The Japan Trademarks Dataset: A First Analysis (*)
Invited Researcher: Jeremy Nathan SHEFF (**)
This paper discloses and describes a new research dataset on the trademark registration
system of Japan. The dataset was built using data provided by the National Center for Industrial
Property Information and Training (INPIT), and builds on earlier work by Motohashi et al. for the
National Institute of Science and Technology Policy (NISTEP). The current dataset includes
application-level information including prosecution history events; registration and maintenanceevents; mark subject matter and text; and other information. Ancillary files to be made available infuture releases include applicant/owner, attorney, and examiner information; Paris Convention andMadrid Protocol claims; goods and services classifications. This paper catalogs the dataset
contents and provides some overall descriptive information. In addition, this paper will propose
and offer illustrations of possibilities for both domestically-focused and comparative empiricalresearch on industrial property made possible by the new dataset, for example by collating andcomparing the data described herein with comparable datasets from other national intellectual
property offices (particularly the USPTO) and related sources such as economic data.

I. Background
Scholars and policymakers analyzing the workings of industrial property systems—andlawyers, businesspeople, and firms who interact with those systems—are increasingly turning toempirical data to guide their analyses and judgments. While patent systems have attracted particularattention, trademarks are another form of valuable industrial property—by some measures the mostvaluable1—whose owners face risks and tradeoffs when they interact with the legal system. Thiscan be a particularly complex problem when individuals and firms seek trademark protection in
multiple countries. Lawyers often rely on judgment based on personal experience when advisingclients on appropriate courses of action in registering trademarks. Their judgment would likely bebetter informed by empirical evidence from beyond their own personal experience. Similarly,
empirical analysis of fine-grained national and international trademark data, and comparison tosimilar data sources from other countries, may assist Japanese policymakers and their counterpartsin other nations’ intellectual property offices, as well as scholars trying to understand the workingsof the trademark system and its relationship to the legal profession and the economy.
(*) This is a summary of the report published under the 2016FY Industrial Property Research Promotion Project entrusted by theJapan Patent Office.
(**) Professor of Law, St. John’s University School of Law, at our institute over a period of approximately 1.5 months from June 20,
2016 through August 6, 2016, as an Invited Researcher for the Fiscal Year 2016.
1 See, e.g., Danny M. Awdeh & Brian R. Westley, More Valuable than Patents? Recognizing—and Leveraging—Trademark Assets
While Avoiding Potential Pitfalls Along the Way, LANDSLIDE (Sept./Oct. 2015), available at
http://www.americanbar.org/publications/landslide/2015-16/september-october/more_valuable_patents_recognizingand_leveragin
gtrademark_assets_while_avoiding_potential_pitfalls_along_way.html (last visited July 15, 2016).

iThis project contributes to the store of public knowledge regarding the workings of trademark
registration systems, both internationally and within Japan. It does so by collecting and reporting
empirical data on Japan’s trademark registration system—including data on international
registrations—which may be used in conjunction with similar datasets from other national andsupra-national offices to comparatively assess applicant and examiner behaviors, application
characteristics and trends, registration events and outcomes, and interactions between trademark
systems and broader economic and social indicators. As the culmination of that effort, this Reportdiscloses and describes a new data resource: the Japan Trademarks Dataset, a research-quality
dataset containing comprehensive, application-level information on the trademark registration
system administered by the Japan Patent Office (JPO). The Report further offers examples of thekinds of internal and comparative analyses that the Japan Trademarks Dataset makes possible,
particularly in conjunction with the Trademark Case Files Dataset released by the United States
Patent and Trademark Office (USPTO).
1. Trademark Registration in Japan, with Comparison to the United States
Japan’s trademark system is registration-based, as contrasted with the use-based system in the
United States. Thus, where a federal US trademark registration may only be issued upon a showingof actual use of a mark in commerce,2 a trademark registration in Japan may be issued upon filing ofan application for registered rights even without establishing actual use.3 However, failure to use theregistered mark can result in rescission of registered rights under the Japan Trademark Act (“JTA”).4
In order to establish registered trademark rights in Japan, the claimant must file an appropriate
application and pay a fee. Trademark applications are subject to a multi-stage review by the JPO. If
the JPO finds no grounds for refusal, it will issue a final decision of registration.5 Upon payment of
the appropriate fee, JPO then issues the registration certificate to the applicant and publishes theregistration in the JPO’s Trademark Gazette.6 Once a registration issues, its holder enjoys “anexclusive right to use the registered trademark in connection with the designated goods ordesignated services.” 7 Registered trademark rights last for ten years, but can be renewed2

See 15 U.S.C. § 1051 (limiting registration to marks that have been actually used in commerce, though allowing applications forregistration before use commences based on a verified declaration of bona-fide intent to use the mark in commerce).
3 商標法[Trademark Act] Law No. 127 of April 13, 1959, as last amended by Act No. 55 of July 10, 2015 [hereinafter “JTA”], art. 3(allowing registration of marks intended to be used in commerce); id. art. 18(1) (“A trademark right shall arise upon registration of
establishment of such right”).
4 See id. art. 50 (establishing a right for any party to bring an action at JPO for extinguishment of registered trademark rights on
grounds of three consecutive years of non-use).
5 JTA art. 16.
6 Id. art. 18.
7 Id. art. 25; see also id. art. 30.

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indefinitely for additional ten-year terms upon filing of a renewal application and payment ofappropriate fees within six months of each scheduled expiration; failure to renew results in
extinguishment of the trademark right.8 Other features of Japan’s trademark registration system of
relevance to the Japan Trademarks Dataset—with comparison to the US trademark system—arereviewed at greater length in the full Report.
2. Previous Studies[Omitted]

II. Data Sources and Dataset Construction
The Japan Trademarks Dataset was constructed using archived Japan Patent Office (JPO)
records made available in digital format by the National Center for Industrial Property Information
and Training (INPIT) at the request of the Institute of Intellectual Property (IIP), which obtained
the data on my behalf in connection with my participation in IIP’s Invited Overseas Researcher
Program. I am grateful to IIP and to INPIT for their support and assistance.
1. Sources
The INPIT data consists of hundreds of periodic archives covering a period from late 2001 to
mid-2015, plus some additional serial archives pre-dating the late 2001 archives. INPIT’s archives
are encoded in SGML format. A detailed data specification (in Japanese only) is available at
http://www.inpit.go.jp/info/standard/download/standard_dl/sgml5.3.html.
2. Construction
I extracted, cleaned, and organized the data from the SGML documents provided by INPIT
using a combination of bash scripts, ruby programs, and STATA do-files. With respect to the bash
scripts and ruby programs, I was greatly assisted by Kenta Ikeuchi, a Research Fellow at the
Research Institutes of Economy, Trade, and Industry (RIETI) and one of the authors of a NISTEP
Research Paper undertaking a similar project.9 Mr. Ikeuchi, on behalf of his co-authors and withthe consent of NISTEP, provided me with several of the scripts and programs commissioned by his
89Id. arts. 19-20, 40(2).
Kazuyuki Motohashi, Kenta Ikeuchi and Jianwei Dang, Constructing a Database of Design and Trademark Rights, NISTEP
Research Material No.249 (Apr. 28, 2016), available at http://www.nistep.go.jp/archives/27214 (last visited July 15, 2016).

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research team to construct their datasets. I used several of these scripts and programs as astarting-point for my own code, and they were invaluable in helping me quickly understand thestructure of the INPIT data. This paper and the accompanying dataset thus build on the earlier work
done by Motohashi, Ikeuchi, and Dang by extracting, analyzing and reporting a broader selection ofdata from the INPIT trademark archives and providing additional descriptive and comparative
analysis. I am very grateful to Mr. Ikeuchi and his colleagues, without whose generous assistanceconstruction of the Japan Trademarks Dataset would have been a much slower and more difficult
process.

III. Dataset Components
1. Overview
The Japan Trademarks Dataset contains rich bibliographic and historical data on 4,518,187
unique applications for registration of trademark rights in Japan.
2. Coverage[Omitted]
3. Component Data Files[Omitted](1) Primary Data File
[Omitted](2) Ancillary Data Files[Omitted]iv

IV. Research Applications
The Japan Trademarks Dataset has a broad array of potential research applications. This
Section will provide some illustrative examples.
1. Historical Research
The deep historical data preserved by JPO allows for interesting historical research into
Japan’s trademark registration system, but actually doing such research requires an accessible
archive. The Japan Trademarks Dataset provides such an accessible archive. The value of thedataset for historical researchers is illustrated by using it to investigate the identity of Japan’s oldest
registered trademark. Several candidates are considered—the Yanagiya cosmetics company’s
graphical mark for hair tonic, the Hyakumangoku Shuzo [Million Stone Brewing Company] “Jukai”
label for nihonshu, and the Kokonoe Mirin Company’s sakura label. The Japan Trademarks Dataset
allows evaluation of each mark (and any other candidate) by registration number, registration date,application filing date, and other characteristics, each of which supports a different trademark’s
claim to the status of oldest Japanese trademark. This analysis demonstrates how comprehensive,
accessible data can allow researchers to investigate and tell illuminating and compelling stories
about the history of the trademark system in Japan, at the level of individual brands.
2. Internal Analysis of Japan’s Trademark Registration System
The Japan Trademarks Database enables researchers to engage in analysis of Japan’s
trademark registration system in ways that are not possible with the aggregate statistical data thathas heretofore been available.
(1) Identification of Key Actors in the Trademark Registration System
The Japan Trademarks Dataset allows for comprehensive analyses of various aspects of the
trademark system. For example, we can use it to identify those attorneys who prosecute the largest
number of applications for trademark registrations. The top 15 trademark attorneys identified in thedataset have each been associated with between 14,000 and 24000 applications over their lifetimes.
Leading the list is 石川 義雄 (Ishikawa Yoshio), former adviser to the Japan Trademark Associationv

and former section manager of the Trademark Division of JPO, who passed away in 2015.10(2) Check on JPO Statistical Reports
The NISTEP Research Paper by Motohashi et al. revealed that the INPIT data on registrations
seems to have some discrepancy with the aggregate registration numbers reported by JPO andWIPO.11 The discrepancies are substantial—as much as 10% of the annual registration totals. The
Japan Trademarks Dataset allows us to perform a similar analysis for trademark applications,revealing a similar discrepancy.
These discrepancies do not necessarily reveal any error on the part of either the JPO or theJapan Trademarks Dataset—though they may. Or, they may simply illustrate the point that there aremany ways to tabulate aggregated data, and different tabulation methods may be more or lessrelevant for particular analytical purposes. Instead of relying on the single aggregate measures
made available by JPO, the Japan Trademarks Dataset allows researchers to generate their own
aggregate measures to suit whatever research purpose they are pursuing.
(3) Analysis of JPO Performance
Comprehensive application-level data allows for other types of evaluation of JPO’s
performance of its trademark functions. This includes evaluations that are impossible using
aggregate measures such as those disclosed in JPO’s annual reports. Two examples are registration
rates and individual examiner performance.
(i) Registration Rates
The proportion of applications that proceed to registration cannot be calculated using theaggregate data in JPO’s annual reports, because the cohorts reported in annual application
aggregates are different from those reported in annual registration aggregates—there is an averagelag of several months between application and registration. Application-level data is therefore
required. Using the application-level data in the Japan Trademarks Dataset, we find that registration
rates hit a low of approximately 68% in 2000, and since 2002 have been decreasing from a high ofapproximately 80% to a low of approximately 75%.
10

【訃報】石川義雄先生ご逝去 | 2015年 | お知らせ | 日本商標協会(JTA), 日本商標協会(JTA),
http://jta.tokyo/information/detail/153/.
11 Motohashi et al., supra note 9, at 17-18 & tbls. 13-14.

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(ii) Examiner Performance
The Japan Trademarks Dataset allows analysis of individual examiner performance along
metrics such as pendency times and registration rates. Such analysis reveals substantial variation in
the examiner corps. Pendency times for applications that proceed to registration show a standard
deviation of approximately 75 days around the mean pendency time (for the entire dataset) ofapproximately 260 days. The distribution of registration rates is somewhat more compact around its
central tendency—a standard deviation of 11.2% around a mean of approximately 73.5%.
Interestingly, however, the registration rate distribution is also significantly skewed—indicatingthat while more examiners have above-average registration rates, those with below-averageregistration rates must be responsible for a larger number of applications.
(4) Correlation of Application Characteristics with Registration Outcomes
The Japan Trademarks Dataset enables researchers to evaluate the correlation between
various application characteristics and registration outcomes. For example, we can analyze thedifference in registration rates between applications with which an attorney is associated and thosefor which there is no attorney data. Such an analysis shows that attorney attorney representation
appears to make a huge difference in the chances of an application proceeding to registration.
Attorney success rates are between 90 and 100 percent, while unrepresented applicants havesuccess rates of between 40 and 75 percent. This analysis also suggests that the severe drop in
registration rates around 2000 was largely attributable to pro se applicants who may have been lesslikely to comply with legal requirements and more likely to abandon their applications if they ran
into difficulty in examination. Similar correlations may be examined to investigate the relative
success rates of individuals versus firms, of domestic versus foreign applicants, of applications inparticular similarity groups or goods and services classes, and so on. This type of correlation
analysis is likely to be of interest not only to researchers, but also to attorneys attempting to predict
their clients’ needs, and to policymakers attempting to allocate resources or implement reforms.
3. Comparative Analysis
An important goal of the Japan Trademarks Dataset is to allow for comparison of trademark
registration data across countries—particularly advanced economies with heavily used trademark
registries. Any of the analyses reviewed above, and many more, can be performed comparatively,
demonstrating important differences between national systems, or important international dynamicsvii

affecting the Japanese system. Below are two illustrations of the types of comparative analysis that
the Japan Trademarks Dataset can be used for: comparison of use-based and registration-based
trademark systems (using USPTO data for comparison), and comparison of domestic registration
with international registration under the Madrid Protocol.
(1) Use-Based vs. Registration-Based Systems
One common criticism of registration-based systems is that they can generate “cluttered”
registers: registrations may issue that ultimately never get used, misleading the public into thinking
that certain marks are occupied by bona fide users when in fact they are not.12 Such clutter can be a
problem if it prevents or discourages those who would make bona fide use of a promisingtrademark from actually engaging in that use, without providing any offsetting benefit to theregistrant or the public.
Comparative analysis using the Japan Trademarks Dataset and the USPTO’s Trademark Case
Files dataset shows that trademark applications in the US are published for opposition at roughly
the same rate as applications are registered in Japan. However, because even published US
applications that draw no opposition must still be supported by proof of actual use before the
USPTO will issue a registration, many otherwise registrable US applications are ultimately
abandoned because the applicant fails to actually use the mark for which they applied. The result isa roughly 25-percentage-point reduction in the number of applications that proceed to registrationin the US. If the rate of failure to use is roughly constant between the US and Japan, we canestimate that approximately 25% of new trademark registrations in Japan are pure
clutter—registrations for marks that will never be used in commerce. This clutter may be a serious
issue, as it may linger on the register for many, many years.
Of course, in the meantime, registrations and renewals can generate significant fee income
for the operator of the registry—in this case, JPO—and fees from those additional registrants canhelp keep fee levels lower for everyone. However, the additional fees come at a cost in the form of
increased clutter in the registry—a cost that the Japan Trademarks Dataset allows us to begin toquantify using empirical analysis.
(2) Madrid Protocol Applications vs. Domestic Applications from Foreign Applicants
A common issue facing trademark owners who plan to market goods or services under the12

Georg von Graevenitz, Trade Mark Cluttering–evidence from EU Enlargement, 65 OXF. ECON. PAP. 721 (2013).

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same mark in multiple countries is how best to secure rights in those countries where they expect
they will want protection. An international registration under the Madrid Protocol offers costsavings, but also carries certain risks not present for domestic registrations. The Japan Trademarks
Dataset allows for investigation of the extent to which foreign trademark holders seeking rights inJapan are opting for international as opposed to national registrations to secure those rights. A
preliminary analysis along these lines demonstrates broad variation from country to country in thepreference of those countries’ domiciliaries for domestic versus international registrations—thoughsome of this variation could be attributable to the absence or timing of accession to the MadridProtocol.
4. Economic Analysis
Scholars often attempt to investigate the relationships between legal phenomena such as
patenting and macroeconomic phenomena such as innovation or economic growth.13 Or theyattempt to analyze the relationship between legal events such as litigation or patent issuance andmicroeconomic indicia such as securities prices.14

The Japan Trademarks Dataset provides

fodder for both types of analyses. This section provides examples of each.
(1) Macroeconomic Correlations—GDP
Proponents of expansive intellectual property protection often suggest correlations between
such protection and economic activity.15 If such a correlation were present, we might still ask
whether economic activity is a cause or an effect of increased intellectual property rights. But sucha correlation cannot be assumed; it must be established empirically. Plotting quarterly aggregates ofapplication data from the Japan Trademarks Dataset against quarterly real GDP data from the
Economic and Social Research Institute of the Cabinet Office of the Government of Japan showsthat trademark applications and GDP appear to be trending in roughly opposite directions—flying
in the face of our most common assumptions about the relationship between IP and economic
13

See generally, e.g., JAMES BESSEN & MICHAEL JAMES MEURER, PATENT FAILURE: HOW JUDGES, BUREAUCRATS, AND LAWYERS PUTINNOVATORS AT RISK (2008); Knut Blind & Andre Jungmittag, The Impact of Patents and Standards on Macroeconomic Growth: A
Panel Approach Covering Four Countries and 12 Sectors, 29 J. PRODUCTIVITY ANALYSIS 51 (2008).
14 See generally Alan C. Marco, The Value of Certainty in Intellectual Property Rights: Stock Market Reactions to Patent Litigation(unpublished manuscript Nov. 15, 2005), available at http://ssrn.com/abstract=945009. As of this writing the author of thismanuscript is Chief Economist of the USPTO.
15 See, e.g., World Intellectual Property Organization, Economic Development and Patents, http://www.wipo.int/patent-law/en/developments/economic.html ("The recent history seems to show that technology and knowledge are important factors for e
conomic growth and development. Since the creation of the first mechanism to protect inventions in 15th century, the patent
system has evolved with a view to promote innovation and encouraging economic development.").

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growth. This kind of basic empirical testing of the assumptions underlying IP policies is crucially
important to enlightened policymaking.
(2) Microeconomic Correlations—Securities Prices
Finally, the application-level data in the Japan Trademarks Dataset makes possible theanalysis of correlations between individual firms’ trademark activities and their financial
performance. Such correlations have some theoretical basis. For example, if we think that
trademark applications are evidence of new lines of business, we might expect that such eventswould be leading indicators of increased cash flows of their holders, and thus of increased market
valuation. Abandonment (or non-renewal) of trademark registrations are theoretically more
ambiguous. To the extent such events indicate closing lines of business, they could be lagging
indicators of decreased revenues, but if the closing lines of business are unprofitable (either on an
absolute basis or in comparison to a firm’s continuing lines of business), they could instead belagging—or even leading—indicators of improved profit margins. Proving any such relationshipwould take quite sophisticated econometric analysis, but the Japan Trademarks Dataset allows us toinvestigate whether the relationship is plausible. I illustrate such a plausibility check by comparing
the trademark application and renewal activity of the Kao Corporation (the most prolific applicant
in the Japan Trademarks Dataset) with that company’s stock price. This comparison shows, perhaps
unsurprisingly for a successful large company, that both data series are generally increasing as afunction of time. More specific correlations, however, are difficult to identify.

V. Conclusion[Omitted]

VI. Acknowledgments[Omitted]x