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   YKI Trademarks Japan

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YKI Trademarks Japan
2005 WINTER Issue

In this Issue:

1.  JPO: Partial Revision of the Trademark Law
	
2.  JPO Activities

(c) 2005 YKI Patent Attorneys

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Partial Revision of the Trademark Law:
To foster regional brands, a new "regional collective trademark system" 
will come into effect from April 1, 2006, in Japan.  
A regional collective trademark is a mark consisting of 
a region name and a product name.

In Japanese practice, a mark consisting of a region name and 
a product name has conventionally been denied registration with 
few exceptions because of non-distinctiveness.  
Registration of the mark can be granted only if the mark has been 
well-known all over Japan, or the mark is combined with 
a distinctive design.
Such requirement for nationwide recognition poses a risk 
that the mark would be imitated and used by another person 
before building brand-name recognition.  
Further, in a case where the mark combined with a design is 
registered by an applicant, another applicant can further 
register that mark as long as the mark is combined with a 
different design.  In this case, the first applicant is forced 
to accept the use of an essential part of the mark consisting of 
the region name and the product name by the another applicant.  
With this in mind, the JPO decided to relax the requirement 
for the extent of distinctiveness from a "nationwide scale" 
to a "scale of two or more prefectures" for active protection 
of the regional collective trademarks.

To grant a registration of a regional collective trademark, 
it is necessary to satisfy the following conditions:

1. A foreign applicant is a legal entity equivalent to a 
business cooperative society or an agricultural cooperative 
association.
2. Designated goods or services are limited to 
those to which the trademark is actually used.
3. The region name is appropriately associated with 
the goods or services.  For example, designations of 
geographical regions including a region where the goods are 
produced (a yielding region, a fished region, a raw material 
supplying region, or a region where production process of the 
goods is originated), or a region where the services are 
supplied may be used.
4. The trademark has been well known.  The extent to which the 
mark has been well known is not necessarily nationwide as 
described above.  It is sufficient that the mark is apparently 
recognized in two or more prefectures.  Whether or not the mark 
is well known is determined based on quantitative tracking of 
information about a time, a duration, and a region of shipment, 
advertisement, and the like of the goods or services, about the 
amount or the scale of production/sales, and about a method, the 
number of times, and the contents of advertisement of the goods 
or services.
5. The mark to be registered is neither a common name of the 
goods or services nor a mark which is customarily used in 
respect of the goods or services.  When the designated goods of 
the mark to be registered is already produced by a great many 
outsiders (who are not members of the society or association), 
the mark in question is regarded as a common name, and an 
application of registration of the mark is rejected.

An ordinary trademark application may be converted into 
a collective trademark application, or conversely, 
a collective trademark application may be converted into 
an ordinary trademark application.  
However, conversion of the application is not allowed for 
trademark applications filed prior to April 1, 2006.

To advantageously utilize the revised Japanese Trademark Law, 
we recommend that owners of such a regional collective trademark 
study the possibility of filing a collective trademark 
application on April 1, 2006 or later.


JPO Activities: "NPO" and "Volunteer"

The JPO have recently decided on a revocation of 
trademark registrations of "NPO" and "Volunteer" which were 
registered for "newspapers/magazines" of the designated goods.  
The decision of revocation was made on the grounds that the 
presence of the trademark registrations might pose a risk of 
restricting the activities of NPOs and volunteers, such as an 
activity of publishing a paper to report their work, for example. 
 
The applications of the trademark registrations are determined 
to have been liable to contravene public order or morality 
(as defined under the Trademark Law Section 4(1)(vii)).

Although these trademark registrations have been surrounded 
by controversy after general newspapers reported the fact 
that the terms of NPO and volunteer had actually been registered 
as trademarks, the decision of the JPO should result in quelling 
this controversy.



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YKI Trademarks Japan is a quarterly newsletter
published by YKI Patent Attorneys.

Please send any questions or comments to:
newsletter@yki.jp

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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

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