CHAPTER 11. APPLICATION FOR TRADEMARK REGISTRATION
Section 1. Overview
1. Application
An application for trademark registration is the action taken by the person wishing toreceive a trademark registration, requesting the Patent Office to establish a right of
exclusive use for a trademark currently in use, or intended for use, for a designatedproduct. (For discussion on the need for intention to use, see Examination Guidelines p.
2, and Shibuya, p. 254 and the following.).
Any person desiring a trademark registration must submit a request to theCommissioner of the Patent Office together with a copy of the trademark clearly
indicated (in other words, a sample of the trademark) and any other necessary
documents (Section 5 (1)). The Law stipulates the application formalities and forms(the format of the application can be found in Enforcement Regulations, Section 2, etc.,
Principle of formality). The nature of the application needs to be clarified on paper; nooral applications are accepted (principle of documentary proceeding). The scope of aregistered trademark must be decided on the basis of the trademark stated in the request(Section 27 (1)). Also, the scope of the designated goods or designated services must be
decided on the basis of the statement in the request (Section 27 (2)). The application isimportant in defining the boundaries of rights between the applicant and third parties,
whether or not the trademark right should be established, and if so, what the scope ofthe right should be. It is for this reason that securing the clarity of intent throughdocumentation is of the utmost importance.
Since January 2000, electronic applications for trademark registration have been
accepted, and in the patent offices, on-line application has become the norm. If an
application is made using forms, then the applicant must now pay a separate fee forconverting the information into electronic data.
2. Examination
When the application is submitted, assuming that the formalities are in order, it will be
accepted and given an application number. The accepted application will first be
examined for formal requirements (formality check). If these requirements are not met,
an amendment invitation will be sent. If the formal requirements are met, thenexamination of the substantive aspects (substantive examination) will begin.
3. Principles governing Examination
The following are the principles that are at work in the examination procedures:
1) It must be in writing: the "principle of documentary proceedings;"
2) The documentary proceedings are to be in the Japanese language: the "principle ofusing the Japanese language;"3) Two or more classes of trademarks may be applied for with one application: the"system of one application for two or more classes;"4) One application can be made for requests whose contents are the same: the "principleof one application for two or more items;" and5) All proceedings must follow a set format: the "principle of formality."1Section 2. Procedures for Application of Trademark Registration
I. Application Formalities
1. Request
Any person desiring a trademark registration must submit a request to theCommissioner of the Patent Office together with any necessary documents. The request
must state the following (Section 5 (1)):(a) the name and the domicile or residence of the applicant for a trademark registration;(b) the trademark for which registration is sought;(c) the designated goods or designated services and the class of goods or services (asprescribed by Cabinet Order referred to in Section 6 (2));(d) When the trademark in question is a three-dimensional trademark, the request shallcontain a statement to that effect (Section 5 (2)).
These are the general pieces of information required for all applications for trademark
registration, and they must be indicated on the request (Section 5 (1)). The Trademark
Law stipulates that the applicant's name be indicated because it has to specify theapplicant. The other requirements are necessary to specify the trademark. This
information comprises the application, which forms the basis of the examination
procedures, and is a prerequisite before any examination can take place.
(a) Standard Characters
This will be discussed later on page 348 (Section 5 (3)).
(b) Acknowledgement of the Date of Application
This will be discussed later on page 371 (Section 5 (2)).
(c) Description of the Nature of BusinessIn the past, the applicant was required to fill in the type of his business next to his name
(Enforcement Regulations under the Former Trademark Law Section 1 (1), Format 1;
For details, see the Former Trademark Examination Guidelines revised edit. 1992, p. 17,
p. 95). The argument for demanding a description was that it would discourage thosewith no intention of using the trademark from applying for its registration. This practicehas now been abolished. Previously, the description of the applicant's business had been
considered necessary to justify examination in accordance with Trademark Law, Section
3 (1), which states that the application of registration should be for "a trademark to be
used in respect of goods or services in connection with his business." However in theTrademark Law Treaty, the requirement demanding the applicant to describe hisbusiness has been prohibited on the grounds that it goes against the basic policy thatprocedures should be simplified (Treaty, Section 3 (7) (1) (iii) and Section 11 (4) (ii)
(iii)). Furthermore, it had been pointed out that since no evidence was required tosupport the description of the nature of business, it lacked efficacy. The result was that
the Enforcement Regulations were amended and the practice of requesting a descriptionof the business from the applicant was discontinued.
Nevertheless, it must be noted that despite its abolishment, the fact remains that theapplication for registration is for "a trademark to be used in respect of goods or services2

in connection with his business (Section 3 (1))." This has not changed from the days
prior to the Revision. It follows that a firm, for example a bank, whose business is
restricted by law will be denied registration if it applies for the registration of "atrademark for goods (and services) in connection with his business" when it is evident
that its use is for goods and services which are beyond the boundaries defined as his
business. This fact remains unchanged even after the revision. The only effective
change is that that the description of the business is no longer a requirement of theapplication.
In a similar vein, when the service mark registration was introduced, the application in
use for service mark registration included questions about the services provided by theapplicant. The business had to be that with which the applicant was involved with atthat time. The business concerns of subsidiaries and companies affiliated with theapplicant could be considered to be "his business" as long as the connections between
the different entities could be proven by his share holdings (Former Trademark
Examination Guidelines, p. 16, p. 96).
(d) Agent/representative
If the application is conducted through an agent or a representative, the name and the
domicile or residence of the agent/representative must be provided. If the applicant isof non-Japanese origin, his country of origin must also be indicated. An application
through an agent must have the seal/signature of the applicant or theagent/representative (Trademark Law Enforcement Regulations, Section 2 (1) Format 2).
When claiming priority through an alliance treaty, the applicant should clearly indicate
the claim of priority and specify the date and the name of the country where he first
applied (Date and country of first application - Section 13 (1); Patent Law, Section 43).
The Trademark Law Treaty streamlined the information required for applications andvarious requests in an overall effort to cut red tape. In response to their request, items
such as "name of person representing legal entity" are no longer required. The
amendment has also led to the elimination of "date submitted" from the application
forms.
2. Special items to be included in the Application
All applications must comply with the general requirements for applications, but for thefollowing cases, there are special items that need to be included.
(a) Application for Registration of a Collective Trademark
When requesting registration of a collective trademark, an application for registration ofa collective trademark must be submitted (Enforcement Regulations Section 2 (2)format 3). Evidence to prove that the applicant is the legal entity requesting thecollective trademark must be attached (Section 7 (1) and (3)).
If the mark cannot be treated as a collective trademark, the applicant will receive theexaminer's decision of refusal (Sections 7 and 15).
(b) Application for Registration of a Defensive MarkWhen requesting registration of a defensive mark, the application must include the3registration number allocated to the application for registration of a defensive mark(Sections 68 (1) and 5 (1)).
(c) Renewal of Term
The name and domicile or residence of the person requesting renewal of term, or thename of the representative of the legal entity and the registration number of theregistered trademark must be included in the application.
There is no need to attach documentation indicating the trademark in question or leafletsof any kind, since proof of the relationship between the already existing trademark rightand the right under request for renewal suffices in the case of a renewal of term (seeTrademark Law Enforcement Regulations, Section 10, Format 12).
3. Documentation indicating Trademarks
When submitting the application, it is necessary to also submit documentation
indicating the trademark or defensive mark that is about to be granted registration. This
is in fact a sample of the trademark that needs to be submitted (Enforcement
Regulations, Section 3). The trademark sample is crucial in acknowledging the scope ofthe trademark right. The format to be used is stipulated in Section 2 (1), Format 2 of the
Enforcement Regulations. However, this does not apply if standard characters, which
will be discussed later, are used.
(1) Three-dimensional Trademarks
A three-dimensional trademark is a trademark consisting of a three-dimensional shape.
A trademark consisting of a combination of a three-dimensional shape with letters,
figures, signs, or color, or any combination thereof, are considered to be threedimensional trademarks. When the trademark submitted for registration is a threedimensional trademark, that fact must be noted in the application (Section 5 (2)).
Three-dimensional trademarks can often be problematic (See p. 25, et. seq.).
(2) Standard CharactersStandard characters are designated by the Commissioner of the Patent Office. When aperson desires a trademark registration with respect to a trademark consisting ofstandard characters, the request must contain a statement to that effect (Section 5 (3)).
(a) SignificanceFor trademarks consisting of letters, which form a large proportion of applications, theapplicant can state that the trademark consists solely of standard characters and indicate
directly on the application with a word processor etc. the trademark, thus eliminating
the need to include a sample of the trademark along with the application. This can only
take place when the applicant is not demanding a special right for the manner of
depiction. A selection of fonts is published as the manner of depiction designated by theCommissioner of the Patent Office for fonts to be used for standard characters intrademarks. This system of standard character usage is applied in many countries
including the United Kingdom and the USA.
The system of standard character usage improves efficiency of paperwork in the Patent
Office since it can rely on simple coding mechanisms, not volumes of samples, or4

images that are difficult to encode. For the applicant also, it results in reduced
paperwork, as he is able to indicate directly by a word processor, etc. the trademark,without the need to attach a copy of the trademark sample, so long as he states clearly in
his application that the trademark is in standard characters.
(b) The Standard Character System
1) Characters designated by the Commissioner of the Patent Office
The Commissioner of the Patent Office includes all standard characters in a chart, in thesame font as those appearing in the Gazette and thereby designates and announces thestandard characters (Section 5 (3)).
The characters chosen are Japanese Industrial Standards (JIS X0208-1983) kanji(Chinese characters; first and second levels), hiragana, katakana (phonetic characters),
Arabic numerals, the Roman alphabet (upper and lower cases), "space" (consecutive use
is not allowed), "comma", "period", "a dot mid-line", "double strokes on hiragana","kanji indicating repeat", "- elongation of syllable", "- dash", " 'apostrophe" and "&".
No more than 30 of these characters may be used for them to be considered standard
characters.
The Patent Office uses the following as their policy in actual operations.
a. Applications deemed to contain non-standard characters
If the trademark indicated in the application contains characters other than those
designated by the Commissioner of the Patent Office, even though on the application itis clearly stated that the trademark is a standard-character trademark, then theapplication will be treated as a normal application. In these cases, an amendment or
correction will be invited, asking the applicant to send a copy of the trademark sample ifnone is attached.
The following are examples of trademarks accepted and rejected as standard character
trademarks.
a) Examples of trademarks accepted as standard character trademarks
1) Tokkyocho (Patent Office) The size of the letters appears to differ but the characters
indicating double consonants and contracted sounds are of the same point size as thoseof the other characters.
2) Kokusai Harmono Jpo (International Harmony Jpo) It is possible to combine kanji,hiragana and alphabets etc. The point size of the upper and lower case letters is thesame.
3) Tokkyocho (Patent Office) Spaces can be used as long as they are not consecutive.
b) Examples of trademarks not accepted as standard character trademarks
1) Trademarks consisting solely of figures or trademarks that combine figures andletters.

5

1 [The picture of a hand giving the "peace" sign.]
2 Tokkyocho (Patent Office) [With the picture of a hand giving the "peace"sign.
3 Tokkyocho Shohyoka (Trademark Department, Patent Office)2) Trademarks including characters that are not standard characters.
3) Trademarks consisting of more than the limit of 30 characters.
4) Trademarks written vertically from top to bottom, trademarks consisting of two or
more rows.
4 Tokkyocho (Patent Office)5 Tokkyocho Shohyoka (Trademark Department, Patent Office)6 Tokkyocho Shohyoka (Trademark Department, Patent Office)5) Trademarks consisting of differing size points.
7 Kabushiki Gaisha Tokkyocho (Patent Office, Limited Company)
8 Kabushiki Gaisha Tokkyocho (Patent Office, Limited Company)
9 Tokkyocho (Patent Office)6) Trademarks using color.
7) Trademarks containing parts that are indicated with figures or by using a different
font.
10 Tokkyocho (Patent Office)11 Input
12 Kabushiki Gaisha Tokkyocho (Patent Office, Limited Company)
8) Trademarks using stylized lettering, such as ornate or cursive writing.
13 Tokkyocho (Patent Office)
14 Tokkyocho (Patent Office)
15 Tokkyocho (Patent Office)9) Trademarks not included in 1) to 8), but whose letters cannot easily be identified.
b. Correction of Application, to insert a statement that the trademark for applicationconsists solely of standard characters, or to delete a statement to that effectIt has already been discussed that the scope of registration for standard character
trademarks differs from that of usual trademarks, which are based on their indication on
the application, in that the decisions here will be based on the trademark as it appears
after transcription to standard characters. It is for this reason that an amendment
regarding standard characters, whether a statement to that effect is added or deleted, has
the same effect as an amendment of the trademark itself and will therefore be treated asa change in the substance of the trademark (Section 16-2 (1)).
2) Application of Trademark for Registration
When applying for a standard characters trademark registration, the trademark must
contain standard characters only. A trademark consisting of a figure or a combination of
figures and standard characters, for example, will not be eligible for application in thiscapacity.
The Enforcement Regulations (regarding formats) stipulate the need for the trademark
to be in black, using the same size and font for the characters that are to be writtenhorizontally in one line. Naturally there is no need to attach a copy of a sample of the
trademark.

63) The Scope of the Trademark Registration
The scope of the trademark registered as a standard characters trademark is determinedby the mark as it appears when transcribed in standard characters. This will appear in
the Trademark Gazette (Sections 18 (3) (iii) and 27 (1)). It should be noted that thescope of effect of the registered trademark right is no more likely to increase ordiminish for standard characters trademarks than it is for any other trademark
registration.
4) Applications that are not considered to be Standard Characters Trademarks
If the applicant decides to apply for registration on the basis of his understanding that it
is a standard character trademark and states that fact clearly on his application, it will
nevertheless be processed as a non-standard characters trademark application if thecomposition of the trademark, when viewed objectively, cannot be considered astandard characters trademark. In such cases, a sample, which is not a requirement of astandard characters trademark, will most likely be missing and will have to be requested
through a process of correction of procedure.
An amendment regarding standard characters, or whether a statement to that effect is
added or deleted, is fundamentally a change in the gist of the trademark (Section 16-2(1)) and will be treated as such. The date when amended documents, including a
trademark sample, were submitted will be considered the date the application was filed.
This can result in the application going to the end of the line and losing to one filed later,in which case the application will be refused.
(3) Color
The parts of the trademark sample that are colored will be considered not to be a part of
the trademark if they are the same color as the background color of the sheet that it isprinted on. However if the area to be colored is specified and it is stated on the sheetthat the color to be applied is the same as the background color of the sheet, then it will
be considered as forming a part of the trademark (Section 5 (4)).
Because color is a component of the trademark, the applicant must clearly indicate his
intention as to whether the color used in the trademark, which is the same color as the
background color of the sheet, is to be considered just background or whether it actuallyforms a part of the trademark. Therefore if one of the colors used in the trademark is
the same color as the background, then unless a special statement is made to thecontrary, it will not be considered as a color component of the trademark. If however astatement is attached to that effect, then it will be considered as a color component of
the trademark (Commentary on the Trademark Law, p. 1014; Amino, p. 642).
4. Explanatory note
Not all applications need an explanatory note and its submission is not a requirement.
An explanatory note should be attached if the application and the sample of the
trademark are not sufficient to convey the facts.
Some examples of "necessary explanatory notes" are explanatory notes relating to asample of the goods, notes relating to designated goods, "explanatory notes concerning

7

distinctiveness arising from the application of Trademark Law 3 (2)" and "notes on
business plans." The Trademark Examination Guidelines lists " a) documents
explaining the reason for the choice of trademark, b) documents discussing the materials,
manufacturing method, composition, usage and instructions on use of the designatedgoods, or documents discussing the quality, efficacy and use of the designated services,c) documents describing the three-dimensional trademark shown on the application" as
explanation notes in connection with Section 5 (1) (Trademark Examination Guidelines
p. 50).
The Trademark Law Treaty stipulates, that in order to facilitate the proceedings, theinformation required for applications and various requests will be simplified and that
explanatory notes will in principle be disallowed. For cases causing reasonable doubt,
the applicant will be called to provide evidence to explain the claims (Trademark Law
Treaty Sections 3 (7) and (8), 4 (6) and (7), 10 (4) and (5), 11 (4) and (5), 12 (3) and (4),
13 (4) and (5)).
5. Other Attached Documents(a) Documents concerning the Applicant or Representative
In cases where the person applying needs the permission, authorization, or consent of athird person, he must provide documents as evidence of his role as agent (Trademark
Law Enforcement Regulations, Section 22 (1); Patent Law Enforcement Regulations,
Section 6). For example, an application by a person of quasi-incompetence, or an
application by a legal representative for a person under supervision will needdocumentation as evidence of the curator or supervisor's agreement (Section 77 (2);Patent Law, Section 7 (2), (3)). In cases where the representative receives special rights,
documentation must be submitted as evidence for being the representative. For example,
in an application by a foreign national (Trademark Law Enforcement Regulations,
Section 22 (1), Patent Law Enforcement Regulations, Section 7) or when a person ischosen to represent a joint application (Trademark Law Enforcement Regulations,
Section 22 (1); Patent Law Enforcement Regulations, Section 27), the representative
will receive special authorization such as the right to change, surrender, or withdraw theapplication for trademark registration, or to appoint a sub-attorney (Section 77 (2);Patent Law, Section 9).
(b) Matters related to the Application
For an application claiming priority, a written statement is required by law (Section 13(1); Patent Law, Section 43). Other cases that are relevant to the application are
Trademark Law, Section 4 (1) (ix), except when a person has received a prize at an
exhibition and wants to use that as part of the trademark (Trademark Law Enforcement
Regulations, Section 22 (3)) and when requesting special provision at the time of
application for goods exhibited at an exhibition (Section 9 (2)).
6. Use of Language in the Application (Japanese Language Policy)
All written documentation such as those for application must be written in Japanese.
Written documentation such as a foreign national's power of attorney, certificate ofnationality, certificate of priority, certificate of foreign trademark registration which are
in another language will be accepted if a translation is attached (Trademark Law
Enforcement Regulations, (22), Patent Law Enforcement Regulations, Section 2 (2)).

8(For more on the current method of application, see Yamazaki, Hiroki "Practicals of the
Application Procedure p. 285 and the following.)
7. Notification of Application Number
On accepting the application, the Commissioner of the Patent Office will allocate anumber to the application for trademark registration and notify the applicant of thenumber (Trademark Law Enforcement Regulations, Section 22 (4), Patent Law
Enforcement Regulations, Section 28).
II. Unit of Application
1. "The Principle of One Application for One Trademark" and "System of One
Application for Multiple Classes"(1) SignificanceThe Law prior to the 1996 Revision stated that "an application for a trademark
registration shall relate to a single trademark 'of goods or services within the classdesignated by Cabinet Order (former Law, Section 6 (1))' and shall designate one ormore items of goods or services in respect of which the trademark is to be used." Thephrase, "of goods or services within the class designated by the Cabinet Order", hasbeen deleted since the revision of the Law (Section 6 (1)).
This deletion was in order to introduce a system of "one application for multiple
classes" whereby an application could be made for registration of a trademark for goods
that fell into two or more classes. The Law prior to the revision of 1996 stated, "anapplication must be made for each trademark to be registered. One good or service, or
two or more goods or services must be designated for use of the trademark and thegoods or services must be within the same class determined by the Cabinet Order." Thiswas referred to as "the principle of one application for one trademark." The meaning of
this was two-fold: One meaning was that it was not possible to apply for two or moretrademarks with one application. The other was that with one application, only goods
and services in one class could be designated and that should the goods that are to be
designated fall in two classes, then they have to be applied for separately in two
applications.
The first of these meanings, that is "one application for one trademark," has beenretained so that registration of only one trademark can be applied for with one
application. In that sense "the principle of one application for one trademark" is stillvalid. However, with the deletion of the phrase "must be within the same classdetermined by the Cabinet Order," the idea of "one case for one application for
designated goods or services" has been amended.
Most countries, including the principle nations using the international classification
system, also adopt the "one application for multiple classes system." For example,
many foreign companies approach the Patent Office wanting to designate many goods
for a single mark. (Let us say Louis Vuitton is requesting trademark registration for a
trademark to be used not only on bags and umbrellas, but also on perfume, key holders,notebooks and make-up.) In this case only one application was needed for designating

9

two or more goods within the same class (so that one application would suffice for bags
and umbrellas [class 18]) but the same number of applications was necessary as thenumber of classes that the goods fell into. (Therefore an application would be neededfor each of the following: perfume [class 3], key holders [class 14], notebooks [class 16],
make-up [class 21], four applications in all.) Under the new "one application for
multiple classes system," only one application will be required.
The Trademark Law Treaty states that one application is sufficient for goods andservices regardless of whether they are in one class or two or more classes. In fact, theTreaty makes the "one application for multiple classes system" compulsory (Treaty
Section 3 (5) and 6); this is why Japan has decided to adopt the system.
(2) One Application for Multiple Classes System
One application for trademark registration is sufficient to designate goods and services
in two or more classes. However, the designation must be according to classes that are"determined by the Cabinet Order", or else the application will be refused (Section 15(iii)).
For one application covering two or more classes, the decision for or against registration
will take place for that one application. Consequently if there is a reason for refusal ofjust a part of the designated goods or services being applied for, then the whole of theapplication for trademark registration will be refused (Section 15). For this reason, it isimperative that the designated goods that do not have reasons for refusal are accepted
for registration. This can be done by making sure that the correction of procedures(Section 68 (2)) or division of trademark applications (Section 10) takes place so thatimportant designated goods will not be refused. An example would be Louis Vuitton
applying for trademark registration designating not only bags and umbrellas but also
perfume, key holders, notebooks and make-up. Let us say that it was carried out underthe "one application for multiple classes system" by a single application only to find that
there was a problem with another person's trademark in regard to the notebooks. If thisis the case, even the bags, which are of great significance, would be rejected. The
solution is to either submit two applications, or to divide the application into one
designating bags and another designating other goods, or into one designating
notebooks and another designating other goods (Section 10). This will ensure that theapplication regarding bags will not be refused. The operational costs related to
examination of registration for trademarks rises with the number of classes involved.
Since application fees, demand for trial fees, and registration fees are all set with thenumber of classes in mind, it is important to be aware of this fact; however, since the1999 Revision, it is now possible to amend the application after the examiner's decisionat the time of registration fee payment so that the number of classes involved in theapplication is reduced (Section 68-40 (2)). This has allowed excessive costs to be
reduced.
A trial for invalidation (Section 46) and a trial for revocation (Section 50 and others) oftrademark registration can be requested separately for each designated good or service.
(3) Application mutatis mutandis to defensive marks
In response to demands by the Trademark Law Treaty and others, the "one application10

for multiple classes system" applies mutatis mutandis to applications for registration of
defensive marks (Section 68 (1)).
2. Adoption of the "Single Request for a multi-item record in connection with Multiple
Registration"
Under the Trademark Law Treaty, it is compulsory to submit a single request for a
multi-item record when it is in connection with the same person. For example, only one
request in writing is necessary for changes to the name of the holder, domicile, or placeof residence if they apply to all records (application, registration, and both application
and registration). (Treaty Sections 4 (3) (b), 10 (1) (e), (2) and (3), 11 (1) (h) and (3), 12(1) (e) and (2).)
In the 1996 Revision, the relevant ministerial ordinance was also revised so that a single
request regarding multi-item records would suffice in order to cover any procedures
including application, trial, and registration records.
3. The Significance of One Trademark(a) It is not permitted to attach two versions of sample trademarks the application. Even
if they are shown on a single sheet, if it is possible in some situations for the marks to
become two or more distinct trademarks in transactions, then it would go against the"one application one trademark" rule of the Trademark Law, Section 6, and possibly berefused Section 15 (iii)). The question of what constitutes a single mark or two or more
marks must be decided by social conventions. One theory is to define a trademark
rigidly by including only those that have a single form, pronounced name or concept inwhat constitutes a single trademark (Kaneko/Someno, new p. 774). Another theory is toadopt a more flexible definition by including those which might possess two or more
pronounced names or concepts, as long as they are recognized by the consumers as
being a united whole and used as such on goods and services in transactions. (Anexample would be a combination of two separate trademarks, one consisting of a figure
representing the company and another consisting of characters.) (Amino, p. 531). The
latter approach is adopted in actual operations.
(b) Depiction of two or more Different Ways of Writing a Single Pronounced Name
Problems arise in practice when kanji, the Latin alphabet, and kana are used to refer to
one pronounced name. Not only are they regarded as forming a single trademark when
depicted together, but they are problematic because even if the interpretation does notfollow the rigidity of Kaneko/Someno, the result is that there is too much flexibility.
This is especially true of cases of cancellation due to non-use, because the scope ofprotection of trademarks comprising kanji, the Latin alphabet, and kana for a name isgreater than that for a trademark comprising just one type of writing. So the procedurethat grew out of the need to protect trademark rights through trademark registration has
meant that the one case-one application principle in the Trademark Law has in practice
crumbled, exposing the risk of complication through infringement litigation.
4. The Description of Designated goods or services and the Prohibition of a Symbolic,Comprehensive Description

11

The description of designated goods or services must be written in such a way that thecontent and scope of the goods or services can be clearly and accurately interpreted.
The Ministerial ordinance chart (Trademark Law Enforcement Regulations Section 6)
demonstrates indications of goods and services.
Previously for example, designated goods and services could be described as "Class 1Chemical goods, Other- goods classified under Books" so that the use of a symbolic andcomprehensive concept covering the whole of the class was allowed. This has now
been disallowed with the introduction of the registration system for the service markand a new classification.
Having said that, as long as it appears on the ministerial ordinance chart, the designation
does not necessarily have to be for single products. It can take the form of a generalized"mid-class" description, such as inorganic industrial chemicals or vitamin tablets, or a"minor class" description such as inorganic salts or halide. Needless to say, adesignation of specific goods, such as hydrochloric acid- industrial salts, or vitaminA/cod-liver-oil candies, would be acceptable.
In Japan, if a person has already designated rice crackers in the "minor class" butdecides later that he would like to register the same trademark for his rakugan sweets,
he has to submit a separate application for a trademark (an "associated trademark
application" under the former Law). If he had designated the product for a trademark
under the "mid-class" of Japanese sweets (a concept broader than rice crackers or
rakugan) then the application would cover both products and eliminate the need for a
new application. (This has caused other difficulties, namely that a person willconsistently designate all the goods in a certain class with the notion that the bigger the
better, even in cases where the trademark is unlikely to be used for those things. The
result is a hampering of others' applications. This point will be discussed later.)If rice crackers and rakugan are in the same class, they can be designatedsimultaneously. This will not violate the one application for one trademark rule.
Therefore for designated goods, the one application for one trademark rule is the sameas the one request for one record policy connected to goods within a single class.
5. Designation of Goods and Services(1) SignificanceIf a person applies to register the trademark, "Fuji", it is not right for him to monopolize
the right to use the trademark on goods and services as diverse as industrial chemicals,
processing machines, textiles, clocks, and sweets, as well as advertising, finance,transport, education, and medicine. This is particularly true if he does not need to use it
for these things. One particular person should not have monopoly over the use of amark such as this one, which is likely to be needed by another person at some point.
Furthermore, it is difficult and also unnecessary for the Patent Office to examine thesimilarities between that trademark and others for various goods and services when an

12application is filed. It is far more appropriate to enforce designation of the goods andservices and to limit the trademark to use on those designated goods and services.
On the other hand, if a trademark right is established for goods which are so specificallydefined, firms will be forced to submit a ridiculous number of applications for
trademark registration. In fact, to get the right balance, the positions of the applicant
and the examiners are taken into account so that if the class of the goods and services isdetermined, then as many goods and services may be designated so long as they arewithin that class. In the USA, Germany, and France for example, one application candesignate goods and services in multiple classes. However, it is not permitted tocomprehensively designate by use of phrases such as "all goods in this class."(2) Designation of Goods and Services
An application for trademark registration must designate one, two, or more goods
and/or services within a single class, the classification of which is determined by
Cabinet Order, since for the sake of examination and trademark application, a right of
exclusive use should not be granted for all goods and/or services, nor is it necessary to
do so. The significance of the classes for goods and services will be explained below.
Designated goods refers to the goods designated by the applicant within the class ofgoods and services, and designated services refers to the services designated by theapplicant within the class of goods and services (Section 4 (1) (xi).
(3) Classes of Goods and Services
In Section 1 of the Trademark Law Enforcement Order, the goods and services areclassified into 34 classes for goods and 8 classes for services, totaling 42 in all. This
follows the International Classification of Goods and Services (classification of goods
and services for use of trademarks as determined by the Nice Agreement). The content
of the goods in each class is also in accordance with the International Classification.
The details of goods belonging to each class are indicated in a table attached to Section
6 of the Trademark Law Enforcement Regulations.
(4) The Class of Goods and/or Services and Similarities of Goods and/or Services
The classes of goods and services do not determine the scope of similarity of the goods
or services (Section 6 (3)). The similarity of goods and services needs to be judged
irrespective of their classification. The classes are determined by considering the nature,
use and transactional circumstances of the goods and services, it follows that it is quite
likely for similar goods and services to end up in the same class. Even so, classificationis there for the purpose of examination procedures and is a different matter than theconcept of similarity in goods and services.
It is convenient to classify the goods and services according to what they have incommon. For that, the criteria can be that they are "of a similar nature," they have"similar uses," or that they "have a common retailer or provider." Goods that fall into
the same group according to these criteria form a class.
It is inevitable that sometimes the way the goods are classified resembles the standards
that determine similarity between goods and similarity between services. As a result the13goods and services in any one class are often similar to each other. However, it must be
stressed that the classes for goods and services do not determine the scope of similarityof goods and services. It is possible for two goods or services within the same class tobe dissimilar. The Trademark Law even provides a clause in order to avoid any
potential misinterpretation (Section 6 (3)). Other countries also provide a clause in the
Law to avoid misinterpretation. (For example, see The American Trademark
Regulations Section 16.)(5) Examination Guidelines
As discussed before, the designated goods and services need to be described in such a
way that their content and scope can be accurately understood, as shown by the attachedtable of the ministerial ordinance (Trademark Law Enforcement Regulations, Section 6).
Previously, for example, designated goods and services could be described as "Class 1Chemical goods, Other- goods classified under Books", so that the use of a symbolicand comprehensive concept covering the whole of the class was allowed. This has now
been disallowed with the introduction of the registration system for service marks andnew classifications.
Because of this, the Trademark Examination Guidelines regarding the method of
description for designated goods and designated services will be outlined below.
For designated goods and services that are not clear, the Trademark Section of the First
Examination Department amended the Trademark Examination Guidelines (regarding
the Trademark Law, Section 6 (1) and (2), providing classification of designated goods
and services covered by an application for a single trademark registration) on July 30,
1998, which was then came into effect on August 17 of the same year, as described
below.
1. The designated goods and services need to be described in such a way that theircontent and scope can be accurately understood, as shown by the attached table of theministerial ordinance (Trademark Law Enforcement Regulations, Section 6).
2. When the indication of the designated goods and services is not clear and theclassification is seen to be out of line with that which is determined by the Cabinet
Order, it will be not be considered as fulfilling the requirements of Section 6 (1) and (2).
In such a case, a notification of reasons for refusal will be sent.
(Example 1) Goods and services which could fall into any number of classes to be
indicated as designated goods and designated services, as follows.
Class 5Class 7
Class 37Class 40

Hygiene masks and any similar goods
Machinery and apparatus
Leasing of machinery and apparatus
Waste disposal and related services(Example 2) Using a type of industry, or "----store" (naming an establishment) toindicate designated goods, designated services.

14Class 25
Class 42

Department Store
General Rental Industry(Example 3) Designated goods and services as shown in the attached table of the
Cabinet Order.
Class 12
Vehicles and other transport equipment
Class 32

Drinks not containing alcohol and beer

There are other examples where the class that goods and services belong to, and thecontent and scope of goods and services are very clear, as in cases where the description
in the Cabinet Order table coincides with the description in the ministerial ordinancetable.
3. In cases where the description of designated goods or services is ambiguous, even if
they are classified according to the Cabinet Order they will be rejected on the grounds
of not meeting the requirements stipulated in Section 6 (1).
(Example) Goods and services within a single class designated and described as follows.
Class 2
Class 29Class 35Class 39

All goods
Meat, other goods that belong to this class
All services
Transport by freight cars, other services that belong to thisclass

4. When the applicant responds to the notification of reasons for refusal numbers 2 and3 with a written argument or written submission of evidence with an explanation of thegoods, the application will not immediately be refused. Instead the written argument or
written submission of evidence will be considered before a conclusion is reached. A
draft amendment will be invited indicating correction in the description of thedesignated goods or services (amendment invitation from the examiner).
In these instances, if the applicant does not respond to the amendment invitation, or
does not provide appropriate correction, his application for trademark registration will
be rejected on the basis of the reasons explained earlier.
5. When the description of the designated goods or services is clear, but does not follow
the classification stipulated by the Cabinet Order, the application will be rejected on the
grounds that it does not fulfil the requirements of Section 6 (2).
(Example)
Class 9 Clocks
This can be amended to"Class 14 Clocks"
Class 36 Advertising agency for magazines
This can be amended to15"Class 35 Advertising agency for magazines"(Example)
Class 16 Magazines, advertising agency for magazines
This can be amended to"Class 16 Magazines, Class 35 Advertising agency for magazines"
6. Others(1) If only the class is stated for the goods and services, Section 5-2 (2) will apply and acorrection to complement the information will be demanded.
(2) If only the designated goods or designated services are stated, the applicant will be
invited to amend (as to formality).
(3) If there are two or more classes, if the classes of the goods and services and thedesignated goods and services are not repeatedly described, the applicant will be invited
to amend (as a formality).
(Example)
Class 1, Class 3, Class 5 Chemicals, make-up, medicine
Class 35, Class 36
Check of and Guidance on Management, Buying and sellingof shares.
7. When the revision of the Trademark Law, etc. (Law No. 68, 1996) is enforced, those
applications for trademark registration that were held by the Patent Office were treatedin the same way as in 2 and 5, based on Section 6 (1) prior to the revision.
(6) Efficacy and Abuse of a Comprehensive Description Regarding Designated Goods
and Services
It has been customary in Japan to describe designated goods in a comprehensive,
general way, such as "Class 1, chemicals and other goods in this class." The firstproblem this raises is in the interpretation of Trademark Law, Section 6 (1): "…shalldesignate one or more items of goods or services…." The question is whether
subdivided and specifically defined goods should be considered "one good," or if acomprehensive description including all goods within a single class should beconsidered two or more goods.
The second problem is that designation of goods in sweeping, comprehensive terms is
not practiced in other developed countries. In fact, it was an exception to the rule tofind countries that accepted comprehensive designation amongst the international
community. This type of designation was also causing difficulties after registration
since it created irrational spheres of influence. Much of the criticism directed at theTrademark System stemmed from its acceptance of comprehensive designation because
there were a number of cases where all goods in a single class would be designated andyet in reality only one subdivided category would be used over the years. This caused
needless obstruction in the application for trademark registration of third parties. To
make matters worse, the system of licensing allowed the owner of the unused trademark
to demand a fee in exchange for permission to use the trademark, so that the Trademark
Law was seen as acknowledging unfair special privileges.
In 1991, the Law was revised to introduce service marks; the International
Classification of Goods and Services also came into use at the same time. At this time,16

changes were made so that comprehensive designation of an entire class and a
description to the effect of "and other goods (services) in this class" was no longer
acceptable.
(7) Abandonment of part of the Designated Goods or Services
Sometimes a notification of refusal may be sent because an application for registration
has designated goods and services, a part of which infringes upon an earlier registrationor earlier application. If the applicant wishes to avoid rejection, then he has the option
to abandon the part of the goods and services which is in conflict with the earlier
registration or application and designate the remaining goods and services. This process
should be conducted by a correction to the designated goods or services, but only if it isdone within the period allowed for correction. The question is whether abandonment ofparts of the designated goods or services should be allowed after the deadline forcorrection.
Abandonment of a part of the designated goods or services after the deadline forcorrection was accepted as an applicant's declaration of intention to the Patent Office,which does not require the submission of a written amendment to the designated goods
indicated and withdrawal or abandonment of part of the designated goods/services. (Vol.
10, No. 1, Tokyo High Court, Mutaishu, p. 280, June 21, 1978; No. 388, Tokyo High
Court, Hanyu, p. 164, Mar. 28, 1979; No. 64, 1494, Supreme Court, Sokuho, Aug. 26,
1980; Vol. 11, No. 2, Tokyo High Court, Mutaishu, p. 666, Dec. 24, 1979; No. 94, 2352,
Supreme Court, Sokuho, Jan. 31, 1983; Vol. 14, No. 2, Tokyo High Court, Mutaishu, p.
451, June 17, 1982; Sansei (Agreement), Amino, Makoto "Commentary on Rulings";
Vol. 33, No. 8, Patent Management, p. 1043; Satsuma Ryosho, "Commentary on
Rulings", No. 1079, Hanji, p. 217; Yokokawa, Morisuke, "Commentary on Rulings",
Vol. 31, No. 5, Patent Management p. 513. These references view the time of ruling tobe the same as the time of decision on illegality.) The abandonment of part of thedesignated goods in cases that are in the process of a suit against an appeal or trial
decision, taking place after the deadline for correction, has begun to be accepted. On
the other hand, there have been other rulings where the opposite was upheld because
retroactivity for partial abandonment was not accepted. (Nos. 6669, 6674, Tokyo High
Court, Patent News, p. 1, Mar. 19, 1985. For opposition to ruling by majority, see
Ishikawa, Yoshio, "Commentary on Rulings", Vol. 34, No. 3, Patent Management, p.
289.) In response to the split in the High Court's decisions, the Supreme Court ruledthat the abandoning part of the designated goods will not achieve its purpose after theperiod specified for corrections has expired and that abandonment of the application as
stated in Trademark Law Section 8 (3) will not be applicable. (Vol. 38, No. 10, Supreme
Court, Minshu, p. 1145, Oct. 23, 1984; and in the same vein, No. 5, Supreme Court,
Special Edition, p. 9, Mar. 11, 1986. Opposition, Makoto Amino, "Commentary on
Rulings", Commentary on Important Cases, 1984. p. 259. Also, Tatsunori Shibuya
raises the question of division of application in "Commentary on Rulings", Vol. 93, No.
1, Minsho p. 83.)
6. Consolidation of Classification(1) The Need for Consolidation of Classification
At present there are 5 different classification systems in operation, from the firstclassification system of 1899, through four amendments, to the current International

17

Classification system. This causes countless problems in searching for trademarks andresearching trademarks. To make matters worse, some of the names of goods from the
Meiji (1868-1912) and Taisho (1912-1926) eras are such that the writing is oldfashioned and indecipherable, thereby making the scope of the right ambiguous.
The 1996 Revisions consolidated the various methods of classification under theInternational Classification system, by transferring the trademark rights with designatedgoods classified under Japan's old classification system (under the Laws of 1899, 1909,
1921 and 1959) into classes under the International Classification system, resulting in astraightforward, unified system.
(2) Transferring the Goods and Services
Owners of trademark rights that were classified under the old system must request a"registration to transfer" the designated goods or services of the trademark rightbetween 6 months prior to and one year after the expiration of the right (Supplementary
Provision, Sections 2 and 3).
Outline of the Transfer Proceedings
1) Notification of transfer
2) Request for transfer registration(During the period beginning 6 months prior to and ending one year after expiration)(Supplementary Provision Sections 2,3 and 4) Acceptance of applications will bephased.
3) Examination by examiner (Supplementary Provision Section 5)
4) No reason for refusal5) Examiner's decision on transfer registration
6) Transfer registration (Supplementary Provision Section 12)7) Official Gazette (Supplementary Provision Section 12)8) Trial for invalidation (Supplementary Provision Section 14) (period of exclusion = 5
years)
9) No reason for invalidation (failed motion)10) Reason for invalidation (ruling of invalidation)11) Appeal to the Tokyo High Court (Supplementary Provision Section 22)12) Final and conclusive trial decision
13) Final and conclusive trial decision (Invalid retroactively from the time of transfer)14) Reason for refusal15) Notification of reason for refusal (Supplementary Provision Section 6)16) Written argument/correction submitted (Supplementary Provision Sections 7, 24)17) Written argument/correction not submitted18) Examiner's decision of refusal (Supplementary Provision Section 6)19) Final and conclusive trial decision
20) The trademark right will terminate on the day of expiration (renewal is not
permitted). (Supplementary Provision Section 11)21) Appeal resulting from objection (Supplementary Provision Section 13)22) Acceptance of objection23) Appeal decision to register transfer24) Rejection of objection

1825) Appeal decision of refusal
26) Appeal to the Tokyo High Court (Supplementary Provision Section 22)27) Final and conclusive appeal decision28) No request for registration of transfer(Note)For trademark rights that will expire within 6 months from the time of application, an
application for transfer must be made at the same time as an application for renewal
since it will take 18 months to process the transfer.
Requests for transfer are accepted 6 months after the deadline for renewal registration
so that there is enough time to notify those who request renewal but forget to request
transfer.
The volume of requests for transfer is so overwhelming that applications are being
accepted in phases, from trademarks in the oldest 1899 classification to the more recent
ones. The first batch to be accepted has been designated as those which were originally
filed before January 10, 1922.
Once the start date for submitting applications has been announced, owners of
trademark rights needing transfer must request transfer between 6 months prior to and
up to one year after expiration. It must also be 6 months after the start date
(Supplementary Provisions, Section 3 (2)).
This period more or less coincides with the period for requesting renewal of term for a
trademark right, so the two requests can be made simultaneously. (Separate requests
must be submitted for renewal of registration and registration of transfer.)
The outline for the transfer process is set out in the flow chart on the previous page.
(3) Filling in the Request for Transfer
Any person wishing to request transfer must submit a written request with the following
information, along with any explanatory statements, to the Commissioner of the Patent
Office (Supplementary Provisions, Section 3 (1)).
1) Name of person making the request and his domicile or place of residence(Supplementary Provisions, Section 3 (1)).
2) Registration number of the trademark (registration of a defensive mark).
3) The designated goods of the registration for transfer and the Class of the goods orservices that it belongs to in accordance with Supplementary Provisions of theTrademark Law, Section 2 (1).
(4) Consent of the owner of right and pledgee
If there is any owner of right or pledgor involved, it is necessary to have their consent inorder to request a transfer of the trademark right. Their written consent must be
attached to the request for transfer (Supplementary Provisions, Section 4 (2)).
A written consent is required regardless of whether there will be a limiting of thedesignated goods or not. Consent might seem unnecessary if there are no changes in the19scope of the designation, but it is useful in cases where opinions are divided overwhether designated goods in the old Class are the same as the designated goods
described in the request for transfer.
(5) Notification of Reasons for Refusal
On receipt of a request for transfer, an examiner from the Patent Office will examine thedocuments. When the request falls into one of the following categories, a notification ofreason for refusal will be sent to the person making the request (Supplementary
Provisions, Sections 5, 6 and 7).
When it exceeds the scope of the designated goods of the trademark right;
When it does not follow the classification system in force on the day the request is
submitted (The classification of goods and services stipulated by the Cabinet Order,
Trademark Law, Section 6 (2)); or
When the person making the request is not the owner of the trademark right in question.
(6) Final Decision
In response to the reasons for refusal notification, the person making the request may
submit a written argument (Supplementary Provisions, Section 7) or a written correction(Supplementary Provisions, Section 24) to cancel out the reasons for refusal. If they are
not convincing enough for cancellation, then a final decision to refuse the request will
be made (Supplementary Provisions, Section 6).
If no reason can be found for refusal, or if the reasons for refusal have been cancelled asa result of the written argument or correction, then a final decision to grant registrationof transfer will be taken (Supplementary Provisions, Section 8).
(7) Corrections
A person who has undertaken proceedings to request transfer etc. may make corrections
on the request but only during the time that the case is pending for examination, trial or
re-examination (Supplementary Provisions, Section 24). The reason correction has been
allowed is because it would be harsh on the person making the request if the designatedgoods for transfer were fixed at the time of request with no chance for amendment at alater date.
The content of the correction can be such that the scope of the designated goods
described in the request for transfer or written correction is expanded, as long as it iswithin the scope of the designated goods of the trademark right.
(8) Transfer
The transfer of designated goods, which becomes effective once registered, takes placewhen the examiners reach their final decision (Supplementary Provisions, Section 12(1), (2), Section 26). Trademark rights designating goods that were not indicated on therequest for transfer will cease to exist at this time of registration (Supplementary
Provisions, Section 12 (3)).

20

When registration takes place, the following will be announced in the Official Gazette(Supplementary Provisions, Section 12 (4)).
1) The name and domicile or place of residence of the person making the request.
2) The registration number of the trademark.
3) The Class of the designated goods and goods prior to registration of transfer.
4) The Class of the designated goods, and goods and services after registration oftransfer.
5) The date of application of trademark registration.
6) The date of registration of transfer.
7) Other necessary matters.
If a decision of rejection has been received in response to a request for transfer, theperson may appeal within 30 days from the day the copy of the decision was sent
(Supplementary Provisions, Section 13).
(9) Trial for Invalidation regarding Registration of Transfer
An interested person may appeal for the registration of transfer to be invalidated if it
falls into any of the following categories (Supplementary Provisions, Section 14 (1)).
For registration of transfer with two or more designated goods, it is possible to appeal
individually for each of the designated goods (latter clause of the same subparagraph).
However, it is not possible to appeal if five years have lapsed since the registration oftransfer date (Supplementary Provisions, Section 14 (2)).
1) The registration of transfer effectively exceeds the scope of goods designated for the
trademark right.
2) The registration of transfer has been effected in response to the request of someone
other than the owner of the relevant trademark right.
If there are more than two designated goods involved, trials for invalidation will only
affect the part of the designated goods to which the reasons for refusal apply. In otherwords, that part of the designated goods will be invalidated, but the other parts will still
be valid so as not to be too harsh on the owner of the trademark right (Supplementary
Provisions, Section 25).
(10) Extinguishment of Trademark Right
In any of the following cases, a trademark right will not be renewable at the next
expiration date and will cease to exist (Supplementary Provisions, Section 11).
1) The request for transfer was not made during the set period of time.
2) The decision or ruling of refusal is final and conclusive.
3) The ruling on invalidation of registration of transfer is final and conclusive.
4) The request for transfer has been dismissed.
(11) Fees
There are no fees for requesting a transfer, so as not to overburden the owner of the
trademark right. However, fees related to trials and appeals for transfer will be payable.
For subsequent renewal registration after transfer has been registered, a renewal fee will
be payable according to the number of classes after transfer (Commercial Code,21

Sections 40 (2) and 41-2 (2)).
(12) Others
Appeals against rulings (Supplementary Provisions, Section 22), application mutatis
mutandis of the transfer regulations to defensive marks (Supplementary Provisions,
Section 23), and the application of a penalty system (Supplementary Provisions,
Sections 28-30) are some of the other rules that have been established.
(13) Examination Guidelines Related to Transfer(a) The Examination Guidelines state the following regarding transfers.
1. Supplementary Provisions, Section 6 (i), shall apply as follows:
1) The clause "[w]hen it does not fulfill the requirements set forth in Supplementary
Provisions Section 4 (1)" includes cases where the registration of transfer effectively
exceeds the scope of goods designated for the trademark right. It will also include cases
where the goods to be designated for registration of transfer are not classified according
to the prescribed classification for goods and services.
2) The Class for relevant goods and services shall be in accordance with theclassification that is in force on the day of submitting the request.
3) If the examiner has been professionally convinced that the designated goods about tobe transferred were not in existence when their trademark was registered, then it will berefused on the grounds that it effectively exceeds the scope of goods designated for the
trademark right.
4) Despite the guidelines outlined in 3, if, after deliberating their quality, shape, use,function, concept, and the commonly accepted transactions, the goods can beconsidered to effectively be of the same kind as the goods designated for transfer, thenthey will be treated as falling under designated goods.
However, if the designated goods are specific, for example "wooden desks", then "metal
desks" should not be treated as falling under designated goods.
2. For goods being considered for registration of transfer, amendments or corrections tochange or expand the goods described in the request for transfer will be accepted. This
includes goods after correction in cases where a request for correction has already been
submitted.
If correction is for transfer of goods that effectively exceed the scope of goods
designated for the trademark right, it will be refused in accordance with Supplementary
Provisions, Section 6 (i).
p. 369
3. The request for transfer will be considered dismissed if the trademark right ceases toexist during the period it is being processed. (This may be due to expiration of the rightwithout request for renewal or refusal of renewal, the abandonment of all designatedgoods related to the trademark right, or in cases of invalidation or revocation.)22

4. When a part of the designated goods relevant to the request for transfer has beenabandoned, invalidated, or revoked and if this part of the designated goods is the sameas or includes the goods requested for registration of transfer, the request will berejected on the grounds that it exceeds the scope of goods designated for the trademark
right.
(b) Creating and Announcing Guidelines for Transfer
In order to lessen the burden on the owner of the trademark right and the Patent Office,the latter has produced and made public guidelines for transfer. These come in the formof a table outlining the goods according to the old classification and their new position
after transfer.
In examining the request for transfer, the goods described on the request for transfer inaccordance with this table will be compared with the designated goods of thecorresponding trademark right to determine if they are the same. If goods which are noton the guidelines for transfer are included in the request for transfer, then the goods will
be compared with the goods designated by the trademark right separately, after
consideration of the examination guidelines described in (a) and related goods found in
the guideline table.
(c) Actual Examples Indicating Transferred Goods
In addition to single item indication, a comprehensive description of the nature is likely
to be accepted, as long as the content and scope of the goods to be transferred areunambiguous and pose no problems as an indication of the transferred goods.
Section 3. The First to File System
I. The clear-cut first to file system"First to file" is when two or more competing applications are submitted and the first
one to actually be filed is the sole recipient of the registration. This "first to file system"
operates within the Trademark Law of Japan.
P. 370
Where two or more trademark applications relating to identical or similar trademarks,
which are to be used on identical or similar goods or services, are filed on different
dates, only the earliest applicant may obtain a trademark registration for the trademark
concerned (Section 8 (1)).
In addition to this "first to file" system, the "principle of registration" is also at work in
the Japanese system. The advantage of employing this principle is that legal stability is
assured for users of the trademark, a point already discussed (See Chapter 5, Section 1).
The registration system works to not only provide a legally protected stability to the useof registered trademarks, but also to protect the reputation of the owner of the trademark
right. The trademark embodies trust in the business of the owner of the registered rightbecause he is the sole party eligible to use it. Furthermore his sole use guarantees thequality of the product to the consumers, as well as preventing unlawful competition. It
is therefore imperative that the trademark is registered in order to maintain order of the23

trademark's legal coherence.
It is in order to maintain this clarity in the first to file system that trademarks that are
identical with, or similar to, "another person's" registered trademark and that are used on
identical or similar goods or services will not be registered (Section 4 (1) (xi)).
II. The First to File System, the Registration Policy and the Use Policy
In contrast to the registration policy, where the trademark right comes into effect at thetime of registration, the "use policy" is a system whereby the right comes into effect at
the time it is first used. Theoretically therefore, the registration policy does notnecessarily assume a first to file system.
For example, in the Trademark Order of 1888, it was decided that in the event ofcompetition, the trademark right would be granted to the first applicant who had filed.
However, the cases here concerned two or more applicants each of whom were applying
for trademark rights that had not yet been used. If a prior user of the trademark rightexisted, he would be given the right to apply regardless of whether an applicant
requested an unused trademark or whether another user of the trademark who started
using it after him had since applied (policy of prior-user registration, Treaty Order,
Section 2 (iii)). This demonstrates that there is no reason why the first to file systemand the registration policy should go hand in hand, as is the case in the current
Trademark Law. Having said that, the reality is that the majority of countries embracinga registration policy for trademark rights also choose a first to file system.
III. System under the "Use Policy"
It is possible in theory to embrace a first to file policy under a registration systemgoverned by a "use policy."
As a trademark structure, it is much more straightforward to adopt legislation based on
first to file, which grants trademark registration to the applicant who filed first, than toadopt legislation based on first to use, which grants trademark registration to the person
who was the first to use the trademark. It is often very difficult to determine who it wasthat used the trademark first. A dispute is often triggered and sometimes it is impossible
to determine the prior user. It is for this reason that the supremacy of the first to filesystem over the first to use system is widely acknowledged. The disadvantage of thefirst to file system is that if pursued too rigorously, it can lead to a loss of "realistic
compromise" in the name of "legal stability." As a result, many use-acknowledged
adjustments are incorporated even under a first to file system. An example of this is theprotection of a well-known trademark against an application filed first.
Under the Trademark Law of Japan, trademarks that violate well-known trademarks
cannot be registered (Section 4 (1) (x)). The user of a well-known trademark can also
invalidate the registration by another of the trademark concerned and such a user may
obtain trademark registration even if he files an application later. It is not always
necessary to protect the first applicant to file: Section 53-2 allows cancellation of aregistration if it was conducted "without a legitimate reason and without the24authorization of the person who has the right to the trademark, by his agent or
representative." In general though, it is not so simple to cancel even if the applicant is"purely malicious" towards the prior user of the trademark; the prior user has been
granted the first to use right only in circumstances where the mark was widely
acknowledged. In regard to the treatment of the applicant with "intent to harm,"
Shibuya argues that Japan falls behind the UK, USA, Germany, and France in its legal
policies and interpretation (Shibuya, 50 lectures, p. 10).
IV. Details of Japan's First to File System(1) Acknowledgement of the Date of Application
Needless to say, determining the filed date of an application forms the basis of the firstto file system and is therefore of great significance. The date of application is the dateon which the application form was submitted. Regulations were added to accept
correction in response to amendment invitation for those applications that did not fulfill
requirements, in accordance with Trademark Law Treaty, Section 5. Those that fail to
respond to a demand for correction will be dismissed as with other procedural faults(Section 5-2 (1), (2) and (5)).
When a correction in writing has been submitted in response to an invitation to correct,
the date of submission of the correction in writing will be treated as the date of the
trademark application (Section 5-2 (3) and (4)). Correction will be made in thefollowing cases.
1) It is deemed that the intent to request a trademark registration is not indicated clearly.
2) The name of the applicant is not indicated, or its indication is not clear enough to
identify the applicant.
3) The trademark being applied for registration is not described in the application.
4) The designated goods or services are not indicated.
(2) Violation of the First to File System
The violation of the first to file system (violation of Section 8 (1)) is different from theviolation of the first to file system of Patents (Patent Law, Section 49 (ii)). Here it is nota reason for refusal of the application for trademark registration (Section 15 (i)) but areason for invalidation of the registered trademark (Section 46 (1) (i)). This is because
the violation of Trademark Law Section 8 (1) corresponds to Trademark Law Section 4(1) (xi) and will be refused on those grounds. The first to file will be registered initiallyand then any trademark applied after that trademark will be refused. Without
considering the violation of Section 8 (1) to be a reason for invalidation of the registeredtrademark, an erroneously registered later application, with the first to apply notregistered, will not be invalidated due to the idea that "trademarks which are identicalwith or similar to another person's registered trademark will not be registered".
(3) Notification of Refusal based on a Trademark First to be Filed but yet to be
Registered
In application for a trademark, the later application is kept waiting until the first one isprocessed, resulting in an overall backlog. Knowing that an earlier application yet to beprocessed exists will enable the applicant to take the next step, such as correcting the25designated goods or services, or reapplying with a new trademark with no further delay.
It would be a dreadful operational inconvenience if the existence of an earlier
application were not communicated until it had finally been processed and the later
applicant could make the next move. A revision was effected therefore to include
notification of refusal based on a trademark first to be filed but not yet registered.
In the event of the existence of a prior application by another applicant for an identicalor similar trademark to be used on identical or similar designated goods or services,where that trademark has already been registered, the case will fall under Trademark
Law Section 15 (i). The examiner will then notify the later applicant of the facts(notification of reasons for refusal) and invite him to submit a written argument by a set
date (Section 15-3 (1)).
In the event that the first applicant's application is subsequently accepted and thetrademark concerned registered, there is no need to send another notification if thereasons for refusal have already been sent (Section 15-3 (2)).
The notification of reasons for refusal stipulated in Section 15-2 had originally been amutatis mutandis application of the Patent Law Section 50. However with the newly
established regulations on notifications of reasons for refusal regarding earlier, yet-to-beregistered trademark applications, the mutatis mutandis application of the Patent Law
was abandoned and the new regulation included in the Trademark Law.
The application number, trademark, designated goods or services, and the Class of thegoods or services of the first to file application must be indicated on the notification ofreasons for refusal being sent to the later applicant.
Because the reasons for refusal listed in Section 15 of the Trademark Law do notinclude trademarks that infringe upon an earlier application for a yet-to-be registeredtrademark, the actual decision of refusal can only be reached after the earlier trademark(cited trademark) has been registered.
V. Competing Applications made on the Same Day(1) Consultation
The date is the deciding factor in determining which application was filed first between
two or more trademark applications (Section 8 (1)). If they were filed on the same date,the two or more applicants must consult one another since only one application is
accepted for registration (Section 8 (2)). The consultation-first policy is the same as forPatent Law, Utility Model Law, and Design Law.
Section 8's discussion regarding the same date application by two or more competing
applicants includes services, which gives rise to potential issues of who is first to file,and which of the same date applicants should be considered first to file, between goods
and services. This is an inevitable outcome when we consider that similarities exist
between some goods and services.
(2) Drawing of Lots

26

In Trademark Law, where no agreement is reached in the consultations, or where thereport is not made within the time limit designated, registration of the trademark
concerned may be obtained only by one applicant chosen by the drawing of lots
conducted in a fair and just manner by the Commissioner of the Patent Office (Section 8(5)). This is where this Law differs from the other three Industrial Property Laws.
(3) Differences with Creative Rights
In the Patent Law, for example, the rule is that in the event of no agreement throughconsultations, "no applicant will be granted registration" (Patent Law, Section 39 (2),(4), Utility Model Law, Section 7 (2), Design Law, Section 9 (2)). For these creative
rights, novelty is necessary for registration, and when consultation fails to provide anagreement, the result is a loss of novelty. In such cases, the freedom to use technology
in the interest of the public will become the prime issue.
In the Trademark Law, on the other hand, the idea of creativity and novelty are not
intrinsic. It is through the use of trademarks that trust and reputation is built up.
Trademark Law cannot allow for two or more trademarks which infringe upon one
another to be registered at the same time, but this does not mean to say that refusal of all
applications in the face of failed consultation, as in the Patent Law, is necessary. The
drawing of lots is chosen as a solution to avoid the conflict of a hypothetical situation
where all applicants who applied on the same date were all denied registration, butanother applicant filed later and was successful in receiving trademark registration.
VI. Coexistence with an Application for International Registration
The adoption of the Madrid Agreement has raised the following new issues which no
doubt will be addressed in the future.
One of the difficulties anticipated is when a registered trademark on the international
register is identical to a registered trademark on a national register and, at the same time,the designated goods or services of the former are identical to that of the latter. If this is
the case, for the area of overlap, the application date of the trademark's international
registration will be considered to be the same date as the application date of its national
registration (in other words, the application date for international registration will bebackdated to the application date of the national registration).
The effect of this is that in regard to the area of overlap, the application for international
registration will fall in line with the earlier national registration date.
In the 1999-Revised Law, it was decided, after taking the practices of various countries
into consideration, that the national and international registration should coexist, rather
than to replace one with the other (this applying even in cases where the criteria for
replacement is met). The backdating of the application date is a stipulation included in
response to the Madrid Protocol's statement "insofar as it does not violate the rightunder national registration."
The resulting coexistence of more than one trademark right for identical subjects(trademark, goods, or services) creates the problem of ambiguity of origin. This can be27

a matter in which an appeal to revoke, under the Trademark Law, Section 52-2, may be
applied, since there are no regulations for exceptions to this application.
Where there is overlap in national registered trademarks and international registeredtrademarks, it is necessary to indicate in both original registers that the other exists.
Section 4. Exceptions to the First to File System
In general, the first to file will be granted registration over later applications under the
first to file system. There are cases whereby the latter application will be registered due
to a certain legal reason, or due to regulations to backdate the application date.
Following are the exceptions to the first to file system.
As discussed earlier, decisions about competing trademarks whose application forregistration are made on the same date, are sometimes reached by consultation or by
drawing lots. It is therefore possible that one application submitted after the other,albeit on the same day, would be granted registration. From that point of view, they
could be considered exceptions to the first to file system, but it is more appropriate tothink of them as a means of dealing with competing applications.
I. Exhibition(1) Exhibit Timing
In the case of a trademark used in respect of goods exhibited or services offered at alegally acknowledged exhibition, provided that those goods or services are designatedas the designated goods and services and provided that it is within six months from thedate when they were exhibited or offered, the trademark application shall be deemed tohave been filed at the time when the goods were exhibited or the services offered(Section 9 (1)).
(2) Definition of Exhibition"A legally acknowledged exhibition" is an exhibition held by the Government, etc., or at
one which is not held by the Government, etc. but has been designated by theCommissioner of the Patent Office, or at an international exhibition held by theGovernment, etc. or a person authorized thereby in the territory of a country party to theParis Convention or a Member of the World Trade Organization or a country party to
the Trademark Law Treaty, or at an international exhibition held by the Government,
etc., or a person authorized thereby in the territory of a country which is neither a party
to the Paris Convention nor a member of the World Trade Organization nor a country
party to the Trademark Law Treaty but which has been designated by the Commissionerof the Patent Office (Section 9 (1)).
(3) Purpose
An exhibition is considered a success the more new goods and services with new
trademarks are exhibited; exhibitions often showcase new goods, or the effects of a
newly launched service, or necessary installations and systems surrounding the newservices. It would not be right for the trademarks used on the many goods and services
on display or offered at the exhibition to be applied for by another person and granted28

on the first to file basis. (It should be noted that the drafting of the Paris Convention for
the Protection of Industrial Property was prompted by an exhibition.) Section 11 of theParis Convention stipulates that temporary protection should be granted to trademarks
used on exhibits of goods and offers of services made at an exhibition, on which thissection is based. For this reason, "the date of exhibition of goods and offer of services"
is regarded as "the date the exhibited goods and offers of services were brought into thevenue" and not "the date of the exhibit" (Paris Convention, Section 11 (2)).
(4) Procedures
Any persons who desire to file an application under any of these special cases shallsubmit a written statement to that effect to the Commissioner of the Patent Office.
Within 30 days from the filing of the trademark application, he shall also submit adocument to the Commissioner of the Patent Office proving that the trademark and thegoods or services in the trademark application are a trademark and goods or services
falling under the rules of special cases (Section 9 (2)).
(5) Service Marks
The Paris Convention does not compel the protection of trademarks for service marks.
Therefore the priority claims dealt with in Section 4 of the Paris Convention are notautomatically applied and made compulsory for service marks. However, in Japan,
internal laws have been passed regarding service marks; these procedural laws aremodeled after the procedures for goods found in the Trademark Law, Section 13 (1)(Patent Law, Section 43), and after the effects found in the Trademark Law, Section 77(4) (Patent Law, Section 26) together with Section 4B of the Paris Convention. In otherwords, the priority claim for service marks based on trademark registration, which was
adopted by countries party to the Paris Convention, can now be claimed throughTrademark Law 9-2 by referring to examples stated in Section 4 of the Paris Convention(Trademark Law, Section 13 (1); Patent Law, Sections 43, Trademark Law, Section 77(4); Patent Law, Section 26). This stipulation in the Trademark Law was newly
established as part of the revisions that took place with the introduction of theregistration of service marks.
Furthermore, according to the revisions of 1994 and 1996, a priority claim can be basedon an application which Japanese nationals or nationals of a country party to the Paris
Conventions have filed in or for any member country of the World Trade Organization
or a country party to the Trademark Law Treaty. The same can be said for a priority
claim based on an application that nationals of a member of the World Trade
Organization or a country party to the Trademark Law Treaty have filed in or for any
country party to the Paris Convention, member of the World Trade Organization, or acountry party to the Trademark Law Treaty (Section 9 (3)). Not only that, it has
provided inroads into priority claims being acknowledged on principles of mutuality
with persons of countries not party to the Paris Convention nor member to the World
Trade Organization. (Section 13 (1); Patent Law, Section 43-2. See p. 382 of this book.)
II. Division of Applications
1. Significance29

(1) Guidelines for Timing of New Divisional Applications
An applicant for a trademark registration may divide a trademark application
designating two or more goods or services as designated goods or designated services
into one or more new trademark applications (Section 10 (1)). In this instance, the more
recent of the applications will be considered to have taken place at the time of theoriginal application for trademark registration (Section 10 (2)). This is effectively an
exception to the first to file system.
(2) The Role of Division of Applications
Of the applications for trademark registration that violate the one application per
trademark rule, some, such as the use of one application to request registration for two
trademarks, would be an obvious error on the part of the applicant and therefore notnecessary to protect. However, this is not always the case. For example, theclassifications of goods and services change with the changing times. There are eventimes when it is not clear which class of goods and services the designated goods anddesignated services belong to. Because of this, it is not always fair to blame theapplicant for unintentionally violating the one application per trademark rule, when, forexample, he makes a mistake concerning the classification of the designated goods andservices and designates something from a one class and puts it into another class. In
such cases it is appropriate to allow division of the application to protect the interests of
the applicant. (Eliminating the part concerned from designated goods/services bycorrection in writing is the alternative, but if there are ambiguities with this, thendivision of the application is more practical.) Also, in the case where two or moretrademarks are applied for registration and two or more goods or services from the sameclass are designated, allowing division of the application will cause no harm. It isbeneficial for the convenience of the applicant to divide the application in this fashion.
Another consideration to keep in mind is that, even though a comprehensive designationof an entire type is not allowed, a trademark application with a certain level ofcomprehensiveness in its concept is accepted in the designation of goods and services.
As a result, the Trademark Examination Guidelines state, "even in cases where thedesignated goods and services are described in a comprehensive manner, it is possible todivide the application according to the individual goods and services designated"(Trademark Examination Guidelines, p. 63).
2. Conditions for Division
Conditions for division of an application for trademark registration can be divided into
two sorts: substantive conditions and procedural conditions.
(1) Substantive Conditions(a) Same Applicant
The applicant for division of an application must be the same person as the applicant forthe original application of trademark registration. In order for a successor to divide anapplication, he must first notify the change of applicant when requesting division of theapplication. Therefore, a change in applicant after division that affects only one part of
the whole will not have any other repercussions, such as backdating of the change ofname to the application date.

30

(b) Same Object
It is important that the object is the same in order for the division to be acceptable. In
order for the object to be the same, the designated goods of the original application andthose of the divided application must be substantially the same. For designated goods
and designated services to be substantively the same, it is their content that needs tocoincide and not the manner of their indication.
(c) Division of Application between Similar Goods or Similar Services
With the abolishment of the associated trademark system at the time of amendment,
division of an application between similar goods and similar services no longer requiresa clear indication of the mutual relationship. All that is required in their application fordivision is the date and number of the trademark registration and the application number
and a statement that requests division of the trademark registration application, in theusual format for this type of application. However, after registration, assignment of oneof them needs to be monitored carefully for trademark administration purposes.
(d) Timing of the Division
Prior to the Trademark Law revisions of 1996, a trademark application could be divided
while it was pending examination, trial examination, or retrial examination (Section 10(2)). However, the Trademark Law Treaty stipulates that the division of an application
should be accepted even during the period of appeal against a decision to refuse (Treaty
Section 7 (1) (a) (i) (ii) (iii)). The current Law is now in line with the Treaty so that theperiod during which application of trademark registration may be divided is when "thetrademark application is pending examination, trial examination, or retrial examination,or when a suit against a trial decision or retrial examination or a suit against a trial
decision to refuse the trademark application is pending in court" (Section 10 (1)).
When a division of goods (and therefore a division of the trademark) is the outcome of adecision on registration or a final decision on appeal, the division of the trademark will
be processed through a division of the registration.
(2) Procedural Conditions
An application that has been divided will be considered a new application; therefore, theapplication must be corrected so that, for the rest of the designated goods, a separate
application for trademark registration is submitted as a new application. Furthermore,
the correction and the new application must be submitted at the same time (Trademark
Law Enforcement Regulations, Section 22 (4); Patent Law Enforcement Regulations,
Section 30). The significance placed on the first to file system, together with theacceptance of division of application being backdated to the application date, renders it
essential to keep the interrelationship of the correction and new applications intact bysubmitting both simultaneously and thereby keeping proceedings consistent.
3. Effect of Dividing Applications(1) Retroactive effect
The divided application is considered a new application, but because the intention to
apply was already apparent with the original application, its application date will not bethat for the division but it will be backdated to the original date of application, and in31this way maintain the first to file status. Even so, it is not possible to adopt a system of
dividing applications if the subsequent document's period for submission was calculated
from the backdated time. It is for this reason that the period allocated for submitting
documents as evidence will be calculated from the date of the new application in cases
where goods and services were offered at exhibitions, or where the first to file statusresulted from priority claims based on the Paris Convention. The same also applies topersons of countries not party to the Paris Convention nor members of the World Trade
Organization, to whom the revisions of 1994 have provided inroads into priority claims
being acknowledged on principles of mutuality. (Section 13 (1), Patent Law, Section 432. See p. 382 of this book for more. (Section 10 (2), 9 (2) [Exceptional cases of thetiming of applications, application mutatis mutandis of Patent Law] 13 (1), Patent Law,
Sections 43, 43-2 (2) and (3) [priority claim]).
(2) Second Division of Application
The backdating of the new application resulting from division of an application to thedate of the original stems from the fact that the intention to apply was already evident at
the time of the original application. It is therefore appropriate, based on this fact, in thecase of a further division leading to a third application of division to backdate the third
not to the date of the second but to the original application date.
III. Changes to Applications
1. Changes to Applications(1) Change from an Application for Registration of a Collective Trademark to an
Ordinary Application for Registration of an Individual Trademark and Vice Versa
An applicant may convert his application for registration of a collective trademark into
an application for registration of an individual trademark (Section 11 (1)). He can also
convert his application for registration of an individual trademark into an application forregistration of a collective trademark (Section 11 (2)).
It is possible to apply for registration of an individual trademark when the application
should have been for registration of a collective trademark. It is also possible to apply
for registration of a collective trademark when the application should have been forregistration of an individual trademark. Sometimes an existing registered trademarkthat should be changed to a collective trademark becomes invalid or is revoked during
the application proceedings. In all of these cases, the date of application after thechange needs to be backdated to the date of application prior to the change, so that theapplicant can be protected under the first to file principle.
(2) Change from an Application for Registration of a Defensive Mark to an Ordinary
Application for Registration of an Individual Trademark and Vice Versa
An applicant may convert his application for registration of a defensive mark into an
application for registration of an individual trademark (Section 12 (1)). He can also
convert his application for registration of an individual trademark into an application forregistration of a defensive mark (Section 65).

32

Sometimes an existing registered trademark that has been applied for a change to a
defensive mark becomes invalid or is revoked during the application proceedings. In
these cases it is of real benefit to convert the application for registration of a defensive
mark to one for registration of an individual trademark and to backdate the application
after the change to the date of application prior to the change. Sometimes the reverse isnecessary: to convert an application for registration of an individual trademark applied
for by mistake in judging the conditions, to an application for registration of a defensivemark.
2. Proceedings and EffectEven if the application was converted from one for registration of a collective trademark
to one for registration of an individual trademark or vice versa, some would argue thatas long as the identicalness of the substance is maintained, it is only another form ofcorrection. However, according to the current Law, an application for a conversion isconsidered a new application at that point, the old application is seen as having been
replaced by the new one. In other words, the former application for trademark
registration will be considered withdrawn at the time of the change in application(Section 11 (4)).
The applicant is not able to convert his application for registration of a collective
trademark into an application for registration of an individual trademark after a decision
or a ruling has become final and conclusive (Section 11 (3)). The same applies to a
defensive mark in that an applicant is not able to convert his application for registrationof a defensive mark into an application for registration of an individual trademark after
a decision or a ruling has become final and conclusive (Section 12 (2)). The converse isalso true. The applicant cannot convert his application for registration of an individual
trademark into an application for registration of a defensive mark after a decision or aruling has become final and conclusive (Section 65 (2)). For all of these cases, the same
rule applies: the backdating of the application date and the understanding that the oldapplication will be viewed as withdrawn on the original application date and thus
extinguished (Sections 10 (2), 11 (4), 12 (3) and 65 (3)).
IV. Priority Claim based on the Paris Convention and others(a) In cases where an application is made with a priority claim based on the Paris
Convention Section 4, the applicant (or his successor) who has applied for registrationof a trademark in one of the countries party to the Convention will have a priority claimof 6 months when applying for registration in any of the other countries party to theConvention (Paris Convention Sections 4A, C (1)). This means that any application
filed at a later date but with claim to priority will be treated on equal terms or with anadvantage in comparison to an earlier application filed before the end of the 6 months
period (B of the same Section). The latter application with claim to priority will takeprecedence over the earlier application.
The Trademark Law states that in regard to trademarks, if certain matters are dealt within the Treaty, the regulations of the Treaty will take effect. Since the latter application is
given priority, (Section 77 (4); Patent Law, Section 26) this is considered to constitute33

an exception to the first to file system.
The Patent Law will apply mutatis mutandis to the procedures for claim to priority(Section 13 (1), Patent Law, Section 43).
(b) As already mentioned, the 1994-revised Law stipulated the following based on the
TRIPS Agreement:
1) a priority claim based on an application that Japanese nationals or the nationals of amember of the World Trade Organization (WTO established through the attacheddocument to the Marrakech Agreement 1C Section 1-3) have made in a country that is a
Member of WTO;
2) a priority claim based on an application that a national of a member of WTO has
made in a country party to the Paris Convention;3) a priority claim based on an application that nationals of a country party to the Paris
Convention made in a country that is a member of WTO (Section 13 (1), Patent Law,
Section 43-2 (2)); andin addition to these:4) a priority claim based on an application that the nationals of a country that is neither
a party to the Paris Convention nor a member of WTO will be accepted under the policyof mutuality (Section 13 (1), Patent Law, Section 43-2 (3)).
V. Application with Correction Constituting a Change of Gist
1. Application having a Correction Constituting a Change of Gist
Prior to the Amendment of 1993, the Patent Law was applied mutatis mutandis toregulations that involved a changing of the content of applications for registration of
trademarks. Despite a mention of the patent specification in the mutatis mutandis
application, no specifications or diagrams were needed for an application for trademark
registration. Instead, applications indicating designated goods and services and asample of the trademark were the trademark's equivalent. Because of this, regulations
were put in place to replace the mutatis mutandis application. In 1994, the Law wasamended to discontinue the system of pre-grant opposition in favor of post-grant
opposition. Following this, the 1996 revisions abolished the old Section 9-4 andestablished the current Section 9-4 to correspond to the old Section 9-3, in order that it
could be applied to applications where a correction constituted a change of gist.
The result is that "where, after registration of the establishment of the trademark right, it
is found that an amendment of the designated goods or designated services stated in therequest or the trademark for which registration is sought has changed the gist thereof,
the trademark application shall be deemed to have been filed at the time when theamendment in writing was submitted" (Section 9-4).
2. Change of Gist34

(1) SignificanceThe clause quoted above is designed to maintain fairness between the corrected
application and other applications. Change of gist includes 1) expanding the designatedgoods or designated services; 2) amending a significant element of the trademark; 3) achange from the class of goods or services stated at the time of application to a
designation of goods or services in a different class; and 4) even within the same class,to change the designation of goods or services for example by increasing the number ofdesignated goods or services. Change of gist does not include 1) a reduction in thedesignated goods or services or 2) a change in the phrasing of inappropriate descriptions.
These corrections would not be considered substantive changes and therefore notconsidered a change of gist.
(2) Guidelines for Determining Change of Gist
Whether a particular change should be considered a change of gist will be determinedby trying to maintain fairness in the relationship between the corrected application andthe other applications, in other words, by whether the change will create a disadvantage
for a third party's application.
Some would argue (Mitsuishi, p. 281) that a change of new goods and services from oneclass to another through correction should not be considered a change in gist since thespecial characteristics particular to the goods or services in question would be enoughfor the change of class to be of minor concern. In this instance though, the change
should be seen from the stance of causing harm to the interests of a third party andtherefore such a change should be considered a change in gist.
Guidelines for determining change in gist in regard to the dismissal of corrections
concerning trademark examination guidelines are discussed on pages 337-338 of thisbook.
3. Change of Gist and Dismissal of Correction
When a change made to the designated goods or services indicated on the application,or the trademark that is the subject of the registration, is considered to constitute achange in gist, the request for change will be dismissed (Section 16 (2). If the applicant
submits another application incorporating the correction within thirty days from the daya copy of the dismissal of correction was sent, the application for trademark registration
will be deemed to have taken place on the date the request for correction was submitted(Section 17-2 (1); Design Law, Section 17-3). Therefore, a trademark registration towhich the Trademark Law 13 (1) applies, together with application mutatis mutandis of
the Patent Law Section 43 and Section 43-2 (2), (3), will be considered to have been
filed when the request for correction was submitted if the correction was considered to
be a change in gist. In this sense, this is another exception to the first to file rule, since
the latter application receives priority.
Section 5. System of Publishing Unexamined Applications
I. System of Publishing Unexamined Applications
1. Significance35

The Commissioner of the Patent Office must publish applications when there is anapplication for registration of a trademark (Section 12-2 (1)). This is a general rule
regardless of whether the application is for international registration or domestic
registration.
This publication of an unexamined application is closely related to the fact that Japan isa member of the Madrid Protocol. The Madrid Protocol is a treaty that protects a
trademark in designated member countries when the trademark has been included in theinternational register. The Madrid Protocol, set up in April of 1891, was a treaty drawn
primarily between European countries. These included countries which adopted asystem of trademark law based on a policy of use that had its origins in the trademark
deposit system.
According to the Madrid Protocol, trademarks registered on the international register
will come into force from the date of international registration, just as if the trademark
had been applied for at the designated country's government office directly. If the
Patent Office of the designated country does not notify the applicant of its decision torefuse during the period for notification of refusal (12 or 18 months), the trademark will
have the same effect as if it had been registered in the designated country, from the dateof international registration. If a notification of refusal is withdrawn on or after
expiration of the refusal period, then the trademark will have the same effect as if it had
been registered in the designated country from the withdrawal date.
In order to enforce the Madrid Protocol, it became necessary to revise the Trademark
Law and so, in 1999, the system of publishing unexamined applications was newly
established as part of the amendments related to the accelerated protection of
trademarks (Amendment Law, Section 4). Application for international trademark
registration in Japan through the Madrid Protocol was also expected to provide atranslated version alongside the original and the application would be published in theTrademark Gazette. The legal effect was that the right to demand payment prior toestablishment of trademark registration was adopted. This meant that if the applicant
gave warning by providing documentation detailing the content of the application to theperson who used the trademark prior to its registration for which application was being
filed, the applicant could demand payment of an amount reflecting the loss of profit
arising from the person's use of the trademark for business (however the right todemand payment will only come into effect after registration). This amendment has
proved more than adequate to comply with the provision of Article 4 of the MadridProtocol.
This matter of the right to demand payment prior to the registration of the trademark
and its position in the Trademark Law will almost certainly be discussed and reviewed
in the future. The use of the new phrase "demand for payment" as opposed to "demandfor compensation" reflects the fact that our Trademark Law and its policy of registration
has not gone through a character changing reform. On the other hand, making
commercial business use of the trademark a condition for demanding payment shows a
step in the direction of a policy of use, as well as preventing abuse of the system.
2. The Accelerated Protection of Trademarks

36

The Trademark Laws of Japan aim not only to maintain and encourage trust in business
transactions for the user of the trademark and thereby contribute to the development ofindustry, but also to protect the interests of consumers (Section 1). "Registration" is theadministrative process by which this purpose is achieved (Section 18) so that "the ownerof the trademark right shall have an exclusive right to use the registered trademark withrespect to the designated goods or designated services" (Section 25).
In the deliberations surrounding the 1999 Law, it was decided that some form ofprotection was necessary at the application stage since the luring of customers often
started prior to registration. The reasons behind this were attributed to shorter lifecycles
of goods and services and the credibility of trademarks due to advertising, etc. The easewith which a trademark could be copied was of particular concern, since it could
damage the trustworthiness of trademarks. It was obvious that a system for swift
protection needed to be in place, which would have an effect much quicker than the
Unfair Competition Prevention Law requiring a trademark to be well-known.
An early protection system was established in response to these needs, where a
trademark right would be protected prior to registration, on the premise that conditions
for registration will be checked ex post facto.
The truth is that the discussions on amendments to the Trademark Law were held withthe purpose of finding a means to enforce the Madrid Protocol. Section 4 (1) (a) of theProtocol states that "the protection of the mark in the relevant country party to theMadrid Protocol should be provided from the day it was recorded or registered as if thesaid mark had been deposited directly at the relevant government office of that country."
For international registration of applications "in cases where a notification of refusal has
not been given to the international office, or the notification of refusal has since been
withdrawn, the protection of the mark in the relevant country party to the MadridProtocol should be provided from the day it was recorded or registered as if the said
mark had been registered directly at the relevant government office of that country."
It was clear from the purpose laid out in Section 4 (1) (a) of the Madrid Protocol that a
new system of publishing unexamined applications was needed. Furthermore, Japan's
decisions took into account the ways in which the following were applied in the
countries party to the Protocol and the need for accelerated protection for trademarks.
The resulting system provides protection during the period between application of the
trademark for registration and the establishment of that registration, rendering it thesame as the protection provided for applications via the Protocol and domestic
applications.
3. Publication of Applications and the Trademark Gazette(a) Publication of Applications
The Commissioner of the Patent Office must make public any application forregistration of a trademark that is received (Section 12-2 (1)).
This was established as part of the organization of international applications for
trademark registration procedures based on the Madrid Protocol. However it applies not
only to international registration but also to domestic registration.

37

(b) Matters to be PublishedThe following matters should be disclosed through publication in the official Trademark
Gazette.
Items (iii) and (iv), however, need not be published if the Commissioner feels that their
publication in the Trademark Gazette will cause damage to public order or goes against
public decency.
(i) The name and domicile or place of residence of the applicant for trademark
registration;(ii) The date and number of the application for trademark registration;(iii) The trademark as shown in the application (for cases under Section 5 (3),trademarks as shown in standard characters; the same applies to Sections 18 (3) and 27(1));(iv) Designated goods and designated services;(v) Any other necessary item not covered by the above (Section 12-2 (2)).
(c) Trademark Gazette
The Patent Office publishes the Trademark Gazette (Section 75).
The Trademark Gazette will outline the necessary matters to be published according to
the Trademark Law:
1) The name and domicile or place of residence of the applicant for trademark
registration;2) The date of application for trademark registration and its application number;3) The trademark as shown in the application (for cases under Section 5 (3), trademarks
as shown in standard characters; the same applies to Sections 18 (3) and 27 (1));4) Designated goods and designated services;
5) Any other necessary item not covered by the above (Section 12-2 (2)).
The following matters will be published in addition to the above:1) The final and conclusive ruling of refusal after publication of application, or theabandonment, withdrawal, or dismissal of an application for trademark registration oran application for defensive mark registration.
2) Succession of right resulting from application for trademark registration after
publication of application.
3) Corrections made to the designated goods or designated services, to a trademark
relevant to the application for registration, or to a defensive mark relevant to theapplication for registration, as seen on the application after its publication.
4) Extinguishment of a trademark right (excluding extinguishment due to the expirationof a term or falling under Section 41-2 (4) (concerning payment of registration fee ininstallments)).
5) An opposition to a trademark registration or a demand for a trial or a retrial or theirwithdrawal.
6) Final and conclusive ruling on an opposition to a trademark registration and final andconclusive decision of a trial or a retrial.

387) A final judgment in an action under Section 63 (1) (concerning appeal against a final
decision etc.).
II. Effect (The Right to Demand Payment Based on a Trademark Prior to its
Registration)(1) A Comparison of Systems Among Countries Party to the Protocol
During the 1999 discussions for amending the Law, a comparative study of laws was
conducted. According to its findings, the UK considered the international registration
date (the date that the country's government office received the international
application) taking place after an examination by its country of origin, as the date when
the trademark comes into effect. In the event of infringement during the period between
the international registration date and the domestic registration date, the owner of the
trademark will have the right to demand compensation for damages, but he can only
exercise his right after registration in that country has taken place. The right to require
an injunction for any conduct during that period will not be allowed to be exercised.
In Germany, a trademark right takes effect from the international registration date. In
the case of infringement during the period between the international registration date
and the domestic registration date, the owner of the trademark will have the right todemand compensation for damages, as well as the right to require an injunction.
In France also, a trademark right takes effect from the international registration date. In
the case of infringement during the period between the announcement of international
registration and the domestic registration date, the owner of the trademark will have theright to demand compensation for damages, as well as the right to require an injunction.
The same applies for the period between the international registration date and theannouncement of international registration as long as a copy of the international registercan be sent over.
In China, again, a trademark right takes effect from the international registration date.
In the event of infringement during the period between the international registration
date and the domestic registration date, the owner of the trademark will have the right todemand compensation for damages, but he can only exercise his right after registrationin that country has taken place.
(2) Protection for Trademarks in Japan Prior to their Registration
During the reporting stage of the council, it was decided "for the period between theapplication and the establishment of the registration of the trademark, the right torequest compensation for damages will be acknowledged after the event as a relief
measure. In order to maintain consistency in granting rights, which is based on theexamination and registration systems in place through the Trademark Law, it seemed
appropriate to allow the exercising of this right to request compensation for damages,
only after the trademark right came into effect through the establishment of its
registration. In order to facilitate a good working relationship with a third party during
the time that registration is yet to take place, the publication of the unexamined
application became crucial as a way of sharing information with as many people aspossible and as swiftly as possible." On the subject of the right to require an injunction,39

it was decided "since the right can only be exercised after registration, it would not be
possible to require an injunction on anything that took place from the time of
application to the time of registration. Even if the right to require an injunction was
accepted for that period, so that in the case of registration not taking place, liability
without fault would be translated into monetary form and paid out, it would still be an
inappropriate system to uphold because of the enormous burden placed on the third
party." For this reason, "pledges and all derivative property rights will only be
acknowledged after the establishment of trademark registration."International registration will have the same effect as direct registration (MadridProtocol, Section 4 (1) (a)) when applications are processed according to the MadridProtocol. This was taken into account and applied not only to international registration
applications but also to regular applications for registration (Section 12-2) so that claims
for monetary payments could be made prior to the establishment of trademark
registration based on the publication of the application.
(3) Claims for Payment
The applicant for trademark registration can 1) after filing of his application and 2)
giving a warning by showing documents bearing the contents relating to the said
application, 3) make a claim, against any person who has used the trademark in his
application, with respect to the designated goods or designated services in his
application, after the warning and before the registration of the establishment of the
trademark right, 4) for payment of money equivalent to his loss of business caused bysuch use (Section 13-2 (1)).
The right to request payment may not be exercised until after the establishment of the
trademark right is registered (Section 13-2 (2)). Having said that, the exercise of thisright shall not preclude the exercise of the trademark right (Section 13-2 (3)). Clause 3
is obviously included to prevent any misinterpretation, but clause 2 is included with theaim of clarifying the warning requirement, since the right to request payment solely on
the grounds of filing an application for trademark registration was considered too
radical. The fact that the right in question is the right to request payment of money
equivalent to his business loss, as opposed to a right to demand compensation fordamages, is a matter related to the fundamentals of Trademark Law and no doubt will
be a matter for discussion in the future. The meaning of the legislation is that thefundamental concept of trademarks has not changed in that a trademark right only
becomes a right after the registration of its establishment.
Where a trademark application has become ineffective (as a result of being surrendered,
withdrawn, or dismissed, or where the examiner's decision or a trial decision that thetrademark application is to be refused has become final and conclusive, or where aruling to revoke the trademark registration under Section 43-3 (2) has become final andconclusive, or where, with exception of the cases coming within the provision ofSection 46-2 (1), a trial decision that the trademark registration is to be invalidated has
become final and conclusive), the right to claim payment under Subsection (1) shall bedeemed never to have arisen (Section 13-2 (4)).
As mentioned earlier, the right to demand payment prior to establishment of trademark

40rights can only be exercised after registration of the trademark. This right will not be
granted in cases where no losses have been incurred, so as to prevent the system frombeing used for selfish gain. If the third party is continuing to use the trademark forgoods and services designated in the application of the applicant, despite receiving awarning in the form of submission of documents detailing the contents of theapplication, it is a serious matter. His conduct needs to be reviewed under a special law(in the Trademark Law) that deals with conditions for banning registration forestablishing trademark rights and with conditions for lifting the ban on invalidation.
His conduct could indeed be considered a deemed special tort.
Therefore, Sections 105, 105-2 (expert opinion for proof of damages) and 106(measures for recovery of reputation, request for advertising an apology) of the Patent
Law as applied under Sections 27, 37 and 39 of this Law and Sections 719 concerning
joint tort and 724 (tort) concerning extinctive prescription of a claim for damages of the
Civil Code shall apply mutatis mutandis to exercise of the right to claim payment prior
to registration (Section 13-2 (5)). In such a case, where a person having the right to theclaim has become aware, before the registration of the establishment of the trademark
right, of the use of the trademark relating to the trademark application and of the personusing the trademark, "the time when the injured party or his legal representative becameaware of such damage and of the person causing it" in Section 724 (extinctive
prescription of a claim for damages based on tort) of the Code shall read "the date of theregistration of the establishment of the patent right" (Section 13-2 (5)).
Section 6. Rights arising from Application for Trademark Registration
I. Significance of the Right of Application for Trademark Registration
1. Nature of the Right
The right arising from an application for trademark registration (the right of application
for trademark registration) is stated in Trademark Law Section 13 (2) and applies
mutatis mutandis to the Patent Law, Sections 33, and 34 (4) to (7), regarding the right toapply for a patent.
The right arising from an application for trademark registration is the applicant's right torequest the State to grant him a trademark right and is a civil right. This right is not
limited to only this, but is also a property right with the possibility of transfer.
The views on the nature of the right to receive a patent can be divided into three. The
first is the view that it is no more than a right, under Civil Law, that an applicant has theright to request the state to grant him a patent (civil right theory). The second is that itis the individual's right to seek control of his invention (private right theory), and thethird is that both of these viewpoints contribute to the nature of the right (compromise
theory). An in-depth discussion on these matters can be found in commentaries on
Patent Law and in sections dealing with the right to request a patent. Here thediscussion will focus on the characteristics particular to trademark rights.
It is important to note that granting a patent can be viewed as a mere act by the state toconfirm an invention right (argument of some upholding the private right theory) or as a41

constructive or formative act to establish a monopoly right under the name of a patentright (argument of those upholding the civil right theory and the compromise theory,and some upholding the individual's right theory). They are however, different issues
from the discussion on the nature of the trademark right. Generally the individual's
right theory lends itself to the "confirmation theory" discussed first, while the civil righttheory lends itself to the "formative theory" discussed later, but other combinations are
possible. This is because the issue of the nature of the application right and the issue ofthe nature of the granting of a patent are approached from a slightly different angle.
2. The Uniqueness of Trademarks
From the purpose of the Trademark Law, marks that are chosen as trademarks have attheir root a "distinctiveness" which sets them apart. Some marks are of such great
artistic value that they could be eligible for copyright (for example, Millet's Sower of
Iwanami Shoten), some are slogan marks, and some have carefully designed
compositions.
Despite this, for the purposes of the Trademark Law, the artistic or literary qualities ofthe mark are irrelevant to the basic value of the mark, which is its distinctiveness.
Not many marks are creative works, but those which lack copyright potential withartistic or literary value, or indeed those which do not even have intrinsic meaning intheir words or figure (SONY being a good example) possess a distinctiveness that hasgone on to become a prominent trademark associating quality and trustworthiness withits designated products or services. In fact, a trademark consisting of a made-up word
without meaning can often be more distinctive. Inventions can be distinct from otherproducts due to their pioneering characteristics or uniqueness, but from the Patent Law
viewpoint, distinctiveness is not sought in their examination. The uniqueness of the
product gives it value as a property, but distinctiveness can be abstracted.
A mark that is used as a trademark first gains value as an intangible property when,through its use as a trademark, the mark becomes synonymous with the reputation ofwhat it represents. It is a right that is different in nature from a patent because theinvention itself, which is the object of the patent, already has value as a created object.
Even if there is a case of an applicant filing for registration of a trademark that isalready in use at the time of filing, according to the Trademark Law, the object of theapplication need not possess intrinsic value. Again, this differs from a patent thatassumes an invention has value as a created object even prior to granting the patent.
A right that derives from an application for trademark registration becomes thereceptacle of specific future reputations, according to the Trademark Law, by virtue of
its position as the first to be filed and therefore having the right to use. At the same time,
it possesses the potential right to prevent any third party from using other trademarksthat infringe upon the trademark. (However, now that Section 6 of the former Law has
been eliminated under the amendments to the Unfair Competition Prevention Law, theenforcement of the law in the future will be noted with much interest.) The position
attained by the application can be transferred according to the current system, which is a
debatable matter, but nevertheless the current Law renders the trademark right a
property right that may profit from a possible monopoly in the future.

42

This tendency has become even more prominent since the revisions of 1999 when theright to request payment of money for loss of business resulting from another's use of
the trademark prior to its establishment through registration came into existence(Section 13 (2)).
II. Procedures and Limits of the Right resulting from Application of Trademark
Registration
1. Transfer and Security of Right resulting from Application of Trademark Registration(1) Transfer
The right resulting from an application for a trademark registration can be transferred(Section 13 (2); Patent Law, Section 33 (1)).
Transferring the right seems obvious when viewed as a property right, but this needed to
be stipulated from a civil right position in order to prevent misunderstandings thattransfers would not be possible due to their nature as a civil right.
(2) Security
The right resulting from an application for a trademark registration cannot be used as an
object (collateral) of a pledge (Section 13 (2): Patent Law, Section 33 (2)).
The reason for this is attributed by some (Amino, p. 628) to the fact that it would not be
fair to impose the burden of sustaining unexpected losses on a third party by creating apledge on the right resulting from application of trademark registration which may or
may not be granted. Some confess that the reason for this regulation is unclear (Monya,
Annotations on Patent Law, p. 91). For trademark rights, the current law has attachedgreater importance on its function as a property right by separating the trademark andthe business. However, to use a right not yet established as an object of a pledge istaking things too far. Indeed it is totally unnecessary to put a monetary value on theright.
Using the right that results from an application for trademark registration as an object ofassignment of loan collateral is considered valid without considering the affect on third
parties or difficulties in methods of public announcement (Vol. 3, No. 4, Tokyo District
Court, Kaminshu, p. 471, Apr. 8, 1952; Vol. 7, No. 9, Tokyo District Court, Kaminshu, p.
2593, Sept. 24, 1956; and Ayatani, Annotations on Patent Law, p. 91). Needless to say,it cannot be the object of a mortgage as to which the law makes no provisions(Commentary on the Trademark Law, p. 98). The reverse is true in that it can constitutean object of a factory foundation mortgage or an enterprise mortgage.
2. Joint Ownership of the Right resulting from Application for Trademark Registration
Where there is joint ownership of the right resulting from an application for trademark
registration, each of the joint owners must get the approval of the other joint owners
before he can transfer his share of the right (Section 13 (2), Patent Law, Section 33 (3)).
The purpose of this provision is the same as that of the limitations placed on the transfer
of holdings in regard to trademark rights.

43

3. Succession to the Right resulting from Application for Trademark Registration
p. 393The succession to the right resulting from an application for trademark registration will
not come into effect unless the Commissioner of the Patent Office is notified. This
provision is for specific succession such as transfers and does not include general
succession such as inheritance or merger of companies, which comes into force without
the Commissioner of the Patent Office being notified. It is however necessary to notify
without delay the fact that succession has taken place (Section 13 (2); Patent Law,
Section 34 (4), (5)), despite there being no penalties in the event of noncompliance.
For notification procedures regarding succession to the right arising from an application
for trademark registration, Section 34 (4) and (7) of the Patent Law relating to thesuccession to a patent right will apply mutatis mutandis (Section 13 (2)).
4. Exceptions regarding Applications for International Registration
Exceptions are in place for applications for international registration, as discussed in therelevant clauses.

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