited or services offered at an exhibition held by the Government, etc.-or at one which is not held by the Government, etc. but has been designated by the Commissioner of the Patent Office, or at an international exhibition held by the Government, etc. or a person authorized thereby in the territory of a country party to the Paris Convention or a Member of the World Trade Organization or a contracting party to the Trademark Law Treaty, or at an international exhibition held by the Government, etc. or a person authorized thereby in the territory of a country which is neither a party to the Paris Convention nor a Member of the World Trade Organization or a country party to the Trademark Law Treaty, but which has been designated by the Commissioner of the Patent Office -, provided that the person who exhibited the said goods offered said services has applied for a trademark registration, designating those goods or services, within six months from the date when they were exhibited or offered, the trademark application shall be deemed to have been filed at the time when the goods were exhibited or the services were offered.
(2) Any person who desires the application of the preceding subsection with respect to a trademark in a trademark application shall submit a written statement to that effect to the Commissioner of the Patent Office simultaneously with the trademark application. Within 30 days from the filing of the trademark application, he shall also submit to the Commissioner of the Patent Office a document proving that the trademark and the goods or services in the trademark application are a trademark and goods or services falling under the said subsection.
9bis. A priority claim based on an application for trademark registration (limited to a trademark equivalent to that defined in Section 2(1)(ii)) filed in or for a country party to the Paris Convention may be declared as governed by the provisions in Article 4 of the Paris Convention for a priority claim based on the application for trademark registration of the trademark equivalent to that defined in Section 2(1)(i).
9ter. A priority claim based on an application which a person specified in the left-hand column of the following table has filed in or for any country specified in the right-hand column of the following table may be declared as governed by the provision in Article 4 of the Paris Convention:
Japanese nationals or nationals of a country party to the Paris Convention (including nationals deemed to be the nationals of the country party in accordance with Article 3 of the Paris Convention). |
Member of the World Trade Organization or a contracting party to the Trademark Law Treaty. |
Nationals of a Member of the World Trade Organization (meaning nationals of Members provided for in paragraph 3 of Article 1 of the Annex 1C to the Marrakesh Agreement Establishing the World Trade Organization) or nationals of a contracting party to the Trademark Law Treaty. |
Country party to the Paris Convention, Member of the World Trade Organization or a contracting party to the Trademark Law Treaty. |
or the Trademark for which Trademark Registration is Sought
and Change of Gist
9quater. Where, after registration of the establishment of the trademark right, it is found that an amendment of the designated goods or designated services stated in the request or the trademark for which registration is sought made, has changed the gist thereof, the trademark application shall be deemed to have been filed at the time when the amendment in writing was submitted.
10.-(1) An applicant for a trademark registration may divide a part of his application for trademark registration designating two or more items of goods or services as designated goods or designated services into one or more new trademark applications provided that the trademark application is pending in examination, trial examination or retrial examination or that a suit against a trial decision to refuse the trademark application is pending in court.
(2) Where a trademark application has been divided under the preceding subsection, the new trademark application shall be deemed to have been filed at the time of filing of the original application. However, this provision shall not apply for the purposes of Section 9(2) of this Law and Section 43(1) and (2) of the Patent Law (Law No. 121 of 1959) as applied under Section 13(1) of this Law (including its application under Section 43bis(3) of the Patent Law as applied under Section 13(1) of this Law).
(3) Where the new application for trademark registration under Subsection (1) is filed, any statements or documents which have been submitted with respect to the original application for trademark registration and which shall be submitted with respect to the new application for trademark registration in accordance with Section 9(2) of this Law or Section 43(1) and (2) of the Patent Law as applied under Section 13(1) of this Law (including its application under Section 43bis(3) of the Patent Law as applied under Section 13(1) of this Law), shall be deemed to have been submitted to the Commissioner of the Patent Office simultaneously with the said new application for trademark registration.
11.-(1) An applicant may convert his application for registration of a collective trademark into an application for registration of an individual trademark (meaning a trademark application other than an application for registration of a collective trademark-hereinafter referred to as an "application for registration of an individual trademark").
(2) An applicant may convert his application for registration of an individual trademark into an application for registration of a collective trademark.
(3) A trademark application may not be converted under the two preceding subsections after the examiner's decision or the trial decision with respect to the application has become final and conclusive.
(4) Where the conversion of a trademark application under Subsection (1) or (2) has been made, the original trademark application shall be deemed to have been withdrawn.
(5) Section 10(2) and (3) shall apply mutatis mutandis to the conversion of a trademark application under Subsection (1) or (2).
12.-(1) An applicant may convert his application for registration of a defensive mark into an application for trademark registration.
(2) An application may not be converted under the preceding subsection after the examiner's decision or the trial decision with respect to the application for registration of a defensive mark has become final and conclusive.
(3) Sections 10(2) and (3) and 11(4) shall apply mutatis mutandis to the conversion of an application under Subsection (1).
12bis.-(1) When a trademark application has been filed, the Commissioner of the Patent Office shall publish the application.
(2) The publication of the application for trademark registration shall be effected by publishing the following particulars in the Trademark Gazette (Shohyo Koho). However, this provision shall not apply to the particulars referred to in Paragraphs (iii) and (iv) where the Commissioner of the Patent Office recognizes that the publication of those particulars in the Trademark Gazette is liable to contravene public order or morality:
(i) the name and the domicile or residence of the applicant for a trademark registration;
(ii) the number and date of the application for a trademark registration;
(iii) the contents of the trademark stated in the request (represented in the standard characters as applicable under Sections 5(3), hereinafter referred to in Sections 18(3)(iii) and 27(1) as "the trademark stated in the request");
(iv) the designated goods or designated services;
(v) other necessary particulars.
13.-(1) Sections 43(1) to (4) and 43bis(2) and (3) of the Patent Law shall apply mutatis mutandis to trademark applications. In such a case, "within one year and four months from the earliest date among the dates given in each of the following paragraphs" in Section 43(2) of the Patent Law shall read "within three months from the filing date of the trademark application" and "or a Member of the World Trade Organization" in Section 43bis(2) of the Patent Law shall read "a Member of the World Trade Organization or a contracting party to the Trademark Law Treaty", "the nation of a Member of the World Trade Organization" in the same paragraph shall read "the nation of a Member of the World Trade Organization or the nation of a contracting party to the Trademark Law Treaty" and "Subsection (1) or (2)" in Section 43bis(3) of the Patent Law shall read "Subsection (1)".
(2) Sections 33 and 34(4) to (7) (right to obtain patent) of the Patent Law shall apply mutatis mutandis to the rights deriving from a trademark application.
13bis.-(1) Where any applicant for trademark registration has, after filing of his application, give a warning by showing documents bearing the contents relating to the said application, he may claim, against person who has used the trademark in his application with respect to the designated goods or designated services in his application, the payment of money equivalent to his business loss caused by such use made after the warning and before the registration of the establishment of the trademark right concerning the designated goods or designated services relating to the said application.
(2) The right under the preceding subsection may not be exercised until after the establishment of the trademark right is registered.
(3) The exercise of the right under Subsection (1) shall not preclude the exercise of the trademark right.
(4) Where a trademark application has been surrendered, withdrawn or dismissed, or where the examiner's decision or a trial decision that the trademark application is to be refused has become final and conclusive, or where the ruling to revoke the trademark registration under Section 43ter(2) has become final and conclusive, or where, with exception of the cases coming within the proviso to Section 46bis(1), a trial decision that the trademark registration is to be invalidated has become final and conclusive, the right under Subsection(1) shall be deemed never to have arisen.
(5) Sections 27 and 37 of this Law and Sections 105, 105bis and 106 of the Patent Law as applied under Section 39 of this Law, and Sections 719 and 724(tort) of the Civil Code shall apply mutatis mutandis to the exercise of the right under Subsection (1). In such a case, where a person having the right to claim has become aware, before the registration of the establishment of the trademark right, of the fact of the use of the trademark relating to the said trademark application and of the person using the trademark, "the time when the injured party or his legal representative became aware of such damage and of the person causing it" in Section 724 of the said Code shall read "the date of the registration of the establishment of the patent right".
THE EXAMINATION
14. The Commissioner of the Patent Office shall have applications for trademark registration examined by an examiner.
15. The examiner shall make a decision that a trademark application is to be refused where it falls under any of the following paragraphs:
(i) the trademark in the trademark application is not registrable in accordance with Section 3, 4(1), 8(2) or (5), 51(2) (including its application under Section 52bis(2)) or 53(2) of this Law of Section 25 of the Patent Law as applied under Section 77(3) of this Law;
(ii) the trademark in the trademark application is not registrable in accordance with the provisions of a treaty;
(iii) the trademark application does not comply with the requirements of Section 6(1) or (2).
15bis. When the examiner intends to render a decision that an application is to be refused, he shall notify the applicant for the trademark registration of the reasons for refusal and give him an opportunity to submit a statement of his arguments, designating an adequate time limit.
15ter.-(1) Where a trademark for which the registration is sought in a trademark application is a trademark which are identical with, or similar to, another person's trademark applied for prior to the filing date of the trademark application concerned and which are used on the designated goods or designated services covered by the trademark referred to or on similar goods or services, the examiner may notify the applicant that his trademark application may fall under Section 15(i) if the other party's trademark is registered, and give him an opportunity to submit a statement of his arguments, designating an adequate time limit.
(2) Where a notification referred to in the preceding subsection has been served and the other applicant's trademark is registered, the examiner shall not be required to serve a notification referred to in the preceding section.
16. Where the examiner finds no reason for refusing a trademark application within the time limit prescribed by Cabinet Order, he shall render a decision that a trademark is to be registered.
16bis.-(1) Where an amendment to the designated goods or designated services stated in the request or the trademark for which registration is sought would change the gist thereof, the examiner shall decline the amendment by a ruling.
(2) The ruling to decline an amendment under the preceding subsection shall be in writing and state the reasons therefor.
(3) Where a ruling to decline an amendment under Subsection (1) has been rendered, the examiner's decision with respect to the trademark application shall not be rendered before the expiration of 30 days from the transmittal of that ruling.
(4) Where an applicant has demanded a trial under Section 45(1) against a ruling to decline an amendment under Subsection (1), the examiner shall suspend the examination of the trademark application until the trial decision has become final and conclusive.
17. Section 47(2) (qualifications of examiners), Section 48 (exclusion of examiners), Section 52 (formal requirements of decision) and Section 54 (relationship with litigation) of the Patent Law shall apply mutatis mutandis to the examination of trademark applications.
17bis.-(1) Section 17ter (new application for design as amended) of the Design Law (Law No. 125 of 1959) shall apply mutatis mutandis to the case where an amendment is declined by a ruling under Section 16bis(1).
(2) Section 17quater of the Design Law shall apply mutatis mutandis to the extension of the time limit prescribed in Section 17ter(1) as applied under Subsection (1) or Section 55bis(3) (including its application under Section 60bis(2)).
THE TRADEMARK RIGHT
18.-(1) A trademark right shall come into force upon registration of its establishment.
(2) The establishment of a trademark right shall be registered when the registration fee under Section 40(1) or the registration fee due to be paid within 30 days from the date of the transmittal of the examiner's decision or the trial decision that the trademark is to be registered under Section 41bis(1) has been paid.
(3) Upon registration under the preceding subsection, the following particulars shall be published in the Trademark Gazette:
(i) the name and the domicile or residence of the owner of the trademark right;
(ii) the number and date of the trademark application;
(iii) the contents of the trademark stated in the request;
(iv) the designated goods or designated services;
(v) the registration number and date of the registration of the establishment;
(vi) other necessary particulars.
(4) During two months after the date of the publication of the Trademark Gazette which states the matter referred to in each paragraph of the preceding subsection (hereinafter referred to as "the Gazette containing the trademark"), the Commissioner of the Patent Office shall make the application files and their attachments available for public inspection in the Patent Office. However, this provision shall not apply to documents or articles liable to injure the reputation or peaceful existence of an individual or documents and articles liable to contravene public order or morality, which the Commissioner of the Patent Office considers it necessary to keep secret.
(5) Where the Commissioner of the Patent Office is to lay open for public inspection documents or articles other than those liable to injure the reputation or peaceful existence of an individual or documents or articles liable to contravene public order or morality, which the Commissioner of the Patent Office considers it necessary to keep secret, the Commissioner shall notify a person who has submitted the documents or articles to that effect with a reason therefor.
19.-(1) The term of a trademark right shall be ten years from the date of registration of its establishment.
(2) The term of a trademark right may be renewed by a request for registration of renewal.
(3) When renewal of the term of the trademark right has been registered, the term shall be deemed to have been renewed upon expiration of the term.
20.-(1) Any person desiring the registration of a renewal of the term of a trademark right shall submit a request for renewal to the Commissioner of the Patent Office stating the following:
(i) the name and the domicile or residence of the requester;
(ii) the registration number of the trademark registration;
(iii) other matters fixed by an ordinance of the Ministry of Economy, Trade and Industry.
(2) A request for registration of renewal shall be made within six months prior to the date of expiration of the term.
(3) Where the owner of a trademark right is unable to make a request for registration of renewal within the time limit prescribed in the preceding subsection, he may make such request belatedly within six months from the expiration of that time limit.
(4) Where a request for registration of renewal is not made within the time limit allowing its owner to make such request under the preceding subsection, the trademark right shall be deemed to have been extinguished retroactively from the time of the expiration of the term.
21.-(1) Where the trademark right is one which was deemed to have been extinguished under Section 20(4) and the owner of the extinguished trademark right is unable to make a request for registration of the renewal within the time limit allowing him to make such request under Section 20(3) due to reasons outside his control, he may make such request within 14 days (where he is a resident abroad, two months) from the date on which the reasons ceased to be applicable but not later than six months following the expiration of said time limit.
(2) When a request for registration of renewal is made under the preceding subsection, the term shall be deemed to have been renewed retroactively from the time of the expiration of the term.
22. The effects of the trademark right restored under Section 21(2) shall not extend to the following acts after the expiration of the time limit referred to in Section 20(3) for the request for registration of renewal of the term of the trademark right but before the registration is made to the effect that the term has been renewed by the request made under Section 21(1):
(i) the use of the registered trademark with respect to the designated goods or designated services; and
(ii) the acts mentioned in each paragraph of Section 37.
23.-(1) When the registration fee under Section 40(2) or the registration fee due to be paid at the time of a request for registration of renewal under Section 41bis(2) has been paid, the renewal of the term of the trademark right shall be registered.
(2) Notwithstanding the provision of the preceding subsection, where a request is made for registration of renewal under Section 20(3) or Section 21(1), the registration to the effect that the term of the trademark right has been renewed shall be made when the payment has been made for the registration fee under Section 40(2) and the registration fee with a surcharge under Section 43(1) or the registration fee due to be paid at the time of the request for registration of renewal under Section 41bis(2) and the registration fee with a surcharge under Section 43(2).
(3) Upon registration under the preceding two subsections, the following particulars shall be published in the Trademark Gazette:
(i) the name and the domicile or residence of the owner of a trademark right;
(ii) the registration number and date of the registration of renewal; and
(iii) other necessary particulars.
24.-(1) Where there are two or more items of the designated goods or designated services, a trademark right may be divided into each such item.
(2) The division of a trademark right under the preceding subsection may be, in the case where a trial is demanded with respect to it under Section 46(2), applied for even after the extinguishment of the trademark right only during the pendency of the case in the trial or retrial examination or a litigation.
24bis.-(1) Where there are two or more items of the designated goods or designated services, a trademark right may be transferred separately for each such item.
(2) A trademark right under a trademark application filed by the State or a local public entity, or an agency thereof, or a non-profit organization working in the public interest, referred to in Section 4(2), may not be assigned.
(3) A trademark right under a trademark application filed by a person carrying on a non-profit enterprise working in the public interest, referred to in Section 4(2), may be transferred only together with the enterprise itself.
24ter.-(1) When a collective trademark right is transferred, the collective trademark shall be deemed to have been converted to an individual trademark right, except as provided in the following subsection.
(2) When the owner of a collective trademark desires to transfer his collective trademark right, he shall submit a statement to that effect and a document under Section 7(3) to the Commissioner of the Patent Office at the time of an application for registration of the transfer.
24quater. Where, as a result of the transfer of a trademark right, the trademark right to a similar registered trademark that is used for identical goods or services or the identical or a similar registered trademark that is used for similar goods or services comes to belong to a different person, and where the use of such registered trademark by the owner of a trademark right or the owner of a right of exclusive use or of non-exclusive use relating to one registered trademark for its designated goods or designated services is likely to cause damage to business interests of the owner of a trademark right or the owner of a right of exclusive use relating to the other registered trademark (limited to the business interests concerning the designated goods or designated services for which the other registered trademark is used), the owner of a trademark right or the owner of a right of exclusive use relating to the other registered trademark may request the owner of the trademark right or the owner of the right of exclusive use or the owner of non-exclusive use relating to the one registered trademark to mark a suitable indication in the use thereof so as to prevent any confusion between the goods or services connected with the other's business and those connected with the own business.
25. The owner of a trademark right shall have an exclusive right to use the registered trademark with respect to the designated goods or designated services. However, where the trademark right is subject to a right of exclusive use, this provision shall not apply to the extent that the owner of that right has an exclusive right to use the registered trademark.
26.-(1) The effects of the trademark right shall not extent to the following trademarks (including those which constitute part of other trademarks):
(i) trademarks indicating, in a common way, one's own portrait, name, famous pseudonym, professional name or pen name or a famous abbreviation thereof;
(ii) trademarks indicating, in a common way, the common name, origin, place of sale, quality, raw materials, efficacy, use, quantity, shape (including packaging shape hereinafter referred to in the following paragraph as "shape") or price or the method or time of manufacturing or using the designated goods concerned or goods similar thereto or the common name of services similar to the designated goods, location of provision of the services, quality, articles for use in such provision, efficacy, use, quantity, modes, price, or methods or time of such provision;
(iii) trademarks indicating, in a common way, the common name of designated services or services similar thereto, location of provision of the services, quality, articles supplied for use in such provision, efficacy, use, quantity, modes, price, or method or time of such provision or the common name, origin, place of sale, quality, raw materials, efficacy, use, quantity, shape or price, or method or time of manufacturing or using the goods similar to the designated services;
(iv) trademarks customarily used on the designated goods or designated services, or goods or services similar thereto;
(v) trademarks consisting solely of a three-dimensional shape of goods or their packaging with the shape indispensable to secure the functions of the goods or their packaging.
(2) Paragraph (i) of the preceding subsection shall not apply where, after registration of the establishment of the trademark right, one's own portrait, name, famous pseudonym, professional name or pen name or a famous abbreviation thereof has been used with the intention of violating the rules of fair competition.
27.-(1) The scope of a registered trademark shall be decided on the basis of the trademark stated in the request.
(2) The scope of the designated goods or designated services shall be decided on the basis of the statement in the request.
28.-(1) A request for interpretation may be made to the Patent Office with respect to the effects of a trademark right.
(2) Where such a request is made, the Commissioner of the Patent Office shall designate three trial examiners to give the requested interpretation.
(3) Section 71(3) and (4) of the Patent Law shall apply mutatis mutandis to the interpretation under Subsection (1).
28bis.-(1) Where the Commissioner of the Patent Office is commissioned by a court to give an expert opinion with respect to the effects of the trademark right, he shall appoint three trial examiners to give the opinion.
(2) Section 71bis(2) shall apply mutatis mutandis to the commission therefor under the preceding subsection.
29. Where the use in a given manner of a registered trademark in respect of the designated goods or designated services conflicts with another person's patent, utility model or design right under its application filed prior to the filing date of the trademark application concerned or with another person's copyright taking effect prior to that date, the owner of the trademark right or of the right of exclusive or non-exclusive or non-exclusive use shall not use the registered trademark in such a manner on the part of the designated goods or designated services giving rise to the conflict.
30.-(1) The owner of a trademark right may grant a right of exclusive use with respect to his trademark right. However, this provision shall not apply to a trademark right under an application referred to in Section 4(2).
(2) The owner of a right of exclusive use shall have an exclusive right to use the registered trademark in respect of the designated goods or designated services to the extent laid down in the contract granting such right.
(3) A right of exclusive use may be transferred only with the consent of the owner of the trademark right or in the case of inheritance or other general succession.
(4) Section 77(4) and (5) (establishment of pledge, etc.), Section 97(2) (surrender) and Section 98(1)(ii) and (2) (effects of registration) of the Patent Law shall apply mutatis mutandis to rights of exclusive use.
31.-(1) The owner of a trademark right may grant a right of non-exclusive use with respect to his trademark right. However, this provision shall not apply to a trademark right under an application referred to in Section 4(2).
(2) The owner of a right of non-exclusive use shall have the right to use the registered trademark in respect of the designated goods or designated services to the extent laid down in the contract granting such right.
(3) A right of non-exclusive use may be transferred only with the consent of the owner of the trademark right (or only with the consent of such person and of the owner of the right of exclusive use, in the case of a right of non-exclusive use with respect to the right of exclusive use) or in the case of inheritances or other general succession.
(4) Section 73(1) (joint ownership), Section 94(2) (establishment of pledge), Section 97(3) (surrender) and Section 99(1) and (3) (effects of registration) of the Patent Law shall apply mutatis mutandis to rights of non-exclusive use.
31bis.-(1) Members of a corporation or an association entitled to a collective trademark right under Section 7(1) (hereinafter referred to as "corporation or association members") shall have the right to use the collective trademark with its designated goods or designated services in accordance with regulations set forth by the corporation or association. However, where the trademark right is subject to a right of exclusive use, this provision shall not apply to the extent that the owner of that right has an exclusive right to use the registered trademark.
(2) The right provided for in the principal sentence of the preceding subsection shall not be transferred.
(3) For the purpose of Sections 24quater, 29, 50, 52bis, 53 and 73, corporation or association members shall be deemed as an owner of the right of non-exclusive use.
(4) For the purpose of Section 33(1)(iii) to collective trademark registrations, "a person who ... has a right of exclusive use with respect to the trademark right under the trademark registration that has been invalidated or a right of non-exclusive use which is effective, under Section 99(1) of the Patent Law as applied under Section 31(4) of this Law, against the trademark right or the right of exclusive use ..." in the Section 33(1)(iii) shall read "a person who ... has a right of exclusive use with respect to the trademark right under the trademark registration that has been invalidated or a right of non-exclusive use which is effective, under Section 99(1) of the Patent Law as applied under Section 31(4) of this Law, against the trademark right or the right of exclusive use or the corporation or association members who have the right to use the collective trademark".
32.-(1) Where, from a time prior to the filing by another person of a trademark application and without any intention of violating the rules of fair competition, a person has been using in Japan the trademark in the application or a similar trademark in respect of the designated goods or designated services in the application, or in respect of similar goods or services, and, as a result, the trademark has become well known among consumers as indicating the goods or services as being connected with his business at the time of filing of the trademark application (or at the time of filing of the original trademark application or of submission of an amendment when the trademark application is deemed to have been filed at the time of submission of the amendment in accordance with Section 9quater of this Law or in accordance with Section 17ter(1) of the Design Law as applied under Section 17bis(1) of this Law or 55bis(3) (including its application under Section 60bis(2) of this Law)), such person shall have a right to use the trademark in respect of said goods or services provided that he does so continuously. The same shall apply in the case of a person who has succeeded to the business concerned.
(2) The owner of the trademark right or of a right of exclusive use may request the person having a right to use the trademark under the preceding subsection to mark his goods or services with a suitable indication so as to prevent any confusion between the goods or services connected with the owner's business and those connected with the other person's business.
33.-(1) When a person coming within any of the paragraphs set out below has been using in Japan a registered trademark or a similar trademark in respect of the designated goods or designated services or similar goods or services, prior to the registration of a demand for a trial under Section 46(1), without knowing that a trademark registration falls under any of the paragraphs of the subsection referred to, and the trademark has become well known among consumers as indicating the goods or services as being connected with his business, such person shall have a right to use the trademark in respect of the goods or services provided that he does so continuously. The same shall apply in the case of a person who has succeeded to the business concerned:
(i) the original owner of the trademark right, where one of two or more trademark registrations granted for identical or similar trademarks to be used in respect of identical or similar designated goods or designated services has been invalidated;
(ii) the original owner of the trademark right where his trademark registration has been invalidated and a trademark registration has been granted to the person entitled for identical or similar trademarks to be used on identical or similar designated goods or designated services;
(iii) in the cases referred to in the two preceding paragraphs, a person who, at the time of registration of the demand for a trial under Section 46(1), has a right of exclusive use with respect to the trademark right under the trademark registration that has been invalidated or a right of non-exclusive use which is effective, under Section 99(1) of the Patent Law as applied under Section 31(4) of this Law, against the trademark right or the right of exclusive use.
(2) The owner of the trademark right or of the right of exclusive use shall have a right to a reasonable remuneration as consideration for the right of non-exclusive use under the preceding subsection.
(3) Section 32(2) shall apply mutatis mutandis to Subsection (1).
33bis.-(1) Where a patent right under a patent application filed prior to or on the date of an application for registration of a trademark conflicts with the trademark right under that trademark application and the term of the patent right has expired, the patentee shall have the right to use to the extent of the original patent right, the registered trademark or other trademark similar thereto with respect to the designated goods or designated services covered by the trademark application or goods or services similar thereto. However, this provision shall apply only where the registered trademark is used without the intention of violating the rules of fair competitions.
(2) Section 32(2) shall apply mutatis mutandis to the preceding subsection.
(3) The provisions of the preceding two subsections shall apply mutatis mutandis where a utility model or design right under an application filed prior to or on the filing date of the trademark application conflicts with the trademark right under the trademark application and the term of the utility model or design right expired.
33ter.-(1) Where a patent right under a patent application filed prior to or on the filing date of the trademark application conflicts with a trademark right under that trademark application and the term of the patent right has expired, any person who has the exclusive license on the patent right or a non-exclusive license with respect to the patent right or its exclusive license with effects as provided under Section 99(1) of the Patent Law at the time of its expiration shall have the right to use, within the scope of the original patent right, the registered trademark or other trademark similar thereto with respect to the designated goods or designated services falling under the trademark application or goods or services similar thereto. However, this provision shall apply only where the registered trademark is used without the intention of violating the rules of fair competition.
(2) Sections 32(2) and 33(2) shall apply mutatis mutandis to the preceding subsection.
(3) The provisions of the preceding two subsections shall apply mutatis mutandis where a utility model or design right under an application filed prior to or on the filing date of the trademark application conflicts with a trademark right under that trademark application and the term of the utility model or design right has expired.
34.-(1) Where a trademark right or a right of exclusive or non-exclusive use is the subject of a pledge, the pledgee may not use the registered trademark in respect of the designated goods or designated services except as otherwise provided by contract.
(2) Section 96 (attachment) of the Patent Law shall apply mutatis mutandis to pledges on a trademark right or a right of exclusive or non-exclusive use.
(3) Section 98(1)(iii) and (2) (effects of registration) of the Patent Law shall apply mutatis mutandis to pledges on a trademark right or a right of exclusive use.
(4) Section 99(3) (effects of registration) of the Patent Law shall apply mutatis mutandis to pledges on a right of non-exclusive use.
35. Section 73 (joint ownership), Section 76 (extinguishment of patent right in absence of heir), Section 97(1) (surrender) and Section 98(1)(i) and (2) (effects of registration) of the Patent Law shall apply mutatis mutandis to trademark rights. In such a case, "transfer otherwise than by inheritance or other general succession ..." in Section 98(1)(i) of the Patent Law shall read "division or transfer otherwise than by inheritance or other general succession ...".
36.-(1) The owner of a trademark right or of a right of exclusive use may require a person who is infringing or is likely to infringe the trademark right or right of exclusive use to discontinue or refrain from such infringement.
(2) The owner of a trademark right or of a right of exclusive use who is acting under the preceding subsection may demand the destruction of the articles by which the act of infringement was committed, the removal of the facilities used for the act of infringement, or other measures necessary to prevent the infringement.
37. The following acts shall be deemed to be an infringement of a trademark right or of a right of exclusive use:
(i) use of a trademark similar to the registered trademark in respect of the designated goods or designated services, or use of the registered trademark or of trademark similar thereto in respect of goods or services similar to the designated goods or designated services;
(ii) acts of holding, for the purpose of assignment or delivery, designated goods, or goods which are similar to the designated goods or designated services and to which or on the packaging of which the registered trademark or a trademark similar thereto has been applied;
(iii) acts of holding or importing articles which are for use by persons to whom the services are provided and to which the registered trademark or a trademark similar thereto has been applied, in the provision of the designated services, or of services similar to the designated services or designated goods, for the purpose of using such articles in the provision of such services;
(iv) acts of assigning or delivering articles which are for use by persons to whom the services are provided and to which the registered trademark or a trademark similar thereto has been applied, in the provision of the designated services, or services similar to the designated services or designated goods, for the purpose of causing such articles to be used in the provision of such services, or acts of holding or importing such articles for the purpose of assigning or delivering them;
(v) acts of holding articles bearing a reproduction of the registered trademark or a trademark similar thereto for the purpose of using such trademark in respect of the designated goods or designated services or of goods or services similar thereto;
(vi) acts of assigning or delivering, or of holding, for the purpose of assignment or delivery, articles bearing a reproduction of the registered trademark or a trademark similar thereto, for the purpose of causing such trademark to be used in respect of the designated goods or designated services or of goods or services similar thereto;
(vii) acts of manufacturing or importing articles bearing a reproduction of the registered trademark or a trademark similar thereto for the purpose of using such trademark, or causing it to be used, in respect of the designated goods or designated services or of goods or services similar thereto;
(viii) acts of manufacturing, assigning, delivering or importing, in the course of trade, articles to be used exclusively for manufacturing goods bearing a reproduction of the registered trademark or a similar trademark.
38.-(1) Where the owner of a trademark right or exclusive licensee claims, from a person who has intentionally or negligently infringed the trademark right or exclusive license, compensation for damage caused to him by the infringement, and the person's act is the assignment of articles by which the act of the infringement was committed, the sum of money with the unit price of such articles multiplied by the number of articles (hereinafter referred to in this paragraph as the "number of assigned articles") which the owner of the trademark right or exclusive licensee could have sold in the absence of the infringement may be estimated as the amount of damage suffered by the owner of the trademark right or exclusive licensee within a limit not exceeding an amount attainable depending on the working capacity of the owner of the trademark right or exclusive licensee. Where there is any circumstance that prevents the owner of the trademark right or exclusive licensee from selling part or the whole of the number of assigned articles, a sum equivalent to the number of assigned articles subject to that condition shall be deducted.
(2) Where the owner of a trademark right or of a right of exclusive use claims, from a person who has intentionally or negligently infringed the trademark right or right of exclusive use, compensation for damage caused to him by the infringement, the profits gained by the infringer through the infringement shall be presumed to be the amount of damage suffered by the owner.
(3) The owner of a trademark right or of a right of exclusive use may claim, from a person who has intentionally or negligently infringed the trademark right or the right of exclusive use, an amount of money which he would be entitled to receive for the use of the registered trademark, as the amount of damage suffered by him.
(4) The preceding subsection shall not preclude a claim to damages exceeding the amount referred to therein. In such a case, where there has been neither willfulness nor gross negligence on the part of the person who has infringed the trademark right or the right of exclusive use, the court may take this into consideration when awarding damages.
39. Section 103 (presumption of negligence) and Sections 104bis to 106 (obligation to clarify relevant act in concrete manner, production of documents, etc., expert opinion for proof of damage award of reasonable damages, and measures for recovery of reputation) of the Patent Law shall apply mutatis mutandis to the infringement of a trademark right or a right of exclusive use.
40.-(1) A person who obtains registration of a trademark shall pay, as a registration fee, the amount of 66,000 yen per case or this amount multiplied by the number of classes of the classification of goods and services (classes of the classification of goods and services which are prescribed by Cabinet Order referred to in Section 6(2) and to which the designated goods or designated services belong; hereinafter the same).
(2) A person who applies for registration of renewal of the term of a trademark right shall pay the amount of 151,000 yen per case or this amount multiplied by the number of classes of the classification of goods and services covered as a registration fee.
(3) The two preceding subsections shall not apply to trademark rights belonging to the State or independent administrative institutions (referring to the independent administrative institutions prescribed in Section 2(1) of the Law concerning the General Provisions of Independent Administrative Institutions (Law No. 103 of 1999), hereinafter the same) which are those to be set up by Cabinet Order by taking into consideration the substance of their business and other circumstances.
(4) The provisions of Subsections (1) and (2) shall not apply to a trademark right owned jointly by the State and the independent administrative institutions prescribed by Cabinet Order in the preceding subsection or owned jointly by the independent administrative institutions prescribed by Cabinet Order in the same subsection.
(5) Where the State and the like (referring to the State or the independent administrative institutions prescribed by Cabinet Order in Subsection (3), the same in Section 76(3) and (5)) and the person other than the State and the like (referring to the person other than the State and the independent administrative institutions prescribed by Cabinet Order in Subsection (3), the same in this subsection and the same section (5)) jointly own a trademark right and there is an agreement with respect to their shares of the right, the registration fee under Subsection (1) or (2) shall be a sum with the prescribed registration fee under these subsections multiplied by the ratios of the shares of the persons other than the State and the like, and the persons other than the State and the like shall pay such sum, notwithstanding the provision of Subsection (1) or (2).
(6) Where the amount of the registration fee calculated in accordance with the provision of the preceding subsection has a fractional figure less than 10 yen, that fractional figure shall be discarded.
(7) The payment of the fee under Subsection (1) or (2) shall be made by patent revenue stamps as prescribed by an ordinance of the Ministry of Economy, Trade and Industry. However, wherever so prescribed by an ordinance of the Ministry of Economy, Trade and Industry, such payment may be made in cash.
41.-(1) The registration fee under Section 40(1) shall be paid within 30 days from the date of the transmittal of the examiner's decision or trial decision that the trademark registration is to be effected.
(2) Upon the request of a person liable to pay a registration fee, the Commissioner of the Patent Office may extend the period prescribed in the preceding subsection by a period not exceeding 30 days.
(3) A registration fee as prescribed in Section 40(2) shall be paid at the time of a request for registration of renewal.
41bis.-(1) Notwithstanding Section 40(1), a person who obtains registration of a trademark right may pay the prescribed registration fee in installments. In this case, the amount of 44,000 yen per case or this amount multiplied by the number of classes of the classification of goods and services shall be paid for each case within 30 days from the date of the transmittal of the examiner's decision or trial decision that the trademark is to be registered and also the amount of 44,000 yen per case or this amount multiplied by the number of classes of the classification of goods and services for each case by the end of five years before the expiration of the term of the trademark right.
(2) Notwithstanding Section 40(2), a person who makes a request for registration of renewal may pay the prescribed fee in installments. In this case, the amount of 101,000 yen per case or this amount multiplied by the number of classes of the classification of goods and services shall be paid for each case at the time of a request for registration of renewal and also the amount of 101,000 per case or this amount multiplied by the number of classes of the classification of goods and services by the end of five years before the expiration of the term of the trademark right.
(3) Where the owner of a trademark right is unable to pay the registration fee due to be paid by the end of five years before the expiration of the trademark right under Subsection (1) or (2), he may pay the registration fee belatedly within six months after the expiration of that time limit.
(4) When the owner of a trademark right fails to pay, within a period during which he may make a delayed payment of the prescribed registration fee under the preceding subsection, a registration fee due to be paid under Subsection (1) or (2) by the end of five years before the expiration of a trademark right and a surcharge under Section 43(3), the trademark right shall be deemed to have been extinguished retroactive to the date of the end of five years before its expiration.
(5) Section 40(3) to (6) shall apply mutatis mutandis to Subsections (1) and (2).
(6) Section 41(2) shall apply mutatis mutandis to the payment of a registration fee due to be paid within 30 days from the transmittal of the examiner's decision or the trial decision to a trademark is to be registered under Subsection (1).
41ter.-(1) Any interested person may pay a registration fee (excluding a registration fee due to be paid at the time of a request for registration of renewal) even against a will of the person liable to pay the registration fee.
(2) An interested person who has paid a registration fee under the preceding subsection may demand reimbursement of the expenditure to the extent that the person liable to pay is actually making a profit.
42.-(1) A registration fee paid shall be refunded on the request of the person making the payment where it falls under any of the following paragraphs:
(i) registration fee paid by mistake or in excess;
(ii) registration fee due to be paid by the end of five years before the expiration of a trademark right under Section 41bis(1) or (2) (only in case where a ruling to revoke under Section 43ter(2) or a trial decision or a retrial decision that the trademark registration is to be invalidated has become final and conclusive by the end of five years before the expiration of the trademark right).
(2) No refund of a registration fee under the preceding subsection may be requested after one year from the date of payment in the case of a registration fee prescribed under Paragraph (i) above, or after six months from the date on which a ruling to revoke under Section 43ter(2) or a trial decision or a retrial decision became final and conclusive in the case of a registration fee under Paragraph (ii) above.
43.-(1) A person who makes a request for registration of renewal of a trademark right under Section 20(3) or Section 21(1) shall pay, in addition to a registration fee due to be paid under Section 40(2), a surcharge equivalent in amount to the registration fee.
(2) In the case where Section 41bis(2) is applicable, a person as prescribed in the preceding subsection shall pay, in addition to a registration fee due to be paid at the time of an application for registration of renewal of a trademark right under Section 41bis(2), a surcharge equivalent in amount to the registration fee.
(3) In the case where Section 41bis(3) is applicable, the owner of a trademark right shall pay, in addition to a registration fee due to be paid by the end of five years before the expiration of the trademark right under Section 41bis(1) or (2), a surcharge equivalent in amount to the registration fee.
(4) The payment of the surcharge under the preceding three subsections shall be made by revenue stamps as prescribed by an ordinance of the Ministry of Economy, Trade and Industry. However, wherever so prescribed by an ordinance of the Ministry of Economy, Trade and Industry, such payment may be made in cash.
OPPOSITION TO REGISTRATION
43bis. Only within two months from the publication of the Gazette containing the trademark, any person may file with the Commissioner of the Patent Office an opposition to a trademark registration on the grounds that the trademark registration falls under any of the undermentioned paragraphs. In such an event, if two or more items of designated goods or designated services are covered by the trademark registration, the opposition may be filed with respect to each of such designated goods or designated services. That is:
(i) where the trademark registration has been effected contrary to Section 3, 4(1), 8(1), (2) or (5), 51(2) (including its application under Section 52bis(2)), 53(2) or Section 25 of the Patent Law as applied under Section 77(3);
(ii) where the trademark registration has been effected contrary to the provisions of a treaty.
43ter.-(1) A trial concerning an opposition and a ruling thereon shall be conducted by a collegial body of three or five trial examiners.
(2) Where it is found that the trademark registration concerned in the opposition falls under any of the paragraphs of the preceding section, the trial examiners shall render a ruling that the trademark registration is to be revoked (hereinafter referred to as the "ruling to revoke").
(3) Where a ruling to revoke has become final and conclusive, the trademark right shall be deemed never to have existed.
(4) Where it is not found that the trademark registration in the opposition falls under any of the paragraphs of the preceding section, the trial examiners shall render a ruling that the trademark registration is to be maintained.
(5) No appeal shall lie from a ruling under Subsection (4).
43quater.-(1) A person filing an opposition to a trademark registration shall submit a written opposition to the Commissioner of the Patent Office stating the following:
(i) the name and the domicile or residence of the opponent and his representative;
(ii) an identification of the trademark registration concerned in the opposition;
(iii) the grounds of the opposition and an indication of the supporting evidence.
(2) An amendment of the written opposition submitted under the preceding subsection shall not change the gist thereof. However, this shall not apply to an amendment made to the matter prescribed in Paragraph (iii) of the preceding subsection before a lapse of 30 days after the expiration of the time limit prescribed in Section 43bis.
(3) The Commissioner of the Patent Office may, for the benefit of a person residing in a place that is remote or difficult of access, extend upon request or ex officio the period prescribed in the preceding subsection.
(4) The trial examiner-in-chief shall transmit a copy of the written opposition to the owner of the trademark right.
(5) Section 46(3) shall apply mutatis mutandis where the opposition has been filed.
43quinquies. Sections 136(2) and 137 to 144 of the Patent Law as applied under Section 56(1) shall apply mutatis mutandis to the collegial body under Section 43ter(1) and trial examiners constituting thereof.
43quinquies-bis.-(1) The Commissioner of the Patent Office shall designate a trial clerk for each case of opposition to a trademark registration.
(2) Section 144bis(3) to (5) of the Patent Law as applied under Section 56(1) of this Law shall apply to the trial clerk in the preceding subsection.
43sexies.-(1) The trial examination of the opposition shall be conducted by documentary examination. However, the trial examiner-in-chief may decide to conduct the trial by oral trial on a motion by the owner of the trademark right, an opponent or an intervenor, or ex officio.
(2) Sections 145(3) to (5), 146 and 147 of the Patent Law as applied under Section 56(1) of this Law shall apply mutatis mutandis to the oral examination in accordance with the proviso to the preceding subsection.
(3) Where there is a ground for interruption or suspension of the trial proceedings of an opposition and ruling thereon on the part of one of the joint owners of a trademark right, the interruption or suspension shall have effect on all of them.
43septies.-(1) Any person who has a right with respect to the trademark right or any other person who has an interest in the trademark right may intervene in the trial examination, in order to assist the owner of the trademark right until the ruling on the opposition.
(2) Sections 148(4) and (5) and 149 of the Patent Law as applied under Section 56(1) of this Law shall apply mutatis mutandis to the intervenor under the preceding subsection.
43octies. Sections 150 and 151 of the Patent Law as applied under Section 56(1) of this Law shall apply mutatis mutandis to the examination and preservation of evidence in a trial examination of opposition.
43novies.-(1) In a trial examination of an opposition, even the grounds that have not been pleaded by the owner of a trademark right, an opponent or intervenor may be examined.
(2) In a trial examination of an opposition, only the designated goods or designated services challenged by the opponent may be considered in the trial examination.
43decies.-(1) Trial examinations of two or more oppositions concerning the same trademark right shall be combined, unless special circumstances exist.
(2) Trial examinations that have been combined under the preceding subsection may later be conducted separately.
43undecies.-(1) An opposition to the trademark registration may not be withdrawn after the notification under Section 43duodecies.
(2) Section 155(3) of the Patent Law as applied under Section 56(2) of this Law shall apply mutatis mutandis to the withdrawal of the opposition.
43duodecies. When the trial examiner-in-chief intends to render a ruling to revoke, he shall notify the owner of the trademark right and intervenor of the reasons for revocation of the trademark registration and give them an opportunity to submit a statement of their arguments, designating an adequate time limit.
43terdecies.-(1) The ruling on the opposition shall be in writing and shall state particulars mentioned below, and the trial examiners who have rendered the ruling shall have their names and seals affixed thereto:
(i) the number of the opposition case;
(ii) the name and the domicile or residence of the owner of the trademark right, opponent and intervenor as well as of their representatives;
(iii) the identification of the registered trademark relating to the ruling;
(iv) the conclusions of the ruling and the reasons therefor;
(v) the date of the ruling.
(2) Once the ruling has been rendered, the Commissioner of the Patent Office shall transmit it to the owner of the trademark right, an opponent, intervenor and persons whose demand to intervene has been refused.
43quater decies.-(1) Sections 133, 133bis, 134(4), 135, 152, 168, 169(3) to (6) and 170 of the Patent Law as applied under Section 56(1) of this Law shall apply mutatis mutandis to the trial examination of the opposition and the ruling thereon.
(2) Section 43ter(5) of this Law shall apply mutatis mutandis to the ruling under Section 135 of the Patent Law as applied under the preceding subsection.
TRIAL
44.-(1) A person who has received the examiner's decision that his application is to be refused and is dissatisfied may demand a trial thereon within 30 days from the transmittal of the examiner's decision.
(2) Where, due to reasons outside his control, a person is unable to demand a trial under the preceding subsection within the time limit prescribed therein, he may, notwithstanding that subsection, make the demand within 14 days (where he is a resident abroad, within two months) from the date when the reason ceased to be applicable but not later than six months following the expiration of the said time limit.
45.-(1) A person who has received a ruling to decline an amendment under Section 16bis(1) and is dissatisfied may demand a trial thereon within 30 days from the transmittal of the ruling. However, this provision shall not apply when a new application for trademark registration has been filed under Section 17ter(1) of the Design Law as applied under Section 17bis(1) of this Law.
(2) Section 44(2) shall apply mutatis mutandis to the demand for a trial under the preceding subsection.
46.-(1) In the following cases, a trial may be demanded for the invalidation of a trademark registration. In such event, if two or more items of designated goods or designated services are covered by the trademark registration, the trial may be demanded with respect to each of such designated goods or designated services:
(i) where the registration has been effected contrary to Section 3, 4(1), 8(1), (2) or (5), 51(2) (including its application under Section 52bis(2)) or 53(2) or to Section 25 of the Patent Law as applied under Section 77(3) of this Law;
(ii) where the registration has been effected contrary to the provisions of a treaty;
(iii) where the registration has been effected in respect of a trademark application filed by a person who has not succeeded to the right deriving from the trademark application;
(iv) where, after the registration, the owner of the trademark right has become a person who can no longer enjoy such right under Section 25 of the Patent Law as applied under Section 77(3) of this Law or the registration no longer complies with a treaty;
(v) where, after the registration, the registered trademark has become a trademark falling under Section 4(1)(i) to (iii), (v) and (vii) to (xvi).
(2) Even after the extinguishment of a trademark right, a trial under the preceding subsection may be demanded.
(3) Where a trial under Subsection (1) has been demanded, the trial examiner-in-chief shall notify the owner of a right of exclusive use with respect to the trademark right and other persons who have any registered rights relating to the trademark registration.
46bis.-(1) Where a trial decision that the trademark registration is to be invalidated has become final and conclusive, the trademark right shall be deemed never to have existed. However, where a trademark registration falls under Section 46(1)(iv) or (v) and a trial decision that the trademark registration is to be invalidated has become final and conclusive, the trademark right shall be deemed not to have existed from the time when the trademark registration came to fall under Section 46(1)(iv) or (v).
(2) In the case of proviso to the preceding subsection, where a time at which the registered trademark came to fall under Section 46(1)(iv) or (v) cannot be established, the trademark right shall be deemed not to have existed from the date of the registration of a demand for a trial to invalidate the trademark registration.
47. Where a trademark registration has been effected contrary to Section 3, 4(1)(viii) or (xi) to (xiv) or 8(1), (2) or (5), contrary to Section 4(1)(x) or (xvii) (except where registration was obtained with the intention of violating the rules of fair competition) or contrary to Section 4(1)(xv) (except where the registration was obtained for unfair intention), or where a trademark registration falls under Section 46(1)(iii), a trial on the trademark registration may not be demanded under Section 46(1) after five years from the registration of the establishment of the trademark right.
48. [Deleted]
49. [Deleted]
50.-(1) Where neither the owner of the trademark right nor the owner of a right of exclusive use nor the owner of a right of non-exclusive use has been continuously using, in Japan for three years or more, the registered trademark (including a trademark consisting of identical characters only with their fonts modified, trademarks which, with their indication mutually replaced in character of hiragana and katakana (Japanese phonetic characters) and Latin alphabet may imply an identical pronunciation and concept, a trademark consisting of figures common in appearance and other trademarks regarded to be generally accepted as identical with the registered trademark-hereinafter referred to in this Section as "registration trademark") in respect of each item of the designated goods or designated services, any person may demand a trial for the cancellation of registration of the trademark with respect to such designated goods or designated services.
(2) In the case where a trial under the preceding subsection has been demanded, unless the defendant can prove that either the owner of the trademark right or the owner of a right of exclusive use or the owner of a right of non-exclusive use has used in Japan within three years prior to the registration of the demand for the trial the registered trademark in respect of any item of the designated goods or designated services to which the demand referred to relates, the owner of the trademark shall not avert the cancellation of the registered trademark for the designated goods or designated services. However, this provision shall not apply where the defendant justifies that there are legitimate reasons for the failure to use the registered trademark in respect of the designated goods or designated services.
(3) Where a registered trademark of which the cancellation trial has been demanded under Subsection (1) is used by the owner of the trademark right or the owner of a right of its exclusive use or its non-exclusive use in respect of the designated goods or designated services to which the demand referred to relates from three months before a demand for such cancellation till the date of the registration of the demand, such a use of the registered trademark shall not fall under the use of the registered trademark referred to in Subsection (1) provided that the demandant proves that the registered trademark was used with the knowledge that the cancellation trial for the registered trademark had been demanded. However, this provision shall not apply where the defendant justifies that there are legitimate reasons for such use of the registered trademark.
51.-(1) Where the owner of the trademark right intentionally uses a trademark similar to the registered trademark in respect of the designated goods or designated services, or intentionally uses the registered trademark or similar trademark in respect of goods or services similar to the designated goods or designated services in a way which may be misleading as to the quality of the goods or services or which may cause confusion with goods or services connected with any other person's business, any person may demand a trial for the cancellation of the trademark registration.
(2) Where a trademark registration has been canceled under the preceding subsection, the former owner of the trademark right may not obtain a trademark registration of the same or a similar trademark, for the designated goods or designated services covered by the trademark registration or for goods or services similar thereto, until five years have elapsed since the date when the trial decision ordering cancellation became final and conclusive.
52. The trial under Section 51(1) may not be demanded after five years from the date on which the owner of a trademark right ceased to use the trademark in the manner referred to in that subsection.
52bis.-(1) Where, as a result of the transfer of a trademark right, the trademark right to a similar registered trademark that is used for identical goods or services or the identical or similar registered trademark that is used for similar goods or services comes to belong to a different owner and where the use of one registered trademark by its owner is use, with an intention of violating the rules of fair competition, of the registered trademark for its designated goods or designated services in a way which may cause confusion with goods or services connected with the business of the owner of other registered trademark or the owner of the right of its exclusive or non-exclusive use, any person may demand a trial for the cancellation of the trademark registration.
(2) Sections 51(2) and 52 shall apply mutatis mutandis to the trial under Subsection (1).
53.-(1) Where the owner of a right of exclusive or non-exclusive use uses the registered trademark or a similar trademark in respect of the designated goods or designated services or goods or services similar thereto in a way which may be misleading as to the quality of the goods or services or which may cause confusion with goods or services connected with any other person's business, any person may demand a trial for the cancellation of the trademark registration. However, this provision shall not apply where the owner of the trademark right was both unaware of the fact and taking appropriate care.
(2) Where a trademark registration has been canceled under the preceding subsection, the former owner of the trademark right and the former owner of the right of exclusive or non-exclusive use who had used the mark in the way referred to in the preceding subsection may not obtain a trademark registration of the registered trademark or a similar trademark, for the designated goods or designated services covered by the trademark registration or for goods or services similar thereto, until five years have elapsed since the date when the trial decision ordering cancellation became final and conclusive.
(3) Section 52 shall apply mutatis mutandis to the trial under Subsection (1).
53bis. Where a registered trademark is the trademark of a person who has the right to the trademark in a country party to the Paris Convention or a Member of the World Trade Organization or a country party to the Trademark Law Treaty (but only where such right is equivalent to the trademark right) or is similar to such a trademark, and the goods or services relating to such right or similar goods or services have been made the designated goods or designated services, and moreover the trademark application concerned was made, without a legitimate reason and without the authorization of the person who has the right to the trademark, by his agent or representative or by a person who was his agent or representative at any time during the year preceding the filing date of the application, the person who has the right to the trademark may demand a trial for the cancellation of its registration.
53ter. The trial under Section 53bis may not be demanded after five years from the registration of the establishment of the trademark right.
54.-(1) When a trial decision ordering cancellation of a trademark registration has become final and conclusive, the trademark right shall from that moment become extinguished.
(2) Notwithstanding the preceding subsection, a trademark right shall be deemed to have extinguished on the date of registration of a demand for the trial where the trial decision that a trademark registration is to be canceled has become final and conclusive on the trial under Section 50(1).
55. Section 46(3) shall apply mutatis mutandis to the trials demanded under Sections 50(1), 51(1), 52bis(1), 53(1) and 53bis.
55bis.-(1) Section 15bis and 15ter of this Law shall apply mutatis mutandis where a reason for refusal which was not contained in the examiner's decision is found in the trial under Section 44(1).
(2) The provision of Section 16 shall apply where a demand made under Section 44(1) is to be allowed. However, this provision shall not apply where a trial decision is made for a trademark application to be further examined under Section 160(1) of the Patent Law as applied under Subsection (1) of the following section.
(3) Sections 16bis of this Law and Section 17ter of the Design Law shall apply mutatis mutandis to a trial under Section 44(1) of this Law. In such a case, "has demanded a trial under Section 45(1)" in Section 16bis(4) shall read "has instituted an action under Section 63(1)".
56.-(1) Sections 131(1) and (2), 132 to 133bis, 134(1), (3) and (4), 135 to 154, 155(1) and (2), 156 to 158, 160(1) and (2), 161 and 167 to 170 (effects of trial decision, demands for trial, trial examiners, trial proceeding, relationship with litigation and costs of trial) of the Patent Law shall apply mutatis mutandis to trials under this Law. In such a case, "Section 123(1) or 125bis(1)" in Sections 132(1), 145(1), 167 and 169(1) of the Patent Law shall read "Section 46(1), 50(1), 51(1), 52bis(1), 53(1) or 53bis of the Trademark Law," and "Section 121(1)" in Section 161, and "Section 121(1) or 126(1)" in Section 169(3) of the Patent Law shall read "Section 44(1) or 45(1) of the Trademark Law".
(2) Section 155(3) (withdrawal of demand for trial) of the Patent Law shall apply mutatis mutandis to the trial under Section 46(1).
56bis. Section 51 of the Design Law shall apply mutatis mutandis to a trial under Section 45(1) of this Law.
RETRIAL AND LITIGATION
57.-(1) Against a final and conclusive ruling to revoke or a final and conclusive trial decision or retrial decision, the party concerned or an intervenor may demand a retrial.
(2) Sections 338(1) and (2) and 339 (grounds for retrial) of the Code of Civil Procedure (Law No. 109 of 1996) shall apply mutatis mutandis to demands for a retrial under the preceding subsection.
58.-(1) Where the demandant and the defendant in a trial have in collusion caused a trial decision to be rendered, with the purpose of injuring the rights or interest of a third person, such person may demand a retrial against the final and conclusive trial decision.
(2) In such a retrial, the demandant and the defendant shall be made joint defendants.
59. Where a trademark right relating to a revoked or invalidated or canceled trademark registration has been restored through a retrial, the effects of the trademark right shall not extend to the following acts:
(i) the use in good faith of the registered trademark in respect of the designated goods or designated services after the ruling to revoke or the trial or retrial decision became final and conclusive but before the registration of the demand for a retrial;
(ii) the acts mentioned in each paragraph of Section 37 performed in good faith after the ruling to revoke or the trial or retrial decision became final and conclusive but before the registration of the demand for a retrial.
60.-(1) Where a trademark right relating to a revoked or invalidated or canceled trademark registration has been restored through a retrial, or where the establishment of a trademark right under a trademark application which was refused by a trial or retrial decision, has been registered through a retrial, and where a person has, in good faith, been using the registered trademark in Japan or a trademark similar thereto on the designated goods or designated services or goods or services similar thereto after the ruling to revoke or the trial or retrial decision became final and conclusive but before the registration of the demand for a retrial and, as a result, the trademark has become well-known among consumers as indicating the goods or services as being connected with his business at the time of registration of the demand for a retrial, such person shall have a right to use the trademark in the goods or services provided that he does so continuously. The same shall apply in the case of a person who has succeeded to the business concerned.
(2) Section 32(2) shall apply mutatis mutandis to the preceding subsection.
60bis.-(1) Sections 43ter, 43quinquies to 43novies, 43duodecies to 43quater decies of this Law, Sections 131(1) and (2), 132(3), 154, 155(1) and 156 of the Patent Law as applied under Section 56(1) of this Law and Section 155(3) of the Patent Law as applied under Section 156(2) of this Law shall apply mutatis mutandis to a retrial against the final and conclusive ruling to revoke.
(2) Section 55bis shall apply mutatis mutandis to a retrial against the final and conclusive trial decision on a trial under Section 44(1).
(3) Section 56bis shall apply mutatis mutandis to a retrial against the final and conclusive trial decision on a trial under Section 45(1).
61. Section 173 (time limit for demand for retrial) and Section 174(3) and (5) (application of provisions on trial, etc.) of the Patent Law shall apply mutatis mutandis to retrials under this Law. In such a case, "Section 123(1) or 125bis(1)" in Section 174(3) of the Patent Law shall read "Section 46(1), 50(1), 51(1), 52bis(1), 53(1) or 53bis of the Trademark Law".
62.-(1) Section 58(2) of the Design Law shall apply mutatis mutandis to a retrial against the final and conclusive trial decision on a trial under Section 44(1) of this Law.
(2) Section 58(3) of the Design Law shall apply mutatis mutandis to a retrial against the final and conclusive trial decision on a trial under Section 45(1) of this Law.
63.-(1) An action against a ruling to revoke or a trial decision or a ruling to decline an amendment under Section 16bis(1) as applied under Section 55bis(3) (including its application under Section 60bis(2)) or an action against a ruling of dismissal of a written opposition or a demand for a trial or retrial shall come under the exclusive jurisdiction of the Tokyo High Court.
(2) Section 178(2) to (6) (time limit for institution of action, etc.) and Sections 179 to 182 (defendant in the action, notification of institution of action, annulment of trial decisions or ruling, and sending of certified copy of judgment) of the Patent Law shall apply mutatis mutandis to actions under the preceding subsection. In such a case, "Section 123(1) or 125bis(1)" in Section 179 of the Patent Law shall read "Section 46(1), 50(1), 51(1), 52bis(1), 53(1) or 53bis of the Trademark Law".
63bis. Section 184bis (relationship between administrative appeal and litigation) of the Patent Law shall apply mutatis mutandis to actions for the annulment of measures (with the exception of measures under Section 77(7)) taken under this Law or an order or ordinance thereunder.
DEFENSIVE MARKS
64.-(1) The owner of a trademark right may, when his registered trademark in respect of goods has become well-known among consumers as indicating the designated goods as being connected with his business and when the use of the registered trademark by any other person in respect of goods other than the designated goods covered by the registered trademark and goods similar thereto or services similar to the designated goods is likely to cause confusion between such goods or services and the designated goods in connection with his business, obtain a defensive mark registration of a mark identical with the registered trademark with respect to goods or services for which such possibility of confusion exists.
(2) The owner of a trademark right may, when his registered trademark in respect of services has become well known among consumers as indicating the designated services as being connected with his business and when the use of the registered trademark by any other person in respect of services other than the designated services covered by the registered trademark and services similar thereto or goods similar to the designated services is likely to cause confusion between such services or goods and designated services in connection with his business, obtain a defensive mark registration of a mark identical with the registered trademark with respect to services or goods for which such possibility of confusion exists.
65.-(1) An applicant may convert his application for trademark registration into an application for registration of a defensive mark.
(2) An application may not be converted under the preceding subsection after the examiner's decision or the trial decision with respect to the application has become final and conclusive.
(3) Sections 10(2) and (3) and 11(4) shall apply mutatis mutandis to the case of conversion of an application under Subsection (1).
65bis.-(1) The term of a right based on a defensive mark registration shall be 10 years from the date of the registration of its establishment.
(2) The term of a right based on a defensive mark registration may be renewed by making a request for registration of a renewal of its registration. However, this provision shall not apply where the registered defensive mark has become not registrable under Section 64.
65ter.-(1) Any person desiring registration of renewal of the term of a right based on a defensive mark registration shall submit a request to the Commissioner of the Patent Office, stating the following:
(i) the name and the domicile or residence of the applicant;
(ii) the registration number of the defensive mark;
(iii) other necessary particulars as prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
(2) An application for registration of the renewal shall be made within six months prior to the date of the expiration of the term.
(3) Where a person desiring registration of renewal of a right based on a defensive mark registration has been unable to make an application for registration of renewal of that right within the time limit allowing him to make such application under the preceding subsection due to reasons outside his control, he may make such application within 14 days (where he is a resident abroad, two months) from the date on which the reasons ceased to be applicable but not later than six months following the expiration of the said time limit.
(4) When an application has been made for registration of renewal of the term of the right based on a defensive mark registration, the term shall be deemed to have been renewed upon expiration of the term (or, in case of an application under the preceding subsection, on the filing date of such application). However, this provision shall not apply when the examiner's decision or trial decision that the application is to be refused has become final and conclusive or when renewal of the term of the right based on a defensive mark registration has been registered.
65quater.-(1) Where an application for registration of renewal of a right based on a defensive mark registration falls under any of the following paragraphs, the examiners shall make a decision that the application is to be refused:
(i) the registered defensive mark in such application has become not registrable under Section 64;
(ii) the applicant is not the owner of the right based on the defensive mark registration.
(2) Where the examiner finds no reasons for refusing an application for registration of renewal, he shall make a decision that the renewal is to be registered.
65quinquies. Section 14 and 15bis of this Law, Sections 48 (exclusion of examiners) and 52 (formal requirements of decision) of the Patent Law shall apply mutatis mutandis to an examination of an application for registration of renewal of a right based on a defensive mark registration.
65sexies.-(1) When a registration fee under Section 65septies(2) has been paid, the renewal of the term of the right based on the defensive mark registration shall be registered.
(2) Upon the registration under the preceding subsection, the following shall be published in the Trademark Gazette:
(i) the name and the domicile or residence of the owner of the right based on the defensive mark registration;
(ii) the registration number and the date of renewal registration;
(iii) other necessary particulars.
65septies.-(1) A person who obtains registration of a right based on a defensive mark registration shall pay the amount of 66,000 yen per case or this amount multiplied by the number of classes of the classification of goods and services as a registration fee.
(2) A person obtaining registration of renewal of the term of a right based on a defensive mark registration shall pay the amount of 130,000 yen per case or this amount multiplied by the number of classes of the classification of goods and services covered, as a registration fee.
(3) Section 40(3) to (6) shall apply mutatis mutandis to the preceding two subsections.
65octies.-(1) The registration fee under Section 65septies(1) shall be paid within 30 days from the date of the transmittal of the examiner's decision or the trial decision that the defensive mark is to be registered.
(2) The registration fee under Section 65septies(2) shall be paid within 30 days from the date of the transmittal of the examiner's decision or a trial decision that the renewal of a right based on a defensive mark registration is to be registered (where such transmittal is made before the date of the expiration of the term of a right based on a defensive mark registration, the date of the expiration of the term).
(3) Upon the request of a person liable to pay a registration fee, the Commissioner of the Patent Office may extend the period prescribed in the preceding two subsections by a period not exceeding 30 days.
65novies.-(1) Any interested person may pay a registration fee prescribed in Section 65septies(1) or (2) even against the will of the person liable to pay the registration fee.
(2) An interested person who has paid a registration fee under the preceding subsection may demand reimbursement of the expenditure to the extent that the person liable to pay the registration fee is actually making a profit.
65decies.-(1) A registration fee paid by mistake or in excess under Section 65septies(1) or (2) shall be refunded on the request of the person making the payment.
(2) No refund of a registration fee under the preceding subsection may be requested after one year from the date of payment.
66.-(1) The right based on a defensive mark registration shall be extinguished if the principal trademark right has been divided.
(2) The right based on a defensive mark registration shall be transferred together with the principal trademark right if the principal trademark right is transferred.
(3) The right based on a defensive mark registration shall be extinguished if the principal trademark right is extinguished.
(4) Where a trademark right is deemed to have been extinguished under the provision of Section 20(4), the effect of the right based on a defensive mark relating to the trademark right restored under the provision of Section 21(2) shall not extend to acts prescribed in the paragraphs of the following section before the term of the trademark is registered under the provision of Section 21(1) after the lapse of a period during which an application for the registration of a renewal of the trademark may be filed as prescribed in Article 20(3).
67. The following acts shall be deemed to be an infringement of the principal trademark right or a right of exclusive use:
(i) use of a registered defensive mark in respect of the designated goods or designated services;
(ii) acts of holding, for the purpose of assignment or delivery, the designated goods on which or on the packaging of which the registered defensive mark has been applied;
(iii) acts of holding or importing articles which are for use by persons to whom the services are provided and to which the registered defensive mark has been applied, in the provision of the designated services, for the purpose of using such articles in the provision of such services;
(iv) acts of assigning or delivering articles which are for use by persons to whom the services are provided and to which the registered defensive mark has been applied, in the provision of the designated services, for the purpose of causing such articles to be used in the provision of such service, or acts of holding or importing such articles for the purpose of assigning or delivering them;
(v) acts of holding goods bearing a reproduction of the registered defensive mark for the purpose of using such a mark in respect of the designated goods or designated services;
(vi) acts of assigning or delivering, or of holding for the purpose of assignment or delivery, goods bearing a reproduction of the registered defensive mark, for the purpose of causing such defensive mark to be used in respect of the designated goods or designated services;
(vii) acts of manufacturing or importing goods bearing a reproduction of the registered defensive mark for the purpose of using such defensive mark, or causing it to be used, in respect of the designated goods or designated services.
68.-(1) Sections 5, 5bis, 6(1) and (2), 9bis to 10, 12bis, 13(1) and 13bis shall apply mutatis mutandis to applications for the registration of defensive marks. In such a case, "(iii) the designated goods or designated services and the class of classification of the goods and services as prescribed by Cabinet Order referred to in Section 6(2)" in Section 5(1) shall read "(iii) the designated goods or designated services and the class of classification of the goods and services as prescribed by Cabinet Order referred to in Section 6(2); (iv) the registration number of the principal trademark registration to which the application for registration of the defensive mark relates," "(iv) where designated goods or designated services are not stated" in Section 5bis(1) shall read "(iv) where designated goods or designated services are not stated; and (v) the registration number of the principal trademark registration to which the application for registration of the defensive mark relates is not stated," and "Section 37" in Section 13bis(5) shall read "Section 67 (with the exception of the proportion relating to Paragraph (i))".
(2) Sections 14 to 15bis and Sections 16 to 17bis shall apply mutatis mutandis to the examination of applications for the registration of a defensive mark. In such a case, "Section 3, 4(1), 8(2) or (5), 51(2) (including its application under Section 52bis(2)) or 53(2)" in Section 15(i) shall read "Section 64".
(3) Sections 18, 26 to 28bis, 32 to 33ter, 35 and 69 shall apply mutatis mutandis to a right based on a defensive mark registration. In such a case, "the registration fee under Section 40(1) or the registration fee due to be paid within 30 days from the date of the transmittal of the examiner's decision or a trial decision that the trademark is to be registered under Section 41bis(1)" in Section 18(2) shall read "a registration fee under Section 65septies(1)".
(4) Section 43bis to 46bis, 53bis, 53ter, 54(1) and 55bis to 56bis shall apply mutatis mutandis to an opposition to and a trial relating to the registration of a defensive trademark. In such a case, "Section 3, Section 4(1), Section 8(1), (2) or (5), Section 51(2) (including its application under Section 52bis(2)), Section 53(2)" in Section 43bis(i) and 46(1)(i) shall read "Section 64" and "where, after the registration, the registered trademark has become a trademark falling under Section 4(1)(i) to (iii), (v) and (vii) to (xvi)" in Section 46(1)(v) shall read "the trademark registration has come be contrary to the provision of Section 64".
(5) Sections 57 to 63bis shall apply mutatis mutandis to a retrial and an action relating to the registration of a defensive trademark. In such a case, "each paragraph of Section 37" in Paragraph (ii) of Section 59 shall read "Paragraphs (ii) to (vii) of Section 67" "a trademark right relating to a revoked or invalidated or canceled trademark registration" in Section 60 shall read "a right based on a defensive mark registration relating to a revoked or invalidated or canceled defensive mark registration" and "a trademark registration application" shall read "an application for the registration of a defensive mark or an application for the registration of a renewal of a right based on a defensive mark registration" and "the establishment of a trademark right" shall read "the establishment of a right based on defensive mark registration or registration of renewal of its term" and "the registered trademark ... or a trademark similar thereto ... on designated goods or designated services or goods or services similar thereto" shall read "identical trademark with the registered defensive mark".
SPECIAL PROVISIONS UNDER THE PROTOCOL OF THE MADRID AGREEMENT
68bis.-(1) A Japanese national or an alien who is domiciled or resident (or, in the case of a legal entity, established) in Japan, who desires to seek an international registration (hereinafter referred to as "the international registration") as referred to in Article 2(1) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks as adopted at Madrid on June 27, 1989 (hereinafter referred to as "the Protocol"), shall file with the Commissioner of the Patent Office an application (hereinafter referred to as "international application"), as referred to in Article 2(2) of the Protocol, based on either one of the following paragraphs. In such a case, where it complies with the requirement specified in an ordinance of the Ministry of Economy, Trade and Industry, two or more persons may make a joint international application:
(i) their application for trademark registration or for defensive mark registration pending with the Patent Office (hereinafter referred to as "application for trademark registration, etc.");
(ii) their trademark registration or defensive mark registration (hereinafter referred to as "trademark registration, etc.").
(2) Any person desiring to file an international application shall submit the form prescribed by the Registrations under the Protocol (hereinafter in this Chapter referred to as "the request and necessary documents") prepared in a foreign language, as provided for in an ordinance of the Ministry of Economy, Trade and Industry.
(3) The following particulars shall be indicated in the request:
(i) the names of the Contracting States of the Protocol for which the protection of the trademarks relating to the international application is sought;
(ii) the goods or services in respect of which protection of the mark relating to the international application is sought, and the class or classes of the classification prescribed by Cabinet Order in Section 6(2).
(4) Any person desiring to seek the application of Article 3(3) of the Protocol for trademarks or marks relating to the international application shall indicate in the request a statement to that effect and a description of the color or the combination of colors affixed, and also shall append to the request copies in color of the trademarks or marks or of the registered trademarks or registered defensive marks relating to the application for trademark registration, etc.
68ter.-(1) The Commissioner of the Patent Office shall transmit the request of the international application and necessary documents to the International Bureau as referred to in Article 2(1) of the Protocol (hereinafter referred to as "the International Bureau").
(2) In the case of the preceding subsection, the Commissioner of the Patent Office shall certify that the particulars appearing in the international application correspond to the particulars appearing in the basic application, etc. or in the basic registration, etc. and also indicate the date of the international application.
(3) In the case of Subsection (1), the Commissioner of the Patent Office shall transmit to the applicant for the said international application a copy of the request of the international application transmitted to the International Bureau.
68quater. As provided for in an ordinance of the Ministry of Economy, Trade and Industry, the holder of international registration may present a request for territorial extension to the Commissioner of the Patent Office under Article 3ter of the Protocol (hereinafter referred to as "the later designation").
68quinquies. As provided for in an ordinance of the Ministry of Economy, Trade and Industry, the holder of international registration may present a request for renewal of his international registration to the Commissioner of the Patent Office under Article 7(1) of the Protocol (hereinafter referred to as "the renewal of the international registration").
68sexies.-(1) As provided for in an ordinance of the Ministry of Economy, Trade and Industry, the holder of international registration or his assignee may present a request for the recordal of change in the ownership of the international registration to the Commissioner of the Patent Office under Article 9 of the Protocol (hereinafter referred to as "the change in the ownership of the international registration").
(2) The request as referred to in the preceding subsection may be made in respect of all or some of the Contracting Parties in whose territories the said registration has effect and in respect of all or some of the goods or services listed in the registration.
68septies. Sections 17(3) (limited to the proportion relating to Paragraph (iii)) and 18(1) of the Patent Law as applied under Section 77(2) of this Law shall apply mutandis to the international application, the later designation, the request for the renewal of international registration and the request for the recordal of change in the ownership of international registration.
68octies. In addition to the matters provided for in Sections 68bis to 68septies, necessary details for implementing the Protocol and the Regulations thereunder shall be provided for in an ordinance of the Ministry of Economy, Trade and Industry, relating to the international application, the later designation, the request for the renewal of international registration and the request for the recordal of change in the ownership of international registration.
68novies.-(1) A request for territorial extension with respect to Japan shall be considered to be an application for trademark registration having been filed on the date of international registration made in accordance with Article 3(4) of the Protocol (hereinafter referred to as "the date of international registration"). However, in the case of later designation, under Article 3ter(2) of the Protocol, the application for trademark registration shall be considered to be the application having been filed on the date (hereinafter referred to as "the date of later designation") on which later designation is recorded in the register of the International Register defined in Article 2(1).
(2) The matters specified in the left-hand column of the following table contained in the International Register of the international registration with respect to Japan shall be considered to be the matters specified in the right-hand column of the following table stated in the request of application for trademark registration filed under Section 5(1):
The name and the domicile of the holder of the international registration |
The name and the domicile or residence of the applicant for a trademark registration |
The mark registered in the International Register |
The mark for which registration is sought |
The goods or services listed in the international registration and the class of the classification of goods or services |
The designated goods or designated services and the class of the classification of goods or services as prescribed by Cabinet Order referred to in Section 6(2) |
68decies.-(1) Where a registered trademark (hereinafter in this Section referred to as "the registered trademark based on international registration") relating to the request for territorial extension considered to be an application for trademark registration under 68novies(1) (hereinafter in this Chapter referred to as "the application for international trademark registration") is identical with a trademark prior to the trademark registration (excluding trademarks based on international registration; hereinafter in this Section referred to as "the registered trademark based on national registration"), and the designated goods or designated services relating to the registered trademark based on international registration are the same as the designated goods or designated services relating to the registered trademark based on the national registration, and also where the trademark holder of the registered trademark based on the international registration and the trademark holder of registered trademark based on the national registration are identical, the application for international trademark registration shall be deemed to have been made to the extent that such scope has overlapped on the date of the application for trademark registration relating to the registered trademark based on the national registration.
(2) Section 68duotricies(3) and (4) shall apply mutatis mutandis to the application for international trademark registration in the preceding subsection.
68undecies. For the purpose of Section 9(2) for the application international trademark registration, "simultaneously with the trademark application" in Section 9(2) shall read "within 30 days from the date of filing of the application for international trademark registration".
68duodecies. Section 10 shall not apply to applications for international trademark registration.
68terdecies. Sections 11 and 65 shall not apply to applications for international trademark registration.
Relating to Publication of Applications
68quater decies. For the purpose of Section 12bis(2) for to applications for international trademark registration, "the number and date of application for trademark registration" in Section 12bis(2) (ii) shall read "the number of the international registration and the date of the international registration (in the case of international trademark registration relating to late designation, the date of later designation)".
68quindecies.-(1) Section 43(1) to (4) of the Patent Law, as applied under Section 13(1) of this Law shall not apply to the applications for international trademark registration.
(2) For the purpose of Section 43(1) of the Patent Law, as applied under Section 43bis(3) of the said Law as applied under Section 13(1) of this Law for applications for international trademark registration, "simultaneously with the patent application" in the said Section 43(1) shall read "within 30 days from the date of filing of the application for international trademark registration".
68sedecies.-(1) For the purpose of Section 34(4) of the Patent Law, as applied under Section 13(2) of this Law for applications for international trademark registration, "the Commissioner of the Patent Office except in the case of inheritance or other general succession" in Section 34(4) of the Patent Law shall read "the International Bureau".
(2) Section 34(5) to (7) of the Patent Law as applied under Section 13(2) of this Law shall not apply to the applications for international trademark registration.
68septies decies. Where all or some goods or services listed in the international registration has been divided and assigned resulting from change in the ownership of an international trademark registration, the application for international trademark registration shall be considered to have become applications for trademark registration with respect to each of holder after the change.
68duodevicies.-(1) Section 17(3) of the Design Law as applied under Section 17bis(1) or Section 55bis(3) (including its application under Section 60bis(2)) of this Law shall not apply to the applications for international trademark registration.
(2) Section 17(4) of the Design Law, as applied under Section 17bis(2) of this Law shall not apply to the applications for international trademark registration.
68undevicies.-(1) For the purpose of Section 18(2) for applications for international trademark registration, "when the registration fee under Section 40(1) or the registration fee due to be paid within 30 days from the date of the transmittal of the examiner's decision or the trial decision that the trademark is to be registered under Section 41bis(1) has been paid" in Section 18(2) shall read "when the examiner's decision or the trial decision that the trademark is to be registered has been rendered".
(2) For the purpose of Section 18(3) for applications for international trademark registration, "the number and date of the application for trademark registration" in Section 18(3)(ii) shall read "the number of the international registration and the date of the international registration (the date of later designation in the case of the application for international trademark registration with respect to the later designation," and "the registration number and date of the registration of the establishment" in Section 18(3)(v) shall read "the number of the international registration and the date of the registration of the establishment".
68vicies.-(1) Where all or some of the international registration on which it is based has been extinguished, application for international trademark registration shall be deemed to have been withdrawn to the extent all or some of the designated goods or designated services has been extinguished.
(2) Where all or some of the international registration on which it is based has been extinguished, the trademark right which has been granted the registration of the establishment under Section 18(2) as applied under Section 68undevicies(1) (hereinafter referred to as "the trademark right based on the international registration") shall be deemed to have been extinguished to the extent that all or some of the designated goods or designated services has been extinguished.
(3) The effects under the preceding two subsections shall come into force from the date on which the international registration in the International Register has been extinguished.
68unvicies.-(1) The term of a trademark right based on the international registration shall be ten years from the date (the date of its latest renewal, if the term of international registration has been renewed prior to the registration of the establishment of the trademark right) of the international registration.
(2) The term of the trademark right based on the international registration may be renewed on the renewal of the term of the international registration.
(3) When the term of the international registration has been renewed, the term of the trademark right based on international registration shall be deemed to have been renewed upon expiration of the term.
(4) When the term of the international registration has not been renewed, the trademark right based on international registration shall be deemed to have been extinguished retroactively from the time of the expiration of the term.
68duovicies.-(1) Sections 19 to 22 and 23(1) and (2) shall not apply to the trademark rights based on the international registration.
(2) For the purpose of Section 23(3) for the trademark rights based on the international registration, "registration in the preceding two subsections" in Section 23(3) shall read "the renewal of the term of international registration," and "the number of registration and the date of the registration of renewal" in Section 23(3)(ii) shall read "the number of international registration and the date of renewal of the term of international registration".
68tervicies. Section 24 shall not apply to the trademark rights based on the international registration.
68quater vicies.-(1) The collective trademark right trademark rights based on the international registration may not be transferred, except in the case where the documents prescribed in Section 7(3) are submitted.
(2) Section 24(3) shall not apply to the trademark rights based on international registration.
68quinvicies.-(1) The owner of the trademark rights based on the international registration may surrender his trademark rights.
(2) Section 97(1) of the Patent Law as applied under Section 35 of this Law shall not apply to the trademark rights based on the international registration.
68sevicies.-(1) The transfer, extinguishment by surrender or restriction on disposal of the trademark rights based on the international registration shall be of no effect unless it is registered.
(2) Section 98(1)(i) and (2) of the Patent Law as applied under Section 35 of this Law shall not apply to the trademark rights based on the international registration.
68septies vicies.-(1) For the purpose of Section 71(1)(i) for the trademark rights based on the international registration, "the establishment, renewal of term, division, transfer, change, extinguishment, restoration or restriction on the disposal of trademark rights" in Section 71(1)(i) shall read "the establishment or the restriction on disposal of trademark rights".
(2) With respect to the renewal, transfer, change or extinguishment of the trademark rights based on the international registration, the entry in the International Register shall prevail.
68duodetricies.-(1) For the purpose of applications for the international trademark registration, amendments for the designated goods or designated services stated in the request or for the trademark for which trademark registration is sought, can be made, only within a designated time limit, in accordance with Section 15bis [including its application under Section 55bis(1) (including its application under Section 60bis(2))] or of Section 15ter[including its application under Section 55bis(1) (including its application under Section 60bis(2))].
(2) Section 68quadragies shall not apply to the applications for the international trademark registration.
with Two or More Designated Goods or Designated Services
68undetricies. For the purpose of Section 69 for the trademark rights based on the international registration, "Sections 97(1) or 98(1)(i) of the Patent Law as applied under Sections 20(4), 33(1) and 35 of this Law" in Section 69 shall read "Sections 33(1), 68quinvicies(1) or 68sevicies(1)" and "Section 71(1)(i)" in Section 69 shall read "Sections 71(1)(i), 68septies vicies(2) as applied under Section 68septies vicies(1)".
68tricies.-(1) Any person desiring the registration of the establishment of trademark rights based on the international registration shall pay, in advance of the international registration, to the International Bureau an individual fee, as prescribed in Article 8(7)(a) of the Protocol (hereinafter referred to as "the individual fee"), in the sum amounting to ¥4,800 per case plus 81,000 yen for each class of the classification of goods and services.
(2) Any person desiring to renew the term of the trademark rights based on the international registration shall pay to the International Bureau the individual fee in the sum amounting to ¥151,000 per case multiplied by the number of the classification.
(3) Sections 40 to 43 and 76(2) (limited to the proportion specified in the Attached Table 1) shall not apply to the applications for the international trademark registration and to the trademark rights based on the international registration.
68untricies. In addiction to the matters provided for in Sections 68novies to 68tricies, necessary details for implementing the Protocol and the Regulations thereunder shall be provided for in an ordinance of the Ministry of Economy, Trade and Industry.
Subsequent to Cancellation of International Registration
68duotricies.-(1) Where the international registration is cancelled under Article 6(4) of the Protocol in respect of all or some of the goods and services listed in the said registration, the person who was the holder of international registration, may file an application for the registration of the same mark which was registered in the International Register with respect to Japan in respect of all or some of the said goods or services.
(2) The application for the trademark registration under the preceding subsection shall be deemed to have been filed on the date of international registration as referred to in the said subsection (in the case of the international registration as referred to in the said subsection in respect of subsequent designation, the date of said subsequent designation) provided that the said application falls under any one of the following paragraphs:
(i) such application in the preceding subsection is filed within three months from the date on which the international registration as referred to in the preceding subsection was cancelled;
(ii) the trademark of which registration is sought is identical with the trademark in respect of such international registration in the preceding subsection;
(iii) the designated goods or the designated services in respect of such application are in fact covered by the list of goods and services contained in such international registration in the preceding subsection.
(3) Where the international registration as referred to in Subsection (1) enjoyed the right of priority provided for by Article 4 of the Paris Convention, that application under Subsection (1) shall enjoy the same right of priority.
(4) The preceding subsection shall also apply, where the priority was enjoyed under Section 43bis(2) of the Patent Law as applied under Section 9ter or 13(1) of this Law for the application for international trademark registration in respect of the international registration as referred to in Subsection (1).
(5) For the purpose of Section 10(1) with respect to the application for trademark registration under Subsection (1), "a part of his application for trademark registration" in Section 10(1) shall read "a part of his application for trademark registration (limited to the goods and services covered by the list of goods and services contained in the international registration as referred to in Section 68duotricies(1))".
Subsequent to Denunciation of Protocol
68tertricies.-(1) Where the holder of the international registration having effect in Japan at the date on which the denounciation under Article 15(5)(b) of the Protocol becomes effective, who, because of the denounciation, is no longer entitled to file the international application under Article 2(1) of the Protocol, may file an application for trademark registration for the goods or services listed in the said international registration.
(2) Section 68duotricies(2) to (5) shall apply mutatis mutandis to the application for trademark registration under the preceding subsection. In such a case, "within three months from the date on which the international registration in the preceding subsection was cancelled" in Section 68duotricies(2)(i) shall read "within two years from the date on which the denounciation under Article 15(3) of the Protocol took effect".
68quater tricies.-(1) For the purpose of Section 15 for the application for trademark registration under Section 68duotricies(1), "where it falls under any of the following paragraphs" in Section 15 shall read "where it falls under any of the following paragraphs, or where the application for trademark registration under Section 68duotricies(1) or 68tertricies(1) dose not comply with the requirements of Section 68duotricies(1) or 68tertricies(2) (including its application as applied under Section 68tertricies(2))".
(2) Section 15 (limited to the proportion for Paragraphs (i) and (ii)) shall not apply to the application for trademark registration under Section 68duotricies(1) or 68tertricies(1) relating to the trademark right based on the international registration (referred to as "re-filing of trademark right relating to former international registration" in Sections 68septies tricies and 68undequadragies).
68quintricies. Notwithstanding Section 18(2), the establishment of trademark right shall be registered for the application for trademark registration under Section 68duotricies(1) or 68tertricies(1), where the examiner's decision or trial decision has been made to the effect that the trademark is to be registered within ten years from the date of international registration relating to the said application (the date of its latest renewal, where the renewal of the term of said international registration has been made).
68setricies.-(1) The term of trademark right as referred to in Section 68quintricies shall be ten years from the date of international registration relating to the said application (the date of its latest renewal, where the renewal of said international registration has been made).
(2) Section 19(1) shall not apply to the term of trademark right referred to in Section 68setricies.
68septies tricies. For the purpose of Section 43bis for the trademark registration made in consequence of the re-filling of the application for trademark right from the former international registration, "trademark registration" in Section 43bis shall read "trademark registration (excluding the trademark registration made in consequence of the re-filling of the application for trademark right from the former international registration for which the term prescribed under this Section has expired without having any opposition raised to the trademark registration relying on the former international registration)".
68duodequadragies. For the purpose of the trial in Section 46(1) for the trademark registration relating to the application for trademark registration under Section 68duotricies(1) or 68tertricies(1), "In the following cases" in Section 46(1) shall read "In the following cases, or in the case where the trademark registration has been effected contrary to Section 68duotricies(1), 68tertricies(1) or each paragraph of Section 68duotricies(2) (including its application under Section 68tertricies(2))".
68undequadragies. For the purpose of Section 47 for the trademark registration for the re-filing of the application for the registration of trademark right based on any former international registration, "may not be demanded". In Section 47 shall read "may not be demanded. The same shall apply prior to the expiration of five years from the date of registration of the establishment of the trademark right, with respect to the trademark registration relating to re-filing of the application for trademark right relating to former international registration, when it has become impossible to make a demand for trial under Section 46(1) with respect to the trademark registration from the former international registration".
MISCELLANEOUS PROVISIONS
68quadragies.-(1) With respect to a procedure relating to a trademark application, a defensive mark application, a demand or other procedure relating to trademark or defensive mark registration, the person carrying on such procedure may make an amendment only during the pendency of the case in examination, opposition to registration, trial or retrial.
(2) Notwithstanding the preceding subsection, the person who has applied for a trademark registration may, simultaneously with the payment of the registration fee under Section 40(1) or 41bis(1), amend to reduce the number of classes of the classification of goods and services in his application.
with Two or More Designated Goods or Designated Services
69. For the purpose of the provisions of Section 13bis(4) (including its application under Section 68(1)), 20(4) and 33(1) of this Law, Section 97(1) or 98(1)(i) of the Patent Law as applied under Section 35 of this Law, Sections 43ter(3), 46(2), 46bis, 54 of this Law, Section 132(1) of the Patent Law as respectively applied under Section 56(1) of this Law or under Section 174(3) of the Patent Law as applied under Section 61 of this Law, Section 59, 60 or 71(1)(i) or 75(2)(iv) of this Law, relating to trademark registration or the trademark right, where there are two or more items of designated goods or designated services, the trademark registration shall be deemed to have been effected, or a trademark right shall be deemed to exist, for each of such designated goods or designated services.
70.-(1) The references to "registered trademark" in Section 25, 29, 30(2), 31(2), 31bis(1), 34(1), 38(3), 50, 52bis(1), 59(i), 64, 73 or 74 shall include trademarks which are similar to the registered trademark and would be considered identical if they had the same coloring.
(2) The references to "registered defensive mark" in Sections 4(1)(xii) and 67 shall include marks which are similar to the registered defensive mark and would be considered identical if they had the same coloring.
(3) The references to "trademark similar to the registered trademark" in Sections 37(i) and 51(1) shall not include trademarks which are similar to the registered trademark and would be considered identical if they had the same coloring.
71.-(1) The following matters shall be registered in the Trademark Register kept in the Patent Office:
(i) the establishment, renewal of term, division, transfer, modification, extinguishment, restoration or restriction on disposal of a trademark right;
(ii) the establishment, renewal of term, transfer or extinguishment of a right based on a defensive mark registration;
(iii) the establishment, maintenance, transfer, modification, extinguishment or restriction on disposal of a right of exclusive or non-exclusive use;
(iv) the establishment, transfer, modification, extinguishment or restriction on disposal of rights in a pledge upon a trademark right or a right of exclusive or non-exclusive use.
(2) The Trademark Register, either in whole or in part, may be prepared by means of magnetic tapes (including other materials on which matters can be accurately recorded by an equivalent method-hereinafter referred to as "magnetic tapes").
(3) Other matters relating to registration that are not provided for in this Law shall be prescribed by Cabinet Order.
71bis.-(1) When the establishment of a trademark right has been registered or the establishment of a right based on a defensive mark has been registered, the Commissioner of the Patent Office shall issue to the owner of the right a certificate of trademark registration or a certificate of defensive mark registration.
(2) The re-issuance of a certificate of trademark registration or a certificate of defensive mark registration shall be prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
72.-(1) Anyone may request the Commissioner of the Patent Office to issue a certificate, a copy or an extract of documents, to allow the inspection or copying of documents or to issue documents whose contents are recorded in the part of the Trademark Register prepared by magnetic tapes, where such documents relate to trademark or defensive mark registrations. However, this provision shall not apply in the case of the following documents, which the Commissioner of the Patent Office considers it necessary to keep secret:
(i) documents concerning a trial as prescribed in Section 46(1) (including its application mutatis mutandis under Section 68(4)), Section 50(1), 51(1), 52bis(1), 53(1) or Section 53bis (including its application mutatis mutandis under Section 68(4)) or a retrial of the final and conclusive trial decision, with respect to which parties or intervenors concerned have given a notice that there has been described a trade secret (meaning trade secret as referred to in Section 2(4) of the Unfair Competition Prevention Law (Law No. 47 of 1993)) owned by the parties or intervenors concerned;
(ii) matters liable to injure the reputation or peaceful existence of an individual;
(iii) matters liable to contravene public order or morality.
(2) Where a demand made with respect for documents as prescribed in the paragraphs of the preceding subsection is allowed, the Commissioner of the Patent Office shall notify a person, who has submitted such documents, to that effect with a reason therefor.
(3) The Law Concerning Access to Information held by Administrative Organs (Law No. 42 of 1999) shall not apply for those parts of documents and of the Trademark Register relating to trademark or defensive mark registrations, which have been prepared by magnetic tapes.
73. The owner of a trademark right or of a right of exclusive or non-exclusive use shall, when applying a registered trademark to the designated goods or their packaging, or to articles for use in the provision of the designated services, or in the provision of the designated services, to articles related to the provision of relevant designated services belonging to persons to whom the services are provided, take steps to attach to the trademark an indication to the effect that the trademark is a registered trademark (hereinafter referred to as "indication of trademark registration") as prescribed in an ordinance of the Ministry of Economy, Trade and Industry.
74. No person may commit any of the following acts:
(i) acts of attaching to such trademark an indication of a trademark registration or an indication confusingly similar thereto when using a trademark which is not a registered trademark;
(ii) acts of attaching to such trademark an indication of a trademark registration or an indication confusingly similar thereto when using a registered trademark in relation to goods or services other than the designated goods or designated services;
(iii) acts of holding, for the purpose of assignment or delivery, goods to which or to the packaging of which a trademark other than a registered trademark has been attached, which are other than the designated goods to which or to the packaging of which a trademark registered in relation to goods has been attached, or to which or to the packaging of which a trademark registered in respect to services has been attached, and in respect of which an indication of a trademark registration, or an indication confusingly similar thereto, has been attached to such trademark;
(iv) acts of holding, in the provision of services, articles which are for use by persons to whom the services are provided and to which a trademark other than a registered trademark has been applied, which, in the provision of services other than the designated services, are for use by persons to whom the services are provided and to which a trademark registered in respect to services has been applied, or which, in the course or providing services are to be supplied for use by persons to whom the services are provided and to which a trademark registered in respect to goods has been applied, and in respect of which an indication of a trademark registration, or an indication confusingly similar thereto, has been attached to such trademark (such articles being referred to in the next paragraph as "articles with a false indication of trademark registration in respect to services");
(v) acts of assigning or delivering, or of holding or importing for the purpose of assignment or delivery, articles with a false indication of trademark registration in respect to services, for the purpose of causing such articles to be used in the provision of such services.
75.-(1) The Patent Office shall publish the Trademark Gazette.
(2) In addition to the particulars provided for in this Law, the Trademark Gazette shall contain:
(i) a decision that a trademark application is to be refused, or a surrender, withdrawal or declining of an application for trademark registration or for defensive mark registration, which is made after the applications having been laid open;
(ii) succession to rights resulting from an application for trademark registration, which is gained after the application having been laid open;
(iii) amendments for designated goods or designated services stated in an application or for trademarks for which trademark registrations are sought or marks for which defensive mark registrations are sought, which are made after the applications having been laid open;
(iv) extinguishment of a trademark right (excluding extinguishment due to the expiration of a term or falling under Section 41bis(4));
(v) an opposition to a trademark registration or a demand for a trial or a retrial or their withdrawal;
(vi) final and conclusive ruling on an opposition to a trademark registration and final and conclusive decision of a trial or a retrial;
(vii) a final judgment in an action under Section 63(1).
76.-(1) The person specified hereunder shall pay the fee the amount of which shall be prescribed by Cabinet Order with the actual costs taken into consideration:
(i) person making notification of succession in accordance with Section 34(4) of the Patent Law as applied under Section 13(2) of this Law;
(ii) person requesting an extension of a time limit under Section 17quater of the Design Law as applied under Section 17bis(2) (including its application under Section 68(2) of this Law), Section 4 or 5(1) of the Patent Law as applied under Section 41(2) (including its application under Section 41bis(6) of this Law), Section 43quater(3) (including its application under Section 68(4) of this Law), Section 65octies(3) or Section 77(1) of this Law, or change of date in accordance with Section 5(2) of the Patent Law as applied under Section 77(1) of this Law;
(iii) person filing an international application to the Commissioner of the Patent Office in accordance with Section 68bis;
(iv) person presenting a request for later designation to the Commissioner of the Patent Office in accordance with Section 68quater;
(v) person presenting a request for the renewal of the international registration to the Commissioner of the Patent office in accordance with Section 68quinquies;
(vi) person presenting a request for the recordal of change in the ownership of the international registration to the Commissioner of the Patent Office in accordance with Section 68sexies;
(vii) person requesting re-issuance of a certificate of trademark registration or defensive mark registration;
(viii) person requesting issuance of certificate in accordance with Section 72(1);
(ix) person requesting issuance of copy or extract of documents in accordance with Section 72(1);
(x) person requesting inspection or copying of documents in accordance with Section 72(1);
(xi) person requesting issuance of documents containing matters recorded in that part of the Trademark Register as prepared on magnetic tape, in accordance with Section 72(1).
(2) The persons specified in the left-hand column of the attached table shall pay the fee the amount of which shall be prescribed by Cabinet Order within the limit of the amounts specified in the right-hand column of the table.
(3) The preceding two subsections shall not apply where the person specified in the left-hand column of the table is the State and the like.
(4) The provisions of Subsections (1) and (2) shall not apply where the person to pay the fee in accordance with these provisions is the State entitled to own jointly a trademark right, a right arising from a trademark application or a right based on the registration of a defensive mark and the independent administrative institutions prescribed by Cabinet Order in Section 40(3), or the independent administrative institutions entitled to own jointly such rights prescribed by Cabinet Order in the same subsection.
(5) Where the State and the like and the person other than the State and the like own jointly a trademark right, a right arising from a trademark application or a right based on the registration of a defensive mark, and there is an agreement with respect to their shares of the right, the registration fee under Subsection (1) or (2) (limited to the registration fee prescribed by Cabinet Order) shall be a sum with prescribed registration fee under these subsections multiplied by the ratios of the shares of the persons other than the State and the like, and the persons other than the State and the like shall pay such sum, notwithstanding the provisions of those subsections.
(6) Where the amount of the registration fee calculated in accordance with the provision of the preceding subsection has a fractional figure less than 10 yen, that fractional figure shall be discarded.
(7) The payment of the fee under Subsection (1) or (2) shall be made by patent revenue stamps as prescribed by an ordinance of the Ministry of Economy, Trade and Industry. However, wherever so prescribed by an ordinance of the Ministry of Economy, Trade and Industry, such payment may be made in cash.
(8) A fee paid by mistake or in excess shall be refunded upon the request of the person making the payment.
(9) No request for a refund of a fee under the preceding subsection may be made after one year from the date of payment.
77.-(1) Sections 3 to 5 (time limits and dates) of the Patent Law shall apply mutatis mutandis to the time limits and dates prescribed in this Law. In such a case, "Section 121(1)" in Section 4 of the Patent Law shall read "Section 44(1) or 45(1) of the Trademark Law".
(2) Sections 6 to 9, 11 to 16, 17(3) and (4), 18 to 24 as well as Section 194 (proceedings) of the Patent Law shall apply mutatis mutandis to trademark and defensive mark applications, demands and any other proceedings relating to trademark or defensive mark registrations. In such a case, "Section 121(1)" in Section 9 of the Patent Law shall read "Section 44(1) or 45(1) of the Trademark Law", and "Section 121(1)" in Section 14 of the Patent Law shall read "44(1) or 45(1) of the Trademark Law"; "(ii) when the formal requirements specified in this Law or in an order or ordinance thereunder have not been complied with"; in Section 17(3) of the Patent Law shall read "(ii) when the formal requirements specified in this Law or in an order or ordinance thereunder have not been complied with; (ii)bis a registration fee under Section 40(2) of the Trademark Law or a registration fee due to be paid simultaneously with a request for registration of renewal (including a surcharge liable to be paid under Section 43(1) or (2) of the Trademark Law) under Section 41bis(2) is not paid"; and "... which cannot be amended"; in Section 18bis(1) of the Patent Law shall read "which cannot be amended (except where it falls under any of paragraphs of Section 5bis(1) of the Trademark Law (including its application under Section 68(1) of the same law)".
(3) Section 25 (enjoyment of rights by aliens) of the Patent Law shall apply mutatis mutandis to trademark rights and other rights relating to trademark registrations.
(4) Section 26 (effect of treaties) of the Patent Law shall apply mutatis mutandis to trademark and defensive mark registrations.
(5) Sections 189 to 192 (transmittal) of the Patent Law shall apply mutatis mutandis to transmittal under this Law.
(6) Section 195ter of the Patent Law shall apply mutatis mutandis to measures under this Law or an order or ordinance thereunder this Law.
(7) Section 195quater (restriction on appeals under the Administrative Appeal Law) of the Patent Law shall apply mutatis mutandis to examiners' decisions and rulings to decline an amendment, a ruling to revoke, trial decisions and rulings to dismiss a written opposition to the trademark registration or a demand for trial or retrial under this Law as well as to measures from which no appeal lies in accordance with this Law.
77bis. When Cabinet Order is made or repealed pursuant to the provisions of this Law, any requisite transitory measures (including transitory measures relating to penal provisions) may, to the extent deemed necessary and reasonable, be made by means of such Cabinet Order.
PENAL PROVISIONS
78. Any person who has infringed a trademark right or a right of exclusive use shall be liable to imprisonment with labor not exceeding five years or to a fine not exceeding 5,000,000 yen.
79. Any person who has obtained a trademark or defensive mark registration or a registration of renewal of the term of a trademark right or right based on a defensive mark registration, a ruling on an opposition to a trademark registration or a trial decision, by means of a fraudulent act shall be liable to imprisonment with labor not exceeding three years or to a fine not exceeding 3,000,000 yen.
80. Any person infringing Section 74 shall be liable to imprisonment with labor not exceeding three years or to a fine not exceeding 3,000,000 yen.
81.-(1) A witness, expert witness or interpreter who, having taken an oath under this Law, has made a false statement or has given a false expert opinion or has interpreted falsely before the Patent Office or a court commissioned thereby shall be liable to imprisonment with labor for a term of not less than three months nor more than ten years.
(2) Where a person committing the offense in the preceding subsection has made a voluntary confession before transmittal of the copying of judgement on the case or before a ruling or a decision on an opposition to the trademark registration has become final and conclusive, his sentence may be reduced or suppressed.
82. Where an officer representing a legal entity or a representative, employee or any other servant of a legal entity or of a natural person has committed an act in violation of the following paragraphs with regard to the business of the legal entity or natural person, the legal entity shall, in addition to the offender, be liable to the fine prescribed in the following paragraphs and the natural person shall be liable to the fine prescribed in those sections:
(i) Section 78, subject to a fine up to 150 million yen;
(ii) Section 79 or 80, subject to a fine up to 100 million yen.
83. Where a person, who has taken an oath under Section 207(1) of the Code of Civil Procedure as applied under Section 151 of the Patent Law as respectively applied either under Section 71(3) of the Patent Law as applied under Section 28(3) (including its application under Section 68(3)) of this Law, under Section 43octies (including its application under Sections 60bis(1) and 68(4)) or 56(1) (including its application under Section 68(4)) of this Law, under Section 174(3) of the Patent Law as applied under Section 61 (including its application under Section 68(5)) of this Law, under Section 58(2) of the Design Law as applied under Section 62(1) (including its application under Section 68(5)) of this Law, or under Section 58(3) of the Design Law as applied under Section 62(2)(including its application under Section 68(5)) of this Law, has made a false statement before the Patent Office or a court commissioned thereby, he shall be liable to an administrative penalty not exceeding 100,000 yen.
84. Where a person who has been summoned by the Patent Office or a court commissioned thereby in accordance with this Law has failed to appear or has refused to take an oath, to make a statement, to testify, to give an expert opinion or to interpret, without a legitimate reason, he shall be liable to an administrative penalty not exceeding 100,000 yen.
85. Where a person who has been ordered by the Patent Office or a court commissioned thereby to produce or show documents or other evidence in accordance with the provisions of this Law relating to the examination or preservation of evidence has failed to comply with the order, without a legitimate reason, he shall be liable to an administrative penalty not exceeding 100,000 yen.
Attached Table (Related to Section 76)
Person liable to pay |
Amounts |
1. Person filing application for trademark registration |
¥6,000 per case plus ¥15,000 for each of the classification |
2. Person filing application for defensive mark registration, or renewal of term of right based on defensive mark registration |
¥12,000 per case plus ¥30,000 for each of the classification |
3. Person demanding the division of a trademark right |
¥30,000 per case |
4. Person requesting interpretation in accordance with Section 28(1) (including its application under Section 68(3))) |
¥40,000 per case |
5. Person filing opposition to trademark registration |
¥3,000 per case plus ¥8,000, for each of the classification |
6. Person demanding intervention in a trial examination of the opposition to trademark registration |
¥11,000 per case |
7. Person demanding trial or retrial |
¥15,000 per case plus ¥40,000 for each of the classification |
8. Person demanding intervention in trial or retrial |
¥55,000 per case |
* Entry into force: January 6, 2001 (Section 72(3) shall enter into force as of April 1, 2001.)
1
特許法等の一部を改正する法律の概要
令和元年５月
経済産業省
デジタル革命により業種の垣根が崩れ、オープンイノベーションが進む中、 中小・ベンチャー企業等が優れた技術を活かして飛躍するチャンスが
拡大するとともに、優良な顧客体験が競争力の源泉となってきている。
このような変化を踏まえて、特許等の権利によって、紛争が起きても、 大切な技術等を十分に守れるよう、産業財産権に関する訴訟制度を改善する
とともに、デジタル技術を活用したデザインの保護や、ブランド構築等のため、
意匠制度等を強化する。
（１）特許法の一部改正
① 中立な技術専門家が現地調査を行う制度（査証）の創設
特許権の侵害の可能性がある場合、中立な技術専門家が、
被疑侵害者の工場等に立ち入り、特許権の侵害立証に必要な調査を行い、
裁判所に報告書を提出する制度を創設する。
② 損害賠償額算定方法の見直し
（ⅰ）侵害者が得た利益のうち、
特許権者の生産能力等を超えるとして賠償が否定されていた部分について、
侵害者にライセンスしたとみなして、損害賠償を請求できることとする。
（ⅱ）ライセンス料相当額による損害賠償額の算定に当たり、
特許権侵害があったことを前提として交渉した場合に決まるであろう額
を考慮できる旨を明記する。
※②については実用新案法、意匠法及び商標法において同旨の改正を実施。
１．法律改正の趣旨
２．法律改正の概要
2
（２）意匠法の一部改正
① 保護対象の拡充
物品に記録・表示されていない画像や、建築物の外観・内装のデザインを、
新たに意匠法の保護対象とする。
② 関連意匠制度 ※の見直し
※自己の出願した意匠又は自己の登録意匠(本意匠)に類似する意匠の登録を認める制度
一貫したコンセプトに基づき開発されたデザインを保護可能とするため、
（ⅰ）関連意匠の出願可能期間を、本意匠の登録の公表日まで（8か月程度）
から、本意匠の出願日から 10 年以内までに延長する。
（ⅱ）関連意匠にのみ類似する意匠の登録を認める。
③ 意匠権の存続期間の変更
「登録日から 20 年」から「出願日から 25 年」に変更する。
④ 意匠登録出願手続の簡素化
（ⅰ）複数の意匠の一括出願を認める。
（ⅱ）物品の名称を柔軟に記載できることとするため、物品の区分を廃止する。
⑤ 間接侵害 ※規定の拡充
※侵害を誘発する蓋然性が極めて高い予備的・幇助的行為を侵害とみなす制度
「その物品等がその意匠の実施に用いられることを知っていること」等の
主観的要素を規定することにより、取り締まりを回避する目的で侵害品を
構成部品に分割して製造・輸入等する行為を取り締まれるようにする。
（３）その他
公益団体等（自治体、大学等）が自身を表示する著名な商標権のライセンスを
認める等の措置を講ずる。
一部の規定を除き、公布の日から起算して 1 年を超えない範囲内において
政令で定める日
３．施行期日
政 令 第 二 百 二 十 七 号
特 許 法 等 の 一 部 を 改 正 す る 法 律 の 一 部 の 施 行 期 日 を 定 め る 政 令
内 閣 は 、 特 許 法 等 の 一 部 を 改 正 す る 法 律 （ 令 和 元 年 法 律 第 三 号 ） 附 則 第 一 条 第 三 号 及 び 第 四 号 の 規 定 に 基
づ き 、 こ の 政 令 を 制 定 す る 。
特 許 法 等 の 一 部 を 改 正 す る 法 律 附 則 第 一 条 第 三 号 に 掲 げ る 規 定 の 施 行 期 日 は 令 和 二 年 十 月 一 日 と し 、 同 条
第 四 号 に 掲 げ る 規 定 の 施 行 期 日 は 令 和 三 年 四 月 一 日 と す る 。
理
由
特 許 法 等 の 一 部 を 改 正 す る 法 律 の 一 部 の 施 行 期 日 を 定 め る 必 要 が あ る か ら で あ る 。
特 許 法 等 の 一 部 を 改 正 す る 法 律 の 一 部 の 施 行 期 日 を 定 め る 政 令
参 照 条 文
（ 参 照 条 文 一 覧 ）
‥
‥
‥
‥
‥
‥
‥
‥
‥
‥
‥
‥
‥
‥
‥
○ 特 許 法 等 の 一 部 を 改 正 す る 法 律 （ 令 和 元 年 五 月 十 七 日 法 律 第 三 号 ） （ 抄 ）
1
- 1 -
○ 特 許 法 等 の 一 部 を 改 正 す る 法 律 （ 令 和 元 年 五 月 十 七 日 法 律 第 三 号 ） （ 抄 ）
（ 施 行 期 日 ）
第 一 条
こ の 法 律 は 、 公 布 の 日 か ら 起 算 し て 一 年 を 超 え な い 範 囲 内 に お い て 政 令 で 定 め る 日 か ら 施 行 す る 。 た だ し 、 次 の 各 号 に 掲 げ る 規 定 は 、 当
該 各 号 に 定 め る 日 か ら 施 行 す る 。
一
附 則 第 四 条 の 規 定
公 布 の 日
二
第 四 条 中 商 標 法 第 三 十 一 条 第 一 項 た だ し 書 の 改 正 規 定
公 布 の 日 か ら 起 算 し て 十 日 を 経 過 し た 日
三
第 一 条 中 特 許 法 第 六 十 五 条 第 六 項 の 改 正 規 定 、 同 法 第 百 五 条 第 四 項 の 改 正 規 定 、 同 法 第 百 五 条 の 二 を 同 法 第 百 五 条 の 二 の 十 一 と し 、 同 法 第
百 五 条 の 次 に 十 条 を 加 え る 改 正 規 定 、 同 法 第 百 五 条 の 四 第 一 項 第 一 号 の 改 正 規 定 、 同 法 第 百 六 十 九 条 第 六 項 の 改 正 規 定 、 同 法 第 二 百 条 の 見 出
し を 削 り 、 同 条 の 前 に 見 出 し を 付 す る 改 正 規 定 及 び 同 法 第 二 百 条 の 二 を 同 法 第 二 百 条 の 三 と し 、 同 法 第 二 百 条 の 次 に 一 条 を 加 え る 改 正 規 定 、
第 二 条 中 実 用 新 案 法 第 三 十 条 の 改 正 規 定 、 第 三 条 中 意 匠 法 第 四 十 一 条 の 改 正 規 定 及 び 同 法 第 六 十 条 の 十 二 第 二 項 の 改 正 規 定 並 び に 第 四 条 中 商
標 法 第 十 三 条 の 二 第 五 項 の 改 正 規 定 及 び 同 法 第 三 十 九 条 の 改 正 規 定 並 び に 附 則 第 五 条 の 規 定
公 布 の 日 か ら 起 算 し て 一 年 六 月 を 超 え な い 範 囲
内 に お い て 政 令 で 定 め る 日
四
第 三 条 中 意 匠 法 第 七 条 の 改 正 規 定 、 同 法 第 十 条 第 一 項 の 改 正 規 定 （ 「 第 四 十 三 条 第 一 項 」 の 下 に 「 、 第 四 十 三 条 の 二 第 一 項 」 を 加 え る 部 分
に 限 る 。 ） 、 同 法 第 十 条 の 二 第 二 項 た だ し 書 及 び 第 三 項 の 改 正 規 定 、 同 法 第 十 五 条 第 一 項 の 改 正 規 定 、 同 法 第 六 十 条 の 十 の 改 正 規 定 、 同 法 第
六 十 八 条 第 一 項 の 改 正 規 定 並 び に 同 法 別 表 の 改 正 規 定 並 び に 次 条 第 二 項 か ら 第 五 項 ま で の 規 定
公 布 の 日 か ら 起 算 し て 二 年 を 超 え な い 範 囲 内
に お い て 政 令 で 定 め る 日