TRADEMARK ACT (ABRIDGMENT) (April 13, 1959)
(Law No.127)
TABLE OF CONTENTS
CHAPTER I GENERAL PROVISIONS (ARTICLE 1 AND ARTICLE 2)
CHAPTER II TRADEMARK REGISTRATION AND APPLICATION FOR REGISTRATION OF TRADEMARK (ARTICLE 3 THROUGH ARTICLE 13-2)
CHAPTER III EXAMINATION (ARTICLE 14 THROUGH ARTICLE 17-2)
CHAPTER IV TRADEMARK RIGHT
Part 1 Trademark Right (Article 18 through Article 35)
Part 2 Infringement of Right (Article 36 through Article 39)
Part 3 Registration Fees (Article 40 through Article 43)
CHAPTER IV-2 OPPOSITION TO REGISTRATION (ARTICLE 43-2 THROUGH ARTICLE 43-14)
CHAPTER V HEARINGS (ARTICLE 44 THROUGH ARTICLE 56-2)
CHAPTER VI REHEARING AND LITIGATION (ARTICLE 57 THROUGH ARTICLE 63-2)
CHAPTER VII DEFENSIVE MARK (ARTICLE 64 THROUGH ARTICLE 68)
CHAPTER VII-2 SPECIAL PROVISIONS UNDER THE PROTOCOL RELATING TO THE MADRID AGREEMENT
Part 1 Application for International Registration (Article 68-2 through Article 68-8)
Part 2 Special Provisions Concerning International Applications for Trademark Registration (Article 68-9 through Article 68-31)
Part 3 Special Provisions Concerning International Applications for Trademark Registration, etc. (Article 68-32 through Article 68-39)
CHAPTER VIII MISCELLANEOUS PROVISIONS (Article 68-40 through Article 77-2)
CHAPTER IX PENAL PROVISIONS (ARTICLE 78 THROUGH ARTICLE 85)
SUPPLEMENTARY PROVISIONS
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CHAPTER I GENERAL PROVISIONS
Art. 1. Purpose The purpose of this Act is, through the protection of trademarks, to ensure the maintenance of
business confidence of persons who use trademarks and thereby to contribute to the development of industry and to protect the interests of consumers.
Art. 2. Definitions, etc. (1) “Trademark” in this Act shall mean any character(s), figure(s), sign(s) or three-dimensional shape(s),
or any combination thereof, or any combination thereof with colors (hereinafter referred to as a “mark”) which is:
(i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or
(ii) used in connection with the services of a person who provides or certifies the services as a business (except those provided for in the preceding item).
(2) “Registered trademark” in this Act shall mean a trademark that has been registered as a trademark. (3) “Use” with respect to a mark as used in this Act shall mean any of the following acts:
(i) to affix a mark to goods or packages of goods; (ii) to assign, deliver, display for the purpose of assignment or delivery, import or provide through an
electric telecommunication line, goods or packages of goods to which a mark is affixed; (iii) in the course of the provision of services, to affix a mark to articles to be used by a person who
receives the said services (including articles to be assigned or loaned, hereinafter the same); (iv) in the course of the provision of services, to provide the said services by using articles to which a
mark is affixed which is to be used by a person who receives the said services; (v) for the purpose of providing services, to display articles to be used in providing the services
(including articles to be used by a person who receives the services in the course of the provision of services, hereinafter the same) to which a mark is affixed;
(vi) in the course of the provision of services, to affix a mark to articles relating to the provision of the said services belonging to a person who receives the services;
(vii) in the course of the provision of services through an image viewer, by using an electromagnetic method (an electromagnetic method shall refer to any electronic, magnetic or any other method that is not recognizable by people's perception, the same in the following item), to provide the said services by displaying a mark on the image viewer; or
(viii) to display or distribute advertisement materials, price lists or transaction documents relating to goods or services to which a mark is affixed, or to provide information on such content, to which a mark is affixed by an electromagnetic method.
(4) To affix a mark to goods or other articles provided for in the preceding paragraph shall include to form in the shape of the mark goods, packages of goods, articles to be used in providing services or advertisement materials relating to goods or services.
(5) In this Act, the scope of goods may include those similar services and the scope of services may include those similar to goods.
CHAPTER II TRADEMARK REGISTRATION AND APPLICATION FOR TRADEMARK REGISTRATION
Art. 3. Requirements for trademark registration (1) Any trademark to be used in connection with goods or services relating to the business of an applicant
may be registered, unless the trademark: (i) consists solely of a mark indicating, in a common manner, the common name of the goods or
services; (ii) is customarily used in connection with the goods or services; (iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of
origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision;
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(iv) consists solely of a mark indicating, in a common manner, a common surname or name of a legal entity;
(v) consists solely of a very simple and common mark; or (vi) in addition to what is listed in each of the preceding items, a trademark by which consumers are
not able to recognize the goods or services as those relating to a business of a particular person. (2) Notwithstanding the preceding paragraph, a trademark that falls under any of Items (iii)
through (v) of the preceding paragraph may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those relating to a business of a particular person.
Art. 4. Unregistrable trademarks (1) Notwithstanding the preceding article, no trademark shall be registered if the trademark:
(i) is identical with, or similar to, the national flag, the imperial chrysanthemum crest, a decoration, a medal or a foreign national flag;
(ii) is identical with, or similar to, the coats of arms or any other State emblems (except national flags of any country of the Union to the Paris Convention, member of the World Trade Organization and Contracting Party to the Trademark Law Treaty) of a country of the Union to the Paris Convention (refers to 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 the same), a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty designated by the Minister of Economy, Trade and Industry;
(iii) is identical with, or similar to, a mark indicating the United Nations or any other international organization which has been designated by the Minister of Economy, Trade and Industry;
(iv) is identical with, or similar to, the emblems or titles in Article 1 of Law Concerning Restriction on the Use of Emblems and Titles of the Red Cross and Others (Law No.159 of 1947) or the distinctive emblem in Article 158(1) of Law Concerning Measures to Protect Japanese Citizens During Armed Attacks and Others (Law No.112 of 2004);
(v) consists of a mark identical with, or similar to, an official hallmark or sign indicating control or warranty by the national or local government of Japan, a country of the Union to the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty which has been designated by the Minister of Economy, Trade and Industry, if such a trademark is used in connection with goods or services identical with, or similar to, the goods or services in connection with which the hallmark or sign is used;
(vi) is identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest;
(vii) is likely to contravene the maintenance of public order or good morals; (viii) contains the portrait, name of another person or entity, famous pseudonym, professional name,
pen name or famous abbreviation thereof (except those the registration of which has been approved by the person concerned);
(ix) is comprised of a mark identical with, or similar to, a prize awarded at an exhibition held by the national or local government(hereinafter referred to as the "Government, etc.") or by those who are not the Government, etc. but designated by the Commissioner of the Patent Office, or at an international exhibition held in a foreign country by the Government, etc. of the foreign country or those authorized thereby (except those used by the recipient of such a prize as part of his own trademark);
(x) is well known among consumers as that indicating goods or services in connection with another person’s business or a trademark similar thereto, if such a trademark is used in connection with such goods or services or goods or services similar thereto;
(xi) is identical with or similar to another person’s registered trademark which has been filed prior to the filing date of an application for registration of the said trademark, if such a trademark is used in connection with the designated goods or designated services in connection with which the said registered trademark is registered (refers to goods or services designated in accordance with Article 6(1) (including cases where it is applied mutatis mutandis pursuant to Article 68(1), hereinafter the same) or goods or services similar thereto;
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(xii) is identical with a registered defensive mark of another person (refers to a mark registered as a defensive mark, hereinafter the same), if such a trademark is used in connection with designated goods or designated services in connection with which the defensive mark is registered;
(xiii) is a trademark of another person (excluding those which had not been used by the said person for a period of one year or longer from the date the trademark right became extinguished) the right to which has been extinguished for a period of shorter than one year from the date of the extinguishment of the said trademark right (or the date on which a ruling to the effect that the trademark registration is to be revoked or a hearing decision to the effect that the trademark registration is to be invalidated is rendered, hereinafter the same) or a trademark similar thereto, if such a trademark is used in connection with the designated goods or designated services in connection with the trademark right of such other person or goods or services similar thereto;
(xiv) is identical with, or similar to, the name of a variety registered in accordance with Article 18(1) of the Agricultural Seed and Seedlings Law (Law No. 83 of 1998), if such a trademark is used in connection with the variety or goods or services similar thereto;
(xv) is likely to cause confusion in connection with the goods or services relating to a business of another person (except those listed in items (x) to (xiv) inclusive);
(xvi) is likely to cause confusion as to the quality of the goods or services; (xvii) is comprised of a mark indicating a place of origin of wines or spirits of Japan which has been
designated by the Commissioner of the Patent Office, or a mark indicating a place of origin of wines or spirits of a member of the World Trade Organization which is prohibited by the said member from being used on wines or spirits not originated from the region in the said member, if such a trademark is used in connection with wines or spirits not originated from the region in Japan or the said member;
(xviii)consists solely of a three-dimensional shape of goods or their packaging which is indispensable for such goods or their packaging to properly function; or
(xix) is identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services relating to a business of another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, hereinafter the same) (except those provided for in each of the preceding Items);
(2) Where the State or a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a person undertaking a non-profit activity for public interest files an application for trademark registration falling under the said sub-paragraph, Sub-paragraph (vi) of the preceding paragraph shall not apply.
(3) Items (viii), (x), (xv), (xvii) and (xix) of Paragraph (1) shall not apply to a trademark falling under any of the said items which does not fall under the said item at the time of filing of an application for trademark registration.
(4) Where a hearing decision to the effect that a registration of a trademark is to be revoked pursuant to Article 53-2 becomes final and conclusive, and the demandant of the said hearing files a trademark application for the trademark relating to the revoked registration following the said decision, or a trademark similar thereto, Item (xiii) of Paragraph (1) shall not apply.
Art. 5. Application for trademark registration (1) Any person who desires to register a trademark shall file an application with the Commissioner of the
Patent Office accompanied by the required documents. The request shall state: (i) the name and the domicile or residence of the applicant for trademark registration; (ii) the trademark for which registration is sought; and (iii) the designated goods or designated services and the class of goods or services prescribed by
Cabinet Order as provided for in Article 6(2). (2) Where a person desires to register a trademark consisting of a three-dimensional shape (including those
combined with character(s), figure(s), sign(s) or color(s) or any combination thereof) (hereinafter referred to as a “three-dimensional trademark”), the application shall contain a statement indicating thereof.
(3) Where a person desires to register a trademark consisting solely of characters designated by the Commissioner of the Patent Office (hereinafter referred to as "standard characters"), the application shall contain a statement indicating thereof.
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(4) Where a portion of the trademark for which a registration is sought is in the same color as that of the column in which a trademark for which a registration is sought is required to be stated, the said portion of the trademark shall be deemed not to be a part of the trademark. However, this shall not apply to the area specified and identified as an area to be colored in the same color as that of the column.
Art. 5-2. Designation of filing date, etc. (1) The Commissioner of the Patent Office shall designate as the filing date of the application for
trademark registration the date of submission of the request relating thereto, unless an application for registration of a trademark falls under any of the following items:
(i) the statement of intent to register a trademark is unclear; (ii) the name of the applicant for trademark registration is not stated or the statement thereof is not
sufficient to identify the applicant; (iii) the trademark for which a registration is sought is not stated in the application; and (iv) the designated goods or designated services are not stated.
(2) Where an application for trademark registration falls under any of the items of the preceding paragraph, the Commissioner of the Patent Office shall require the applicant for trademark registration to correct the application, designating a reasonable time limit for such purpose.
(3) Correction of an application for trademark registration shall be made by presenting a document with respect to the correction (hereinafter referred to as a "Written Correction”).
(4) Where an applicant who was required to correct an application for trademark registration under Paragraph (2) corrects the said application within the designated time limit provided for in the said paragraph, the Commissioner of the Patent Office shall designate the date of filing of the Written Correction as the filing date of the application for registration of the trademark.
(5) Where an applicant who is required to correct an application for trademark registration under Paragraph (2) fails to correct the said application within the designated time limit as provided for in the said paragraph, the Commissioner of the Patent Office may dismiss the said application for trademark registration.
Art. 6. Single trademark on each application (1) An application for trademark registration shall be filed for each trademark and designate one or more
goods or services in connection with which the trademark is to be used. (2) The designation provided for in the preceding paragraph shall be made in accordance with
classifications of goods and services specified by Cabinet Order. (3) The classifications of goods and services provided for in the preceding paragraph shall not be
perceived as prescribing the scope of similarities of goods or services.
Art. 7. Collective trademarks (1) Any incorporated association established pursuant to Article 34 of the Civil Code (Law No. 89
of 1896), any other association established pursuant to a special law including industrial business cooperative associations (except those which are not legal entities), or a foreign legal entity equivalent thereto shall be entitled to obtain a collective trademark registration with respect to a trademark to be used by their members.
(2) For the purpose of the application of Article 3(1), in the case of the preceding paragraph, “applicant” in the said article shall read "applicant or its members."
(3) Any person who desires to register a collective trademark pursuant to Paragraph (1) shall, at the time of filing of an application for trademark registration pursuant to Article 5(1), provide to the Commissioner of the Patent Office a document certifying that the applicant for trademark registration is a legal entity that falls under Paragraph (1).
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Art.7-2. Regionally based collective trademark (1) Any association established by special law, including an industrial business cooperative association
(except those which are not legal entities and limited to those which are established by a special law prescribing that the association shall not refuse the enrollment of any person who is eligible to become a member without due cause or that the association shall not impose on any of its prospective members any condition that is heavier than those imposed on its existing members) or a foreign legal entity equivalent thereto (hereinafter referred to as “Association, etc.”) shall be entitled to obtain a regionally based collective trademark with respect of any of the following, provided that the trademark is used by its members and, as a result of the use of the said trademark, the said trademark is well known among consumers as indicating the goods or services relating to the business of the applicant or its members, notwithstanding the provision of Article 3 (except the case falling under item (i) or (ii) of Article 3(1)):
(i) a trademark consisting solely of characters indicating, in a common manner, the name of the region and the common name of the goods or services relating to the business of the applicant or its members;
(ii) a trademark consisting solely of characters indicating, in a common manner, the name of the region and the name customarily used as a name indicating the goods or services relating to the business of the applicant or its members; or
(iii) a trademark consists solely of characters indicating, in a common manner, the name of the region and the common name of the goods or services relating to the business of the applicant or its members or the name customarily used as a name indicating thereof, and characters customarily added in indicating, in a common manner, the place of origin of the goods or the location of provision of the services.
(2) The term "name of region” as used in the preceding paragraph shall mean to the place of origin of the goods or the location of provision of services for which the trademark relating to the said application has been used by the applicant or its members even prior to the filing of such application, or the name or abbreviated name of the region which is considered to have a close relationship with the said goods or services to the equivalent extent.
(3) For the purpose of the application of Article 3(1) in the case of Paragraph (1), “applicant” in the said paragraph shall read "applicant or its members."
(4) Any person who desires to register a regionally based collective trademark pursuant to Paragraph (1) shall, at the time of filing of an application for trademark registration pursuant to Article 5(1), provide to the Commissioner of the Patent Office a document certifying that the applicant for trademark registration is an Association, etc. and documents necessary to prove that the trademark for which the registration is sought contains the name of a region as set forth in Paragraph (2).
Art. 8. Prior application (1) Where two or more applications for trademark registration relating to identical or similar trademarks
which are to be used in connection with identical or similar goods or services have been filed on different dates, only the applicant who filed the application for trademark registration on the earlier date shall be entitled to register the trademark in question.
(2) Where two or more applications for trademark registration relating to identical or similar trademarks which are to be used in connection with identical or similar goods or services have been filed on the same date, only one applicant shall be entitled to register the trademark in question, to be determined by consultations between the applicants who filed such applications.
(3) Where an application for trademark registration is abandoned, withdrawn or dismissed, or an examiner’s decision or a hearing decision on an application for trademark registration becomes final and conclusive, such application shall, for the purposes of the application of the preceding two paragraphs, be deemed never to have been filed.
(4) In the case of Paragraph (2), the Commissioner of the Patent Office shall require the applicants for trademark registration to arrange consultations between the applicants as set forth in the said paragraph and to report the result thereof, designating a reasonable time limit for such purpose.
(5) Where no agreement is reached in the consultations held pursuant to Paragraph (2) or no report is submitted within the designated time limit set forth in the preceding paragraph, only one applicant, selected by a lottery in a fair and just manner conducted by the Commissioner of the Patent Office, shall be entitled to register the trademark in question.
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Art. 9. Special provisions relating to date of filing of application (1) Where an application for trademark registration is filed in connection with a trademark used for goods
or services exhibited at an exhibition held by the Government, etc., an exhibition held by those who are not the Government, etc. but are designated by the Commissioner of the Patent Office, an international exhibition held by the Government, etc. of a country of the Union to the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty or by those authorized thereby to hold such an exhibition in its territory, or an international exhibition held by the Government, etc. of a country which is not a country of the Union of the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty or are authorized thereby as a territory designated by the Commissioner of the Patent Office, by the exhibitor of such goods or services bearing the trademark within six months from the date of exhibition of such goods or services, the said application shall be deemed to have been filed at the time of exhibition of such goods or services.
(2) Any person who desires to apply the preceding paragraph in connection with a trademark relating to an application for trademark registration shall provide to the Commissioner of the Patent Office a document stating thereof at the time of filing of the application for trademark registration, and documents proving the fact that the trademark relating to an application for trademark registration and its designated goods or designated services fall under the trademark and goods or services prescribed in the said paragraph, within thirty days from the filing date of an application for the trademark registration.
Art. 9-2 Priority claim governed by the Paris Convention (1) A right of priority based upon an application for registration of a trademark filed in a country of the
Union to the Paris Convention (limited to a trademark equivalent to a trademark prescribed by Article 2(1)(ii)) may be claimed as governed by the same rules as Article 4 of the Paris Convention in connection with a right of priority based upon an application for registration of a trademark equivalent to the trademark prescribed by Article 2(1)(i).
Art. 9-3 A right of priority based upon an application filed by a person stated in the left column of the following table in a country stated in the right column of the same table may be claimed in connection with an application for trademark registration as governed by Article 4 of the Paris Convention.
Japanese nationals or nationals of a country of the Union to the Paris Convention (including those who are deemed to be nationals of a country of the Union prescribed by Article 3 of the Paris Convention)
A member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty
Nationals of a member of the World Trade Organization (refers to nationals of a member 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.
A country of the Union to the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty
Art. 9-4 Amendment of designated goods, etc. or trademark for which registration is sought and change of gist
Where, after the registration of establishment of a trademark right, it is found that any amendment made to the designated goods or designated services, or trademark for which registration is sought, is found to cause any change of the gist thereof, the application for registration of the trademark shall be deemed to have been filed at the time of submission of the written amendment relating thereto.
Art. 10. Division of an application for trademark registration (1) An applicant may file one or two new applications with regard to part of an application which
designates two or more goods or services as its designated goods or designated services, provided that the application for trademark registration is pending in examination, hearing examination or rehearing examination, or that a suit against a hearing decision to refuse the application is pending in court
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(2) In the case of the preceding paragraph, the new application for trademark registration shall be deemed to have been filed at the time of filing of the original application. However, this shall not apply for the purpose of Article 9(2) of this Act and Article 43(1) and 43(2) of the Patent Act (Act No.121 of 1959) as applied mutatis mutandis pursuant to Article 13(1) of this Act (including cases where it is applied mutatis mutandis pursuant to Article 43-2(3) of the Patent Act as applied mutatis mutandis pursuant to Article 13(1) of this Act).
(3) Where a new application for trademark registration is filed as prescribed in Paragraph (1), statements or documents provided in connection with the original application for trademark registration which are required to be provided in connection with the new application for trademark registration pursuant to Article 9(2) of this Act or Article 43(1) and 43(2) of the Patent Act as applied mutatis mutandis pursuant to Article 13(1) of this Act (including its mutatis mutandis application pursuant to Article 43-2(3) of the Patent Act as applied mutatis mutandis pursuant to Article 13(1) of this Act) shall be deemed to have been provided to the Commissioner of the Patent Office at the time of filing of the new application for trademark registration.
Art. 11. Conversion of an application (1) An applicant for trademark registration of a collective trademark may convert an application for
trademark registration of a collective trademark into a regular application for trademark registration (referring to an application for trademark registration other than those of collective trademarks and regionally based collective trademarks, hereinafter the same) or an application for trademark registration of a regionally based collective trademarks.
(2) An applicant for trademark registration may convert an application for trademark registration of a regionally based trademark registration into a regular application for trademark registration or an application for trademark registration of a collective trademark.
(3) An applicant for trademark registration may convert a regular application for trademark registration into an application for trademark registration of a collective trademark or an application for trademark registration of a regionally based collective trademark.
(4) The conversion of an application for trademark registration pursuant to the provisions of the preceding three paragraphs shall not be made after an examiner’s decision or a hearing decision on the application becomes final and conclusive.
(5) Where the conversion of an application for trademark registration is made pursuant to Paragraphs (1) through (3), the original application for trademark registration shall be deemed to have been withdrawn.
(6) The provisions of Articles 10(2) and 10(3) shall apply mutatis mutandis to the conversion of an application for trademark registration pursuant to Paragraphs (1) through (3).
Art. 12. (1) An applicant for a defensive mark registration may convert such an application into an application for
trademark registration. (2) The conversion of an application pursuant to the preceding paragraph shall not be made after an
examiner’s decision or a hearing decision on the application for a defensive mark registration becomes final and conclusive.
(3) The provisions of Articles 10(2), 10(3) and 11(5) shall apply mutatis mutandis to the conversion of an application pursuant to Paragraph (1).
Art. 12-2. Publication of application (1) Where an application for trademark registration is filed, the Commissioner of the Patent Office shall
publish the application. (2) The application shall be published in the Trademark Gazette, which shall contain the following
matters. However this shall not apply to the matters listed in Items (iii) and (iv), where the Commissioner of the Patent Office finds that publishing the said matters in the Trademark Gazette is likely to contravene the maintenance of public order or good morals.
(i) the name and the domicile or residence of the applicant for the trademark registration; (ii) the number and date of the application for trademark registration;
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(iii) the trademark stated in the application (in the case of Article 5(3), the trademark represented in standard characters, the same shall apply in Articles 18(3)(iii) and 27(1));
(iv) the designated goods or designated services; and (v) any necessary matters in addition to what is listed.
Art. 13. Mutatis mutandis application of the Patent Act (1) The provisions of Articles 43(1) through (4), 43-2(2) and (3) of the Patent Act shall apply mutatis
mutandis to an application for trademark registration. In this case, the term “one year and four months from the earliest of the following dates” in Article 43(2) of the Patent Act shall be deemed to be replaced with “three months from the filing date of an application for trademark registration”; “or members of the World Trade Organization” in Article 43-2(2) of the said Act shall be deemed to be replaced with “members of the World Trade Organization or Contracting Parties to the Trademark Law Treaty”; “or nationals of members of the World Trade Organization” in the same paragraph shall be deemed to be replaced with “nationals of members of the World Trade Organization or nationals of Contracting Parties to the Trademark Law Treaty”; and “preceding two paragraphs” in Paragraph(3) of the said article shall be deemed to be replaced with “preceding paragraph.”
(2) The provisions of Articles 33 and 34(4) through 34(7) (Right to obtain a patent) of the Patent Act shall apply mutatis mutandis to the rights deriving from an application for trademark registration.
Art. 13-2. Right to monetary claim, etc. prior to registration of establishment of trademark right
(1) Where an applicant for trademark registration issues a warning after filing an application for trademark registration by presenting a document stating a description of the application, the applicant may claim against any person who uses the trademark relating to the application, for the designated goods or designated services in the application during the period from the warning to the registration of establishment of the trademark right, the payment of money in the amount equivalent to the loss incurred in the course of business due to such use .
(2) The right to claim under the preceding paragraph may not be exercised prior to the registration of establishment of the trademark right.
(3) The exercise of the right to claim under Paragraph (1) shall not preclude the exercise of the trademark right.
(4) The right to claim under Paragraph (1) shall be deemed never to have arisen in any of the following cases: where an application for trademark registration is abandoned, withdrawn or dismissed; where an examiner’s decision or a hearing decision to the effect that an application for trademark registration is to be refused becomes final and conclusive; where a ruling to revoke a trademark under Article 43- 3(2) becomes final and conclusive; and where, excluding the cases falling under the proviso to Article 46-2(1), a hearing decision to the effect that a trademark registration is to be invalidated becomes final and conclusive.
(5) The provisions of Articles 27 and 37 of this Act, Articles 104-3 through 105-2, 105-4 through 105-6 and 106 of the Patent Act as applied mutatis mutandis under Article 39 of this Act, and Articles 168(3) through 168(6) of the Patent Act as applied mutatis mutandis under Article 56(1) of this Act and Articles 719 and 724(Tort) of the Civil Code shall apply mutatis mutandis to the exercise of the right to claim under Paragraph (1). In such a case where, prior to the registration of the establishment of the trademark right, the person having the right to claim becomes aware of the fact that the trademark in connection with the application is used, and the identity of the person using the trademark, the term "the time when the injured party or his legal representative becomes aware of such damage, and of the person responsible therefor" in Article 724 of the said Code shall be deemed to be replaced with "the date of the registration of the establishment of the trademark right."
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CHAPTER III EXAMINATION
Art. 14. Examination by examiner (1) The Commissioner of the Patent Office shall direct the examination of applications for trademark
registration by an examiner.
Art. 15. Examiner’s decision of refusal (1) Where an application for trademark registration falls under any of the following items, the examiner
shall render an examiner’s decision to the effect that the application is to be refused: (i) the trademark relating to an application for trademark registration is not registerable pursuant to the
provisions of Articles 3, 4(1), 7-2(1), 8(2), 8(5), 51(2) (including the case of its mutatis mutandis application under Article 52-2(2)), 53(2) of this Act or Article 25 of the Patent Act as applied mutatis mutandis under 77(3) of this Act;
(ii) the trademark relating to an application for trademark registration is not registrable pursuant to the provisions of a relevant treaty; or
(iii) the application for trademark registration does not comply with the requirements prescribed in Article 6(1) or 6(2).
Art. 15-2. Notification of reasons for refusal Where the examiner intends to render an examiner’s decision to the effect that an application is to be refused, the examiner shall notify the applicant for trademark registration of the reasons for refusal and provide the applicant an opportunity to submit a written opinion, designating a reasonable time limit for such purpose.
Art. 15-3. (1) Where a trademark relating to an application for trademark registration is identical with or similar to
another person’s trademark relating to an application for trademark registration filed prior to the filing date of the said application, if the said trademark is intended to be used for goods or services identical with or similar to the designated goods or designated services relating to such other person’s trademark, the examiner may notify the applicant for trademark registration of the fact that the said application for trademark registration will fall under Article 15(1) when the said other person's trademark is registered, and provide the applicant with an opportunity to submit a written opinion, designating an reasonable time limit for such purpose.
(2) Where the notification set forth in the preceding paragraph has already been served and the said other person’s trademark is registered, the examiner shall not be required to serve the notification set forth in the preceding article.
Art. 16. Assessment of trademark registration Where no reasons for refusal are found in connection with an application for trademark registration within the time limit prescribed by Cabinet Order, the examiner shall render an examiner’s decision to the effect that the trademark is to be registered.
Art. 16-2. Dismissal of amendment (1) Where an amendment made to the designated goods or designated services, or to the trademark for
which registration is sought as stated in the application, is considered to cause any change of the gist thereof, the examiner shall dismiss the amendment by the ruling.
(2) The ruling dismissing an amendment set forth in the preceding paragraph shall be made in writing and state reasons therefor.
(3) Where a ruling dismissing an amendment under Paragraph (1) is rendered, the examiner shall not render any decision on the said application for trademark registration before the expiration of a thirty- day period from the date of service of a transcript of the ruling.
(4) Where an applicant for trademark registration files a petition for a hearing under Article 45(1) against the ruling dismissing an amendment under Paragraph (1), the examiner shall suspend the examination of the application for registration of the trademark until the hearing decision becomes final and conclusive.
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Art. 17. Mutatis mutandis application of Patent Act (1) The provisions of Articles 47(2) (Qualification of Examiners), 48 (Exclusion of Examiners), 52
(Formal Requirements for Examination) and 54 (Relationship with litigation) of the Patent Act shall apply mutatis mutandis to the examination of applications for trademark registration. In this case, the term “a hearing decision” in Article 54(1) of the Patent Law shall be deemed to be replaced with "a ruling on an opposition to registration or a hearing decision.”
Art. 17-2. Mutatis mutandis application of Design Act (1) The provision of Article 17-3 (New Application for Designs as Amended) of the Design Act (Law
No.125 of 1959) shall apply mutatis mutandis to the case where an amendment is dismissed by a ruling pursuant to Article 16-2(1) of this Act.
(2) The provision of Article 17-4 of the Design Act shall apply mutatis mutandis to the case of an extension of the time limit under the preceding paragraph or Article 17-3(1) of the Design Act as applied mutatis mutandis to Article 55-3(3) (including its mutatis mutandis application under Article 60-2(2)) of this Act.
CHAPTER IV TRADEMARK RIGHT
Part 1 Trademark Right
Art. 18. Registration of establishment of trademark right (1) A trademark right shall arise upon registration of establishment of such right. (2) Where the registration fee under Article 40(1) or the registration fee due and payable within thirty
days from the date of service of a transcript of an examiner’s decision or a hearing decision to the effect that a trademark is to be registered under Article 41-2(1) is paid, the establishment of the trademark right shall be registered.
(3) The registration provided for in the preceding paragraph shall be published in the Trademark Gazette, which shall contain the following items:
(i) the name and the domicile or residence of the trademark right holder; (ii) the number and date of the application for trademark registration; (iii) the trademark stated in the application; (iv) the designated goods or designated services; (v) the registration number and date of registration of establishment; and (vi) any other items that are considered necessary.
(4) The Commissioner of the Patent Office shall make application documents and their annexed articles available for public review at the Patent Office for two months from the date of issuance of the Trademark Gazette containing matters listed in each item of the preceding paragraph (hereinafter referred to as “Gazette containing the trademark”) pursuant to the provisions of the preceding paragraph. However, this shall not apply to documents or articles that are likely to damage the reputation or disturb the peaceful existence of an individual or to contravene the maintenance of public order or good morals, and the Commissioner of the Patent Office finds necessary to be kept confidential.
(5) Where the Commissioner of the Patent Office intends to make available for public inspection documents or articles which are likely to damage the reputation or disturb the peaceful life of an individual and are other than those the Commissioner of the Patent Office finds necessary to be kept confidential under the proviso set forth in the preceding paragraph, the Commissioner shall notify the person who provided the documents or the articles thereof and the reasons therefor.
Art.19. Duration (1) The duration of a trademark right shall expire after ten years from the date of registration of
establishment of such right. (2) The duration of a trademark right may be renewed by the trademark right holder by filing an
application for renewal of registration. (3) Where the renewal of the duration of the trademark right is registered, the duration shall have been
renewed at the time of expiration of the duration.
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Art. 20. Application for registration of renewal of term (1) A person who intends to file a request for registration of renewal of the duration of a trademark right
shall submit to the Commissioner of the Patent Office an application stating the following: (i) the name and the domicile or residence of the applicant for renewal; (ii) the registration number of the trademark registration; and (iii) In addition to what is listed in the preceding two items, the matters specified by a relevant
Ordinance of the Ministry of Economy, Trade and Industry. (2) An application for registration of renewal shall be filed during the period from six months prior to the
expiration of the duration of a trademark right to the date of expiration thereof. (3) Where the trademark right holder is unable to file an application for registration of renewal within the
time limit prescribed in the preceding paragraph, the trademark right holder may file said application within six months after the expiration of the said time limit.
(4) Where the trademark right holder fails to file an application for registration of renewal within the time limit for such request pursuant to the provision of the preceding paragraph, the trademark right shall be deemed to have been extinguished retroactively from the time of the expiration of its duration.
Art.21. Restoration of trademark right (1) Where the original trademark right holder of a trademark right which is deemed to have been
extinguished pursuant to Article 20(4) is unable to file an application for registration of renewal within the time limit for such application pursuant to Article 20(3) due to reasons beyond the control of said trademark right holder, the trademark right holder may file said application within fourteen days (two months for residents abroad) from the date when the reason ceased to exist but not later than six months following the expiration of the said time limit.
(2) Where an application for registration of renewal is filed under the preceding paragraph, the duration shall be deemed to have been renewed retroactively at the time of expiration of the duration.
Art.22. Limitations of effects of restored trademark right The effects of a trademark right restored pursuant to Article 21(2) shall not extend to the following acts committed after the expiration of the time limit for the filing of the application for registration of renewal prescribed in Article 20(3) and before the registration of renewal of the duration of the trademark right by the application under Article 21(1):
(i) the use of the registered trademark in connection with the designated goods or designated services; and
(ii) the acts provided for in each item of Article37.
Art.23. Registration of renewal of duration (1) Where the registration fee under Article 40(2) or the registration fee due and payable at the time of
filing of the application for registration of renewal pursuant to Article 41-2(2) is paid, the renewal of the duration of the trademark right shall be registered.
(2) Notwithstanding the preceding paragraph, where an application for registration of renewal is filed under Article 20(3) or 21(1), the renewal of the duration of the trademark right shall be registered at the time of payment of the registration fee under Article 40(2) and the registration surcharge under Article 43(1), or the registration fee due and payable at the time of filing of application for registration of renewal under Article 41-2(2) and the registration surcharge under Article 43(2).
(3) Upon registration as set forth under the preceding two paragraphs, the following items shall be published in the Trademark Gazette:
(i) the name and the domicile or residence of the trademark right holder; (ii) the registration number and the date of registration of renewal; and (iii) any other items that are considered necessary.
Art.24. Division of trademark right (1) Where there are two or more designated goods or designated services for which a trademark right
shall apply, the trademark right may be divided for each designated good or designated service. (2) Where a petition for a hearing is filed under Article 46(2), the division provided for in the preceding
paragraph may be made even after the extinguishment of the trademark right, provided that a hearing, re-hearing or court proceedings in connection with the case is pending.
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Art. 24-2. Transfer of trademark right (1) Where a trademark right designates two or more goods or services, the trademark right may be
divided into each designated good or service in transferring such right. (2) A trademark right in connection with an application for trademark registration which falls under
Article 4(2) filed by the State, a local government, an agency thereof, or a non-profit organization undertaking a business for public interest shall not be assigned.
(3) A trademark right in connection with an application for trademark registration that falls under Article 4(2) filed by a non-profit enterprise undertaking a business for public interest, may not be transferred unless the business is transferred together with such right.
(4) A trademark right in connection with a regionally based collective trademark may not be assigned.
Art. 24-3. Transfer of collective trademark right (1) Upon transferring, the trademark right to a collective trademark shall be deemed to have been
converted to a regular trademark right, except in the case as provided in the following paragraph.
(2) Where the right holder of a collective trademark intends to transfer the collective trademark right, the said right holder shall file a request for registration of transfer accompanied by a document stating thereof, and the documents provided for in Article 7(3), with the Commissioner of the Patent Office.
Art. 24-4. Request for indication to prevent confusion arising from transfer of trademark right Where, as a result of transfer of a trademark right, the trademark right to a similar registered
trademark to be used in connection with identical goods or services, or the trademark right to an identical or similar registered trademark to be used in connection with similar goods or services becomes owned by a different trademark right holder, if the use of one of such registered trademarks for its designated goods or designated services by its trademark right holder, the exclusive licensee or the non-exclusive licensee is likely to damage business interests (limited to those relating to the designated goods or designated services using the said other registered trademark) of the other trademark right holder or of the exclusive licensee the other trademark right holder or the exclusive licensee may request the trademark right holder, the exclusive licensee or the non-exclusive licensee to affix an indication that may sufficiently prevent any confusion between the goods or services relating to the business of the other party and those of its own.
Art. 25. Effects of trademark right The trademark right holder shall have an exclusive right to use the registered trademark in
connection with the designated goods or designated services. Notwithstanding the foregoing, where an exclusive license to use the trademark is established in connection with the trademark right, this provision shall not apply to the extent that the exclusive licensee has an exclusive right to use the registered trademark.
Art. 26. Limits of effects of trademark right (1) A trademark right shall have no effect on any of the following trademarks (including those which constitute part of other trademarks): (i) a trademark indicating, in a common manner, one’s own portrait, name, famous pseudonym,
professional name, pen name or famous abbreviation thereof; (ii) a trademark indicating, in a common manner, the common name, place of origin, place of sale,
quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages, the same shall apply in the following paragraph), price, the method or time of production or use of the designated goods or goods similar thereto, or the common name, location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision of the services similar to the designated goods;
(iii) a trademark indicating, in a common manner, the common name, location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision of the designated services or services similar thereto, or the common name, place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape, price, the method or time of production or use of goods similar to the designated services;
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(iv) a trademark customarily used for the designated goods or designated services or goods or services similar thereto; or
(v) a trademark consists solely of a three-dimensional shape of goods or their packaging which is indispensable for such goods or their packaging to properly function.
(2) Sub-paragraph (i) of the preceding paragraph shall not apply where, after the registration of establishment of the trademark right, one’s own portrait, name, famous pseudonym, professional name, pen name or famous abbreviation thereof is used for the purpose of unfair competition.
Art. 27. Scope of registered trademark, etc. (1) The scope of a registered trademark shall be determined based on the trademark stated in the
application. (2) The scope of the designated goods or designated services shall be determined based on the statement
in the application.
Art. 28. (1) A request for an advisory opinion on the effects of a trademark right may be filed to the Patent Office. (2) Upon receipt of the request provided for in the preceding paragraph, the Commissioner of the Patent
Office shall designate three judicial examiners and cause them to make an advisory opinion. (3) Articles 71(3) and 71(4) of the Patent Act shall apply mutatis mutandis to the advisory opinion
provided for in Paragraph (1).
Art. 28-2. (1) Where the Commissioner of the Patent Office is commissioned by a court to provide an expert
opinion on the effects of a trademark right, the Commissioner shall designate three judicial examiners and cause them to provide such expert opinion.
(2) Articles 71bis(2) [71-2(2)]of the Patent Act shall apply mutatis mutandis to the commissioned provision of the expert opinion provided for in Paragraph (1).
Art. 29. Relationship with another person’s patent right, etc. Where the use of a registered trademark in a particular manner in connection with its designated goods or designated services conflicts with another person’s right to a patent, utility model or design for which an application has been filed prior to the filing date of an application of the said registered trademark or upon another person’s copyright arising prior to the filing date of the same, the trademark right holder, the exclusive licensee or non-exclusive licensee shall not use the registered trademark in the same manner on the conflicting part of the designated goods or designated services.
Art. 30. Exclusive license (1) The trademark right holder may establish an exclusive license to the trademark to which he holds the
right. However, this provision shall not apply to the trademark right of an application for trademark registration under Article 4(2) or a regionally based collective trademark.
(2) The exclusive licensee shall have the exclusive right to use a registered trademark in connection with the designated goods or designated services to the extent prescribed by the agreement under which such right is granted.
(3) The exclusive license may be transferred only where the consent of the trademark right holder is obtained and where the transfer falls under general succession including inheritance.
(4) Articles 77(4) and 77(5) (establishment of pledge, etc.), 97(2) (abandonment), and 98(1)(ii) and 98(2) (effects of registration) of the Patent Act shall apply mutatis mutandis to an exclusive license.
Art. 31. Non-exclusive license (1) The trademark right holder may grant to another person the non-exclusive license to the trademark to
which he holds the right. However, this provision shall not apply to the trademark right of an application for trademark registration under Article 4(2).
(2) The non-exclusive licensee shall have the right to use the registered trademark for the designated goods or designated services to the extent prescribed by the agreement under which such right is granted.
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(3) A non-exclusive license may be transferred only where the consent of the trademark right holder (the trademark right holder or the exclusive licensee in the case of a non-exclusive license granted in connection with an exclusive license) is obtained and where the transfer falls under general succession including inheritance.
(4) Articles 73(1) (joint ownership), 94(2) (establishment of pledge), 97(3) (abandonment), and 99(1) and 99(3) (effects of registration) of the Patent Act shall apply mutatis mutandis to a non-exclusive license.
Art. 31-2. Right of members of corporation or association (1) Members of a legal entity under Article 7(1) holding a trademark right to a collective trademark
(hereinafter referred to as “collective members”) or members of an association, etc. holding a trademark right to a regionally based collective trademark (hereinafter referred to as “regional collective members”) shall have the right to use a registered collective trademark or regionally based collective trademark for the designated goods or designated services as prescribed by the said legal entity or association, etc., except in the case and only to the extent that an exclusive license to use the registered trademark (limited to the trademark right relating to a collective trademark) has been established.
(2) The right provided for in the principal sentence of the preceding paragraph is not transferable. (3) For the purpose of Articles 24quater[24-4], 29, 50, 52bis[52-2], 53 and 73, collective members or
regional collective members shall be deemed to be non-exclusive licensees. (4) For the purpose of application of Article 33(1)(iii) in relation to registered trademarks in connection
with collective trademarks and regionally based collective trademarks , “or the non-exclusive licensee having effects provided for in Article 99(1) of the Patent Act as applied mutatis mutandis under Article 31(4) of this Act in relation to the trademark right or the exclusive license” in the said article shall read, “the non-exclusive licensee use having effects provided for in Article 99(1) of the Patent Act as applied mutatis mutandis under Article 31(4) of this Act in relation to the trademark right or the exclusive license, or collective members or regional collective members holding the right to use the said trademark.”
Art. 32. Right to use trademark arising from prior use (1) Where a trademark application is filed by a person, and a trademark identical with or similar to the
trademark for which the application for registration is filed has been used in Japan from the time prior to the filing of such other person's application for the said trademark registration, without any intention to be engaged in unfair competition, in connection with the designated goods or designated services of the trademark for which the application is filed, or in connection with goods or services similar thereto, and as a result, at the time of filing of the application for trademark registration (at the time of filing of the original application for trademark registration or the submission of a written amendment, if the application for trademark registration is deemed to have been filed at the time of submission of a written amendment under Article 9quater[9-4] of this Act or Article 17ter(1) of the Design Act as applied mutatis mutandis under Article 17bis(1)[17-2(1)] or 55bis(3)[55-2(3)] of this Act (including its mutatis mutandis application under Article 60bis(2)[60-2(2)]), such trademark has become well known among consumers as that indicating goods or services relating to the business of the person, the person shall have the right to use the trademark in connection with such goods or services as far as the said person continuously uses the trademark for the goods or services. The same shall apply to those by whom such business is succeeded.
(2) The trademark right holder or the exclusive licensee may request the person who has the right to use the trademark in accordance with the preceding paragraph to affix an indication that may sufficiently prevent any confusion between the goods or services relating to the business of the said person and those of its own.
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Art. 32-2. (1) Where a regionally based collective trademark application for registration is filed by a person, any
person who has been using in Japan a trademark identical with, or similar to such other person’s application for registration, prior to the filing of the said regionally based collective trademark, in connection with the designated goods or designated services for which the application for trademark registration is filed, or in connection with goods or services similar thereto, without any intention to be engaged in unfair competition, shall have the right to use the trademark in connection with such goods or services as far as the said person continuously uses the trademark in connection with such goods or services. The same shall apply to those by whom such business is succeeded.
(2) The trademark right holder may request the person who has the right to use the trademark in accordance with the preceding paragraph to display an indication that may sufficiently prevent any confusion between the goods or services relating to the business of the said person and those of its own or its members.
Art. 33. Right to use trademark arising from use prior to registration of request for invalidation hearing
(1) Where, prior to the registration of a request for a hearing provided for in Article 46(1), a person falling under any of the following sub-paragraphs has been using in Japan a registered trademark or a trademark similar thereto in connection with the designated goods or designated services or goods or services similar thereto without the knowledge that the said trademark registration falls under one of the paragraphs of the said article, and the said trademark is well known among consumers as that indicating goods or services relating to its business, the person shall have the right to use the trademark in connection with such goods or services as far as the said person continuously uses the trademark for such goods or services. The same shall apply to those by whom such business is succeeded.
(i) the original trademark right holder, where one of two or more trademark registrations for identical or similar trademarks to be used in connection with identical or similar designated goods or designated services has been invalidated;
(ii) the original trademark right holder, where the trademark registration has been invalidated and a trademark identical with or similar to such trademark to be used in connection with identical or similar designated goods or designated services is registered for the person who is entitled to such a trademark;
(iii) in the case of the preceding two sub-paragraphs, a person who, at the time of registration of the request for a hearing under Article 46(1), holds the exclusive license of the trademark right of the trademark registration which has been invalidated or a person who holds the non- exclusive license which is effective regarding the trademark right or the exclusive license under Article 99(1) of the Patent Act as applied mutatis mutandis under Article 31(4) of this Act.
(2) The said trademark right holder or the said holder of the exclusive license shall be entitled to receive reasonable compensation from the person who holds the right to use the trademark under the preceding paragraph.
(3) Article 32(2) shall apply mutatis mutandis to Paragraph (1).
Art. 33-2. Right to use trademark after expiration of duration of patent right, etc. (1) Where a patent right of an application that has been filed prior to or on the same date as the filing date
of an application for trademark registration conflicts with the trademark right of the application for trademark registration, upon expiration of the duration of the said patent right, the original patent right holder shall have the right to use the registered trademark or a trademark similar thereto in connection with the designated goods or designated services specified in the application, or goods or services similar thereto, within the limits of the original patent right, provided that such trademark is not used for the purpose of unfair competition.
(2) Article 32(2) shall apply mutatis mutandis to the preceding paragraph. (3) The preceding two paragraphs shall apply mutatis mutandis, where a utility model or design right of an
application that has been filed prior to or on the same date as the filing date of an application for trademark registration conflicts with the trademark right of the application for trademark registration, upon expiration of the duration of such utility model right or design right.
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Art. 33-3. (1) Where a patent right of an application that has been filed prior to or on the same date as the filing date
of an application for trademark registration conflicts with the trademark right of the application for trademark registration, upon expiration of the duration of the said patent right, the person who, at the time of expiration of the duration of the patent right, holds the exclusive license to the patent right, or a non-exclusive license which is effective on the patent right or on the exclusive license under Article 99(1) of the Patent Act, shall have the right to use the registered trademark or a trademark similar thereto, within the limits of the original patent right, in connection with the designated goods or designated services specified in the application for trademark registration, or goods or services similar thereto, provided that such trademark is not used for the purpose of unfair competition.
(2) Articles 32(2) and 33(2) shall apply mutatis mutandis to the preceding paragraph. (3) The preceding two paragraphs shall apply mutatis mutandis, where a utility model or a design right of
an application which has been filed prior to or on the same date as the filing date of an application for trademark registration conflicts with the trademark right of the application for trademark registration, upon expiration of the duration of such utility model right or design right.
Art. 34. Pledges (1) Where a pledge is established on a trademark right, exclusive license or non-exclusive license, unless
otherwise provided for by contract, the pledgee may not use the registered trademark in connection with the designated goods or designated services.
(2) Article 96 (subrogation) of the Patent Act shall apply mutatis mutandis to pledges on a trademark right, exclusive license or non-exclusive license.
(3) Articles 98(1)(iii) and 98(2) (effects of registration) of the Patent Act shall apply mutatis mutandis to pledges on a trademark right or exclusive license.
(4) Article 99(3) (effects of registration) of the Patent Act shall apply mutatis mutandis to pledges on a non-exclusive license.
Art. 35. Mutatis mutandis application of Patent Act Article 73 (joint ownership), 76 (extinguishment of patent right in absence of heir), 97(1) (abandonment), and 98(1)(i) and 98(2) (effects of registration) of the Patent Act shall apply mutatis mutandis to trademark rights. In such a case, “transfer (excluding those by general succession including inheritance)” in Article 98(1)(i) of the Patent Act shall read “division and transfer (excluding those by general succession including inheritance).”
Part 2 Infringement of Rights
Art. 36. Right to demand injunction (1) The trademark right holder or the exclusive licensee may demand a person who is infringing or is
likely to infringe the trademark right or the exclusive license to stop or prevent such infringement. (2) In making such a demand under the preceding paragraph, the trademark right holder or the exclusive
licensee may demand the person to take measures necessary for the prevention of such infringement, including the destruction of articles which constitute the act of infringement and the removal of equipment used for or contributing to the act of infringement.
Art. 37. Acts deemed to constitute infringement (1) Any of the following acts shall be deemed to constitute infringement of a trademark right or an
exclusive license: (i) the use of a trademark similar to the registered trademark in connection with its designated goods
or designated services, or the use of the registered trademark or a trademark similar thereto in connection with goods or services similar to its designated goods or designated services;
(ii) the possession, for the purpose of assignment or delivery, of the designated goods, or goods similar to the designated goods, or designated services, affixed with the registered trademark or a trademark similar thereto on the goods or their packaging;
(iii) the possession or importation of products affixed with the registered trademark or a trademark similar thereto, which are to be used by persons receiving services, where such products are for the purpose of the provision of the designated services or services similar to the designated services or the designated goods through use of the said products;
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(iv) the assignment, delivery, or the possession for the purpose of assignment or delivery or importation of products affixed with the registered trademark or a trademark similar thereto, to be used by a person receiving services for the purpose of causing the provision of the designated services or services similar to the designated services or the designated goods by using the said products;
(v) the possession of products indicating the registered trademark or a trademark similar thereto, for the purpose of using the registered trademark or a trademark similar thereto in connection with the designated goods or designated services or goods or services similar thereto;
(vi) the assignment, delivery, or possession for the purpose of assignment or delivery, of products indicating the registered trademark or a trademark similar thereto, for the purpose of causing the registered trademark or a trademark similar thereto to be used in connection with the designated goods or designated services, or goods or services similar thereto;
(vii) the manufacture or importation of products indicating the registered trademark or a trademark similar thereto, for the purpose of using or causing to be used the registered trademark or a trademark similar thereto in connection with the designated goods or designated services or goods or services similar thereto; and
(viii) the manufacture, assignment, delivery or importation, as a business, of products to be used exclusively for the manufacturing of products indicating the registered trademark or a trademark similar thereto.
Art. 38. Presumption of amount of damage, etc. (1) Where a trademark right holder or the exclusive licensee claims against an infringer compensation for
damage sustained as a result of the intentional or negligent infringement of the trademark right or the exclusive license, and the act of infringement consists of the assignment of goods, the amount of damage sustained by the trademark right holder or the exclusive licencee may be presumed to be the amount of profit per unit of goods which would have been sold by the trademark right holder or the exclusive licencee if there had been no such act of infringement, multiplied by the quantity of goods assigned by the infringer (hereinafter referred to as the “Assigned Quantity”), the maximum of which shall be the amount attainable by the trademark right holder or the exclusive licencee in light of the capability of the trademark right holder or the exclusive licencee to use such goods. Notwithstanding the foregoing, if any circumstances exist under which the trademark right holder or the exclusive licencee would have been unable to sell the assigned quantity in whole or in part, the amount calculated as the number of goods not able to be sold due to such circumstances shall be deducted.
(2) Where the trademark right holder or the exclusive licensee claims against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the trademark right or the exclusive license,and the infringer earned profits from the act of infringement, the amount of profits earned by the infringer shall be presumed to be the amount of damage sustained by the trademark right holder or the exclusive licensee.
(3) The trademark right holder or the exclusive licensee may claim against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the trademark right or the exclusive license, by regarding the amount the trademark right holder or the exclusive licensee would have been entitled to receive for the use of the registered trademark as the amount of damage sustained.
(4) The preceding paragraphs shall not prevent any relevant party from claiming compensation for damage in an amount exceeding the amount provided for therein. In such case, where the infringer committed the infringement of the trademark right or the exclusive licence without intent or gross negligence, the court may take these circumstances into consideration in determining the amount of damages to be awarded.
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Art. 39. Mutatis mutandis application of Patent Act Article 103 (Presumption of negligence), 104bis[104-2] through 105sexies[105-6] (Obligation to clarify acts in concrete manner; Restriction on exercise of rights of patentee, etc.; Production of documents, etc.; Expert opinion for calculation of damages; Determination of reasonable damages; Order to keep confidentiality; Revocation of confidentiality order; Notification of petition requesting inspection of trial record, etc.) and 106 (Measures to restore credibility) of the Patent Act shall apply mutatis mutandis to the infringement of a trademark right and exclusive license.
Part 3 Registration Fees
Art. 40. Registration fees (1) A person obtaining the registration establishing a trademark right shall pay as a registration fee for
each trademark registration the amount of 66,000 yen multiplied by the number of classes (refers to classes of the classification of goods and services specified by Cabinet Order provided for in Article 6(2), to which the designated goods or designated services belong, hereinafter the same).
(2) A person filing a request for the registration of renewal of the duration of a trademark right shall pay as a registration fee for each trademark registration the amount of 151,000 yen multiplied by the number of classes.
(3) The preceding two provisions shall not apply to trademark rights belonging to the State. (4) Where a trademark right is jointly owned by the State and a person or persons other than the State,
and the portion of their respective shares of said trademark right has been agreed, notwithstanding Paragraphs 1 and 2, a registration fee provided for the said paragraphs shall be the amount of registration fee provided for in the said paragraphs multiplied by the total ratio of the share of each person other than the State, which shall be paid by the person or persons other than the State.
(5) Any fractional figures of the registration fee calculated in accordance with the preceding paragraph smaller than 10 yen, if any, shall be discarded.
(6) The registration fee provided for in Paragraphs (1) and (2) shall be paid by patent revenue stamps as provided by ordinance of the Ministry of Economy, Trade and Industry. Notwithstanding the foregoing, the payment may be made in cash, if permitted under the relevant ordinance of the Ministry of Economy, Trade and Industry.
Art. 41. Time limit for payment of registration fee (1) The registration fee under Article 40(1) shall be paid within 30 days from the service of a certified
copy of an examiner’s decision or a hearing decision to the effect that a trademark is to be registered. (2) Upon the request of a person required to pay the registration fee, the Commissioner of the Patent
Office may extend the period of time provided for in the preceding paragraph by a maximum of 30 days.
(3) The registration fee under Article 40(2) shall be paid at the time of filing of a request for renewal of registration.
Art. 41-2. Payment of registration fee by installments (1) Notwithstanding Article 40(1), a person obtaining a registration establishing a trademark right may
pay the prescribed registration fee by installments. In such a case, 44,000 yen multiplied by the number of classes shall be paid for each trademark registration within 30 days from the service of a certified copy of an examiner’s decision or a hearing decision to the effect that a trademark is to be registered, and 44,000 yen multiplied by the number of classes shall be paid for each trademark registration no later than five years prior to the expiration of the duration of the trademark right.
(2) Notwithstanding Article 40(2), a person filing a request for the registration of renewal of the duration of a trademark right may pay the prescribed registration fee by installments. In such a case, the said applicant shall pay 101,000 yen multiplied by the number of classes per case at the time of filing of the request for the registration of renewal, and an additional 101,000 yen multiplied by the number of classes per case no later than five years prior to the expiration of the duration of the trademark right.
(3) Where the trademark right holder is unable to pay the prescribed registration fee no later than five years prior to the expiration of the duration of the trademark right in accordance with Paragraph (1) of the preceding paragraph, the trademark right holder may make a delayed payment for such a fee within six months after the lapse of such time limit.
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(4) Where the trademark right holder fails to pay the prescribed registration fee due and payable no later than five years prior to the expiration of the duration of the trademark in accordance with Paragraph (1) or (2) and the surcharge for late registration provided for in Article 43(3) within the time limit permitted to make a delayed payment for the registration fee in accordance with the preceding paragraph, the trademark right is deemed to have been extinguished retroactively as of the last day five years prior to the expiration of the duration.
(5) Articles 40(3) through 40(5) shall apply mutatis mutandis to Paragraphs (1) and (2). (6) Article 41(2) shall apply mutatis mutandis to the payment of the prescribed registration fee due and
payable within 30 days from the service of a certified copy of an examiner’s decision or a hearing decision to the effect that a trademark is to be registered under Paragraph (1).
Art. 41-3. Payment of registration fee by interested person (1) Any interested person may make payment of the registration fee (excluding the registration fee due
and payable at the time of filing of a request for renewal of registration) even against the intention of the person by whom the said fee is to be paid.
(2) An interested person who makes payment of the registration fee in accordance with the preceding paragraph may demand payment to reimburse the cost thereof from the person by whom the said fee was to have been paid, to the extent that the said person receives actual benefits therefrom.
Art. 42. Refund of registration fee already paid (1) Only the following registration fees are refundable upon request by a payee:
(i) a registration fee paid in excess, or in error; or (ii) a registration fee due and payable no later than five years prior to the expiration of the duration of
the trademark right under Article 41bis(1)[41-2(1)] or 41bis(2)[41-2(2)] (limited to the case where a revocation decision under Article 43ter(2)[43-3(2)] or a hearing decision to the effect that a trademark registration is to be invalidated becomes final and conclusive no later than five years prior to the expiration of the duration of the trademark right).
(2) No refund of any registration fee under the preceding paragraph may be requested after the lapse of one year from the day on which the registration fee is paid in the case of registration fees provided for in Sub-paragraph (i) of the preceding paragraph and six months from the day on which a revocation decision under Article 43ter(2)[43-3(2)] or hearing decision becomes final and conclusive in the case of registration fees provided for in Sub-paragraph (ii) of the preceding paragraph.
Art. 43. Registration surcharge (1) A person filing a request for renewal of registration under Article 20(3) or 21(1) shall pay, in addition
to the registration fee due and payable under Article 40(2), a surcharge in an amount equivalent to the registration fee.
(2) Where Article 41bis(2)[41-2(2)] is applicable, a person filing a request under the preceding paragraph shall pay, in addition to the registration fee due and payable at the time of filing of the request for registration of renewal under Article 41-2(2), a surcharge in an amount equivalent to the registration fee.
(3) Where Article 41bis(3)[41-2(3)] is applicable, the trademark right holder shall pay, in addition to the registration fee due and payable no later than five years prior to the expiration of the duration of the trademark right under Article 41bis(1) or (2) [41-2(1) or (2)], a surcharge in an amount equivalent to the registration fee.
(4) The surcharges under the preceding three paragraphs shall be paid by patent revenue stamps as provided by ordinance of the Ministry of Economy, Trade and Industry. Notwithstanding the foregoing, the payment may be made in cash, if permitted by ordinance of the Ministry of Economy, Trade and Industry.
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CHAPTER 4-2 OPPOSITION TO REGISTRATION
Art. 43-2. Opposition to registration Any person may file with the Commissioner of the Patent Office an opposition to a registration within two months from the date of publication of the Gazette containing the trademark, on the grounds that the trademark registration falls under any of the following sub-paragraphs. In such case, an opposition to a registration may be filed for each designated good or designated service if the relevant trademark has been registered in connection with two or more designated goods or designated services:
(i) where the trademark registration has been made in violation of Article 3, 4(1), 7-2(1), 8(1), 8(2), 8(5), 51(2) (including its mutatis mutandis application under Article 52-2(2)), 53(2) of this Act or Article 25 of the Patent Act as applied mutatis mutandis under Article 77(3) of this Act; and (ii) where the trademark registration has been made in violation of any relevant treaty.
Art. 43-3. Decision (1) A hearing examination and decision on an opposition to a registration shall be conducted by a judicial
panel consisting of three or five judicial examiners. (2) Where the judicial examiners find the trademark registration relating to an opposition to registration
falls under any of the sub-paragraphs of Art. 43-2, the judicial examiners shall render a decision to the effect that the trademark registration is to be revoked (hereinafter referred to as a “revocation decision”).
(3) Where the revocation decision becomes final and conclusive, the relevant trademark right shall be deemed never to have existed.
(4) Where the judicial examiners find the trademark registration relating to an opposition to registration does not fall under any of the sub-paragraphs of Art. 43-2, the judicial examiners shall render a decision to the effect that the trademark registration is to be maintained.
(5) The decision under the preceding paragraph shall not be subject to appeal.
Art. 43-4. Formal requirements for filing an opposition, etc. (1) A person who opposes the registration of a trademark shall present to the Commissioner of the Patent
Office a written opposition stating the following matters: (i) the name and the domicile or residence of the opponent to the registration and a representative(s)
thereof; (ii) the indication of the trademark registration relating to the opposition to registration; and (iii) the grounds of the opposition to registration and the indication of supporting evidence.
(2) An amendment of the written opposition to registration presented under the preceding paragraph shall not change the gist thereof. Notwithstanding, this provision shall not apply to any amendment with respect to the items provided for in Sub-paragraph (iii) of the preceding paragraph, provided that such amendment is made no later than thirty days from the lapse of the term provided for in Article 43-2.
(3) The Commissioner of the Patent Office may, upon request or ex officio, extend the period provided for in the preceding paragraph for a person in a remote area or an area with transportation difficulty.
(4) The presiding judicial examiner shall transmit a copy of the written opposition to the trademark right holder.
(5) Article 46(3) shall apply mutatis mutandis to the case where an opposition to registration is filed.
Art.43-5. Designation of judicial examiners, etc. Articles 136(2) and 137 to 144 of the Patent Act as applied mutatis mutandis under Article 56(1) of this Act shall apply mutatis mutandis to the judicial panel under Article 43ter(1)[43-3(1)] and the judicial examiners constituting thereof.
Art.43-5-2 Hearing Clerk (1) The Commissioner of the Patent Office shall designate a hearing clerk for each case of opposition to
registration. (2) Articles 144-2(3) to 144-2(5) of the Patent Act as applied mutatis mutandis under Article 56(1) of this
Act shall apply mutatis mutandis to the hearing clerk provided for in the preceding paragraph.
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Art.43-6. Hearing examination procedure, etc. (1) The hearing examination of the opposition to registration shall be conducted by documentary
examination. Notwithstanding the foregoing, where a petition is filed by the trademark right holder, the opponent, an intervenor or ex officio, the presiding judicial examiner may decide to conduct the hearing proceedings by oral examination.
(2) Articles 145(3) to 145(5), 146 and 147 of the Patent Act as applied mutatis mutandis under Article 56(1) of this Act shall apply mutatis mutandis to a hearing by oral examination provided for in the proviso to the preceding paragraph.
(3) Where any ground for suspension or termination of procedures is applicable to one of the joint trademark right holders for a hearing examination and decision on an opposition to a registration, the said suspension or termination shall have effect on all such joint trademark right holders.
Art. 43-7. Intervention (1) In a hearing examination to render a decision on an opposition to registration, any person who has a right relating to the trademark right or any other person who has an interest in the trademark right may intervene in the hearing examination in order to assist the trademark right holder until the decision on the opposition to registration is rendered. (2) Articles 148(4), 148(5) and 149 of the Patent Act as applied mutatis mutandis under Article 56(1) of this Act shall apply mutatis mutandis to the intervenor provided for in the preceding paragraph.
Art. 43-8 Examination and preservation of evidence Article 150 and 151 of the Patent Act as applied mutatis mutandis under Article 56(1) of this Act shall apply mutatis mutandis to the examination and preservation of evidence in the hearing examination of the opposition to registration.
Art. 43-9. Ex officio hearing examination (1) In a hearing examination of an opposition to registration, any grounds not pleaded by the trademark right holder, the opponent or the intervenor may be examined. (2) In a hearing examination of an opposition to registration, no examination shall be conducted on any
designated goods or designated services for which the opposition to registration is not raised.
Art. 43-10. Joint or separate conduct of oppositions (1) Where two or more oppositions to registration are filed in relation to the same trademark right, unless
special circumstances exist, the hearing examinations thereof shall be conducted jointly. (2) A hearing examination conducted jointly in accordance with the preceding paragraph may later be
divided.
Art. 43-11. Withdrawal of opposition (1) An opposition to registration, once filed, may not be withdrawn after the notification under Article 43-
12 is served. (2) Article 155(3) of the Patent Act as applied mutatis mutandis under Article 56(2) of this Act shall apply mutatis mutandis to the withdrawal of the opposition to registration.
Art.43-12. Notification of reasons for revocation Where the presiding judicial examiner intends to render a decision of revocation, the presiding judicial examiner shall notify the trademark right holder and the intervenor of the reasons for revocation of the trademark registration and give the said parties an opportunity to present a written opinion, designating a reasonable time limit.
Art.43-13. Formal requirements of decision (1) The decision with regard to an opposition to registration shall be rendered in writing stating the
following matters: (i) the case number of the opposition to registration; (ii) the name and the domicile or residence of the trademark right holder, the opponent, the intervenor
and their representative(s); (iii) an indication of the trademark registration on which the decision was rendered; (iv) the conclusions of and reasons for the decision; and
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(v) the date of the decision. (2) Where a decision has been rendered, the Commissioner of the Patent Office shall serve a certified
copy of the decision to the trademark right holder, the opponent, the intervenor and persons whose request for intervention in the hearing examination on the opposition to registration has been refused.
Art. 43-14. Mutatis mutandis application of provisions concerning hearing (1) Articles 133, 133-2, 134(4), 135, 152, 168, 169(3) to 169(6) and 170 of the Patent Act as applied
mutatis mutandis under Article 56(1) of this Act shall apply mutatis mutandis to a hearing examination and decision on an opposition to registration.
(2) Article 43-3(5) of this Act shall apply mutatis mutandis to a decision under Article 135 of the Patent Act as applied mutatis mutandis under the preceding paragraph.
CHAPTER 5 HEARING
Art. 44. Hearing against examiner’s decision of refusal (1) A person who has received an examiner's decision to the effect that an application is to be refused and
is dissatisfied may file a petition for a hearing against the examiner’s decision of refusal within 30 days from the date the certified copy of the examiner's decision has been served.
(2) Where, due to reasons beyond the control of the of the person, the person filing a petition for a hearing pursuant to the preceding paragraph is unable to file the petition within the time limit as prescribed in the preceding paragraph, said person may, notwithstanding the said paragraph, file the petition within 14 days (where resident abroad, within two months) from the date on which the reasons for not filing ceased to be applicable, but not later than six months following the expiration of the said time limit.
Art. 45. Hearing against examiner’s decision of dismissal of amendments (1) Any person who has received a decision of dismissal of amendments under Article 16-2(1) and is
dissatisfied may file a petition for a hearing against the decision within 30 days from the date the certified copy of the decision has been served. Notwithstanding the foregoing, this provision shall not apply where a new application for trademark registration under Article 17-3(1) of the Design Act as applied mutatis mutandis pursuant to Article 17-2(1) of this Act is filed.
(2) Article 44(2) shall apply mutatis mutandis to a petition for a hearing under the preceding paragraph.
Art. 46. Hearing for invalidation of trademark registration (1) Where a trademark registration falls under any of the following items, a petition for a hearing for
invalidation of the trademark registration may be filed. In this case, where the trademark has been registered in connection with two or more designated goods or designated services, a petition may be filed for each of such designated goods or designated service:
(i) where the trademark registration has been made in violation of Article 3, 4(1), 7-2(1), 8(1), 8(2), 8(5), 51(2) (including cases where it is applied mutatis mutandis pursuant to Article 52-2(2)), 53(2) of this Act or Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 77(3) of this Act;
(ii) where the trademark registration has been made in violation of a treaty; (iii) where the trademark registration has been made on an application for trademark registration filed
by a person who has not succeeded the rights deriving from the application for trademark registration;
(iv) where, after the trademark registration, the trademark right holder has become unable to enjoy the trademark right pursuant to Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 77(3) of this Act, or the trademark registration has become in violation of a treaty;
(v) where, after the trademark registration, the registered trademark has become a trademark that falls under any of Articles 4(1)(i) to 4(1)(iii), 4(1)(v), 4(1)(vii) and 4(1)(xvi); and
(vi) where, after the trademark registration of a regionally based collective trademark, the trademark right holder has ceased to be an Association, etc., or the registered trademark has ceased to be a trademark well known among consumers as that indicating goods or services in connection with the business of the trademark right holder or its members, or ceases to fall under any of the items of Article 7-2(1).
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(2) A petition for a hearing under the preceding paragraph may be filed even after the extinguishment of the trademark right.
(3) Where a petition for a hearing is filed under the preceding paragraph, the presiding judicial examiner shall notify the exclusive licensee in connection with the trademark right, and other persons who have any registered rights relating to the trademark registration.
Art. 46-2 (1) Where a hearing decision to the effect that the trademark registration is to be invalidated becomes
final and conclusive, the trademark right shall be deemed never to have existed. Notwithstanding the foregoing, where the trademark registration falls under any of Items (iv) through (vi) of Paragraph (1) of the Article 46, and a hearing decision to the effect that the trademark registration is to be invalidated becomes final and conclusive, the trademark right shall be deemed not to have existed from the time any of Items (iv) through (vi) of the said paragraph first became applicable to the trademark registration.
(2) In the case of the proviso to the preceding paragraph, where the time at which any of Items (iv) through (vi) of Article 46(1) first became applicable to the trademark registration cannot be specified, the trademark right shall be deemed not to have existed from the date of registration of the petition for a hearing for invalidation of the said trademark registration.
Art. 47. (1) Where a trademark registration has been made in violation of Article 3, 4(1)(viii), 4(1)(xi)
to 4(1)(xiv), 8(1), 8(2) or 8(5), where a trademark ragistration has been made in violation of Article 4(1)(x) or 4(1)(xvii) (excluding the case where a trademark has been registered for the purpose of unfair competition), where a trademark has been registered in violation of Article 4(1)(xv) (excluding the case where a trademark has been registered for unfair purposes), or where a trademark registration falls under Article 46(1)(iii), a petition for a hearing relating to the trademark registration under Article 46(1) may not be filed after a lapse of five years from the date of registration of the establishment of the trademark right.
(2) Where a trademark registration has been made in violation of Article 7-2(1) (limited to the case where the trademark was not well known, as a result of the use of the trademark, among consumers as that indicating goods or services in connection with the business of the applicant for the trademark registration or its members) and five years have lapsed from the date of registration of the establishment of the trademark right, and further the registered trademark is well known among consumers as that indicating goods and services in connection with the business of the trademark right holder or its members, a petition for a hearing relating to the trademark registration under Article 46(1) may not be filed.
Art. 48 and Art. 49 Deleted
Art. 50 Hearing for cancellation of trademark registration (1) Where a registered trademark (including a trademark deemed identical from common sense with the
registered trademark, including a trademark consisting of characters identical to the registered trademark but in different fonts, a trademark that is written in different characters – Hiragana characters, Katakana characters, or Latin alphabetic characters- from the registered trademark but identical with the registered trademark in terms of sound and concept, and a trademark consisting of figures that are considered identical in terms of appearance as those of the registered trademark, hereinafter the same in this article) has not been used in Japan in connection with any of the designated goods and designated services for three consecutive years or longer by the trademark right holder, the exclusive licensee or non-exclusive licensee , any person may file a petition for a hearing for cancellation of such trademark registration in connection with the relevant designated goods or designated services.
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(2) Where a petition for a hearing under the preceding paragraph is filed, unless the respondent proves that any of the trademark right holder, the exclusive licensee or non-exclusive licensee has used the registered trademark in Japan in connection with any of the designated goods or designated services relating to the petition within three years prior to the filing of the petition for the hearing, the trademark right holder may not prevent the cancellation of the trademark registration in connection with the relevant designated goods or designated services. Notwithstanding the foregoing, this shall not apply where the respondent shows valid reasons for nonuse of the registered trademark in connection with the relevant designated goods or designated services.
(3) Where the registered trademark in connection with the designated goods or designated services relating to the petition under Paragraph (1) has been used in Japan by any of the trademark right holder, the exclusive licensee or non-exclusive licensee, during the period from three months prior to the filing of the petition for a hearing under Paragraph (1) to the date of the filing of the petition, and where the petitioner proves that the registered trademark has been used after the user became aware of the fact that the said petition for a hearing would be filed, the use of the registered trademark shall not fall under the use of the registered trademark under Paragraph (1). Notwithstanding the foregoing, this shall not apply to the case where the respondent shows valid reasons for the use of the registered trademark.
Art. 51. (1) Where a trademark right holder intentionally uses, either a trademark similar to a registered trademark
in connection with the designated goods or designated services, or a registered trademark in connection with goods or services similar to the designated goods or designated services or a trademark similar thereto, in a manner that misleads as to the quality of the goods or services or causes confusion in connection with the goods or services relating to a business of another person, any person may file a petition for a hearing for cancellation of the trademark registration.
(2) The previous trademark right holder may not be granted a registration of the same trademark or of a trademark similar thereto in connection with the designated goods or designated services for which the trademark registration has been cancelled, or in connection with goods or services similar thereto, until after a lapse of five years from the date the hearing decision to the effect that the trademark registration is to be cancelled under the preceding paragraph becomes final and conclusive.
Art. 52 A petition for a hearing under Article 51(1) may not be filed after a lapse of five years from the date on which the the trademark right holder ceased to use the trademark in the manner under the said paragraph.
Art. 52-2 (1) Where a trademark right to a similar registered trademark to be used in connection with identical goods or services, or a trademark right to an identical or similar registered trademark to be used in connection with similar goods or services becomes owned by a different trademark right holder as a result of transfer of the trademark right, if the trademark right holder of one of the registered trademarks uses, for the purpose of unfair competition, the registered trademark for its designated goods or designated services in a manner that causes confusion in connection with the goods or services relating to the business of the trademark right holder, the exclusive licensee or non-exclusive licensee of the other registered trademark, any person may file a petition for a hearing for cancellation of the trademark registration. (2) Articles 51(2) and 52 shall apply mutatis mutandis to a hearing under the preceding paragraph.
Art. 53 (1) Where an exclusive licensee or non-exclusive licensee uses a registered trademark in connection with
the designated goods or designated services or in connection with goods or services similar thereto, or a trademark similar thereto, in a manner that misleads as to the quality of the goods or services or causes confusion in connection with the goods or services relating to the business of another person, any person may file a petition for a hearing for cancellation of the trademark registration. Notwithstanding the foregoing, this shall not apply to the case where the trademark right holder was not aware of the fact and using due care.
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(2) The previous trademark right holder, the exclusive licensee or non-exclusive licensee who used the trademark in a manner prescribed in the preceding paragraph may not be granted a registration of the same trademark or of a trademark similar thereto in connection with the designated goods or designated services for which the trademark registration has been canceled, or in connection with goods or services similar thereto, until after the lapse of five years from the date the hearing decision to the effect that the trademark registration is to be canceled under the preceding paragraph becomes final and conclusive.
(3) Article 52 shall apply mutatis mutandis to a hearing under Paragraph (1).
Art. 53-2. Where a registered trademark is a trademark relating to a right to a trademark (limited to a right equivalent to a trademark right) held by a person in a country of the Union to the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty or a trademark similar thereto, and the designated goods or designated services thereof are goods or services relating to the said right or goods or services similar thereto, and further, the application for trademark registration was filed without the approval of the person who has the right relating to the trademark, without any reasonable ground, by his agent or representative or by his former agent or representative within one year prior to the filing date of the trademark registration, the person who has the right relating to the trademark may file a petition for a hearing for cancellation of the trademark registration.
Art. 53-3. A petition for a hearing under Article 53-2 may not be filed after the lapse of five years from the date on which the establishment of the trademark right has been registered.
Art. 54. (1) Where a hearing decision to the effect that the trademark registration is to be canceled becomes final
and conclusive, the trademark right shall become extinguished thereafter. (2) Notwithstanding the preceding paragraph, where a hearing decision to the effect that the trademark
registration is to be canceled becomes final and conclusive by a hearing under Article 50(1), the trademark right shall be deemed to have become extinguished on the date of registration of the petition for a hearing under the said paragraph.
Art. 55 The provision of Article 46(3) shall apply mutatis mutandis to the case where a petition for a hearing is filed under Article 50(1), 51(1), 52-2(1), 53(1) or 53-2.
Art. 55-2. Special rules on hearings against examiner’s decision of refusal (1) The provisions of Articles 15-2 and 15-3 shall apply mutatis mutandis to the case where reasons for refusal that are different from those contained in the examiner’s decision are found in the hearing under Article 44(1). (2) The provision of Article 16 shall apply mutatis mutandis where a petition for a hearing under
Article 44(1) is found to have reasonable grounds. Notwithstanding the foregoing, this provision shall not apply where a hearing decision to the effect that a further examination is to be carried out under Article 160(1) of the Patent Act as applied mutatis mutandis pursuant to Article 56(1) of this Act is rendered.
(3) The provisions of Article 16-2 of this Act and Article 17-3 of the Design Act shall apply mutatis mutandis to a hearing under Article 44(1) of this Act. In this case, the term “files a petition for a hearing under Article 45(1)" in Article 16-2(4) shall be deemed to be replaced with "institutes an action under Article 63(1)."
Art. 56. Mutatis mutandis application of Patent Act (1) The provisions of Articles 131(1), 131-2(1), 132 to 133-2, 134(1), 134(3), 134(4), 135 to 154, 155(1), 155(2), 156 to 158, 160(1), 160(2), 161, and 167 to 170 (effect of hearing decision, petition for hearing, judicial examiner, hearing procedures in relation to litigation, and costs of hearing) of the Patent Act shall apply mutatis mutandis to a hearing.
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In this case, the term “is made with respect to the grounds for the petition as provided in Subsection (1) Paragraph (iii) of the preceding section in the course of filing a petition for a hearing other than a hearing for patent invalidation, or in the event that approval is granted by the presiding judicial examiner under the following subsection.” in Article131-2(1) of the Patent Act shall be deemed to be replaced with “is made with respect to the grounds for the petition as provided in Article 131(1)(iii) of the Patent Act as applied mutatis mutandis pursuant to Article 56(1) of this Act in the course of filing a petition for a hearing other than a hearing under Article 46(1) of the Trademark Act”, the term “a hearing for patent invalidation or a hearing for invalidation of the registration of extension of term” in Articles 132(1) and 167 of the Patent Act and the term “a hearing for patent invalidation or a hearing for invalidation of the registration of extension of term” in Articles 145(1) and 169(1) of the Patent Act shall be deemed to be replaced with “a hearing under Article 46(1), 50(1), 51(1), 52-2(1), 53(1) or 53-2 of the Trademark Act”, the term “a party in the case or an intervener in the case" in Article 139(i), (ii) and (v) of the Patent Act shall be deemed to be replaced with "a party in the case, an intervener in the case or an opponent to the registration in the case, the term “a party in the case or an intervener in the case" in Article 139(iii) of the Patent Act shall be deemed to be replaced with "a party in the case, an intervener in the case or an opponent to the registration in the case", the term "a hearing against the examiner’s decision of refusal” in Article 161 of the Patent Act and “a hearing against an examiner’s decision of refusal and a hearing for correction" in Article 169(3) of the Patent Act shall be deemed to be replaced with “a hearing under Article 44(1) or 45(1) of the Trademark Act”, and the term “the decision in another hearing" in Article 168(1) of the Patent Act shall be deemed to be replaced with “a decision on the opposition to the registration or a hearing decision in another hearing."
(2) The provisions of Article 155(3) (Withdrawal of petition for hearing) of the Patent Act shall apply mutatis mutandis to a hearing under Article 46(1) of this Act.
Art. 56-2. Mutatis mutandis application of Design Act The provision of Article 51 of the Design Act shall apply mutatis mutandis to a hearing under Article 45(1) of this Act.
CHAPTER 6 REHEARING AND LITIGATION
Art. 57. Petition for rehearing (1) A party in the case or an intervener may file a petition for a rehearing against a final and conclusive
revocation decision or a final and conclusive hearing decision.
The provisions of Articles 338(1), 338(2) and 339 (grounds for retrial) of the Code of Civil Procedure (Law 109 of 1996) shall apply mutatis mutandis to a petition for a rehearing under the preceding paragraph.
Art. 58. (1) Where the demandant of a hearing in conspiracy with the respondent has caused a hearing decision to
be rendered for the purpose of impairing the right or interest of a third party, the third party may file a petition for a rehearing against the final and conclusive hearing decision.
(2) A petition for a rehearing under the preceding paragraph shall be filed against the demandant and the respondent in the hearing as joint respondents.
Art.59. Limitations of effects of trademark right restored by a rehearing Where a trademark right relating to a revoked, canceled or invalidated trademark registration has been restored by a rehearing, the trademark right shall have no effect on any of the following acts:
(i) the use of the registered trademark in good faith in connection with the designated goods or designated services after the revocation decision or hearing decision became final and conclusive but before the registration of the petition for a rehearing; and
(ii) the acts listed in each of the items in Article 37 committed in good faith after the revocation decision or hearing decision became final and conclusive but before the registration of the petition for a rehearing.
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Art. 60. (1) Where a trademark right relating to a revoked, canceled or invalidated trademark registration has been
restored by a rehearing or, where the establishment of a trademark right with respect to an application for trademark registration refused by a hearing decision has been registered through a rehearing, and where a person, after the revocation decision or hearing decision becomes final and conclusive but before the registration of a petition for a rehearing, uses the registered trademark or a trademark similar thereto in Japan in good faith in connection with the designated goods or designated services or in connection with goods or services similar thereto, and as a result, the said trademark has become well known among consumers as that indicating goods or services relating to the business of the person at the time of registration of the filing of a petition for a rehearing, the person shall have the right to use the trademark in connection with such goods or services, provided that the said person continuously uses the trademark for such goods or services. The same shall apply to those to whom such business is succeeded.
(2) The provision of Article 32(2) shall apply mutatis mutandis to the preceding paragraph.
Art. 60-2. Mutatis mutandis application of provisions concerning hearing (1) The provisions of Articles 43-3, 43-5 to 43-9 and 43-12 to 43-14 of this Act, Article 131(1), the principal sentence of Article 131-2(1), 132(3), 154, 155(1) and 156 of the Patent Act as applied mutatis mutandis pursuant to Article 56(1) of this Act, and Article 155(3) of the Patent Act as applied mutatis mutandis pursuant to Articles 56(2) of this Act shall apply mutatis mutandis to a rehearing against a final and conclusive revocation decision. (2) The provision of Article 55-2 shall apply mutatis mutandis to a rehearing against a final and
conclusive hearing decision on a hearing under Article 44(1). (3) The provision of Article 56-2 shall apply mutatis mutandis to a rehearing against a final and
conclusive hearing decision on a hearing under Article 45(1).
Art. 61. Mutatis mutandis application of Patent Act The provisions of Article 173 (time limit for petition for rehearing) and Articles 174(2) and 174(4) (application mutatis mutandis of provisions regarding appeal/hearing, etc.) of the Patent Act shall apply mutatis mutandis to a petition for a rehearing. In this case, the term “hearing decision” in Paragraphs (1) and (3) to (5) of Article 173 of the Patent Act shall be deemed to be replaced with “ cancellation ruling or hearing decision", the term “a hearing for patent invalidation or a hearing for invalidation of the registration of extension of the term” in Article 174(2) of the Patent Act shall be deemed to be replaced with “a hearing under Article 46(1), 50(1), 51(1), 52-2(1), 53(1) or 53-2 of the Trademark Act.”
Art.62. Mutatis mutandis application of Design Act (1) The provision of Article 58(2) (application mutatis mutandis of provisions regarding appeal/hearing)
of the Design Act shall apply mutatis mutandis to a rehearing against a final and conclusive hearing decision on a hearing under Article 44(1) of this Act.
(2) The provision of Article 58(3) of the Design Act shall apply mutatis mutandis to a rehearing against a final and conclusive hearing decision on a hearing under Article 45(1) of this Act.
Art.63. Actions against hearing decisions, etc. (1) The Tokyo High Court shall have exclusive jurisdiction over any action against a revocation decision or a hearing decision, an action against a ruling to dismiss an amendment under Article 16-2(1) as applied mutatis mutandis pursuant to Article 55-2(3) (including cases where it is applied mutatis mutandis pursuant to Article 60-2(2)) and an action against a ruling to dismiss a written opposition or a petition for hearing or rehearing.
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(2) The provisions of Articles 178(2) to 178(6) (time limit for institution of action, etc.), 179 to 180-2 (appropriate party as respondent, notification of institution of action, opinion of the Commissioner of the Patent Office in rehearings annulling a hearing decision), 181(1) and 181(5) (annulment of hearing decision or ruling) and 182 (delivery of original copy of judgment) of the Patent Act shall apply mutatis mutandis to the actions under the preceding paragraph. In this case, the term “the hearing” in Article 178(2) of the Patent Act shall be deemed to be replaced with “the examination or hearing of the opposition to the registration", the term “a hearing for patent invalidation or a hearing for invalidation of the registration of extension of the term” in Article 179 of the Patent Act shall be deemed to be replaced with “a hearing under Article 46(1), 50(1), 51(1), 52-2(1), 53(1) or 53-2 of the Trademark Act.”
Art.63-2. Relationship between hearing and litigation The provision of Article 184-2 (relationship between hearing and litigation) of the Patent Act shall apply mutatis mutandis to an action demanding the annulment of measures (excluding measures under Article 77(7)) imposed by this Act or an order thereunder.
CHAPTER 7 DEFENSIVE MARKS
Art. 64. Requirements for defensive mark registration (1) Where a registered trademark relating to goods is well known among consumers as that indicting
the designated goods in connection with the business of a trademark right holder, the trademark right holder may, where the use by another person of the registered trademark in connection with goods other than the designated goods relating to the registered trademark or goods similar thereto or in connection with services other than those similar to the designated goods is likely to cause confusion between said other person's goods or services and the designated goods relating to his own business, obtain a defensive mark registration for the mark identical with the registered trademark in connection with the goods or services for which the likelihood of confusion exists.
(2) Where a registered trademark relating to services is well known among consumers as that indicting the designated services in connection with a business of a trademark right holder, the trademark right holder may, where the use by another person of the registered trademark in connection with services other than the designated services relating to the registered trademark or services similar thereto or in connection with goods other than those similar to the designated services is likely to cause confusion between said other person's services or goods and the designated services relating to his own business, obtain a defensive mark registration for the mark identical with the registered trademark in connection with the services or goods for which a likelihood of confusion exists.
(3) For the purpose of the application of the preceding 2 paragraphs in relation to defensive mark registrations concerning a trademark right relating to a regionally based collective trademark, the term “his own” in the said paragraphs shall be deemed to be replaced with “its own or its members’”.
Art. 65. Conversion of application [Japanese characters] (1) An applicant for trademark registration may convert an application for trademark registration into an
application for defensive mark registration. (2) The conversion of an application under the preceding paragraph shall not be made after the
examiner’s decision or the hearing decision on the application for trademark registration becomes final and conclusive.
(3) The provisions of Article 10(2), 10(3) and 11(5) shall apply mutatis mutandis to the conversion of an application under Paragraph (1).
Art. 65-2. Duration of right based on defensive mark registration (1) The duration of a right based on defensive mark registration shall expire after ten years from the date
of registration of the establishment thereof. (2) The duration of a right based on defensive mark registration may be renewed by filing an application
for renewal of registration. Notwithstanding the foregoing, this shall not apply to the case where the registered defensive mark becomes unregistrable as a defensive mark
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Art. 65-3. Registration of renewal of duration of right based on defensive mark registration (1) Any person who intends to file an application for registration of renewal of the duration of a right
based on defensive mark registration shall present to the Commissioner of the Patent Office an application stating the following matters:
(i) the name and the domicile or residence of the applicant; (ii) the registration number of the defensive mark registration; and (iii) in addition to what is listed in each of the preceding items, matters as prescribed by a relevant
ordinance of the Ministry of Economy, Trade and Industry. (2) An application for registration of renewal shall be filed during the period from six months prior to the
expiration of the duration of the right based on defensive mark registration to the date of expiration thereof.
(3) Where an applicant for registration of renewal of the duration of a right based on defensive mark registration is, due to reasons beyond his control, unable to file the application during the time an application for registration of renewal is permitted to be filed under the preceding paragraph, the applicant may file such an application within fourteen days (two months for those who reside outside Japan) after the reason ceased to exist but not later than six months after a lapse of the said time limit.
(4) Where an application for registration of renewal of the duration of a right based on defensive mark registration is filed, the duration shall be deemed to have been renewed upon expiration of the term (where an application is filed under the preceding paragraph, upon filing of the application). Notwithstanding the foregoing, this shall not apply to the case where the examiner’s decision or hearing decision to the effect that the application is to be refused becomes final and conclusive or the renewal of the duration of a right based on defensive mark registration is registered.
Art. 65-4 (1) Where an application for registration of renewal of the duration of a right based on defensive mark
registration falls under any of the following items, the examiner shall render the examiner’s decision to the effect that the application is to be refused: (i) the registered defensive mark in connection of which the application is filed becomes
unregistrable as a defensive mark pursuant to Article 64; and (ii) the applicant is not a person who has the right based on the defensive mark registration.
(2) Where no reasons for refusal are found in connection with an application for registration of renewal of the duration of a right based on defensive mark registration, the examiner shall render a decision to the effect that the renewal is to be registered.
Art. 65-5. The provisions of Articles 14 and 15-2 of this Act and Articles 48 (Exclusion of examiners) and 52 (Formal requirements for examination) of the Patent Act shall apply mutatis mutandis to an examination of an application for registration of renewal of the duration of a right based on defensive mark registration.
Art. 65-6. Registration of renewal of duration of right based on defensive mark registration (1) Where a registration fee under 65-7(2) is paid, the renewal of the duration of the right based on
defensive mark registration shall be registered. (2) Upon registration under the preceding paragraph, the following matters shall be published in the
Trademark Gazette: (i) the name and the domicile or residence of the person who has the right based on defensive mark
registration; (ii) the registration number and the date of registration of renewal; and (iii) in addition to what is listed in the preceding two paragraphs, any other items that are considered
necessary.
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Art. 65-7. Registration fees (1) A person obtaining a registration of establishment of a right based on defensive mark registration shall
pay as a registration fee for each defensive mark registration the amount of 66,000 yen multiplied by the number of classes.
(2) A person obtaining a registration of renewal of the duration of a right based on defensive mark registration shall pay as a registration fee for each defensive mark registration the amount of 130,000 yen multiplied by the number of classes.
(3) The provisions of Articles 40(3) to 40(5) shall apply mutatis mutandis to the preceding two paragraphs.
Art. 65-8. Time limit for payment of registration fee (1) A registration fee under Article 65-7(1) shall be paid within 30 days from the service of a certified
copy of the examiner’s decision or the hearing decision to the effect that defensive mark is to be registered.
(2) A registration fee under Article 65-7(2) shall be paid within 30 days from the service of a certified copy of the examiner’s decision or the hearing decision to the effect that the renewal of the duration of the right based on defensive mark registration is to be registered (where service is made prior to the expiration of the duration of the right based on defensive mark registration, the date of expiration of the duration).
(3) The Commissioner of the Patent Office may extend the period of time prescribed in the preceding two paragraphs by a maximum of 30 days upon the request of a person who is required to pay the registration fee,.
Art. 65-9. Payment of registration fee by interested person (1) Any interested person may make the payment of the registration fee under Article 65-7(1) or 65-7(2)
even against the intention of the person by whom the said fee is to be paid. (2) The interested person who makes the payment of the registration fee under the preceding paragraph
may request the person by whom the said payment was to be paid to reimburse the cost thereof to the extent that the said person receives actual benefits therefrom.
Art. 65-10. Refund of registration fee paid in excess or in error (1) A registration fee under Article 65-7(1) or 65-7(2) paid in excess or in error shall be refunded upon
the petition of the person that paid them. (2) No refund of a registration fee may be requested under the preceding paragraph after the lapse of one
year from the date of payment.
Art. 66. Incidental nature of right based on defensive mark registration (1) The right based on defensive mark registration shall become extinguished when the trademark right
relating thereto is divided. (2) When a trademark right is transferred, the right based on defensive mark registration shall be
transferred with the trademark right relating thereto. (3) When a trademark right becomes extinguished, the right based on defensive mark registration relating
thereto shall become extinguished. (4) Where a trademark right is deemed to have become extinguished under Article 20(4), the effects of
the right based on defensive mark registration relating to the trademark right restored under Article 21(2) shall not extend to the acts prescribed in each of the items of Article 67 committed during the period between the expiration of the time limit for the filing of a request for registration of renewal prescribed in Article 20(3) and the registration of renewal of the duration of the trademark right by the request under Article 21(1).
Art. 67. Acts deemed to be acts of infringement (1) The following acts shall be deemed to be acts of infringement of the trademark right or the exclusive
license: (i) the use of the registered defensive mark in connection with the designated goods or designated
services; (ii) acts of holding, for the purpose of assigning or delivering, the designated goods to which or the
package of which a registered defensive mark is affixed;
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(iii) in the course of provision of designated services, acts of holding or importing articles to be used by a person who receives the designated services to which a registered defensive mark is affixed, for the purpose of providing the designated services by using the articles;
(iv) in the course of provision of designated services, acts of assigning, delivering, or holding or importing for the purpose of assigning or delivering, articles to be used by a person who receives the designated services to which a registered defensive mark is affixed, for the purpose of providing the designated services by using the articles;
(v) acts of holding articles bearing a registered defensive mark, for the purpose of using the registered defensive mark in connection with the designated goods or designated services;
(vi) acts of assigning, delivering, or holding for the purpose of assigning or delivering articles bearing a registered defensive mark, for the purpose of causing the registered defensive mark to be used in connection with the designated goods or designated services;
(vii) acts of manufacturing or importing articles bearing a registered defensive mark, for the purpose of using the registered defensive mark or causing the registered defensive mark to be used in connection with the designated goods or designated services.
Art. 68. Application mutatis mutandis of provisions concerning trademarks (1) The provisions of Articles 5, 5-2, 6(1), 6(2), 9-2 to 10, 12-2, 13(1), and 13-2 shall apply mutatis
mutandis to an application for defensive mark registration. In this case, the term “(iii) the designated goods or designated services and the class of the goods or services specified by Cabinet Order as provided for in Article 6(2)” in Article 5(1) shall be deemed to be replaced with “(iii) the designated goods or designated services and the class of the goods or services specified by Cabinet Order as provided for in Article 6(2)(iv), the registration number of the trademark registration relating to the application for defensive mark registration", the term "(iv) the designated goods or designated services are not stated” in Article 5-2(1) shall be deemed to be replaced with “(iv) the designated goods or designated services are not stated”, (v) the registration number of the trademark registration relating to the application for defensive mark registration is not stated” and the term “Article 37” in Article 13-2(5) shall be deemed to be replaced with “Article 67 (except the part relating to Item (i)).”
(2) The provisions of Articles 14 to 15-2 and 16 to 17-2 shall apply mutatis mutandis to the examination of an application for defensive mark registration. In this case, the term “Articles 3, 4(1), 7-2(1), 8(2), 8(5), 51(2) (including cases where it is applied mutatis mutandis pursuant to Article 52-2(2)), 53(2)” in Article 15(i) shall be deemed to be replaced with “Article 64.”
(3) The provisions of Article 18, 26 to 28-2, 32 to 33-3, 35 and 69 of this Act and Article 104-3 of the Patent Act as applied mutatis mutandis pursuant to Article 39 of this Act shall apply to a right based on defensive mark registration. In this case, the term “Where the registration fee under Article 40(1) or the registration fee due and payable within thirty days from the date of service of a certified copy of the examiner’s decision or a hearing decision to the effect that the trademark is to be registered under Article 41-2(1)” in Article 18(2) shall be deemed to be replaced with “the registration fee under Article 65-7(1).”
(4) The provisions of Articles 43-2 to 45, 46 (except Paragraph (1) (vi)), 46-2, 53-2, 53-3, 54(1) and 55-2 to 56-2 shall apply mutatis mutandis to the opposition to registration and a hearing relating to defensive mark registration. In this case, the term “Articles 3, 4(1), 7-2(1), 8(1), 8(2), 8(5), 51(2) (including cases where it is applied mutatis mutandis pursuant to Article 52-2(2)), 53(2)” in Articles 43-2(i) and 46(1)(i) shall be deemed to be replaced with “Article 64” and the term “where … the registered trademark has become a trademark that falls under any of Articles 4(1)(i) to 4(1)(iii), 4(1)(v), 4(1)(vii) and 4(1)(xvi)” in Article 46(1)(v) shall be deemed to be replaced by “where … the trademark registration becomes in violation of Article 64."
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(5) The provision of Articles 57 to 63-2 shall apply to a rehearing and litigation relating to defensive mark registration. In this case, the term “each of the items in Article 37” in Article 59(ii) shall be deemed to be replaced with “Items (ii) to (vii) of Article 67”, the terms “a trademark right in connection with … trademark registration” in Article 60 shall be deemed to be replaced with “a right based on defensive mark registration in connection with … defensive mark registration”, the term “an application for the registration of a defensive mark or an application for trademark registration" in the same article shall be deemed to be replaced with “an application for registration of renewal of the duration of a right based on defensive mark registration”, the term “the establishment of a trademark right … is registered” in the same article shall be deemed to be replaced with “the establishment of a right based on defensive mark registration or the renewal of the duration of a right based on defensive mark registration ... is registered” and the term “the registered trademark or a trademark similar thereto･ ･ ･ in connection with the designated goods or designated services or in connection with goods or services similar thereto" in the same article shall be deemed to be replaced with “a trademark identical to the registered defensive mark.”
CHAPTER 7-2 SPECIAL PROVISIONS UNDER THE PROTOCOL RELATING TO THE MADRID AGREEMENT
Section 1 Application for international registration
Art. 68-2. Application for international registration (1) A Japanese national or an alien domiciled or resident (or, in the case of a legal entity, with a place of
business) in Japan who desires to obtain an international registration (hereinafter referred to as the “application for international registration”) pursuant to Article 2(1) of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks 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 the “international application”) pursuant to Article 2(2) of the Protocol based on any of the following items. In this case, where requirements prescribed by an ordinance of the Ministry of Economy, Trade and Industry are applicable, two or more persons may jointly file the application for international registration.
(i) the application for trademark registration or application for defensive mark registration of the applicant that is pending before the Patent Office (hereinafter referred to as an “application for trademark registration, etc.”); or
(ii) the trademark registration or defensive mark registration (hereinafter referred to as “trademark registration, etc.”) of the applicant.
(2) Any person who desires to file an application for international registration shall file the prescribed application and required documents in the foreign language pursuant to an ordinance of the Ministry of Economy, Trade and Industry.
(3) The application shall state the following: (i) the name(s) of the Contracting Party to the Protocol in which the protection of the trademark
relating to the application for international registration is sought; and (ii) the goods or services in connection of which the protection of the trademark relating to the
application for international registration is sought and the class of the goods and services specified by Cabinet Order in Article 6(2).
(4) Any person who desires to apply Article 3(3) of the Protocol in connection with a trademark or a mark relating to the application for international registration shall state in the application form the color or the combination of colors claimed and append to the application copies of the trademark or mark relating to the application for trademark registration, etc in color, or of the registered trademark or registered defensive mark in color.
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Art. 68-3. (1) The Commissioner of the Patent Office shall send the application for international registration and the
required documents to the International Bureau prescribed in Article 2(1) of the Protocol (hereinafter referred to as the “International Bureau”).
(2) In the case of the preceding paragraph, where the matters stated in the application correspond to the matters stated in the basic application for trademark registration, etc. or in the basic trademark registration, etc., the Commissioner of the Patent Office shall state in the application the fact thereof and the date of receipt of the application for international registration.
(3) In the case of Paragraph (1), the Commissioner of the Patent Office shall send to the applicant of the application for international registration a copy of the application for international registration sent to the International Bureau.
Art.68-4. Subsequent designation The holder of international registration may present to the Commissioner of the Patent Office, pursuant to an ordinance of the Ministry of Economy, Trade and Industry, a request for territorial extension (hereinafter referred to as "territorial extension") prescribed in Article 3ter of the Protocol subsequent to the international registration (hereinafter referred to as the “subsequent designation.”
Art.68-5. Request for renewal of duration of international registration The holder of international registration may file with the Commissioner of the Patent Office, pursuant to an ordinance of the Ministry of Economy, Trade and Industry, a request for renewal of the duration of international registration prescribed in Article 7(1) of the Protocol (hereinafter referred to as the “renewal of the duration of international registration”).
Art.68-6. Request for recording of change in the ownership of international registration (1) The holder or the transferee of an international registration may, pursuant to an ordinance of the
Ministry of Economy, Trade and Industry, present to the Commissioner of the Patent Office a request for recordation of a change in the ownership of an international registration, as prescribed in Article 9 of the Protocol(hereinafter referred to as a “change in the ownership of international registration”).
(2) The request under the preceding paragraph may be made for each of the goods or services listed in the international registration or for each of the Contracting Parties in which the international registration has effect.
Art.68-7. Application Mutatis mutandis of provisions concerning application for trademark registration
Article 17(3) (limited to the part relating to Item (iii)) and Article 18(1) of the Patent Act as applied mutatis mutandis pursuant to Article 77(2) of this Act, shall apply mutatis mutandis to the application for international registration, subsequent designation, a request for the renewal of the duration of international registration and a request for the recordation of a change in the ownership of international registration.
Art.68-8. Delegation to ordinance of the Ministry of Economy, Trade and Industry In addition to the provisions of Articles 68-2 to 68-7, details of matters relating to the application for international registration, subsequent designation, a request for renewal of the duration of international registration and a request for the recordation of a change in the ownership of international registration required for the implementation of the Protocol and the Regulations thereunder shall be prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
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Section 2 Special Provisions relating to International Application for Trademark Registration
Art.68-9. Application for trademark registration based on request for territorial extension (1) Any request for territorial extension to designate Japan shall be deemed to be an application for
trademark registration filed on the date of international registration pursuant to Article 3(4) of the Protocol (hereinafter referred to as the “date of international registration”). Notwithstanding the foregoing, in the case of subsequent designation, such request shall be deemed to be an application for trademark registration filed on the date (hereinafter referred to as the “date of subsequent designation”) on which the subsequent designation relating to the international registration pursuant to Article 3ter(2) of the Protocol is recorded in the International Register of the International Bureau prescribed in Article 2(1) (hereinafter referred to as the “International Register”).
(2) Matters stated in the left column of the following table contained in the International Register relating to the international registration designating Japan shall be deemed to be the matters stated in the right column of the said tabled contained in the application presented pursuant to Article 5(1).
The name and the domicile or residence of the holder of international registration
The name and the domicile or residence of the applicant for trademark registration
The trademark subject to international registration
The trademark for which registration is sought
The goods or services listed in the international registration and the class of the goods or services
The designated goods or designated services and the class of the goods or services specified by Cabinet Order as provided for in Article 6(2);
Art. 68-10. Special provisions relating to time of filing of international application for trademark registration
(1) Where a registered trademark (hereinafter in this article referred to as the “registered trademark based on international registration”) relating to the request for territorial extension which is deemed to have been an application for trademark registration pursuant to Article 68-9(1) (hereinafter in this Chapter referred to as the “international application for trademark registration”) is identical to the registered trademark prior to the trademark registration (except registered trademarks based on international registration, hereinafter referred to in this article as the “registered trademark based on national registration”) and the designated goods or designated services relating to the registered trademark based on international registration overlap the designated goods or designated services based on national registration, and further the trademark right holder of the registered trademark based on international registration is identical with the trademark right holder of the registered trademark based on national registration, the international application for trademark registration shall be deemed to have been filed on the date of filing of the application for trademark registration relating to the registered trademark based on national registration to the extent of the scope which is overlapping.
(2) Articles 68-32(3) and 68-32(4) shall apply mutatis mutandis to the international application for trademark registration under the preceding paragraph.
Art.68-11. Special provisions relating to time of filing of application For the purpose of the application of Article 9(2) to an international application for trademark registration, the term “at the time of filing of the international application for trademark registration” in the said paragraph shall be replaced with ”within 30 days from the date of the application for international trademark registration.”
Art.68-12. Special provisions relating to division of an application Article 10 shall not apply to an international application for trademark registration.
Art. 68-13. Special provisions relating to conversion of an application Articles 11 and 65 shall not apply to an international application for trademark registration.
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Art. 68-14. Special provisions relating to matters to be contained in the Trademark Gazette relating to publication of application
For the purpose of application of Article 12-2(2) to the international application for trademark registration, the term “the number and date of the application for trademark registration” in the Item(ii) of the said paragraph shall be replaced with “the number and the date of the international registration (in the case of the international application for trademark registration relating to the subsequent designation, the date of subsequent designation).”
Art. 68-15. Special provisions relating to proceedings for priority claim governed by the Paris Convention, etc.
(1) Articles 43(1) to 43(4) of the Patent Act as applied mutatis mutandis pursuant to Article 13(1) of this Act shall not apply to an international application for trademark registration.
(2) For the purpose of the application of Article 43(1) of the Patent Act as applied mutatis mutandis pursuant to Article 13(1) of this Act to the international application for trademark registration, the portion “at the time of filing of the patent application” in the said paragraph shall be replaced with “within 30 days from the date of the international application for trademark registration.”
Art. 68-16. Special provisions relating to the right deriving from an application for trademark registration
(1) For the purpose of application of Article 34(4) of the Patent Act as applied mutatis mutandis pursuant to Article 13(2) of this Act to the international application for trademark registration, the portion “the Commissioner of the Patent Office … except in the case of general successions including inheritance” in the said paragraph shall be replaced with “the International Bureau.”
(2) Articles 34(5) to 34(7) of the Patent Act as applied mutatis mutandis pursuant to Article 13(2) of this Act shall not apply to an international application for trademark registration.
Art. 68-17. Treatment of international application for trademark registration in the case of change in the ownership of international registration
Where all or some of the goods or services listed in the international registration are divided and transferred as a result of a change in the ownership of international registration, the international application for trademark registration shall be deemed to have become applications for trademark registration with respect to each of the holders after the change.
Art. 68-18 Special provisions relating to new application for trademark as amended (1) Article 17-3 of the Design Act as applied mutatis mutandis pursuant to Article 17-2(1) or 55-2(3)
(including cases where it is applied mutatis mutandis pursuant to Article 60-2(2)) of this Act shall not apply to the international application for trademark registration.
(2) Article 17-4 of the Design Act as applied mutatis mutandis pursuant to Article 17-2(2) of this Act shall not apply to an international application for trademark registration.
Art. 68-19. Special provisions relating to registration of establishment of trademark right (1) For the purpose of the application of Article 18(2) to the international application for trademark
registration, the portion, “Where the registration fee under Article 40(1) or the registration fee due and payable within thirty days from the date of service of a transcript of an examiner’s decision or a hearing decision to the effect that the trademark is to be registered under Article 41-2(1) is paid” in the said paragraph shall be replaced with “Where the communication is made by the International Bureau notifying that the payment of the individual fee in the amount prescribed in Article 68- 30(1)(ii) has been recorded in the International Register.”
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(2) For the purpose of the application of Article 18(3) to the international application for trademark registration, in Item (ii) of the said paragraph the portion “the number and date of the application for trademark registration” shall be replaced with “the number and the date of international registration (in the case of the international application for trademark registration relating to the subsequent designation, the date of subsequent designation)” and in Item (v) of the said paragraph the portion “the registration number and date of registration of establishment” shall be replaced with “the number of international registration and the date of registration of the establishment.”
Art.68-20. Effect of lapse of international registration (1) Where all or a portion of the international registration on which the international application for
trademark registration is based has lapsed, the international application for trademark registration shall be deemed to have been withdrawn in respect of all or the portion of the designated goods or designated services that have lapsed.
(2) Where the international registration lapses in whole or in part, the trademark right based on such international registration (hereinafter referred to as the “trademark right based on international registration”), the establishment of which has been registered under Article 18(2) as applied pursuant to Article 68-19(1), shall be deemed to have lapsed to the extent that all or a portion of the designated goods or designated services have lapsed.
(3) The preceding two paragraphs shall take effect as of the date the international registration lapses in the International Register.
Art. 68-21. Duration of the trademark right based on international registration (1) The duration of a trademark right based on international registration shall expire after ten years
from the date of the international registration (where the duration of the international registration has been renewed prior to the registration of the establishment of the trademark right, the date of most recent renewal).
(2) The duration of a trademark right based on international registration may be renewed based on the renewal of the duration of the international registration.
(3) Where the duration of international registration is renewed, the duration of the trademark right based on international registration shall be renewed at the time of expiration of the duration.
(4) Where the duration of international registration is not renewed, the trademark right based on international registration shall be deemed to have expired retroactively at the time of expiration of the duration.
Art. 68-22. Special provisions relating to registration of renewal of duration (1) Articles 19 to 22, 23(1) and 23(2) shall not apply to a trademark right based on international
registration.
(2) For the purpose of application of Article 23(3) relating to a trademark right based on international registration, the portion “registration set forth in the preceding two paragraphs” in the said paragraph shall be replaced with “renewal of the duration of international registration” and the portion “the registration number and the date of registration of renewal” in Item (ii) of the said paragraph shall be replaced with “the number of international registration and the date of renewal of the duration of international registration.”
Art.68-23. Special provisions relating to division of trademark right Article 24 shall not apply to a trademark right based on international registration.
Art.68-24. Special provisions relating to transfer of collective trademark right (1) A collective trademark right based on international registration may not be transferred, unless the
document prescribed in Article 7(3) is presented. (2) Article 24-3 shall not apply to a trademark right based on international registration.
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Art. 68-25. Special provisions relating to abandonment of trademark right (1) The trademark right holder based on international registration may abandon the trademark right. (2) Article 97(1) of the Patent Act as applied mutatis mutandis pursuant to Article 35 of this Act shall not
apply to a trademark right based on international registration.
Art. 68-26. Special provisions relating to effect of registration of trademark right (1) A transfer, extinguishment by abandonment or restriction on disposition of a trademark right based on
international registration shall have no effect unless registered. (2) Articles 98(1)(i) and 98(2) of the Patent Act as applied mutatis mutandis pursuant to Article 35 of this
Act shall not apply to a trademark right based on international registration.
Art.68-27. Special provisions relating to registration in the Trademark Register (1) For the purpose of the application of Article 71(1)(i) to a trademark right based on international
registration, the term “the establishment, renewal of the duration, division, transfer, conversion, extinguishment, recovery or restriction on disposition of a trademark right" in the said item shall be replaced with “the establishment or restriction on disposition of a trademark right.”
(2) The renewal of the duration, the transfer, the conversion or the extinguishment of a trademark right based on international registration shall have effect in accordance with that registration in the International Register.
Art. 68-28. Special provisions relating to amendment of proceedings (1) Any amendment to the designated goods or designated services stated in the international application
for trademark application may be made only within the designated time limit prescribed in Article 15- 2 (including cases where it is applied mutatis mutandis pursuant to Article 55-2(1) (including cases where it is applied mutatis mutandis pursuant to Article 60-2(2))) or Article 15-3 (including cases where it is applied mutatis mutandis pursuant to Article 55-2(1) (including cases where it is applied mutatis mutandis pursuant to Article 60-2(2))).
(2) Article 68-40 shall not apply to an international application for trademark registration.
Art. 68-29. Special provisions relating to special rules on a trademark right covering two or more designated goods or designated services
For the purpose of the application of Article 69 relating to a trademark right based on international registration, the portion "Article 20(4) or 33(1) of this Act or Article 97(1) or 98(1)(i) of the Patent Act as applied mutatis mutandis pursuant to Article 35 of this Act” in Article 69 shall be replaced with “Article 33(1), 68-25(1) or 68-26(1)” and the term “Article 71(1)(i)” in Article 69 shall be replaced with “Article 71(1)(i) as applied mutatis mutandis pursuant to Article 68-27(1), 68-27(2) .”
Art. 68-30. Individual fee for trademark right based on international registration (1) Any person who desires to obtain a registration of establishment of a trademark right based on
international registration shall pay to the International Bureau, as the individual fee prescribed in Article 8(7)(a) of the Protocol (hereinafter referred to as the “individual fee”) for each registration in the following amounts:
(i) the amount equivalent to 4,800 yen plus 15,000 yen for each class of the goods and services; and (ii) the amount equivalent to 66,000 yen multiplied by the number of classes of the goods and
services. (2) The individual fee in the amount prescribed in Item (i) of the preceding paragraph shall be paid prior
to the international registration and the individual fee in the amount prescribed in Item (ii) thereof shall be paid within the time limit prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
(3) Where an examiner’s decision or a hearing decision is rendered to the effect that a trademark relating to an international application for trademark registration is to be registered, the Commissioner of the Patent Office shall notify the International Bureau of the time limit for the payment of the individual fee relating to the application, in the amount prescribed in Item (ii) of Paragraph (1).
(4) Where the individual fee in the amount prescribed in Items (i) and (ii) is not paid, and as a result the international registration on which the international application for trademark registration is based is cancelled, the said application shall be deemed to have been withdrawn.
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(5) A person requesting the renewal of the duration of a trademark right based on international registration shall pay as the individual fee to the International Bureau for each registration the amount equivalent to 151,000 yen multiplied by the number of classes.
(6) Articles 40 to 43 and 76(2) (limited to the portion listed under Item (i) of the appended table) shall not apply to an application for international trademark registration or a trademark right based on the international registration.
Art.68-31. Entrustment to ordinance of the Ministry of Economy, Trade and Industry In addition to the provisions of Articles 68-9 to 68-30, details of matters required for the implementation of the Protocol and the Regulations thereunder shall be prescribed by an ordinance of the Ministry of Economy, Trade and Industry.
PART 3 SPECIAL PROVISIONS CONCERNING APPLICATION FOR TRADEMARK REGISTRATION, ETC.
Art. 68-32. Special provisions concerning application for trademark registration after cancellation of international registration
(1) Where an international registration relating to a trademark that was the subject of an international registration designating Japan is cancelled pursuant to Article 6(4) of the Protocol in respect of all or some of the goods or services listed in the international registration, the person who was the holder of the international registration may file an application for trademark registration in relation to all or some of the said goods or services.
(2) Where an application for trademark registration under the preceding paragraph falls under all of the following items, the application shall be deemed to have been filed on the date of international registration (where the international registration under the said paragraph is related to the subsequent designation, the date of the subsequent designation relating to the said international registration) of the international registration under the said paragraph.
(i) the application for trademark registration under the preceding paragraph is filed within three months from the date on which the international registration under the said paragraph was cancelled;
(ii) the trademark for which the trademark registration is sought is identical with the trademark that was the subject of the international registration under the preceding paragraph; and
(iii) the designated goods or designated services in connection with the application for trademark registration under the preceding paragraph are within the scope of the goods or services listed in the international registration under the preceding paragraph.
(3) Where an international application for trademark registration relating to an international registration under Paragraph (1) enjoyed a right of priority pursuant to Article 4 of the Paris Convention, the application for trademark registration under the said paragraph shall also enjoy the same right of priority.
(4) The preceding paragraph shall also apply to the case where an international application for trademark registration relating to an international registration under paragraph (1) enjoyed a right of priority pursuant to Article 43-2(2) of the Patent Act as applied mutatis mutandis pursuant to Article 9-3 or 3(1) of this Act.
(5) For the purpose of the application of Article 10(1) to an application for trademark registration under Paragraph (1), the portion of the said paragraph “an application for trademark registration in relation to all or some of the said goods or services” shall be replaced with “an application for trademark registration in relation to all or some of the said goods or services (limited to the goods or services that fall under the scope of those listed in the international registration under Article 68-32(1)).”
Art. 68-33. Special provisions concerning application for trademark registration after denunciation of Protocol
(1) Where, pursuant to Article 15(5)(b) of the Protocol, the holder of the international registration designating Japan becomes no longer qualified as a person eligible to file the application for international registration pursuant to Article 2(1) of the Protocol, the person who was the holder of the said international registration may file an application for trademark registration in connection with the goods or services listed in the said international registration.
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(2) The provisions of Articles 68-32(2) to 68-32(5) shall apply mutatis mutandis to an application for trademark registration under Paragraph (1). In this case, the portion “within three months from the date on which the international registration under the said paragraph was cancelled" in Item (i) of Article 68-32(2) shall be deemed to be replaced with “within two years from the date on which the denunciation under Article 15(3) of the Protocol took effect.”
Art. 68-34. Special provisions concerning reasons for refusal (1) For the purpose of the application of Article 15 to an application for trademark registration pursuant
to Article 68-32(1) or 68-33(1), the portion “falls under any of the following items” in Article 15 shall be replaced with “falls under any of the following items or where an application for trademark registration under Article 68-32(1) or 68-33(1) does not comply with the requirements prescribed in Article 68-32(1), 68-33(1) or each item of 68-32(2) (including cases where it is applied mutatis mutandis pursuant to Article 68-33(2)).”
(2) The provision of Article 15 (limited to the part relating to Item (i) and (ii)) shall not apply to an application for trademark registration concerning a trademark right that was related to the international registration (referred to in Article 68-37 and 68-39 as “re-filing of trademark right relating to former international registration”).
Art.68-35. Special provisions concerning registration of establishment of trademark right Notwithstanding Article 18(2), where, in connection with an application for trademark registration under Article 68-32(1) or 68-33(1), the examiner's decision or the hearing decision to the effect that the trademark is to be registered has been rendered within ten years from the date of international registration of the international registration relating to the said application and individual fee in the amount prescribed in Article 68-30(1)(ii) has been paid to the International Bureau prior to the date on which the international registration relating to the said application is cancelled pursuant to Article 6(4) of the Protocol or to the date on which the denunciation under Article 15(3) of the Protocol takes effect, the establishment of trademark right shall be registered.
Art.68-36. Special provisions concerning duration (1) The duration of a trademark right prescribed in Article 68-35 shall expire after ten years from the date
of the international registration (where the duration of the international registration has been renewed, the date of most recent renewal).
(2) Article 19(1) shall not apply to the duration of a trademark right prescribed in the preceding paragraph.
Art. 68-37. Special provisions concerning opposition to registration For the purpose of the application of Article 43-2 to a trademark registration relating to the re-filing of a trademark right relating to a former international registration, the term “trademark registration” in the said article shall be replaced with “trademark registration (in the case of a trademark registration relating to the re-filing of a trademark right relating to a former international registration, except any trademark registration for which the term prescribed in this article has lapsed without any opposition to the registration of the former trademark registration relating to the former international registration).”
Art. 68-38. Special provisions concerning hearing for invalidation of trademark registration For the purpose of the hearing prescribed in Article 46(1) for the trademark registration relating to an application for trademark registration under Article 68-32(1) or 68-33(1), the term “falls under any of the following items” in the said paragraph shall be replaced with “falls under any of the following items or has been made in violation of the provision of Article 68-32(1), 68-33(1) or each item of Article 68-32(2) (including cases where applied mutatis mutandis pursuant to Article 68-33(2)).”
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Art. 68-39. For the purpose of the application of Article 47 to a trademark registration relating to the re-filing of a trademark right relating to a former international registration, the portion “may not be filed” in the said article shall be replaced with “may not be filed. The same shall also apply, in relation to the former trademark registration relating to the re-filing of trademark right relating to former international registration, even prior to a lapse of five years from the date of registration of the establishment of the trademark right, when a petition for hearing under Article 46(1) can be no longer filed pursuant to this article concerning the former trademark registration relating to the former international registration. ”
CHAPTER 8 MISCELLANEOUS PROVISIONS
Art. 68-40. Amendment of proceedings (1) The person undertaking a procedure before the Patent Office with regard to an application for
trademark registration, an application for defensive mark registration, any petitions or any other procedures relating to trademark registration or defensive mark registration, may make amendments relating thereto only when the case is pending in examination, hearing examination on opposition to registration, hearing or re-hearing.
(2) Notwithstanding the preceding paragraph, a person who has applied for trademark registration may, at the time of payment of the registration fee under Article 40(1) or 41-2(1) make amendments to reduce the number of classes relating to the application for trademark registration.
Art. 69 Special rules on trademark right covering two or more designated goods or designated services
For the purpose of the application of Article 13-2(4) (including where it is applied mutatis mutandis pursuant to Article 68(1)), 20(4) and 33(1) of this Act, Article 97(1) or 98(1)(i) of the Patent Act as applied mutatis mutandis pursuant to Article 35 of this Act, Article 43-3(3), 46(2), 46-2 or 54 of this Act, Article 132(1) of the Patent Act as respectively applied mutatis mutandis pursuant to Article 6(1) of this Act or Article 174(2) of the Patent Act as applied mutatis mutandis pursuant to Article 61 of this Act, Article 59, 60, 71(1)(i) or 75(2)(iv) of this Act, to the trademark registration or trademark right covering two or more designated goods or designated services, the trademark shall be deemed to have been registered or the trademark right shall be deemed to exist, for each of the designated goods or designated services.
Art. 70. Special rules on trademarks, etc., similar to registered trademarks (1) The term “registered trademark” as used in Article 25, 29, 30(2), 31(2), 31-2(1), 34(1), 38(3), 50, 52-
2(1), 59(i), 64, 73 or 74 shall include trademarks similar to the registered trademark that would be regarded as being identical to the registered trademark if they were in the same color(s) as the registered trademark.
(2) The term “registered defensive mark” as used in Article 4(1)xii) or 67 shall include marks similar to the registered defensive mark that would be regarded as being identical to the registered defensive mark if they were in the same color(s) as the registered defensive trademark.
(3) The term “trademark similar to the registered trademark” as used in Article 37(i) or 51(1) shall not include any trademark similar to the registered trademark that would be regarded as being identical to the registered trademark if they were in the same color(s) as the registered trademark.
Art.71. Registration in Trademark Register (1) The following matters shall be registered in the Trademark Register maintained in the Patent Office:
(i) the establishment, renewal of the duration, division, transfer, modification, extinction, restoration or restriction on disposition of a trademark right;
(ii) the establishment, renewal of the duration, transfer or extinguishment of rights based on defensive mark registration;
(iii) the establishment, maintenance, transfer, modification, extinguishment or restriction on disposition of exclusive license or non-exclusive license; and
(iv) the establishment, transfer, modification, extinguishment or restriction on disposition of a right of pledge on a trademark right, exclusive license or non-exclusive license.
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(2) The Trademark Register may be prepared, in whole or in part, in the form of magnetic tapes (including other storage media using a similar method that may record or reliably store certain matters, hereinafter the same).
(3) In addition to those prescribed in this Act, matters relating to the registration shall be specified by Cabinet Order.
Art. 71-2. Issuance of certificate of trademark registration, etc. (1) Upon registration of the establishment of a trademark right or upon registration of the establishment
of rights based on defensive mark registration, the Commissioner of the Patent Office shall issue a certificate of trademark registration or defensive mark registration to the trademark right holder.
(2) The re-issuance of a certificate of trademark registration or defensive mark registration shall be prescribed by ordinance of the Ministry of Economy, Trade and Industry.
Art. 72. Petition for certificate, etc. (1) Any person may file a petition with regard to trademark registration or defensive mark registration to
the Commissioner of the Patent Office to issue a certificate, a certified copy of documents or an extract of documents, to allow the inspection or copying of documents, or to issue documents stored on the magnetic tapes that constitute a part of the Trademark Register. Notwithstanding the foregoing, if the Commissioner of the Patent Office considers it necessary to keep such documents confidential, this provision shall not apply in the case of the following documents:
(i) documents relating to a hearing under Article 46(1) (including cases where it is applied mutatis mutandis pursuant to Article 68(4)), 50(1), 51(1), 52-2(1), 53(1) or 53-2 (including cases where it is applied mutatis mutandis pursuant to Article 68(4)) or a re-hearing of the final and conclusive hearing decision rendered in the said hearing, with respect to which the party in the case or an intervener has given notice that a trade secret owned by the said party in the case or intervener has been described (trade secret as prescribed in Section 2(6) of the Unfair Competition Prevention Law (Law No. 47 of 1993));
(ii) documents which are liable to cause damage to an individual’s reputation or peaceful life; and (iii) documents which are liable to cause damage to public order or morality.
(2) Where the Commissioner of the Patent Office approves of the petition under the principal sentence of the preceding paragraph with regard to the documents as provided in Item (i) or (ii) of the said paragraph, the Commissioner of the Patent Office shall notify the person who presented the said documents thereof and reasons therefor.
(3) Provisions of the Law Concerning Access to Information Held by Administrative Organs (Law No.42 of 1999) shall not apply to the documents concerning trademark registration or defensive mark registration and the part of the Trademark Register stored on magnetic tapes.
(4) Provisions in Chapter 4 of the Law Concerning Protection of Personal Information Possessed by Administrative Organs (Law No.58 of 2003) shall not apply to the possessed personal information (refers to the possessed personal information as prescribed in Article 2(3) of the said Law) recorded in the documents concerning trademark registration or defensive mark registration and the part of the Trademark Register stored on magnetic tapes.
Art. 73. Indication of trademark registration Where the trademark right holder, the exclusive licensee or non-exclusive licensee affixes the registered trademark to the designated goods, packages of the designated goods or goods to be used for the provision of the designated services, or affixes, in the provision of the designated services, the registered trademark to the goods relating to the provision of the designated services that belong to the person receiving the designated services pursuant to the provisions of ordinance of the Ministry of Economy, Trade and Industry, he shall make efforts to affix to the trademark an indication (hereinafter referred to as the “indication of trademark registration”) stating that the trademark is a registered trademark.
Art. 74. Prohibition of false indication It shall be prohibited for a person to do the following acts:
(i) in using a trademark that is not a registered trademark, to affix the indication of trademark registration or an indication confusing therewith to the trademark;
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(ii) in using a registered trademark for goods or services that are not the designated goods or designated services, to affix the indication of trademark registration or an indication confusing therewith to the trademark;
(iii) to possess goods, for the purpose of assignment or delivery, which have affixed on the goods or on the packaging thereof, a trademark other than a registered trademark; or to affix a registered trademark in connection with goods on goods other than the designated goods, or on the packaging thereof; or to affix on goods or on the packages thereof, a registered trademark in connection with services, where the indication of trademark registration or an indication confusing therewith is affixed to the said trademark;
(iv) to possess or import, for the purpose of providing services, articles affixed with a trademark other than a registered trademark, that are to be used in the provision of the services by the person receiving the services; articles affixed a registered trademark in connection with services that are to be used by the person receiving the services in the provision of services other than the designated services; or articles affixed with a registered trademark in connection with goods that are to be used in the provision of services by the person receiving the services, and the indication of trademark registration or an indication confusing therewith (hereinafter referred to in the following item as “articles with a false indication of trademark registration relating to services”) is affixed to the said trademark.
(v) to assign, deliver, possess or import products with a false indication of trademark registration relating to services, for the purpose of assigning or delivering.
Art. 75. Trademark Gazette (1) The Patent Office shall publish the Trademark Gazette (2) In addition to the matters prescribed in this Act, the Trademark Gazette shall contain:
(i) examiner’s decisions to the effect that an application is to be refused, or the waiver, withdrawal or dismissal of applications for trademark registration or applications for defensive mark registration after the publication of the application;
(ii) successions of right deriving from an application for trademark registration after the publication of the application;
(iii) amendments made to the designated goods or designated services stated in an application, to the trademark for which the registration is sought, or to the mark for which the defensive mark registration is sought after the publication of the application;
(iv) extinctions of trademark rights (except due to the expiration of the duration or under Article 41- 2(4));
(v) filings of a petition for opposition to registration or for a hearing or a re-hearing, or withdrawal thereof; and
(vi) final and conclusive decisions on the opposition to registration, final and conclusive hearing decisions or the final and conclusive decision or hearing decision on rehearing.
(vii) final and conclusive judgments in actions under Article 63(1).
Art. 76. Fees (1) Fees shall be paid by the following persons in an amount to be provided by Cabinet Order in view of
the actual costs: (i) persons notifying of succession under Article 34(4) of the Patent Act as applied mutatis mutandis
pursuant to Article 13(2) of this Act; (ii) persons filing a petition for an extension of the term under Article 17-4 of the Design Act as
applied mutatis mutandis pursuant to Article 17-2(2) (including cases where it is applied mutatis mutandis pursuant to Article 68(2)) of this Act, Article 41(2) (including cases where it is applied mutatis mutandis pursuant to Article 41-2(6)) or 43-4(3) (including cases where it is applied mutatis mutandis under Article 68(4)) of this Act, or Article 4 or 5(1) of the Patent Act as applied mutatis mutandis pursuant to Article 65-8(3) or 77(1) of this Act, or a change of the date under Article 5(2) of the Patent Act as applied mutatis mutandis pursuant to Article 77(1) of this Act.
(iii) persons filing an application for international registration to the Commissioner of the Patent Office pursuant to Article 68-2;
(iv) persons presenting to the Commissioner of the Patent Office a request for subsequent designation pursuant to Article 68-4;
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(v) persons filing a request for renewal of the duration of international registration to the Commissioner of the Patent Office pursuant to Article 68-5;
(vi) persons filing a petition to the Commissioner of the Patent Office for the recording of a change in the ownership of international registration pursuant to Article 68-6;
(vii) persons filing a petition for the re-issuance of a certificate of trademark registration or defensive mark registration;
(viii) persons filing a petition for the issuance of a certificate pursuant to Article 72(1); (ix) persons filing a petition for the issuance of a certified copy of documents or an extract of
documents pursuant to Article 72(1); (x) persons filing a petition to allow the inspection or copying of documents pursuant to Article 72(1);
and (xi) persons filing a petition for the issuance of documents whose contents are stored on magnetic tapes
that constitute part of the Trademark Register pursuant to Article 72(1). (2) The persons listed in the center column of the attached table shall pay fees in the amount as provided
by Cabinet Order within the range of the amounts specified in the corresponding right-hand column of the table.
(3) The preceding two paragraphs shall not apply where the person to pay the fee in accordance with these paragraphs is the State.
(4) Where the State has joint ownership of a trademark right, a right deriving from an application for trademark registration or a right based on an application for defensive mark registration with a person other than the State, and the portion of their respective shares of said right has been agreed, notwithstanding the provisions of Paragraph (1) or (2), the fees payable thereunder (limited to those prescribed by Cabinet Order) shall be determined as the sum of the prescribed fees multiplied by the ratios of the share of each person other than the State, and, the person(s) other than the State shall pay such sum.
(5) Where the amount of the fees calculated under the preceding paragraph has a fractional figure of less than ten yen, said portion shall be discarded.
(6) The payment of the fees under Paragraph (1) or (2) shall be made by patent revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and Industry. Notwithstanding the foregoing, where so provided by Ordinance of the Ministry of Economy, Trade and Industry, a cash payment thereof shall be accepted.
(7) Fees paid in excess or in error shall be refunded upon the petition of the person who made payment thereof.
(8) No petition for a refund of the fees under the preceding paragraph may be filed after one year from the date on which the payment thereof has been made.
Art. 77 Mutatis mutandis application of Patent Act (1) The provisions of Articles 3 to 5 (time periods and dates) of the Patent Act shall apply to time periods
and time limits prescribed in this Act. In this case, the term “Article 121(1)” of Article 4 of the Patent Act shall be deemed to be replaced with “Article 44(1) or 45(1) of the Trademark Act.”
(2) Article 6 to 9, 11 to 16, 17(3) and 17(4), 18 to 24 and 194 (procedures) of the Patent Act shall apply mutatis mutandis to an application for trademark registration, an application for defensive mark registration, any petitions or any other procedures relating to trademark registration or defensive mark registration. In this case, the portion “file a request for the examination of an application” in Article 6(1)(i) of the Patent Act shall be deemed to be replaced with “file an opposition to registration”, the portion “an adverse party files a petition for a hearing or rehearing” in Article 7(4) of the Patent Act shall be deemed to be replaced with “an opposition to registration in relation to the trademark right or the right based on defensive mark registration is filed or a hearing or re-hearing is filed by an adverse party”, the portion “hearing against an examiner’s decision of refusal” in Article 9 of the Patent Act shall be deemed to be replaced with “hearing under Article 44(1) or 45(1) of the Trademark Act”, the portion “hearing against an examiner’s decision of refusal” in Article 14 of the Patent Act shall be deemed to be replaced with “hearing under Article 44(1) or 45(1) of the Trademark Act”, the portion “(ii) where the procedures do not comply with the formal requirements prescribed by this Act or an order thereunder” in Article 17(3) of the Patent Act shall be deemed to be replaced with “(ii) where the procedures are not in compliance with the formal procedures prescribed by this Act or an order based on this Act; (ii)-2 where, relating to the procedures, the registration fee under Article 40(2) of the Trademark Act or the registration fee (including the registration surcharge payable pursuant to
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Article 43(1) or 43(2) of the Trademark Act) payable at the time of request for registration of renewal pursuant to Article 41-2(2) of the Trademark Act is not paid", the portion "not amendable" in Article 18-2(1) of the Patent Act shall be deemed to be replaced with "not amendable (except where any of the items in Article 5-2(1) of the trademark Act (including cases where it is applied mutatis mutandis pursuant to Article 68(1) of the Trademark Act) is applicable)”, the term “hearing” in Article 23(1) and 24 of the Patent Act shall be deemed to be replaced with "hearing examination and decision on hearing for opposition to registration", and the term "hearing" in Article 194(1) of the Patent Act shall be deemed to be replaced with “hearing for opposition to registration."
(3) The provision of Article 25 (Enjoyment of rights by aliens) of the Patent Act shall apply mutatis mutandis to a trademark right and other rights relating to the trademark registration.
(4) Article 26 (Effect of treaties) of the Patent Act shall apply mutatis mutandis to the trademark registration and defensive mark registration.
(5) The provisions of Articles 189 to 192 (Service) of the Patent Act shall apply mutatis mutandis to service prescribed in this Act.
(6) Article 195-3 of the Patent Act shall apply mutatis mutandis to dispositions under this Act or under an order based on this Act.
(7) Article 195-4 (Restriction on appeals under Administrative Appeal Law) of the Patent Act shall apply mutatis mutandis to an examiner’s decision, a ruling to dismiss an amendment, a revocation decision, a hearing decision, a ruling to dismiss a written opposition, a ruling to dismiss a petition for a hearing or rehearing under this Act and to a disposition against which no appeal lies in accordance with this Act.
Art. 77-2. Transitional measures Where an order is established, revised or abolished pursuant to this Act, transitional measures (including transitional measures relating to penal provisions) to the extent deemed reasonably necessary for the establishment, revision or abolishment may be prescribed by the said order.
CHAPTER 9 PENAL PROVISIONS
Art. 78. Offence of infringement An infringer of a trademark right or an exclusive license shall be liable to imprisonment with labor for a term not exceeding five years or a fine not exceeding 5,000,000yen.
Art. 79. Offence of fraud Any person who has obtained a trademark registration, defensive mark registration, registration of renewal of the duration of trademark right or right based on defensive mark registration, decision on opposition to registration or hearing decision by means of a fraudulent act shall be liable to imprisonment with labor for a term not exceeding three years or a fine not exceeding 3,000,000 yen.
Art. 80. Offence of false indication Any person who fails to comply with Article 74 shall be liable to imprisonment with labor for a term not exceeding three years or a fine not exceeding 3,000,000yen.
Art.81. Offence of perjury, etc. (1) A witness, an expert witness or an interpreter who has taken an oath under this Act and made a false
statement or given a false expert opinion or a false interpretation before the Patent Office or a court commissioned thereby, shall receive a sentence of imprisonment with forced labor for a term between three month and ten years.
(2) Where a person who has committed the offense in the preceding subsection has made a voluntary confession before a copy of the judgment on the case has been transmitted or a decision on an opposition to the registration has become final and conclusive, the sentence may be reduced or suspended
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Art.81-2. Offence of breach of confidentiality order (1) Any person who fails to comply with an order pursuant to Article 105-4(1) (including cases where it is
applied mutatis mutandis pursuant to Article 13-2(5)) of the Patent Act as applied mutatis mutandis pursuant to Article 39 of this Act shall be liable to imprisonment with labor for a term not exceeding five years or a fine not exceeding 5,000,000yen or combination thereof.
(2) The prosecution of the offence under the preceding paragraph may not be instituted unless a complaint is filed.
(3) The offence under Paragraph (1) shall apply to a person who commits the offence under the said paragraph while outside Japan.
Art. 82. Dual liability (1) Where a representative of a legal-entity or an agent, employee or other staff member of a legal entity
or an individual has committed, in the course of performing duties for the legal entity or individual, any act in violation of the provisions prescribed in the following items, in addition to the offender, the legal entity shall be liable to a fine as provided in the corresponding items and the individual shall be liable to a fine as provided in each article prescribed in the corresponding items:
(i) Article 78 or 81-2(1), a fine not exceeding 150 million yen; and (ii) Article 79 or 80, a fine not exceeding 100 million yen.
(2) In the case of the preceding paragraph, a complaint under Article 81-2(2) against the offender shall also have effect on the legal entity or individual and a complaint against the legal entity or individual shall also have effect on the offender.
Art. 83. Administrative penalties Where a person who has taken an oath under Article 207(1) of the Code of Civil Procedure as applied mutatis mutandis pursuant to Article 151 of the Patent Act as applied mutatis mutandis pursuant to Article 71(3) of the Patent Act as applied mutatis mutandis pursuant to Article 28(3) (including cases where it is applied mutatis mutandis pursuant to Article 68(3) of this Act) of this Act, Article 43-8 (including cases where it is applied mutatis mutandis pursuant to Article 60-2(1) and 68(4) of this Act) or Article 56(1) (including cases where it is applied mutatis mutandis pursuant to Article 68(4) of this Act), Article 174(2) of the Patent Act as applied mutatis mutandis pursuant to Article 61 (including cases where it is applied mutatis mutandis pursuant to Article 68(5) of this Act), Article 58(2) of the Design Act as applied mutatis mutandis pursuant to Article 62(1) (including cases where it is applied mutatis mutandis pursuant to Article 68(5) of this Act), or Article 58(3) of the Design Act as applied mutatis mutandis pursuant to Article 62(2) (including cases where it is applied mutatis mutandis pursuant to Article 68(5) of this Act) has made a false statement before the Patent Office or a court commissioned thereby, the said person shall be liable to an administrative penalty not exceeding 100,000 yen.
Art. 84. A person(s) who has been summoned by the Patent Office or a court commissioned thereby in accordance with this Act and fails to appear or refuses to take an oath, make a statement, testify, give an expert opinion or interpret without a justifiable reason shall be liable to an administrative penalty not exceeding 100,000yen.
Art. 85. A person(s) who has been ordered by the Patent Office or a court commissioned thereby to submit or present documents or other materials for the purpose of examination or preservation of evidence in accordance with this Act, and fails to comply with the order without a justifiable reason shall be liable to a fine not exceeding 100,000yen.
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Attached Table (In relation to Article 76)
Person responsible for payment Amount
1. Person filing an application for trademark registration ¥6,000 per case plus ¥15,000 for each class
2. Person filing an application for defensive mark registration or for registration of renewal of the duration of a right based on defensive mark registration
¥12,000 per case plus ¥30,000 for each class
3. Person requesting the division of a trademark right ¥30,000 per case
4. Person requesting an advisory opinion pursuant to Article 28(1) (including cases where it is applied mutatis mutandis pursuant to Article 68(3))
¥40,000 per case
5. Person filing an opposition to registration ¥3,000 per case plus ¥8,000 for each class
6. Person requesting to intervene in proceedings of opposition to registration
¥11,000 per case
7. Person filing a petition for a hearing or rehearing ¥15,000 per case plus ¥40,000 for each class
8. Person requesting to intervene in a hearing or rehearing ¥55,000 per case