*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-* YKI Trademarks Japan *-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-* YKI Trademarks Japan August 1, 2003 Issue In this Issue: 1. Reclassification of Trademark Registrations 2. Role of a Japanese Patent Attorney: Part II - Copyright Matters 3. Do You Provide Clean Drawings? (c) 2003 YKI Patent Attorneys *-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-* Reclassification of Trademark Registrations Prior to March 31, 1992, when Japan adopted the International Classification System, trademark applications filed with the Japan Patent Office designated Japanese local classifications, rather than international classifications. As part of the process of switching over to the International Classification System, owners of registered trademarks issued from applications filed under the former system must apply for reclassification of the designated goods and services. Applications for reclassification are accepted during an eighteen month period beginning six months before the expiration date of the trademark, which corresponds exactly to the period in which applications for renewal are accepted. If the owner does not file an application for reclassification within the allowed period, renewal of the registration beyond a further ten years will not be possible. This deadline is clearly very important to trademark owners who intend to continue to use their registered mark in Japan. An important effect of the new classification system is that designations such as "all other goods in this class", allowed under the old system, are no longer acceptable, and all goods must now be specifically listed. The JPO does, however, allow the use of inclusive classifications of goods. For example, an application to renew a registration of a mark now listing "personal computers, and all other goods in this class" may request reclassification as "electronic machines and apparatus", which is the inclusive classification encompassing personal computers. The JPO notifies trademark owners, or their attorneys of record, just prior to the beginning of the period in which the JPO will accept an application for reclassification of a particular trademark. While the length of the eighteen month reclassification period ensures that trademark owners need not rush to reclassify, the fact that the final deadline cannot be extended should encourage wise trademark owners to begin discussing reclassification with their representatives in Japan as soon as they receive a notice from the JPO. Role of a Japanese Patent Attorney Part II - Copyright Matters (This is the second in a series of articles outlining some of the services provided by patent attorneys in Japan.) Japanese patent attorneys can act as representatives for most copyright matters, including registration of circuit layouts and copyrights, and conclusion of contracts related to intellectual property rights, and arbitration. During litigation, a patent attorney generally works in cooperation with an attorney-at-law. A Japanese patent attorney can obtain protection for a novel circuit layout by registering the layout with the Circuit Layout Right Registration Center within Japan's Industrial Property Cooperation Center (IPCC). A grant of a registration entitles the creator to exclusive commercial use of the registered circuit. This right can, of course, be licensed, and a patent attorney can advise their client during licensing negotiations, or act as their representative during those negotiations. Japan being a party to both the Berne and Universal Copyright Conventions, novel literary works are automatically protected by copyright. While registration of such a work is therefore theoretically not required, having a Japanese patent attorney register a work with Japan's Agency of Cultural Affairs provides the creator with clear proof of creation prior to a certain date and serves as a notice to potential infringers. A Japanese patent attorney can perform all procedures for registering a work with the appropriate entity, such as the Agency for Cultural Affairs for a literary work or the Software Information Center (SOFTIC) for a computer program. As the costs and procedures vary greatly according to the type and size of the work, it is generally advisable to request a cost estimate specific to a particular work. Practice Tip: Do You Provide Clean Drawings? Since the year 2000, when Japan adopted an electronic trademark application system, the Japan Patent Office has assessed a surcharge for applications not filed online. Naturally, applicants would therefore be advised to use the online filing system whenever possible. To file an application for a mark composed of a single line of ordinary Japanese or alphanumeric characters, the information can be simply entered into the appropriate fields. However, a trademark composed of characters arranged two or more lines or including thirty or more characters cannot be filed as a standard character mark and is treated as if it were a stylized mark. To file an application for such a mark, a scanned image of the mark must be attached to the application forms, and your agent in Japan will require either a clean electronic version in jpg, bmp, pdf or other readable format, or a clearly printed image to prepare the application. YKI Patent Attorneys is surprised how often overseas agents provide drawings or facsimiles which are rough, fuzzy, or soiled and cannot be used for preparing the Japanese application. In those cases, we must either prepare a clean drawing at our end, or communicate with our associate to obtain a clean drawing. To reduce the burden on your firm and on your client, YKI Patent Attorneys highly recommends that you provide your agent with an electronic file (YKI prefers MS Word files containing the image), or a clean hardcopy of any mark you are filing in Japan. *-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-* YKI Trademarks Japan is a monthly newsletter published by YKI Patent Attorneys. Please send any questions or comments to: newsletter@yki.jp To subscribe or unsubscribe send a mail with just the word 'subscribe' or 'unsubscribe' to the above address. *-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-* YKI Patent Attorneys http://www.yki.jp 1-34-12 Kichijoji Honcho Musashino-shi, Tokyo 180-0004 Japan Tel: 81-422-21-2501 Fax: 81-422-21-2431 e-mail: trademarks@yki.jp *-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*-*