Trademark Registration Review in Japan

The utility model system which was similar to patent system has been reviewed and a totally new utility model system became effective after 1994. The new system has the following features:

It is a non-substantive examination registration system and is no longer similar to a miniature patent system. Substantive requirements such as novelty and inventive steps are not examined under the new system.
A utility model registrability report system is adopted to compensate for imperfections coming from the non-substantive examination registration system.
Exercise of the utility model right is restricted to avoid an abuse of the right. In case the owner exercises his right, he is liable to indemnify any other party in respect of the damage caused by the exercise of the right.

For the registration of utility model, only formal requirements viz I) whether the device claimed is relating to the statutory subject, namely, the shape, construction or a combination of articles, ii) whether the device claimed is not liable to contravene public order, morality or public health, iii) whether claims and specifications in the application comply with the form required, and iv) whether claims and specifications are clearly described. Unlike a patent application, an attachment of drawings is obligatory to facilitate the understanding of the shape of an article in a utility model application. As for converting to a patent application, a conversion from a utility model registration was also made possible by the revision of Utility Model Law which gives the owner of the utility model right a chance to seek longer and more stable protection of a patent right even after a utility model right is registered. By the revision, the term of the utility model right has been changed from six years to 10 years from the filing date of the utility model registration application.

A utility model registrability report system is adopted under the non-substantive examination registration system to compensate for imperfections coming from the non-substantive examination registration system which is determined by an examiner when a request is made. In response to a request by a utility model registrability evaluation, an examiner issues a judgment report which has an important impact on the exercise of a right. That is the owner may not exercise rights against an infringer until he has given a warning together with a utility model registrability report. Further, the owner shall be liable to indemnify any other party with respect to any damage caused by the exercise of the right when the registration is invalidated.

A utility model registration is selected, if i) the lifecycle of the product is not long, b) copying would not be difficult for a competitor and a copy could be made in a short time, iii) it is desirable to discourage a competitor from producing a copy and iv) to reduce the total cost of getting an intellectual property right. While a patent application is selected if, i) the technical accomplishment is related to a process or a material such as medicines or chemical substances, ii) the lifecycle of the product is long enough, iii) a techniqe is required to be developed step by step before the commercialization of a product and iv) the value of the technique is not yet clear and more subjective amendments of claims will be necessary in future.

Japan adopted a new policy in April 2007 for the registration and examination of trademarks for retail or wholesale services applications which was difficult to protect under the previous Japanese Trademark Law. General services which include: the collection and stocking of goods, customer relations, provision of shopping bags and arrangement of a catalog or website, are now protected in totality as a single retail service. Applications for trademark covering retail and wholesale services are to be submitted with specifications of the retail/wholesale use of particular products or general retail/wholesale services. These retail and wholesale services are classified under a single class under the Trademark Law and registration fees are assessed according to the number of classes for goods and services. For amending the application during examination process i.e. changing from general retail services to specific retail services or from retail services to a standard trademark the request will not be considered. However, with respect to the other examination procedures of trademark rights for retail-service applications, they are the same as that for standard trademarks.

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