Japón

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Trademark Act (Act No. 127 of April 13, 1959)

Table of Contents

CHAPTER I GENERAL PROVISIONS (ARTICLES 1 AND 2)

CHAPTER II TRADEMARK REGISTRATION AND APPLICATION FOR

REGISTRATION OF TRADEMARK (ARTICLES 3 TO 13-2)

CHAPTER III EXAMINATION (ARTICLES 14 TO 17-2)

CHAPTER IV TRADEMARK RIGHTS

Section 1 Trademark Rights (Articles 18 to 35)

Section 2 Infringement of Rights (Articles 36 to 39)

Section 3 Registration Fees (Articles 40 to 43)

CHAPTER IV-2 OPPOSITION TO REGISTRATION (ARTICLES 43-2 TO 43-15)

CHAPTER V TRIALS ANDAPPEALS (ARTICLES 44 TO 56-2)

CHAPTER VI RETRIALAND LITIGATION (ARTICLES 57 TO 63-2)

CHAPTER VII DEFENSIVE MARK (ARTICLES 64 TO 68)

CHAPTER VII-2 SPECIAL PROVISIONS UNDER THE PROTOCOL RELATING

この商標法の翻訳は、平成三十年法律第三十三号のうち、平成３０年６月９日施行

までの改正について作成したものです。

この法令の翻訳は公定訳ではありません。法的効力を有するのは日本語の法令自体

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伴って発生した問題について、一切の責任を負いかねますので、法律上の問題に関

しては、官報に掲載された日本語の法令を参照してください。

This English translation of the Trademark Act has been prepared (up to the

revisions of Act No. 33 of 2018 (Effective June 9, 2018)).

This is an unofficial translation. Only the original Japanese texts of laws and

regulations have legal effect, and the translations are to be used solely as

reference material to aid in the understanding of Japanese laws and

regulations.

The Government of Japan shall not be responsible for the accuracy, reliability

or currency of the legislative material provided in this Website, or for any

consequence resulting from use of the information in this Website. For all

purposes of interpreting and applying law to any legal issue or dispute, users

should consult the original Japanese texts published in the Official Gazette.

TO THE MADRID AGREEMENT

Section 1 Application for International Registration (Articles 68­2 to 68­8)

Section 2 Special Provisions Pertaining to International Applications for

Trademark Registration (Articles 68­9 to 68­31)

Section 3 Special Provisions Concerning Applications for Trademark

Registration, etc. (Articles 68­32 to 68­39)

CHAPTER VIII MISCELLANEOUS PROVISIONS (ARTICLES 68­40 TO 77­2)

CHAPTER IX PENAL PROVISIONS (ARTICLES 78 TO 85)

SUPPLEMENTARY PROVISIONS

CHAPTER I GENERAL PROVISIONS

(Purpose)

Article 1 The purpose of this Act is, through the protection of trademarks, to ensure the

maintenance of business confidence of persons who use trademarks and thereby to contribute

to the development of the industry and to protect the interests of consumers.

(Definitions, etc.)

Article 2 (1) "Trademark" in this Act means, among those recognizable by human perception,

any character(s), figure(s), sign(s) or three­dimensional shape(s) or colors, or any

combination thereof, sounds, etc. provided by Cabinet Order (hereinafter referred to as a

"mark") which is:

(i) used in connection with the goods of a person who produces, certifies or assigns

the goods as a business; or

(ii) used in connection with the services of a person who provides or certifies the

services as a business (except those provided for in the preceding item).

(2) "Services" set forth in item (ii) of the preceding paragraph shall include retail services and

wholesale services, namely, the provision of benefits for customers conducted in the course

of retail and wholesale business.

(3) "Use" with respect to a mark as used in this Act means any of the following acts:

(i) to affix a mark to goods or packages of goods;

(ii) to assign, deliver, display for the purpose of assignment or delivery, export,

import or provide through an electric telecommunication line, goods or packages

of goods to which a mark is affixed;

(iii) in the course of the provision of services, to affix a mark to articles to be used by

a person who receives the said services (including articles to be assigned or

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loaned; the same shall apply hereinafter);

(iv) in the course of the provision of services, to provide the said services by using

articles to which a mark is affixed and which are to be used by a person who

receives the said services;

(v) for the purpose of providing services, to display articles to be used for the

provision of the services (including articles to be used by a person who receives

the services in the course of the provision of services; the same shall apply

hereinafter) to which a mark is affixed;

(vi) in the course of the provision of services, to affix a mark to articles pertaining to

the provision of the said services belonging to a person who receives the services;

(vii) in the course of the provision of services through an image viewer, by using an

electromagnetic device (an electromagnetic device shall refer to any electronic,

magnetic or other method that is not recognizable by human perception; the same

shall apply in the following item), to provide the said services by displaying a

mark on the image viewer; or

(viii) to display or distribute advertisement materials, price lists or transaction

documents relating to goods or services to which a mark is affixed, or to provide

information on such content, to which a mark is affixed by an electromagnetic

device.

(viiii) In the case of a mark of sounds, in addition to those listed in the preceding

items, an act to produce sounds for the purpose of assignment or delivery of goods,

or providing services; and

(x) In addition to those listed in the preceding items, acts provided by Cabinet

Order.

(4) In the cases of marks listed in the following items, to affix a mark to goods or other articles

provided for in the preceding paragraph shall include those listed in each of the said items:

(i) a mark of any character(s), figure(s), sign(s) or three­dimensional shape(s), or

any combination thereof, or any combination thereof with colors: to form in the

shape of goods, packages of goods, articles to be used for the provision of services,

or advertisement materials relating to goods or services; and

(ii) a mark of any sounds: in a case where a recording medium is affixed to goods, articles to be

used for the provision of services, or advertisement materials relating to goods or services

(including a case where goods, articles to be used for the provision of services, or

advertisement materials relating to goods or services themselves are recording media) to

record the mark on the recording media.

(5) "Registered trademark" in this Act means a trademark that has been registered as a

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trademark.

(6) In this Act, the scope of those similar to goods may include services, and the scope of those

similar to services may include goods.

CHAPTER II TRADEMARK REGISTRATION AND APPLICATION FOR

TRADEMARK REGISTRATION

(Requirements for trademark registration)

Article 3 (1) Any trademark to be used in connection with goods or services pertaining to the

business of an applicant may be registered, unless the trademark:

(i) consists solely of a mark indicating, in a common manner, the common name of

the goods or services;

(ii) is customarily used in connection with the goods or services;

(iii) consists solely of a mark indicating, in a common manner, in the case of goods,

the place of origin, place of sale, quality, raw materials, efficacy, intended purpose,

shape (including shape of packages; the same shall apply in Article 26(1)(ii) and

(iii)), the method or features including time of production or use, quantity, price,

or, in the case of services, the location of provision, quality, articles to be used in

such provision, efficacy, intended purpose, modes, method or features including

time, quantity or price of provision;

(iv) consists solely of a mark indicating, in a common manner, a common surname or

name of a juridical person;

(v) consists solely of a very simple and common mark; or

(vi) is in addition to those listed in each of the preceding items, a trademark by

which consumers are not able to recognize the goods or services as those

pertaining to a business of a particular person.

(2) Notwithstanding the preceding paragraph, a trademark that falls under any of items (iii) to

(v) of the preceding paragraph may be registered if, as a result of the use of the trademark,

consumers are able to recognize the goods or services as those pertaining to a business of a

particular person.

(Unregistrable trademarks)

Article 4 (1) Notwithstanding the preceding Article, no trademark shall be registered if the

trademark:

(i) is identical with, or similar to, the national flag, the imperial chrysanthemum

crest, a decoration, a medal or a foreign national flag;

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(ii) is identical with, or similar to, the coats of arms or any other State emblems

(except national flags of any country of the Union to the Paris Convention,

member of the World Trade Organization or Contracting Party to the Trademark

Law Treaty) of a country of the Union to the Paris Convention (refers to the Paris

Convention for the Protection of Industrial Property of March 20, 1883, as revised

at Brussels on December 14, 1900, at Washington on June 2, 1911, at the Hague

on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958

and at Stockholm on July 14, 1967; the same shall apply hereinafter), a member

of the World Trade Organization or a Contracting Party to the Trademark Law

Treaty designated by the Minister of Economy, Trade and Industry;

(iii) is identical with, or similar to, a mark indicating the United Nations or any

other international organization (referred to as "international organization" in

(b)) which has been designated by the Minister of Economy, Trade and Industry

(excluding those listed in the following);

(a) is identical with, or similar to, a trademark which is well known among

consumers as that indicating goods or services in connection with the applicant's

business, if such a trademark is used in connection with such goods or services or

goods or services similar thereto; and

(b) is identical with, or similar to, a mark indicating abbreviation of any

international organization, which has been used for goods or services that is not

likely to mislead as to connection to the international organization;

(iv) is identical with, or similar to, the emblems or titles in Article 1 of the Act

Concerning Restriction on the Use of Emblems and Titles of the Red Cross and

Others (Act No.159 of 1947) or the distinctive emblem in Article 158(1) of the Act

Concerning Measures to Protect Japanese Citizens During Armed Attacks and

Others (Act No.112 of 2004);

(v) is comprised of a mark identical with, or similar to, an official hallmark or sign

indicating control or warranty by the national or a local government of Japan, a

country of the Union to the Paris Convention, a member of the World Trade

Organization or a Contracting Party to the Trademark Law Treaty which has

been designated by the Minister of Economy, Trade and Industry, if such a

trademark is used in connection with goods or services identical with, or similar

to, the goods or services in connection with which the hallmark or sign is used;

(vi) is identical with, or similar to, a famous mark indicating the State, a local

government, an agency thereof, a non­profit organization undertaking a business

for public interest, or a non­profit enterprise undertaking a business for public

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interest;

(vii) is likely to cause damage to public policy;

(viii) contains the portrait of another person, or the name, famous pseudonym,

professional name or pen name of another person, or famous abbreviation thereof

(except those the registration of which has been approved by the person

concerned);

(ix) is comprised of a mark identical with, or similar to, a prize awarded at an

exhibition held by the national or a local government (hereinafter referred to as

the "Government, etc.") or by those who are not the Government, etc. that

conforms to the standards specified by the Commissioner of the Patent Office, or

at an international exhibition held in a foreign country by the Government, etc. of

the foreign country or those authorized thereby (except those used by the

recipient of such a prize as part of his/her own trademark);

(x) is identical with, or similar to, another person's trademark which is well known

among consumers as that indicating goods or services in connection with the

person's business, if such a trademark is used in connection with such goods or

services or goods or services similar thereto;

(xi) is identical with, or similar to, another person's registered trademark which has

been filed prior to the filing date of an application for registration of the said

trademark, if such a trademark is used in connection with the designated goods

or designated services relating to the said registered trademark(referring to

goods or services designated in accordance with Article 6(1) (including cases

where it is applied mutatis mutandis pursuant to Article 68(1)); the same shall

apply hereinafter), or goods or services similar thereto;

(xii) is identical with a registered defensive mark of another person (referring to a

mark registered as a defensive mark; the same shall apply hereinafter), if such a

trademark is used in connection with designated goods or designated services

relating to the defensive mark;

(xiii) deleted

(xiv) is identical with, or similar to, the name of a variety registered in accordance

with Article 18(1) of the Plant Variety Protection and Seed Act (Act No. 83 of

1998), if such a trademark is used in connection with seeds and seedlings of the

variety or goods or services similar thereto;

(xv) is likely to cause confusion in connection with the goods or services pertaining

to a business of another person (except those listed in items (x) to (xiv) inclusive);

(xvi) is likely to mislead as to the quality of the goods or services;

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(xvii) is comprised of a mark indicating a place of origin of wines or spirits of Japan

which has been designated by the Commissioner of the Patent Office, or a mark

indicating a place of origin of wines or spirits of a member of the World Trade

Organization which is prohibited by the said member from being used on wines or

spirits not originating from the region of the said member, if such a trademark is

used in connection with wines or spirits not originating from the region in Japan

or of the said member;

(xviii) consists solely of features provided by Cabinet Order among features that are

naturally provided to goods, etc. (goods, or packages of goods, or services; the

same shall apply in Article 26(1)(v)); or

(xix) is identical with, or similar to, a trademark which is well known among

consumers in Japan or abroad as that indicating goods or services pertaining to a

business of another person, if such trademark is used for unfair purposes

(referring to the purpose of gaining unfair profits, the purpose of causing damage

to the other person, or any other unfair purposes, the same shall apply

hereinafter) (except those provided for in each of the preceding items);

(2) Where the State or a local government, an agency thereof, a non­profit organization

undertaking a business for public interest, or a person undertaking a non­profit activity for

public interest files an application for trademark registration falling under item (vi) of the

preceding paragraph, the provision of the said item shall not apply.

(3) Items (viii), (x), (xv), (xvii) and (xix) of paragraph (1) shall not apply to a trademark falling

under any of the said items which does not fall under the said item at the time of filing of an

application for trademark registration.

(Application for trademark registration)

Article 5 (1) Any person who desires to register a trademark shall submit an application to the

Commissioner of the Patent Office accompanied by the required documents. The application

shall state the following matters:

(i) the name and the domicile or residence of the applicant for trademark

registration;

(ii) the trademark for which registration is sought; and

(iii) the designated goods or designated services and the class of goods or services

provided by Cabinet Order as provided for in Article 6(2).

(2) Where a person desires to register a trademark listed in the following, the application shall

contain a statement indicating thereof:

(i) consists of any character(s), figure(s), sign(s) or three­dimensional shape(s) or colors, or any

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combination thereof, where the said character(s), figure(s), sign(s) or three­dimensional

shape(s) or colors in connection with the said trademark change;

(ii) consists of three­dimensional shape(s) (including the combination with any character(s),

figure(s), sign(s) or three­dimensional shape(s) or colors, or any combination thereof)

(excluding those listed in the preceding item);

(iii) consists solely of colors (excluding those listed in item (i));

(iv) consists solely of sounds; or

(v) in addition to those listed in each of the preceding items, trademarks provided by Cabinet

Order of the Ministry of Economy, Trade and Industry.

(3) Where a person desires to register a trademark consisting solely of characters designated by

the Commissioner of the Patent Office (hereinafter referred to as "standard characters"), the

application shall contain a statement indicating thereof.

(4) Where a person desires to register any trademark provided by Cabinet Order of the Ministry

of Economy, Trade and Industry, the application shall sate the detailed description of the

trademark in the application pursuant to Ordinance of the Ministry of Economy, Trade and

Industry, or affix materials provided by Ordinance of the Ministry of Economy, Trade and

Industry to the application.

(5) The statement and materials in the preceding paragraph shall specify the trademark for

which a registration is sought.

(6) Where a portion of the trademark for which a registration is sought is in the same color as

that of the column in which a trademark for which a registration is sought is required to be

stated, the said portion of the trademark shall be deemed not to be a part of the trademark;

provided, however, that this shall not apply to an area specified and identified as an area to be

colored in the same color as that of the column.

(According of filing date, etc.)

Article 5­2 (1) The Commissioner of the Patent Office shall accord as the filing date of an

application for trademark registration the date of submission of the application relating

thereto, unless the application for trademark registration falls under any of the following

items:

(i) the statement of intent to register a trademark is unclear;

(ii) the name of the applicant for trademark registration is not stated or the

statement thereof is not sufficient to identify the applicant;

(iii) the trademark for which a registration is sought is not stated in the application;

and

(iv) the designated goods or designated services are not stated.

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(2) Where an application for trademark registration falls under any of the items of the preceding

paragraph, the Commissioner of the Patent Office shall require the person who desires to

register the trademark registration to supplement the application, designating a reasonable

time limit for such purpose.

(3) Supplement of an application for trademark registration shall be made by submitting a

document with respect to the supplement (hereinafter referred to as a "Written Supplement").

(4) Where an applicant who was required to supplement an application for trademark

registration under paragraph (2) supplements the said application within the designated time

limit as provided in the said paragraph, the Commissioner of the Patent Office shall accord

the date of submission of the Written Supplement as the filing date of the application for

trademark registration.

(5) Where an applicant who has been required to supplement an application for trademark

registration under paragraph (2) fails to supplement the said application within the designated

time limit as provided in the said paragraph, the Commissioner of the Patent Office may

dismiss the said application for trademark registration.

(Single trademark on each application)

Article 6 (1) An application for trademark registration shall be filed for each trademark and

designate one or more goods or services in connection with which the trademark is to be

used.

(2) The designation provided for in the preceding paragraph shall be made in accordance with

the class of goods and services provided by Cabinet Order.

(3) The class of goods and services provided for in the preceding paragraph shall not be

perceived as prescribing the scope of similarities of goods or services.

(Collective trademarks)

Article 7 (1) A general incorporated association or other association (except those which do not

have juridical personality, and companies), or any other association established pursuant to a

special Act including business cooperative (except those which do not have juridical

personality), or a foreign juridical person equivalent thereto shall be entitled to obtain a

collective trademark registration with respect to a trademark to be used by their members.

(2) For the purpose of the application of Article 3(1), in the case of the preceding paragraph,

"applicant" in the said paragraph shall read "applicant or its members."

(3) Any person who desires to register a collective trademark pursuant to paragraph (1) shall, at

the time of filing of an application for trademark registration pursuant to Article 5(1), submit

to the Commissioner of the Patent Office a document certifying that the applicant for

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trademark registration is a juridical person that falls under paragraph (1).

(Regional collective trademarks)

Article 7­2 (1) Any association established by a special Act, including a business cooperative

(those which do not have juridical personality are excluded, and limited to those which are

established by a special Act providing, without a just cause, that the association shall not

refuse the enrollment of any person who is eligible to become a member or that the

association shall not impose on any of its prospective members any condition that is heavier

than those imposed on its existing members), a commercial transaction, commercial and

industrial association or specified non­profit corporation specified in Article 2(2) of Act on

Promotion of Specified Non­profit Activities (Act No. 7 of 1998), or a foreign juridical

person equivalent thereto (hereinafter referred to as an "Association, etc.") shall be entitled to

obtain a regional collective trademark registration with respect of any of the following,

provided that the trademark is used by its members and, as a result of the use of the said

trademark, the said trademark is well known among consumers as indicating the goods or

services pertaining to the business of the applicant or its members, notwithstanding the

provision of Article 3 (except a case falling under item (i) or (ii) of Article 3(1)):

(i) a trademark consisting solely of characters indicating, in a common manner, the

name of the region and the common name of the goods or services pertaining to

the business of the applicant or its members;

(ii) a trademark consisting solely of characters indicating, in a common manner, the

name of the region and the name customarily used as a name indicating the goods

or services pertaining to the business of the applicant or its members; or

(iii) a trademark consisting solely of characters indicating, in a common manner, the

name of the region and the common name of the goods or services pertaining to

the business of the applicant or its members or the name customarily used as a

name indicating thereof, and characters customarily added in indicating, in a

common manner, the place of origin of the goods or the location of provision of the

services.

(2) The term "name of the region" as used in the preceding paragraph means, even prior to the

filing of the said application, the name of the place of origin of the goods, the location of

provision of services, or the name of the region which is considered to have a close

relationship with the said goods or services to the equivalent extent, for which the trademark

pertaining to the said application has been used by the applicant or its members, or

abbreviation thereof.

(3) For the purpose of the application of Article 3(1) (limited to the part pertaining to items (i)

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and (ii)) in the case of paragraph (1), "applicant" in the said paragraph shall read "applicant or

its members."

(4) Any person who desires to register a regional collective trademark pursuant to paragraph (1)

shall, at the time of filing of an application for trademark registration pursuant to Article 5(1),

submit to the Commissioner of the Patent Office a document certifying that the applicant for

trademark registration is an Association, etc. and documents necessary to prove that the

trademark for which the registration is sought contains the name of a region as provided in

paragraph (2).

(Prior application)

Article 8 (1) Where two or more applications for trademark registration relating to identical or

similar trademarks which are to be used in connection with identical or similar goods or

services have been filed on different dates, only the applicant who filed the application for

trademark registration on the earlier date shall be entitled to register the trademark in

question.

(2) Where two or more applications for trademark registration relating to identical or similar

trademarks which are to be used in connection with identical or similar goods or services

have been filed on the same date, only one applicant who is to be determined by consultations

among the applicants who filed such applications shall be entitled to register the trademark in

question.

(3) Where an application for trademark registration is abandoned, withdrawn or dismissed, or an

examiner's decision or a trial decision on an application for trademark registration becomes

final and binding, such application shall, for the purposes of the application of the preceding

two paragraphs, be deemed never to have been filed.

(4) In the case of paragraph (2), the Commissioner of the Patent Office shall require the

applicants for trademark registration to arrange consultations among the applicants as set

forth in the said paragraph and to report the result thereof, designating a reasonable time limit

for such purpose.

(5) Where no agreement is reached in the consultations held pursuant to paragraph (2) or no

report is submitted within the designated time limit set forth in the preceding paragraph, only

one applicant, selected by a lottery in a fair and just manner conducted by the Commissioner

of the Patent Office, shall be entitled to register the trademark in question.

(Special provisions concerning time of filing of application)

Article 9 (1) Where an application for trademark registration is filed in connection with a

trademark used for goods or services exhibited at an exhibition held by the Government, etc.,

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an exhibition held by those who are not the Government, etc. that conforms to the standards

specified by the Commissioner of the Patent Office, an international exhibition held by the

Government, etc. of a country of the Union to the Paris Convention, a member of the World

Trade Organization or a Contracting Party to the Trademark Law Treaty or by those

authorized thereby to hold such an exhibition in its territory, or an international exhibition

held by the Government, etc. of a country which is not a country of the Union of the Paris

Convention, a member of the World Trade Organization or a Contracting Party to the

Trademark Law Treaty or by those authorized thereby to hold such exhibition in its territory

that conforms to the standards specified by the Commissioner of the Patent Office, by the

exhibitor of such goods or services bearing the trademark within six months from the date of

exhibition of such goods or services, the said application shall be deemed to have been filed

at the time of exhibition of such goods or services.

(2) Any person who desires to apply the preceding paragraph in connection with a trademark

relating to an application for trademark registration shall submit to the Commissioner of the

Patent Office a document stating thereof at the time of filing of the application for trademark

registration, and documents proving the fact that the trademark pertaining to an application

for trademark registration and its designated goods or designated services fall under the

trademark and goods or services provided in the said paragraph (referred to as a "certificate"

in the following paragraph and paragraph (4)), within thirty days from the filing date of an

application for the trademark registration.

(3) Where a person submitting a certificate is unable to submit the certificate within the time

limit under the preceding paragraph, the said person may, in accordance with Ordinance of

the Ministry of Economy, Trade and Industry, submit the said certificate to the Commissioner

of the Patent Office only within the time limit as provided in Ordinance of the Ministry of

Economy, Trade and Industry, even after the expiration of the time limit.

(4) Where, due to reasons beyond the control of the person, the person submitting a

certificate is unable to submit the certificate within the time limit for submission of

the certificate pursuant to the preceding paragraph, notwithstanding the said

paragraph, submit the certificate to the Commissioner of the Patent Office within

14 days (two months for resident abroad) from the date on which the reasons for not

submitting ceased to be applicable, but not later than six months after the

expiration of the said time limit.

(Priority claim governed by the Paris Convention)

Article 9­2 A right of priority based on an application for registration of a trademark filed in a

country of the Union to the Paris Convention (limited to a trademark equivalent to a

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trademark provided in Article 2(1)(ii)) may be claimed as governed by the same rules as

Article 4 of the Paris Convention in connection with a right of priority based on an

application for registration of a trademark equivalent to the trademark provided in Article

2(1)(i).

Article 9­3 A right of priority based on an application filed by a person stated in the left column

of the following table in a country stated in the right column of the same table may be

claimed in connection with an application for trademark registration as governed by Article 4

of the Paris Convention.

Japanese nationals or nationals of a

country of the Union to the Paris

Convention (including those who are

deemed to be nationals of a country of

the Union as provided by Article 3 of the

Paris Convention)

A member of the World Trade

Organization or a Contracting Party to

the Trademark Law Treaty

Nationals of a member of the World

Trade Organization (refers to nationals

of a member provided in paragraph 3 of

Article 1 of Annex 1C to the Marrakesh

Agreement Establishing the World

Trade Organization) or nationals of a

Contracting Party to the Trademark

Law Treaty

A country of the Union to the Paris

Convention, a member of the World

Trade Organization or a Contracting

Party to the Trademark Law Treaty

(Amendment of designated goods, etc. or trademark for which registration is sought

and change of gist thereof)

Article 9­4 Where, after the registration of establishment of a trademark right, any amendment

made to the designated goods or designated services, or trademark for which registration is

sought stated in the application, is found to cause any change of the gist thereof, the

application for trademark registration shall be deemed to have been filed at the time of

submission of the written amendment relating thereto.

(Division of application for trademark registration)

Article 10 (1) An applicant for trademark registration may file one or more new applications

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with regard to part of an application which designates two or more goods or services as its

designated goods or designated services, provided that the application for trademark

registration is pending in examination, trial examination or retrial examination, or that a suit

against a trial decision to refuse the application is pending in court, and that the applicant has

paid the fees payable under Article 76(2) for the application for trademark registration.

(2) In the case of the preceding paragraph, the new application for trademark registration shall

be deemed to have been filed at the time of filing of the original application for trademark

registration; provided, however, that this shall not apply for the purpose of Article 9(2) of this

Act and Article 43(1) and 43(2) of the Patent Act (Act No.121 of 1959) as applied mutatis

mutandis pursuant to Article 13(1) of this Act (including cases where they are applied mutatis

mutandis pursuant to Article 43­3(3) of the Patent Act as applied mutatis mutandis pursuant

to Article 13(1) of this Act).

(3) Where a new application for trademark registration is filed as provided in paragraph (1),

statements or documents submitted in connection with the original application for trademark

registration which are required to be submitted in connection with the new application for

trademark registration pursuant to Article 9(2) of this Act or Article 43(1) and 43(2) of the

Patent Act as applied mutatis mutandis pursuant to Article 13(1) of this Act (including its

mutatis mutandis application pursuant to Article 43­3(3) of the Patent Act as applied

mutatis mutandis pursuant to Article 13(1) of this Act) shall be deemed to have been

submitted to the Commissioner of the Patent Office at the time of filing the new application

for trademark registration.

(Conversion of application)

Article 11 (1) An applicant for trademark registration may convert an application for trademark

registration of a collective trademark into a regular application for trademark registration

(referring to an application for trademark registration other than those of collective

trademarks and regional collective trademarks; the same shall apply hereinafter) or an

application for trademark registration of a regional collective trademark.

(2) An applicant for trademark registration may convert an application for trademark

registration of a regionally based collective trademark into a regular application for trademark

registration or an application for trademark registration of a collective trademark.

(3) An applicant for trademark registration may convert a regular application for trademark

registration into an application for trademark registration of a collective trademark or an

application for trademark registration of a regionally based collective trademark.

(4) The conversion of an application for trademark registration pursuant to the provisions of the

preceding three paragraphs may not be made after an examiner's decision or a trial decision

14

on the application for trademark registration becomes final and binding.

(5) Where the conversion of an application for trademark registration is made pursuant to

paragraphs (1) to (3), the original application for trademark registration shall be deemed to

have been withdrawn.

(6) The provisions of Articles 10(2) and 10(3) shall apply mutatis mutandis to the conversion of

an application for trademark registration pursuant to paragraphs (1) to (3).

Article 12 (1) An applicant for a defensive mark registration may convert such an application

into an application for trademark registration.

(2) The conversion of an application pursuant to the preceding paragraph may not be made after

an examiner's decision or a trial decision on the application for a defensive mark registration

becomes final and binding.

(3) The provisions of Articles 10(2), 10(3) and 11(5) shall apply mutatis mutandis to the

conversion of an application pursuant to paragraph (1).

(Laying open of application)

Article 12­2 (1) Where an application for trademark registration is filed, the Commissioner of

the Patent Office shall lay open the trademark application.

(2) The laying open of a trademark application shall be effected by stating the following matters

in the Trademark Gazette; provided, however, that this shall not apply to the matters listed in

items (iii) and (iv), where the Commissioner of the Patent Office finds that publishing the

said matters in the trademark bulletin is likely to cause damage to public policy.

(i) the name and the domicile or residence of the applicant for the trademark

registration;

(ii) the number and date of the application for trademark registration;

(iii) the trademark stated in the application (in the case provided in Article 5(3), the

trademark represented in standard characters; the same shall apply hereinafter);

(iv) the designated goods or designated services; and

(v) other necessary matters in addition to those matters listed in the preceding

items.

(Mutatis mutandis application of the Patent Act)

Article 13 (1) The provisions of Paragraphs (1) to (4) and (7) to (9) of Article 43, and (2) and

(3) of Article 43­3 of the Patent Act shall apply mutatis mutandis to an application for

trademark registration. In this case, the term "within the time limit provided by Ordinance of

the Ministry of Economy, Trade and Industry" in Article 43(1) of the said Act shall be

15

deemed to be replaced with "at the time of filing of the application for trademark

registration," "the description, scope of claims for patent or claim of utility model and

drawings" in paragraph (2) of the said Article shall be deemed to be replaced with "the

statement of the trademark for which registration is sought and the designated goods or

designated services," "one year and four months from the earliest of the following dates" in

paragraph(2) of the said Article shall be deemed to be replaced with "three months from the

filing date of an application for trademark registration"; "a person who has received a notice

provided under the preceding paragraph" in paragraph (7) of the said Article shall be deemed

to be replaced with "where a person who submits the documents under paragraph (2) is

unable to submit the documents under the said paragraph within the time limit provided in the

said paragraph, even after the expiration of the said time limit," "the documents specified in

paragraph (2) or the document specified in paragraph (5)" in paragraph(7) of the said Article

shall be deemed to be replaced with "the documents specified in the said paragraph as

provided by Ordinance of the Ministry of Economy, Trade and Industry"; "a person who has

received a notice provided under paragraph (6)" in paragraph(8) of the said Article shall be

deemed to be replaced with "a person who submits the documents under paragraph (2)," "the

documents specified in paragraph (2) or the document specified in paragraph (5)" in

paragraph(8) of the said Article shall be deemed to be replaced with "the documents specified

in paragraph (2)," "the documents or the document" in paragraph(8) of the said Article shall

be deemed to be replaced with "the documents"; "the documents specified in paragraph (2) or

the document specified in paragraph (5)" in paragraph (9) of the said Article shall be deemed

to be replaced with "the documents specified in paragraph (2)"; "or members of the World

Trade Organization" in Article 43­3(2) of the said Act shall be deemed to be replaced with

"members of the World Trade Organization or Contracting Parties to the Trademark Law

Treaty"; "or nationals of members of the World Trade Organization" in the same paragraph

shall be deemed to be replaced with "nationals of members of the World Trade Organization

or nationals of Contracting Parties to the Trademark Law Treaty"; "preceding two Articles" in

paragraph (3) of the said Article shall be deemed to be replaced with "Article 43"; and

"preceding two paragraphs" in paragraph (3) of the said paragraph shall be deemed to be

replaced with "preceding paragraph."

(2) The provisions of paragraphs (1) to (3) of Articles 33 and paragraphs (4) to (7) of Article 34

(Right to obtain patent) of the Patent Act shall apply mutatis mutandis to the rights deriving

from an application for trademark registration.

(Right to monetary claim, etc. prior to registration of establishment of trademark

right)

16

Article 13­2 (1) Where an applicant for trademark registration issues a warning after filing an

application for trademark registration by presenting a document stating a description of the

application, the applicant may claim against any person who uses the trademark pertaining to

the application, for the designated goods or designated services in the application during the

period from the warning to the registration of establishment of the trademark right, the

payment of money in the amount equivalent to the loss incurred in the course of business due

to such use.

(2) The right to claim under the preceding paragraph may not be exercised prior to the

registration of establishment of the trademark right.

(3) The exercise of the right to claim under paragraph (1) shall not preclude the exercise of the

trademark right.

(4) The right to claim under paragraph (1) shall be deemed never to have arisen in any of the

following cases: where an application for trademark registration is abandoned, withdrawn or

dismissed; where an examiner's decision or a trial decision to the effect that an application for

trademark registration is to be refused becomes final and binding; where a ruling to rescind a

trademark under Article 43­3(2) becomes final and binding; or where, excluding the cases

falling under the proviso to Article 46­2(1), a trial decision to the effect that a trademark

registration is to be invalidated becomes final and binding.

(5) The provisions of Articles 27 and 37 of this Act, Articles 104­3(1) and (2), 105, 105­2,

105­4 to 105­6 and 106 of the Patent Act as applied mutatis mutandis under Article 39 of this

Act, and Articles paragraphs (3) to (6) of Article 168 of the Patent Act as applied mutatis

mutandis under Article 56(1) of this Act and Articles 719 and 724 (Tort) of the Civil Code

(Act No.89 of 1896) shall apply mutatis mutandis to the exercise of the right to claim under

paragraph (1). In this case, where prior to the registration of the establishment of the

trademark right, the person having the right to claim becomes aware of the fact that the

trademark in connection with the application for trademark registration is used, and the

identity of the person using the trademark, the term "by the victim or his/her legal

representative within three years from the time when he/she comes to know of the damages

and the identity of the perpetrator" in Article 724 of the said Code shall be deemed to be

replaced with "by the person having the right to claim within three years from the date of the

registration of the establishment of the trademark right."

CHAPTER III EXAMINATION

(Examination by an examiner)

Article 14 The Commissioner of the Patent Office shall direct the examination of applications

17

for trademark registration by an examiner.

(Examiner's decision of refusal)

Article 15 Where an application for trademark registration falls under any of the following items,

the examiner shall render a decision to the effect that the application is to be refused:

(i) the trademark pertaining to an application for trademark registration is not

registrable pursuant to the provisions of Articles 3, 4(1), 7­2(1), 8(2), 8(5), 51(2)

(including the case of its mutatis mutandis application under Article 52­2(2)),

53(2) of this Act or Article 25 of the Patent Act as applied mutatis mutandis under

77(3) of this Act;

(ii) the trademark pertaining to an application for trademark registration is not

registrable pursuant to the provisions of a relevant treaty; or

(iii) the application for trademark registration does not comply with the

requirements provided in Article 5(5), or Article 6(1) or 6(2).

(Notification of reasons for refusal)

Article 15­2 Where the examiner intends to render a decision to the effect that an application is

to be refused, the examiner shall notify the applicant for trademark registration of the reasons

for refusal and provide the applicant an opportunity to submit a written opinion, designating a

reasonable time limit for such purpose.

Article 15­3 (1) Where a trademark pertaining to an application for trademark registration is

identical with, or similar to, another person's trademark pertaining to an application for

trademark registration filed prior to the filing date of the said application, if the said

trademark is used for goods or services identical with, or similar to, the designated goods or

designated services pertaining to such other person's trademark, the examiner may notify the

applicant for trademark registration of the fact that the said application for trademark

registration will fall under Article 15(i) when the said other person's trademark is registered,

and provide the applicant with an opportunity to submit a written opinion, designating a

reasonable time limit for such purpose.

(2) Where the notification set forth in the preceding paragraph has already been served and the

said other person's trademark is registered, the examiner shall not be required to serve the

notification set forth in the preceding Article.

(Examiner's decision of trademark registration)

Article 16 Where no reasons for refusal are found in connection with an application for

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trademark registration within the time limit provided by Cabinet Order, the examiner shall

render a decision to the effect that the trademark is to be registered.

(Dismissal of amendment)

Article 16­2 (1) Where an amendment made to the designated goods or designated services, or

to the trademark for which registration is sought as stated in the application, is considered to

cause any change of the gist thereof, the examiner shall dismiss the amendment by a ruling.

(2) The ruling dismissing an amendment under the preceding paragraph shall be made in writing

and state reasons therefor.

(3) Where a ruling dismissing an amendment under paragraph (1) is rendered, the examiner

shall not render any decision on the said application for trademark registration before the

expiration of a three month period from the date of service of a transcript of the ruling.

(4) Where an applicant for trademark registration files a request for a trial under Article 45(1)

against the ruling dismissing an amendment under paragraph (1), the examiner shall suspend

the examination of the application for trademark registration until the trial decision becomes

final and binding.

(Mutatis mutandis application of the Patent Act)

Article 17 The provisions of Articles 47(2) (Qualification of Examiners), 48 (Exclusion of

Examiners), 52 (Formal Requirements for Examination) and 54 (Relationship with Litigation)

of the Patent Act shall apply mutatis mutandis to the examination of applications for

trademark registration. In this case, the term "a trial decision" in Article 54(1) of the Patent

Act shall be deemed to be replaced with "a ruling on an opposition to registration or a trial

decision."

(Mutatis mutandis application of the Design Act)

Article 17­2 (1) The provision of Article 17­3 (New Application for Designs as Amended) of

the Design Act (Act No. 125 of 1959) shall apply mutatis mutandis to the case where an

amendment is dismissed by a ruling pursuant to Article 16­2(1) of this Act.

(2) The provision of Article 17­4 of the Design Act shall apply mutatis mutandis to the case of

an extension of the time limit provided in Article 17­3(1) of the Design Act as applied

mutatis mutandis to the preceding paragraph or Article 55­2(3) (including its mutatis

mutandis application under Article 60­2(2)) of this Act.

CHAPTER IV TRADEMARK RIGHTS

Section 1 Trademark Rights

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(Registration of establishment of trademark right)

Article 18 (1) A trademark right shall arise upon registration of establishment of such right.

(2) Where the registration fee under Article 40(1) or the registration fee due and payable within

thirty days from the date of service of a transcript of an examiner's decision or a trial decision

to the effect that a trademark is to be registered pursuant to Article 41­2(1) is paid, the

establishment of the trademark right shall be registered.

(3) Upon registration set forth in the preceding paragraph, the following matters shall be

published in the trademark bulletin:

(i) the name and the domicile or residence of the holder of trademark right;

(ii) the number and date of the application for trademark registration;

(iii) the trademark stated in the application;

(iv) the designated goods or designated services;

(v) the registration number and the date of registration of establishment; and

(vi) other necessary matters in addition to those listed in the preceding items.

(4) The Commissioner of the Patent Office shall make application documents and their annexed

articles available for public inspection at the Patent Office for two months from the date of

issuance of the trademark bulletin containing matters listed in each item of the preceding

paragraph (hereinafter referred to as "bulletin containing the trademark") pursuant to the

provisions of the preceding paragraph; provided, however, that this shall not apply to

documents or articles that are likely to damage the reputation or disturb the peaceful existence

of an individual or to cause damage to public policy, and the Commissioner of the Patent

Office finds necessary to be kept confidential.

(5) Where the Commissioner of the Patent Office intends to make available for public

inspection documents or articles which are likely to damage the reputation or disturb the

peaceful existence of an individual and are other than those the Commissioner of the Patent

Office finds necessary to be kept confidential pursuant to the proviso set forth in the

preceding paragraph, the Commissioner of the Patent Office shall notify the person who

submitted the documents or the articles thereof and the reasons therefor.

(Duration)

Article 19 (1) The duration of a trademark right shall expire after ten years from the date of

registration of establishment of such right.

(2) The duration of a trademark right may be renewed by the holder of trademark right by filing

an application for registration of renewal.

(3) Where the renewal of the duration of the trademark right is registered, the duration shall

20

have been renewed at the time of expiration of the duration.

(Application for registration of renewal of duration)

Article 20 (1) A person filing a request for registration of renewal of the duration of a trademark

right shall submit to the Commissioner of the Patent Office an application stating the

following matters:

(i) the name and the domicile or residence of the applicant;

(ii) the registration number of the trademark registration; and

(iii) in addition to those listed in the preceding two items, the matters provided by

Ordinance of the Ministry of Economy, Trade and Industry.

(2) An application for registration of renewal shall be filed during the period from six months

prior to the expiration of the duration of a trademark right to the date of expiration thereof.

(3) Where the holder of trademark right is unable to file an application for registration of

renewal within the time limit provided in the preceding paragraph, the holder of trademark

right may file the said application within the time limit as provided in Ordinance of the

Ministry of Economy, Trade and Industry, even after the expiration of the said time limit.

(4) Where the holder of trademark right fails to file an application for registration of renewal

within the time limit for such request pursuant to the provision of the preceding paragraph,

the trademark right shall be deemed to have been extinguished retroactively from the time of

the expiration of its duration.

(Restoration of trademark right)

Article 21 (1) Where the original holder of a trademark right which was deemed to have been

extinguished pursuant to Article 20(4) has justifiable reasons for having been unable to file an

application for registration of renewal within the time limit for such application pursuant to

Article 20(3), the original holder of the trademark right may file the said application only

within the time limit as provided in Ordinance of the Ministry of Economy, Trade and

Industry.

(2) Where an application for registration of renewal is filed under the preceding paragraph, the

duration shall be deemed to have been renewed retroactively at the time of expiration of the

duration.

(Limitations of effects of restored trademark right)

Article 22 The effects of a trademark right restored pursuant to Article 21(2) may not extend to

the following acts committed after the expiration of the time limit for the filing of the

application for registration of renewal provided in Article 20(3) and before the registration of

21

renewal of the duration of the trademark right by the application under Article 21(1):

(i) the use of the registered trademark in connection with the designated goods or

designated services; and

(ii) the acts provided for in each item of Article37.

(Registration of renewal of duration)

Article 23 (1) Where the registration fee under Article 40(2) or the registration fee due and

payable at the time of filing of the application for registration of renewal pursuant to the

provision of Article 41­2(7) is paid, the renewal of the duration of the trademark right shall be

registered.

(2) Notwithstanding the preceding paragraph, where an application for registration of renewal is

filed pursuant to Article 20(3) or 21(1), the renewal of the duration of the trademark right

shall be registered at the time of payment of the registration fee under Article 40(2) and the

registration surcharge under Article 43(1), or the registration fee due and payable at the time

of filing of the application for registration of renewal under Article 41­2(7) and the

registration surcharge under Article 43(2).

(3) Upon registration as set forth under the preceding two paragraphs, the following matters

shall be published in the trademark bulletin:

(i) the name and the domicile or residence of the holder of trademark right;

(ii) the registration number and the date of registration of renewal; and

(iii) other necessary matters in addition to those listed in the preceding two items.

(Division of trademark right)

Article 24 (1) Where there are two or more designated goods or designated services for which a

trademark right shall apply, the trademark right may be divided for each of the designated

goods or designated services.

(2) Where a request for a trial is filed under Article 46(3), the division provided for in the

preceding paragraph may be made even after the extinguishment of the trademark right,

provided that a trial, retrial or court proceeding in connection with the case is pending.

(Transfer of trademark right)

Article 24­2 (1) Where there are two or more designated goods or designated services, the

trademark right may be divided into each of the designated goods or services in transferring

such right.

(2) A trademark right in connection with an application for trademark registration which falls

under Article 4(2) filed by the State, a local government, an agency thereof, or a non­profit

22

organization undertaking a business for public interest may not be assigned.

(3) A trademark right in connection with an application for trademark registration that falls

under Article 4(2) filed by a non­profit enterprise undertaking a business for public interest,

may not be transferred unless the business is transferred together with such right.

(4) A trademark right in connection with a regionally based collective trademark may not be

assigned.

(Transfer of collective trademark right)

Article 24­3 (1) Upon transfer, the trademark right to a collective trademark shall be deemed to

have been converted to a regular trademark right, except in the case as provided in the

following paragraph.

(2) Where the right holder of a collective trademark desires to transfer the collective trademark

right, the said right holder shall submit an application for registration of transfer accompanied

by a document stating thereof, and the documents provided in Article 7(3), to the

Commissioner of the Patent Office.

(Request for indication to prevent confusion arising from transfer of trademark

right)

Article 24­4 Where, as a result of transfer of a trademark right, the trademark right to a similar

registered trademark to be used in connection with identical goods or services, or the

trademark right to an identical or similar registered trademark to be used in connection with

similar goods or services becomes owned by a different holder of trademark right, if the use

of one of such registered trademarks for its designated goods or designated services by its

holder of trademark right, exclusive right to use or non­exclusive right to use is likely to

damage business interests (limited to those pertaining to the designated goods or designated

services using the said other registered trademark) of the other holder of trademark right or of

exclusive right to use, the other holder of trademark right or of exclusive right to use may

request the holder of trademark right, exclusive right to use or non­exclusive right to use to

affix an indication that may sufficiently prevent any confusion between the goods or services

pertaining to the business of the other party and those of its own.

(Effects of trademark right)

Article 25 The holder of trademark right shall have an exclusive right to use the registered

trademark in connection with the designated goods or designated services; provided, however,

that where an exclusive right to use the trademark is established in connection with the

trademark right, this provision shall not apply to the extent that the holder of exclusive right

23

to use has an exclusive right to use the registered trademark.

(Limitations of effects of trademark right)

Article 26 (1) A trademark right shall have no effect on any of the following trademarks

(including those which constitute part of other trademarks):

(i) a trademark indicating, in a common manner, one's own portrait, name, famous

pseudonym, professional name, pen name or famous abbreviation thereof;

(ii) a trademark indicating, in a common manner, the common name, place of origin,

place of sale, quality, raw materials, efficacy, intended purpose, shape, the method

or features including time of production or use, quantity or price of the designated

goods or goods similar thereto, or the common name, location of provision, quality,

articles to be used in such provision, efficacy, intended purpose, modes, method or

features including time of provision, quantity or price of services similar to the

designated goods;

(iii) a trademark indicating, in a common manner, the common name, location of

provision, quality, articles to be used in such provision, efficacy, intended purpose,

modes, method or features including time, quantity or price of provision of the

designated services or services similar thereto, or the common name, place of

origin, place of sale, quality, raw materials, efficacy, intended purpose, modes, the

method or features including time of production or use, quantity or price of goods

similar to the designated services;

(iv) a trademark customarily used for the designated goods or designated services or

goods or services similar thereto; or

(v) a trademark consisting solely of features provided by Cabinet Order among

features that are naturally provided to goods, etc.; and

(vi) in addition to those listed in each of the preceding items, a trademark which is

not used in such a mode that consumers may recognize the goods or services as

those pertaining to the business of a particular person.

(2) Item (i) of the preceding paragraph shall not apply where, after the registration of

establishment of the trademark right, one's own portrait, name, famous pseudonym,

professional name, pen name or famous abbreviation thereof is used for the purpose of unfair

competition.

(3) A trademark right shall have no effect against any of the following acts; provided, however,

that this shall apply only if such act is not performed for the purpose of unfair competition:

(i) to affix a geographical indication prescribed in Article 2(3) of the Act on Protection of the

Names of Specific Agricultural, Forestry and Fishery Products and Foodstuffs (Act No. 84 of

24

2014; hereinafter referred to as the "Specific Agricultural, Forestry and Fishery Product

Name Protection Act") (hereinafter referred to as a "geographical indication" in the following

item and item (iii)) to goods or packages of goods pursuant to the provisions of Article 3(1)

of the said Act (including cases where applied mutatis mutandis pursuant to Article 30 of the

said Act following the deemed replacement of terms; the same shall apply in the following

item and item (iii));

(ii) to assign, deliver, display for the purpose of assignment or delivery, import or export goods

or packages of goods to which a geographical indication has been affixed pursuant to the

provisions of Article 3(1) of the Specific Agricultural, Forestry and Fishery Product Name

Protection Act; or

(iii) to display an invoice of goods with a geographical indication affixed thereto pursuant to

the provisions of Article 3(1) of the Specific Agricultural, Forestry and Fishery Product

Name Protection Act.

(Scope of registered trademark, etc.)

Article 27 (1) The scope of a registered trademark shall be determined based on the trademark

stated in the application.

(2) The scope of the designated goods or designated services shall be determined based on the

statement in the application.

(3) In the case of paragraph (1), meanings of statement of the trademark stated in

the application shall be interpreted by considering the statement and materials of

Article 5(4).

Article 28 (1) A request for an advisory opinion on the effects of a trademark right may be filed

to the Patent Office.

(2) Upon receipt of the request under the preceding paragraph, the Commissioner of the Patent

Office shall designate three administrative judges and have them make an advisory opinion.

(3) Articles 71(3) and 71(4) of the Patent Act shall apply mutatis mutandis to the advisory

opinion provided for in paragraph (1).

Article 28­2 (1) Where the Commissioner of the Patent Office is commissioned by a court to

provide an expert opinion on the effects of a trademark right, the Commissioner shall

designate three administrative judges and have them provide such expert opinion.

(2) Articles 71­2(2) of the Patent Act shall apply mutatis mutandis to the commissioned

provision of the expert opinion provided for in paragraph (1).

25

(Relationship with another person's patent right, etc.)

Article 29 Where the use of a registered trademark in a particular manner in connection with its

designated goods or designated services conflicts with another person's right to a patent,

utility model or design for which an application has been filed prior to the filing date of an

application of the said registered trademark or upon another person's copyright or

neighboring right arising prior to the filing date of the same, the holder of trademark right,

exclusive right to use or non­exclusive right to use may not use the registered trademark in

the same manner on the conflicting part of the designated goods or designated services.

(Exclusive right to use)

Article 30 (1) The holder of trademark right may establish an exclusive right to use to the

trademark to which he/she holds the right; provided, however, that this provision shall not

apply to the trademark right pertaining to an application for trademark registration provided

in Article 4(2) or a regionally based collective trademark.

(2) The holder of exclusive right to use shall have an exclusive right to use a registered

trademark in connection with the designated goods or designated services to the extent

provided by the agreement under which such right is granted.

(3) The exclusive right to use may be transferred only where the consent of the holder of

trademark right is obtained or where the transfer falls under general succession including

inheritance.

(4) Articles 77(4) and 77(5) (establishment of pledge, etc.), 97(2) (waiver), and 98(1)(ii) and

98(2) (effects of registration) of the Patent Act shall apply mutatis mutandis to an exclusive

right to use.

(Non­exclusive right to use)

Article 31 (1) The holder of trademark right may grant to another person a non­exclusive right

to use to the trademark to which he/she holds the right; provided, however, that this provision

shall not apply to the trademark right pertaining to an application for trademark registration

provided in Article 4(2).

(2) The holder of non­exclusive right to use shall have the right to use the registered trademark

for the designated goods or designated services to the extent provided by the agreement under

which such right is granted.

(3) A non­exclusive right to use may be transferred only where the consent of the holder of

trademark right (the holders of trademark right and of exclusive right to use in the case of a

non­exclusive right to use granted in connection with an exclusive right to use) is obtained or

where the transfer falls under general succession including inheritance.

26

(4) When a non­exclusive right to use is registered, the non­exclusive right to use shall have

effect on any person who subsequently acquires the trademark right or the exclusive right to

use, or the exclusive right to use on the trademark right.

(5) The transfer, modification, extinguishment or restriction on disposition of a non­exclusive

right to use shall have no effect on any third party unless registered.

(6) Articles 73(1) (joint ownership), 94(2) (establishment of right of pledge) and 97(3) (waiver)

of the Patent Act shall apply mutatis mutandis to a non­exclusive right to use.

(Right of members of corporation or association)

Article 31­2 (1) Members of a juridical person provided in Article 7(1) holding a trademark

right to a collective trademark (hereinafter referred to as "collective members") or members

of an association, etc. holding a trademark right to a regionally based collective trademark

(hereinafter referred to as "regional collective members") shall have the right to use a

registered trademark relating to collective trademark or regionally based collective trademark

for the designated goods or designated services as provided by the said juridical person or

association, etc.; provided, however, that in the case and only to the extent that an exclusive

right to use the registered trademark (limited to the trademark right pertaining to a collective

trademark) has been established.

(2) The right provided for in the main clause of the preceding paragraph may not be transferred.

(3) For the purpose of application of Articles 24­4, 29, 50, 52­2, 53 and 73, collective members

or regional collective members shall be deemed to be holders of non­exclusive right to use.

(4) For the purpose of the application of Article 33(1)(iii) in relation to registered trademarks in

connection with collective trademarks and regionally based collective trademarks, "or a

person who has the non­exclusive right to use which is effective regarding the trademark

right or the exclusive right to use under Article 31(4) of this Act. " in the said item shall read,

"or a person who has the non­exclusive right to use which is effective regarding the

trademark right or the exclusive right to use under Article 31(4) of this Act, or collective

members or regional collective members who have the right to use the said trademark."

(Right to use trademark arising from prior use)

Article 32 (1) Where a trademark identical with, or similar to, the trademark for which the

application is filed by another person has been used in Japan in connection with the

designated goods or designated services of the trademark for which the application is filed, or

in connection with goods or services similar thereto, without any intention to be engaged in

unfair competition, from the time prior to the filing of such other person's application for the

said trademark registration, and as a result, at the time of filing of the application for

27

trademark registration (at the time of filing of the original application for trademark

registration or the submission of a written amendment, if the application for trademark

registration is deemed to have been filed at the time of submission of a written amendment

under Article 9­4 of this Act or Article 17­3(1) of the Design Act as applied mutatis mutandis

under Article 17­2(1) or 55­2(3) of this Act (including its mutatis mutandis application under

Article 60­2(2))), such trademark has become well known among consumers as that

indicating goods or services pertaining to the business of the person, the person shall have the

right to use the trademark in connection with such goods or services as far as the said person

continuously uses the trademark for the goods or services. The same shall apply to those by

whom such business is succeeded.

(2) The holder of trademark right or of exclusive right to use may request the person who has

the right to use the trademark pursuant to the preceding paragraph to affix an indication that

may sufficiently prevent any confusion between the goods or services pertaining to the

business of the said person and those of its own.

Article 32­2 (1) Any person who has been using in Japan a trademark identical with, or similar

to, a regionally based collective trademark for which an application for registration is filed by

another person in connection with the designated goods or designated services for which the

application for trademark registration is filed, or in connection with goods or services similar

thereto, without any intention to be engaged in unfair competition, prior to the filing of such

other person's application for trademark registration of the said regionally based collective

trademark, shall have the right to use the trademark in connection with such goods or services

as far as the said person continuously uses the trademark in connection with such goods or

services. The same shall apply to those by whom such business is succeeded.

(2) The holder of trademark right may request the person who has the right to use the trademark

pursuant to the preceding paragraph to affix an indication that may sufficiently prevent any

confusion between the goods or services pertaining to the business of the said person and

those of its own or its members.

(Right to use trademark arising from use prior to registration of request for

invalidation trial)

Article 33 (1) Where, prior to the registration of a request for a trial provided for in Article

46(1), a person falling under any of the following items has been using in Japan a registered

trademark or a trademark similar thereto in connection with the designated goods or

designated services or goods or services similar thereto without the knowledge that the said

trademark registration falls under any of the items of the said paragraph, and the said

28

trademark has become well known among consumers as that indicating goods or services

pertaining to its business, the person shall have the right to use the trademark in connection

with such goods or services as far as the said person continuously uses the trademark for such

goods or services; the same shall apply to those by whom such business is succeeded:

(i) the original holder of trademark right, where one of two or more trademark

registrations for identical or similar trademarks to be used in connection with

identical or similar designated goods or designated services has been invalidated;

(ii) the original holder of trademark right, where the trademark registration has

been invalidated and a trademark identical with, or similar to, such trademark to

be used in connection with identical or similar designated goods or designated

services is registered for the person who is entitled to such a trademark; or

(iii) in the case of the preceding two items, a person who, at the time of registration

of the request for a trial under Article 46(1), has the exclusive right to use of the

trademark right of the trademark registration which has been invalidated or a

person who has the non­exclusive right to use which is effective regarding the

trademark right or the exclusive right to use under Article 31(4) of this Act.

(2) The said holder of trademark right or of exclusive right to use shall be entitled to receive

reasonable compensation from the person who has the right to use the trademark pursuant to

the preceding paragraph.

(3) Article 32(2) shall apply mutatis mutandis to paragraph (1).

(Right to use trademark after expiration of duration of patent right, etc.)

Article 33­2 (1) Where a patent right of an application that has been filed prior to or on the same

date as the filing date of an application for trademark registration conflicts with the trademark

right of the application for trademark registration, upon expiration of the duration of the said

patent right, the original patent right holder shall have the right to use the registered

trademark or a trademark similar thereto in connection with the designated goods or

designated services specified in the application, or goods or services similar thereto, within

the limits of the original patent right; provided, however, that such trademark is not used for

the purpose of unfair competition.

(2) Article 32(2) shall apply mutatis mutandis to the preceding paragraph.

(3) The preceding two paragraphs shall apply mutatis mutandis, where a utility model or design

right of an application that has been filed prior to or on the same date as the filing date of an

application for trademark registration conflicts with the trademark right of the application for

trademark registration, upon expiration of the duration of such utility model right or design

right.

29

Article 33­3 (1) Where a patent right of an application that has been filed prior to or on the same

date as the filing date of an application for trademark registration conflicts with the trademark

right of the application for trademark registration, upon expiration of the duration of the said

patent right, the person who, at the time of expiration of the duration of the patent right, has

the exclusive license to work the patent right, or a non­exclusive license to work which is

effective on the patent right or on the exclusive license to work, shall have the right to use the

registered trademark or a trademark similar thereto, within the limits of the original patent

right, in connection with the designated goods or designated services specified in the

application for trademark registration, or goods or services similar thereto; provided, however,

that such trademark is not used for the purpose of unfair competition.

(2) Articles 32(2) and 33(2) shall apply mutatis mutandis to the preceding paragraph.

(3) The preceding two paragraphs shall apply mutatis mutandis, where a utility model or a

design right of an application which has been filed prior to or on the same date as the filing

date of an application for trademark registration conflicts with the trademark right of the

application for trademark registration, upon expiration of the duration of such utility model

right or design right.

(Pledges)

Article 34 (1) Where a pledge is established on a trademark right, exclusive right to use or

non­exclusive right to use, unless otherwise provided for by contract, the pledgee may not use

the registered trademark in connection with the designated goods or designated services.

(2) The establishment, transfer, modification, extinguishment or restriction on disposition of a

pledge on a non­exclusive right to use shall have no effect on any third party without

registration.

(3) Article 96 (subrogation) of the Patent Act shall apply mutatis mutandis to pledges on a

trademark right, exclusive right to use or non­exclusive right to use.

(4) Article 99(3) (effects of registration) of the Patent Act shall apply mutatis mutandis to

pledges on a non­exclusive right to use.

(Mutatis mutandis application of the Patent Act)

Article 35 Article 73 (co­ownership), 76 (Lapse of patent rights in absence of heir), 97(1)

(waiver), and 98(1)(i) and 98(2) (Effect of registration) of the Patent Act shall apply mutatis

mutandis to trademark rights. In this case, the term "transfer (excluding those by general

succession including inheritance)" in Article 98(1)(i) of the Patent Act shall be deemed to be

replaced with "division and transfer (excluding those by general succession including

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inheritance)."

Section 2 Infringement of Rights

(Right to demand injunction)

Article 36 (1) The holder of trademark right or of exclusive right to use may demand a person

who is infringing or is likely to infringe the trademark right or the exclusive right to use to

stop or prevent such infringement.

(2) In making such a demand under the preceding paragraph, the holder of trademark right or of

exclusive right to use may demand the person to take measures necessary for the prevention

of such infringement, including the destruction of articles which constitute the act of

infringement and the removal of equipment used for or contributing to the act of

infringement.

(Acts deemed to constitute infringement)

Article 37 The following acts shall be deemed to constitute infringement of a trademark right or

an exclusive right to use:

(i) the use of a trademark similar to the registered trademark in connection with the

designated goods or designated services, or the use of the registered trademark or

a trademark similar thereto in connection with goods or services similar to the

designated goods or designated services;

(ii) the possession for the purpose of assignment, delivery or export of the

designated goods, or goods similar to the designated goods or designated services,

affixed with the registered trademark or a trademark similar thereto on the goods

or their packages;

(iii) the possession or importation of articles affixed with the registered trademark

or a trademark similar thereto, that are used in the course of the provision of

designated services or services similar to the designated services or the

designated goods by a person who receives the said services, for the purpose of the

provision of the said services through use of the said articles;

(iv) the assignment, delivery, or possession or importation for the purpose of

assignment or delivery of articles affixed with a registered trademark or a

trademark similar thereto, that are used in the course of the provision of

designated services or services similar to the designated services or the

designated goods by a person who receives the said services, for the purpose of

causing the provision of the said services through use of the said products;

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(v) the possession of products indicating the registered trademark or a trademark

similar thereto, for the purpose of using the registered trademark or a trademark

similar thereto in connection with the designated goods or designated services, or

goods or services similar thereto;

(vi) the assignment, delivery, or possession for the purpose of assignment or delivery,

of articles indicating the registered trademark or a trademark similar thereto, for

the purpose of causing the registered trademark or a trademark similar thereto to

be used in connection with the designated goods or designated services, or goods

or services similar thereto;

(vii) the manufacture or importation of products indicating the registered

trademark or a trademark similar thereto, for the purpose of using or causing to

be used the registered trademark or a trademark similar thereto in connection

with the designated goods or designated services or goods or services similar

thereto; and

viii) the manufacture, assignment, delivery or importation, as a business, of

products to be used exclusively for the manufacturing of products indicating the

registered trademark or a trademark similar thereto.

(Presumption of amount of damage, etc.)

Article 38 (1) Where a holder of trademark right or of exclusive right to use claims against an

infringer compensation for damage sustained as a result of the intentional or negligent

infringement of the trademark right or the exclusive right to use, and the infringer assigned

the goods that composed the act of infringement, the amount of damage sustained by the

holder of trademark right or of exclusive right to use may be presumed to be the amount of

profit per unit of goods which would have been sold by the holder of trademark right or of

exclusive right to use if there had been no such act of infringement, multiplied by the quantity

of goods assigned by the infringer (hereinafter referred to as the "Assigned Quantity"), the

maximum of which shall be the amount attainable by the holder of trademark right or of

exclusive right to use in light of the capability of the holder of trademark right or of exclusive

right to use to use such goods; provided, however, that if any circumstances exist under

which the holder of trademark right or of exclusive right to use would have been unable to

sell the assigned quantity in whole or in part, the amount calculated as the number of goods

not able to be sold due to such circumstances shall be deducted.

(2) Where the holder of trademark right or of exclusive right to use claims against an infringer

compensation for damage sustained as a result of the intentional or negligent infringement of

the trademark right or the exclusive right to use, and the infringer earned profits from the act

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of infringement, the amount of profits earned by the infringer shall be presumed to be the

amount of damage sustained by the holder of trademark right or of exclusive right to use.

(3) The holder of trademark right or of exclusive right to use may claim against an infringer

compensation for damage sustained as a result of the intentional or negligent infringement of

the trademark right or the exclusive right to use, by regarding the amount the holder of

trademark right or of exclusive right to use would have been entitled to receive for the use of

the registered trademark as the amount of damage sustained.

(4) The preceding paragraph shall not prevent any relevant party from claiming compensation

for damage in an amount exceeding the amount provided therein. In this case, where the

infringer committed the infringement of the trademark right or the exclusive right to use

without intent or gross negligence, the court may take these circumstances into consideration

in determining the amount of damages to be awarded.

(Limitation to assertion)

Article 38­2 Where the following trial decisions or rulings have become final and binding after

the final judgment on a litigation pertaining to infringement of the trademark right or the

exclusive right to use or to a claim for payment of money as provided in Article 13­2(1)

(including cases where it is applied mutatis mutandis in Article 68(1)) has become final and

binding, a person who was a party of the said litigation may not claim that the said trial

decisions or rulings have become final and binding in the appeal for retrial against the said

final judgment (including appeals for the purpose of the claim of the compensation for

damages against an obligee of a case of provisional seizure order in which the said litigation

is the case and appeals for the purpose of the claim of the compensation for damages and the

return for unjust enrichment against an obligee of the case of provisional disposition order in

which the said litigation is the case):

(i) appeal/trial decision to the effect that the said trademark registration is to be

invalidated;

(ii) a decision to the effect that the said trademark registration is to be rescinded.

(Mutatis mutandis application of the Patent Act)

Article 39 Articles 103 (Presumption of negligence), 104­2 (Obligation to clarify the specific

condition); 104­3(1) and (2) (Restriction on exercise of rights of patentee, etc.), 105 to 105­6

(Production of documents, etc.; Expert opinion for calculation of damages; Determination of

reasonable damages; Protective order; Rescission of protective order and Notice, etc. of a

request inspection of record, etc.) and 106 (Measures to restore credibility) of the Patent Act

shall apply mutatis mutandis to the infringement of a trademark right and an exclusive right

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to use.

Section 3 Registration Fees

(Registration fees)

Article 40 (1) A person obtaining the registration of establishment of a trademark right shall pay

as a registration fee for each trademark registration the amount of 28,200 yen multiplied by

the number of classes (referring to classes of goods and services provided by Cabinet Order

provided for in Article 6(2), to which the designated goods or designated services belong; the

same shall apply hereinafter).

(2) A person filing a request for the registration of renewal of the duration of a trademark right

shall pay as a registration fee for each trademark registration the amount of 38,800 yen

multiplied by the number of classes.

(3) The preceding two paragraphs shall not apply to trademark rights belonging to the State.

(4) Where a trademark right is jointly owned by the State and a person or persons other than the

State, and the portion of their respective shares of the said trademark right has been agreed,

notwithstanding paragraphs (1) and (2), the registration fee provided for in the said

paragraphs shall be the amount of the registration fee provided in the said paragraphs

multiplied by the total ratio of the share of each person other than the State, which shall be

paid by the person or persons other than the State.

(5) Any fractional figures of the registration fee calculated in accordance with the preceding

paragraph smaller than 10 yen, if any, shall be discarded.

(6) The registration fee provided for in paragraphs (1) and (2) shall be paid by patent revenue

stamps as provided by Ordinance of the Ministry of Economy, Trade and Industry; provided,

however, that the payment may be made in cash if permitted under the Ordinance of the

Ministry of Economy, Trade and Industry.

(Time limit for payment of registration fees)

Article 41 (1) The registration fee under Article 40(1) shall be paid within 30 days from the

service of a transcript of an examiner's decision or an appeal/trial decision to the effect that a

trademark is to be registered.

(2) Upon the request of a person required to pay the registration fee, the Commissioner of the

Patent Office may extend the period of time provided in the preceding paragraph by a

maximum of 30 days.

(3) Where a person required to pay the registration fee is unable to pay the registration fee

within the time limit under paragraph (1) (where the time limit under the preceding paragraph

34

is extended, the extended time limit), the said person may, in accordance with Ordinance of

the Ministry of Economy, Trade and Industry, pay the said registration fee only within the

time limit as provided in Ordinance of the Ministry of Economy, Trade and Industry, even

after the expiration of the time limit.

(4) Where, due to reasons beyond the control of a person required to pay a registration fee, the

person is unable to pay the registration fee within the time limit for payment of the

registration fee provided in the preceding paragraph, the said person may, notwithstanding

the provisions of the said paragraph, pay the registration fee within 14 days (two months for

resident abroad) from the date on which the reasons for not paying ceased to be applicable,

but not later than six months after the expiration of the said time limit.

(5) The registration fee under Article 40(2) shall be paid at the time of filing of a request for

renewal of registration.

(Payment of registration fee by installments)

Article 41­2 (1) Notwithstanding Article 40(1), a person obtaining a registration of

establishment of a trademark right may pay the prescribed registration fee by installments. In

this case, 16,400 yen multiplied by the number of classes shall be paid for each trademark

registration within 30 days from the service of a transcript of an examiner's decision or

appeal/trial decision to the effect that a trademark is to be registered, and an additional 16,400

yen multiplied by the number of classes shall be paid for each trademark registration no later

than five years prior to the expiration of the duration of the trademark right.

(2) Upon the request of a person required to pay the registration fee to be paid within 30 days

from the service of a transcript of an examiner's decision or appeal/trial decision to the effect

that a trademark is to be registered has been made under the preceding paragraph (hereinafter,

referred to as "an earlier­installation registration fee"), the Commissioner of the Patent Office

may extend the time limit as provided in the said paragraph by a period not exceeding 30

days.

(3) Where a person required to pay an earlier­installment registration fee is unable to pay the fee

within the time limit during which the said person is required to pay the fee (where the time

limit under the preceding paragraph is extended, within the extended time limit), the said

person may, in accordance with Ordinance of the Ministry of Economy, Trade and Industry,

pay the earlier­installment registration fee only within the time limit as provided in Ordinance

of the Ministry of Economy, Trade and Industry, even after the expiration of the time limit.

(4) Where, due to reasons beyond the control of a person required to pay an earlier­installment

registration fee, the person is unable to pay the earlier­installment registration fee within the

time limit for payment of the fee as provided in the preceding paragraph, the said person may,

35

notwithstanding the provision of the said paragraph, pay the registration fee within 14 days

(two months for a resident abroad) from the date on which the reasons for not paying the fee

ceased to be applicable, but not later than six months after the expiration of the said time

limit.

(5) Where a person required to pay a registration fee due and payable no later than five years

prior to the expiration of the duration of the trademark right under paragraph (1) (hereinafter

referred to as "a later­installment registration fee") is unable to pay the later­installment

registration fee within the time limit during which the said person is required to pay the fee,

the person may make a late payment of the said later­installment registration fee even after

the expiration of the said time limit, but not later than 6 months following the expiration of

the said time limit.

(6) Where the later­installment registration fee and the registration surcharge under Article 43

(3) have not been paid within the time limit for late payment of the later­installment

registration fee under the preceding paragraph, the trademark right shall be deemed to have

been extinguished retroactively upon the day which is five years prior to the expiration of the

duration of the trademark right.

(7) Notwithstanding Article 40(2), a person filing a request for the registration of renewal of the

duration of a trademark right may pay the prescribed registration fee by installments. In this

case, the said applicant shall pay 22,600 yen multiplied by the number of classes for each

trademark registration at the time of filing of the request for the registration of renewal, and

an additional 22,600 yen multiplied by the number of classes for each trademark registration

no later than five years prior to the expiration of the duration of the trademark right.

(8) The provisions of paragraphs (5) and (6) shall apply mutatis mutandis to the case where late

payment of the registration fee to be paid not later than five years prior to the expiration of

the duration of the trademark right under the preceding paragraph, is made. In this case, the

term "paragraph (1)" in paragraph (5) shall be deemed to be replaced with "paragraph (7)".

(9) The provisions of paragraphs (3) to (5) of Article 40 shall apply mutatis mutandis to

paragraphs (1) and (7).

(Restoration of a trademark right by late payment of a later­installment

registration fee)

Article 41­3 (1) Where the original holder of a trademark right which was deemed to

have been extinguished pursuant to Article 41­2(6) has justifiable reasons for

having been unable to pay the later­installment registration fee and the

registration surcharge under Article 43(3) within the time limit for late payment of

the later­installment registration fee as provided in the paragraph (5) of the said

36

Article, the said original holder may make a late payment for such later­installment

registration fee and registration surcharge only within the time limit provided by

Ordinance of the Ministry of Economy, Trade and Industry.

(2) Where a late payment of the later­installment registration fee and the

registration surcharge under Article 43(3) is made under the preceding paragraph,

the trademark right shall be deemed to have been existed retroactively since the

day preceding the five years prior to the expiration of the duration.

(3) The provisions of the preceding two paragraphs shall apply mutatis mutandis to

the case where late payment of the registration fee to be paid not later than five

years prior to the expiration of the duration of the trademark right and the

registration surcharge under Article 43(3) are made under paragraph (7) of the

preceding Article.

(Limitations of effects of trademark right restored by late payment of a

later­installment registration fee, etc.)

Article 41­4 The effects of a trademark right restored pursuant to paragraph (2) of

the preceding Article may not be effective against the following acts conducted after

the expiration of the time limit for the late payment of a later­installment

registration fee but before the registration that the trademark right is deemed to

have been existed pursuant to paragraph (2) of the preceding Article, under Article

41­2(5):

(i) the use of the registered trademark in connection with the designated goods or

the designated services; and

(ii) the acts provided for in each item of Article37.

(2) The provision of the preceding paragraph shall apply mutatis mutandis to the

effects of a trademark right restored pursuant to paragraph (2) of the preceding

Article as applied mutatis mutandis pursuant to paragraph (3) of the preceding

Article.

(Payment of registration fee by interested person)

Article 41­5 (1) Any interested person may make payment of the registration fee (excluding the

registration fee due and payable at the time of filing of a request for renewal of registration)

even against the intention of the person by whom the said fee is to be paid.

(2) An interested person who makes payment of the registration fee in accordance with the

preceding paragraph may demand payment to reimburse the expense thereof from the person

by whom the said fee was to have been paid, to the extent that the said person receives actual

37

benefits therefrom.

(Refund of registration fee already paid)

Article 42 (1) Only the following registration fees are refundable upon request by a payee:

(i) a registration fee paid in excess, or in error; or

(ii) a registration fee due and payable no later than five years prior to the expiration

of the duration of the trademark right under Article 41­2(1) or 41­2(7) (limited to

the case where a rescission decision under Article 43­3(2) or appeal/trial decision

to the effect that a trademark registration is to be invalidated becomes final and

binding no later than five years prior to the expiration of the duration of the

trademark right).

(2) No refund of any registration fee under the preceding paragraph may be requested after the

lapse of one year from the day on which the registration fee is paid in the case of registration

fees provided for in item (i) of the preceding paragraph and six months from the day on

which a rescission decision under Article 43­3(2) or an appeal/trial decision becomes final

and binding in the case of registration fees provided for in item (ii) of the preceding

paragraph.

(3) Where, due to reasons beyond the control of the person, the person filing a request for

refund a registration fee is unable to file the request within the time limit as provided in

paragraph (1), the said person may, notwithstanding the said paragraph, file the request

within 14 days (two months for resident abroad) from the date on which the reasons for not

filing ceased to be applicable, but not later than six months after the expiration of the said

time limit.

(Registration surcharge)

Article 43 (1) A person filing a request for renewal of registration under Article 20(3) or 21(1)

shall pay, in addition to the registration fee due and payable under Article 40(2), a surcharge

in an amount equivalent to the registration fee.

(2) Where Article 41­2(7) is applicable, a person filing a request provided in the preceding

paragraph shall pay, in addition to the registration fee due and payable at the time of filing of

the request for registration of renewal under Article 41­2(7), a surcharge in an amount

equivalent to the registration fee.

(3) Where Article 41­2(5) (including cases where it is applied mutatis mutandis pursuant to

paragraph (8) of the same Article) is applicable, the holder of trademark right shall pay, in

addition to the registration fee due and payable no later than five years prior to the expiration

of the duration of the trademark right under paragraph (1) or (7) of the same Article, a

38

surcharge in an amount equivalent to the registration fee.

(4) The surcharges under the preceding three paragraphs shall be paid by patent revenue stamps

as provided by Ordinance of the Ministry of Economy, Trade and Industry; provided,

however, that the payment may be made in cash, if permitted by Ordinance of the Ministry of

Economy, Trade and Industry.

CHAPTER IV­2 OPPOSITION TO REGISTRATION

(Opposition to registration)

Article 43­2 Any person may file with the Commissioner of the Patent Office an opposition to

registration within two months from the date of publication of the bulletin containing the

trademark, on the grounds that the trademark registration falls under any of the following

items; in this case, an opposition to registration may be filed for each of designated goods or

designated services if the relevant trademark has been registered in connection with two or

more designated goods or designated services:

(i) where the trademark registration has been made in violation of Article 3, 4(1),

7­2(1), 8(1), 8(2), 8(5), 51(2) (including its mutatis mutandis application under

Article 52­2(2)), 53(2) of this Act or Article 25 of the Patent Act as applied mutatis

mutandis under Article 77(3) of this Act; and

(ii) where the trademark registration has been made in violation of a treaty.

(iii) where the trademark registration has been made for an application for

trademark registration not satisfying the requirements under Article 5(5).

(Decision)

Article 43­3 (1) An examination and decision on an opposition to registration shall be

conducted by a panel consisting of three or five administrative judges.

(2) Where the administrative judges find the trademark registration pertaining to an opposition

to registration falls under any of the items of Article 43­2, the administrative judges shall

render a decision to the effect that the trademark registration is to be rescinded (hereinafter

referred to as "rescission decision").

(3) Where the rescission decision becomes final and binding, the relevant trademark right shall

be deemed never to have existed.

(4) Where the administrative judges find the trademark registration pertaining to an opposition

to registration does not fall under any of the items of Article 43­2, the administrative judges

shall render a decision to the effect that the trademark registration is to be maintained.

(5) The decision under the preceding paragraph shall not be subject to appeal.

39

(Formal requirements for filing an opposition, etc.)

Article 43­4 (1) A person filing an opposition to registration of a trademark shall submit to the

Commissioner of the Patent Office a written opposition stating the following matters:

(i) the name and the domicile or residence of the opponent to the registration and a

representative(s) thereof;

(ii) the indication of the trademark registration pertaining to the opposition to

registration; and

(iii) the grounds of the opposition to registration and the indication of supporting

evidence.

(2) An amendment of the written opposition to registration submitted under the preceding

paragraph shall not change the gist thereof. Notwithstanding, this provision shall not apply to

any amendment with respect to the matters provided for in item (iii) of the preceding

paragraph; provided that such amendment is made no later than thirty days from the lapse of

the term provided in Article 43­2.

(3) The Commissioner of the Patent Office may, upon request or ex officio, extend the period

provided in the preceding paragraph for a person in a remote area or an area with

transportation difficulties.

(4) The chief administrative judge shall transmit a copy of the written opposition to the holder

of trademark right.

(5) Article 46(4) shall apply mutatis mutandis to the case where an opposition to registration is

filed.

(Designation of administrative judges, etc.)

Article 43­5 Articles 136(2) and 137 to 144 of the Patent Act as applied mutatis mutandis under

Article 56(1) of this Act shall apply mutatis mutandis to the panel under Article 43­3(1) and

the administrative judges constituting thereof.

(Trial Clerk)

Article 43­5 (2) The Commissioner of the Patent Office shall designate a trial clerk for each

case of opposition to registration.

(2) The provisions of paragraphs (3) to (5) of Article 144­2 of the Patent Act as applied mutatis

mutandis under Article 56(1) of this Act shall apply mutatis mutandis to the trial clerk

provided for in the preceding paragraph.

(Proceedings of examination, etc.)

40

Article 43­6 (1) The examination of the opposition to registration shall be conducted by

documentary examination; provided, however, that where a petition is filed by the holder of

trademark right, the opponent, an intervenor or ex officio, the chief administrative judge may

decide to conduct the proceedings by oral examination.

(2) Paragraphs (3) to (5) of Articles 145, 146 and 147 of the Patent Act as applied mutatis

mutandis under Article 56(1) of this Act shall apply mutatis mutandis to an oral examination

provided for in the proviso to the preceding paragraph.

(3) Where any ground for suspension or termination of procedures is applicable to one of the

joint holders of trademark right for an examination and decision on an opposition to

registration, the said suspension or termination shall have effect on all such joint holders of

trademark right.

(Intervention)

Article 43­7 (1) In an examination to render a decision on an opposition to registration, any

person who has a right relating to the trademark right or any other person who has an interest

in the trademark right may intervene in the examination in order to assist the holder of

trademark right until the decision on the opposition to registration is rendered.

(2) Articles 148(4), 148(5) and 149 of the Patent Act as applied mutatis mutandis under Article

56(1) of this Act shall apply mutatis mutandis to the intervenor provided for in the preceding

paragraph.

(Examination and preservation of evidence)

Article 43­8 Articles 150 and 151 of the Patent Act as applied mutatis mutandis under Article

56(1) of this Act shall apply mutatis mutandis to the examination and preservation of

evidence in the examination of the opposition to registration.

(Ex officio examination)

Article 43­9 (1) In an examination of an opposition to registration, any grounds not pleaded by

the holder of trademark right, the opponent or the intervenor may be examined.

(2) In an examination of an opposition to registration, no examination shall be conducted on any

designated goods or designated services for which the opposition to registration is not raised.

(Joint or separate conduct of oppositions)

Article 43­10 (1) Where two or more oppositions to registration are filed in relation to the same

trademark right, unless special circumstances exist, the examinations thereof shall be

conducted jointly.

41

(2) An examination conducted jointly in accordance with the preceding paragraph may later be

divided.

(Withdrawal of opposition)

Article 43­11 (1) An opposition to registration, once filed, may not be withdrawn after the

notification under Article 43­12 is served.

(2) Article 155(3) of the Patent Act as applied mutatis mutandis under Article 56(2) of this Act

shall apply mutatis mutandis to the withdrawal of an opposition to registration.

(Notification of reasons for rescission)

Article 43­12 Where the chief administrative judge intends to render a rescission decision, the

chief administrative judge shall notify the holder of trademark right and the intervenor of the

reasons for rescission of the trademark registration and give the said parties an opportunity to

submit a written opinion, designating a reasonable time limit.

(Formal requirements of decision)

Article 43­13 (1) The decision with regard to an opposition to registration shall be rendered in

writing stating the following matters:

(i) the case number of the opposition to registration;

(ii) the name and the domicile or residence of the holder of trademark right, the

opponent, the intervenor and their representative(s);

(iii) an indication of the trademark registration on which the decision was rendered;

(iv) the conclusions of and reasons for the decision; and

(v) the date of the decision.

(2) Where a decision has been rendered, the Commissioner of the Patent Office shall serve a

transcript of the decision to the holder of trademark right, the opponent, the intervenor and

persons whose request for intervention in the examination on the opposition to registration

has been refused.

(Scope of final and binding decision)

Article 43­14 A decision with regard to an opposition to registration shall become final and

binding for each case of opposition to registration; provided, however, that the decision with

regard to an opposition to registration filed against the designated goods or designated

services shall become final and binding for each designated goods or services.

(Mutatis mutandis application of provisions concerning appeal/trial)

42

Article 43­15 (1) Articles 133, 133­2, 134(4), 135, 152, 168, paragraphs (3) to (6) of Article 169,

and 170 of the Patent Act as applied mutatis mutandis under Article 56(1) of this Act shall

apply mutatis mutandis to an examination and a decision on an opposition to registration.

(2) Article 43­3(5) of this Act shall apply mutatis mutandis to a decision under Article 135 of

the Patent Act as applied mutatis mutandis under the preceding paragraph.

CHAPTER 5 TRIALS AND APPEALS

(Appeal against examiner's decision of refusal)

Article 44 (1) A person who has received an examiner's decision to the effect that an application

is to be refused and is dissatisfied may file a request for appeal against the examiner's

decision of refusal within three months from the date the transcript of the examiner's decision

has been served.

(2) Where, due to reasons beyond the control of the person, the person filing a request for

appeal pursuant to the preceding paragraph is unable to file the request within the time limit

as provided in the preceding paragraph, the said person may, notwithstanding the said

paragraph, file the request within 14 days (two months for resident abroad) from the date on

which the reasons for not filing ceased to be applicable, but not later than six months after the

expiration of the said time limit.

(Appeal against examiner's decision of dismissal of amendment)

Article 45 (1) Any person who has received a decision of dismissal of amendments under

Article 16­2(1) and is dissatisfied may file a request for appeal against the decision within

three months from the date the transcript of the decision has been served; provided, however,

that this provision shall not apply where a new application for trademark registration

provided in Article 17­3(1) of the Design Act as applied mutatis mutandis pursuant to Article

17­2(1) of this Act is filed.

(2) Article 44(2) shall apply mutatis mutandis to a request for appeal under the preceding

paragraph.

(Invalidation trial of trademark registration)

Article 46 (1) Where a trademark registration falls under any of the following items, a request

for invalidation trial of the trademark registration may be filed; in this case, where the

trademark has been registered in connection with two or more designated goods or designated

services, a request may be filed for each of the designated goods or designated services:

(i) where the trademark registration has been made in violation of Article 3, 4(1),

43

7­2(1), 8(1), 8(2), 8(5), 51(2) (including cases where it is applied mutatis mutandis

pursuant to Article 52­2(2)), 53(2) of this Act or Article 25 of the Patent Act as

applied mutatis mutandis pursuant to Article 77(3) of this Act;

(ii) where the trademark registration has been made in violation of a treaty;

(iii) where the trademark registration has been made for an application for

trademark registration not satisfying the requirements under Article 5(5);

(iv) where the trademark registration has been made on an application for

trademark registration filed by a person who has not succeeded the rights

deriving from the application for trademark registration;

(v) where, after the trademark registration, the holder of trademark right has

become unable to enjoy the trademark right pursuant to Article 25 of the Patent

Act as applied mutatis mutandis pursuant to Article 77(3) of this Act, or the

trademark registration has become in violation of a treaty;

(vi) where, after the trademark registration, the registered trademark has become a

trademark that falls under any of Articles 4(1)(i) to 4(1)(iii), 4(1)(v), 4(1)(vii) and

4(1)(xvi); and

(vii) where, after the trademark registration of a regionally based collective

trademark, the holder of trademark right has ceased to be an Association, etc., or

the registered trademark has ceased to be a trademark well known among

consumers as that indicating goods or services in connection with the business of

the holder of trademark right or its members, or ceases to fall under any of the

items of Article 7­2(1).

(2) A request for a trial under the preceding paragraph may be filed only by an interested

person.

(3) A request for a trial under paragraph (1) may be filed even after the extinguishment of the

trademark right.

Article 46­2 (1) Where a trial decision to the effect that the trademark registration is to be

invalidated becomes final and binding, the trademark right shall be deemed never to have

existed; provided, however, that where the trademark registration falls under any of items (v)

to (vii) of paragraph (1) of Article 46, and a trial decision to the effect that the trademark

registration is to be invalidated becomes final and binding, the trademark right shall be

deemed not to have existed from the time any of items (v) to (vii) of the said paragraph first

became applicable to the trademark registration.

(2) In the case of the proviso to the preceding paragraph, where the time at which any of items

(v) to (vii) of Article 46(1) first became applicable to the trademark registration cannot be

44

specified, the trademark right shall be deemed not to have existed from the date of

registration of the request for invalidation trial of the said trademark registration.

Article 47 (1) Where a trademark registration has been made in violation of Article 3, 4(1)(viii),

4(1)(xi) to 4(1)(xiv), 8(1), 8(2) or 8(5), where a trademark registration has been made in

violation of Article 4(1)(x) or 4(1)(xvii) (excluding the case where a trademark has been

registered for the purpose of unfair competition), where a trademark has been registered in

violation of item (xv) of the said paragraph (excluding the case where a trademark has been

registered for unfair purposes), or where a trademark registration falls under Article 46(1)(iv),

a request for a trial relating to the trademark registration under Article 46(1) may not be filed

after a lapse of five years from the date of registration of the establishment of the trademark

right.

(2) Where a trademark registration has been made in violation of Article 7­2(1) (limited to the

case where the trademark was not well known, as a result of the use of the trademark, among

consumers as that indicating goods or services in connection with the business of the

applicant for the trademark registration or its members) and five years have lapsed from the

date of registration of the establishment of the trademark right, and further the registered

trademark is well known among consumers as that indicating goods and services in

connection with the business of the holder of trademark right or its members, a request for a

trial pertaining to the trademark registration under Article 46(1) may not be filed.

Article 48 and Article 49 Deleted

(Trial for rescission of trademark registration)

Article 50 (1) Where a registered trademark (including a trademark deemed identical from

common sense perspective with the registered trademark, including a trademark consisting of

characters identical with the registered trademark but in different fonts, a trademark that is

written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic

characters, from the registered trademark but identical with the registered trademark in terms

of pronunciation and concept, and a trademark consisting of figures that are considered

identical in terms of appearance as those of the registered trademark; hereinafter the same

shall apply in this article) has not been used in Japan in connection with any of the designated

goods and designated services for three consecutive years or longer by the holder of

trademark right, the exclusive right to use or non­exclusive right to use, any person may file a

request for a trial for rescission of such trademark registration in connection with the relevant

designated goods or designated services.

45

(2) Where a request for a trial under the preceding paragraph is filed, unless the demandee

proves that any of the holder of trademark right, exclusive right to use or non­exclusive right

to use has used the registered trademark in Japan in connection with any of the designated

goods or designated services pertaining to the request within three years prior to the

registration of the request for the trial, the holder of trademark right may not prevent the

rescission of the trademark registration in connection with the relevant designated goods or

designated services; provided, however, that this shall not apply where the demandee shows

just causes for non­use of the registered trademark in connection with the relevant designated

goods or designated services.

(3) Where the registered trademark in connection with the designated goods or designated

services pertaining to the request under paragraph (1) has been used in Japan by any of the

holders of trademark right, exclusive right to use or non­exclusive right to use, during the

period from three months prior to the filing of the request for a trial under paragraph (1) to the

date of the registration of the filing of the request, and where the demandant proves that the

registered trademark has been used after the user became aware of the fact that the said

request for a trial would be filed, the use of the registered trademark shall not fall under the

use of the registered trademark provided in paragraph (1); provided, however, that this shall

not apply to the case where the demandee shows just causes for the use of the registered

trademark.

Article 51 (1) Where a holder of trademark right intentionally uses, either a trademark similar to

a registered trademark in connection with the designated goods or designated services, or a

registered trademark in connection with goods or services similar to the designated goods or

designated services or a trademark similar thereto, in a manner that misleads as to the quality

of the goods or services or causes confusion in connection with the goods or services

pertaining to a business of another person, any person may file a request for a trial for

rescission of the trademark registration.

(2) The previous holder of trademark right may not be granted a registration of the same

trademark or of a trademark similar thereto in connection with the designated goods or

designated services for which the trademark registration has been rescinded, or in connection

with goods or services similar thereto, until after a lapse of five years from the date the trial

decision to the effect that the trademark registration is to be rescinded under the preceding

paragraph becomes final and binding.

Article 52 A request for a trial under Article 51(1) may not be filed after the lapse of five years

from the date on which the holder of trademark right ceased to use the trademark in the

46

manner provided in the said paragraph.

Article 52­2 (1) Where a trademark right to a similar registered trademark to be used in

connection with identical goods or services, or a trademark right to an identical or similar

registered trademark to be used in connection with similar goods or services becomes owned

by a different holder of trademark right as a result of transfer of the trademark right, if the

holder of trademark right of one of the registered trademarks uses, for the purpose of unfair

competition, the registered trademark for its designated goods or designated services in a

manner that causes confusion in connection with the goods or services pertaining to the

business of the holder of trademark right, exclusive right to use or non­exclusive right to use

of the other registered trademark, any person may file a request for a trial for rescission of the

trademark registration.

(2) Articles 51(2) and 52 shall apply mutatis mutandis to a trial under the preceding paragraph.

Article 53 (1) Where a holder of exclusive right to use or non­exclusive right to use uses a

registered trademark in connection with the designated goods or designated services or in

connection with goods or services similar thereto, or a trademark similar thereto, in a manner

that misleads as to the quality of the goods or services or causes confusion in connection with

the goods or services pertaining to the business of another person, any person may file a

request for a trial for rescission of the trademark registration; provided, however, that this

shall not apply to the case where the holder of trademark right was not aware of the fact and

using due care.

(2) The previous holder of trademark right, exclusive right to use or non­exclusive right to use

who used the trademark in a manner provided in the preceding paragraph may not be granted

a registration of the same trademark or of a trademark similar thereto in connection with the

designated goods or designated services for which the trademark registration has been

rescinded, or in connection with goods or services similar thereto, until after the lapse of five

years from the date the trial decision to the effect that the trademark registration is to be

rescinded under the preceding paragraph becomes final and binding.

(3) Article 52 shall apply mutatis mutandis to a trial under paragraph (1).

Article 53­2 Where a registered trademark is a trademark pertaining to a right to a trademark

(limited to a right equivalent to a trademark right) held by a person in a country of the Union

to the Paris Convention, a member of the World Trade Organization or a Contracting Party to

the Trademark Law Treaty or a trademark similar thereto, and the designated goods or

designated services thereof are goods or services pertaining to the said right or goods or

services similar thereto, and further, the application for trademark registration was filed

without the approval of the person who has the right pertaining to the trademark, without a

47

just cause, by his/her agent or representative or by his/her former agent or representative

within one year prior to the filing date of the trademark registration, the person who has the

right pertaining to the trademark may file a request fora trial for rescission of the trademark

registration.

Article 53­3 A request fora trial under Article 53­2 may not be filed after the lapse of five years

from the date on which the establishment of the trademark right has been registered.

Article 54 (1) Where a trial decision to the effect that the trademark registration is to be

rescinded becomes final and binding, the trademark right shall become extinguished

thereafter.

(2) Notwithstanding the preceding paragraph, where a trial decision to the effect that the

trademark registration is to be rescinded becomes final and binding by a trial under Article

50(1), the trademark right shall be deemed to have become extinguished on the date of

registration of the request for a trial under the said paragraph.

Article 55 The provision of Article 46(4) shall apply mutatis mutandis to the case where a

request for a trial is filed under Article 50(1), 51(1), 52­2(1), 53(1) or 53­2.

(Special provisions on appeal against examiner's decision of refusal)

Article 55­2 (1) The provisions of Articles 15­2 and 15­3 shall apply mutatis mutandis to the

case where reasons for refusal that are different from those contained in the examiner's

decision are found in the appeal under Article 44(1).

(2) The provision of Article 16 shall apply mutatis mutandis where a request for appeal/trial

under Article 44(1) is found to have reasonable grounds; provided, however, that this

provision shall not apply where appeal/trial decision to the effect that a further examination is

to be carried out under Article 160(1) of the Patent Act as applied mutatis mutandis pursuant

to Article 56(1) of this Act is rendered.

(3) The provisions of Article 16­2 of this Act and Article 17­3 of the Design Act shall apply

mutatis mutandis to appeal/trial under Article 44(1) of this Act. In this case, the term "three

months" in Article 16­2(3) of this Act and Article 17­3(1) of the Design Act shall be deemed

to be replaced with "thirty days" and the term "files a request for appeal/trial under Article

45(1)" in Article 16­2(4) shall be deemed to be replaced with "institutes an action under

Article 63(1)."

(Scope of final and binding appeal/trial decision)

48

Article 55­3 appeal/trial decision shall become final and binding for each appeal/trial case;

provided, however, that the appeal/trial decision of a request for appeal/trial under Article

46(1) of this Act filed for each designated goods or designated services shall become final

and binding for each designated goods or designated services.

(Mutatis mutandis application of the Patent Act)

Article 56 (1) The provisions of Articles 131(1), 131­2(1)(excluding items (ii) and (iii)), 132 to

133­2, 134(1), 134(3), 134(4), 135 to 154, 155(1), 155(2), 156(1), 156(3), 156(4), 157, 158,

160(1), 160(2), 161, 167, 168 to 170 (effect of appeal/trial decision, request for appeal/trial,

administrative judge, appeal/trial procedures in relation to litigation, and costs of appeal/trial)

of the Patent Act shall apply mutatis mutandis to appeal/trial. In this case, the term "ground

for the request as provided in paragraph (1) item (iii) of the preceding Article in the course of

filing a request for appeal/trial other than invalidation trial, or in the event that approval is

granted by the chief administrative judge under the following paragraph" in Article131­2(1)

of the Patent Act shall be deemed to be replaced with "ground for the request as provided in

Article 131(1)(iii) of the Patent Act as applied mutatis mutandis pursuant to Article 56(1) of

this Act in the course of filing a request for appeal/trial other than appeal/trial under Article

46(1) of the Trademark Act" , the term "invalidation trial or invalidation trial of the

registration of extension of duration" in Articles 132(1) and 167 of the Patent Act and the

term "invalidation trial and an invalidation trial of the registration of extension of duration" in

Articles 145(1) and 169(1) of the Patent Act shall be deemed to be replaced with "appeal/trial

under Article 46(1), 50(1), 51(1), 52­2(1), 53(1) or 53­2 of the Trademark Act", the term ", in

appeal/trial other than invalidation trial, notify" in Article 156(1) of the Patent Act shall be

deemed to be replaced with "notify" , the term "appeal against the examiner's decision of

refusal" in Article 161 of the Patent Act and " appeal against an examiner's decision of refusal

and correction trial" in Article 169(3) of the Patent Act shall be deemed to be replaced with

"appeal/trial under Article 44(1) or 45(1) of the Trademark Act".

(2) The provisions of Article 155(3) (Withdrawal of request for trial) of the Patent Act shall

apply mutatis mutandis to a trial under Article 46(1) of this Act.

(Mutatis mutandis application of the Design Act)

Article 56­2 The provision of Article 51 of the Design Act shall apply mutatis mutandis to an

appeal under Article 45(1) of this Act.

CHAPTER 6 RETRIALAND LITIGATION

49

(Request for retrial)

Article 57 (1) A party or intervener in the case may file a request for a retrial against a final and

binding rescission decision or a final and binding appeal/trial decision.

(2) The provisions of Articles 338(1), 338(2) and 339 (grounds for retrial) of the Code of Civil

Procedure (Act No. 109 of 1996) shall apply mutatis mutandis to a request for appeal/trial

under the preceding paragraph.

Article 58 (1) Where the demandant of appeal/trial in conspiracy with the demandee has caused

appeal/trial decision to be rendered for the purpose of harming the right or interest of a third

party, the third party may file a request for a retrial against the final and binding appeal/trial

decision.

(2) A request for a retrial under the preceding paragraph shall be filed against the demandant

and the demandee in the appeal/trial as joint demandees.

(Limitations of effects of trademark right restored by a retrial)

Article 59 Where a trademark right pertaining to a rescinded or invalidated trademark

registration has been restored by a retrial, the trademark right shall have no effect on any of

the following acts:

(i) the use of the registered trademark in good faith in connection with the

designated goods or designated services after the rescission decision or

appeal/trial decision became final and binding but before the registration of the

request for a retrial; and

(ii) the acts listed in each of the items in Article 37 committed in good faith after the

rescission decision or appeal/trial decision became final and binding but before

the registration of the request for a retrial.

Article 60 (1) Where a trademark right pertaining to a rescinded or invalidated trademark

registration has been restored by a retrial or, where the establishment of a trademark right

with respect to an application for trademark registration refused by appeal/trial decision has

been registered through a retrial, and where a person, after the rescission decision or

appeal/trial decision becomes final and binding but before the registration of a request for a

retrial, uses the registered trademark or a trademark similar thereto in Japan in good faith in

connection with the designated goods or designated services or in connection with goods or

services similar thereto, and as a result, such trademark has become well known among

consumers as that indicating goods or services pertaining to the business of the person at the

time of registration of the filing of a request for a retrial, the person shall have the right to use

50

the trademark in connection with such goods or services as far as the said person

continuously uses the trademark for such goods or services. The same shall apply to those by

whom such business is succeeded.

(2) The provision of Article 32(2) shall apply mutatis mutandis to the preceding paragraph.

(Mutatis mutandis application of provisions concerning appeal/trial)

Article 60­2 (1) The provisions of Articles 43­3, 43­5 to 43­9 and 43­12 to 43­15 of this Act,

Article 131(1), the main clause of Article 131­2(1), 132(3), 154, 155(1) and 156(1), 156(3),

156(4) of the Patent Act as applied mutatis mutandis pursuant to Article 56(1) of this Act, and

Article 155(3) of the Patent Act as applied mutatis mutandis pursuant to Articles 56(2) of this

Act shall apply mutatis mutandis to a retrial against a final and binding rescission decision.

(2) The provision of Article 55­2 shall apply mutatis mutandis to a retrial against a final and

binding appeal/trial decision on appeal/trial under Article 44(1).

(3) The provisions of Articles 55­3 and 56­2 shall apply mutatis mutandis to a retrial against a

final and binding appeal/trial decision on appeal/trial under Article 45(1).

(4) The provision of Article 55­3 shall apply mutatis mutandis to a retrial against a final and

binding appeal/trial decision on appeal/trial under Article 46(1), Article 50(1), Article 51(1),

Article 52­2(1), Article 53(1) or Article 53­2.

(Mutatis mutandis application of the Patent Act)

Article 61 The provisions of Article 173 (Time limit for request for retrial) and Articles 174(3)

and 174(5) (Application mutatis mutandis of provisions regarding appeal/trial, etc.) of the

Patent Act shall apply mutatis mutandis to a request for a retrial. In this case, the term

"Article 167 to 168" in paragraph (3) of the said Article shall be deemed to be replaced with

"Article 167, 168", the term "invalidation trial or invalidation trial of the registration of

extension of the duration" in Article 174(2) of the Patent Act shall be deemed to be replaced

with " appeal/trial under Article 46(1), 50(1), 51(1), 52­2(1), 53(1) or 53­2 of the Trademark

Act".

(Mutatis mutandis application of the Design Act)

Article 62 (1) The provision of Article 58(2) (Mutatis mutandis application of provisions

concerning appeal/trial) of the Design Act shall apply mutatis mutandis to a retrial against a

final and binding appeal/trial decision on appeal/trial under Article 44(1) of this Act. In this

case, the term "the main clause of Article 167­2, 168" in Article 58(2) of the Design Act shall

be deemed to be replaced with "Article 168."

(2) The provision of Article 58(3) of the Design Act shall apply mutatis mutandis to a retrial

51

against a final and binding appeal/trial decision on appeal/trial under Article 45(1) of this Act.

In this case, the term "the main clause of Article 167­2, 168" in Article 58(3) of the Design

Act shall be deemed to be replaced with "Article 168."

(Actions against appeal/trial decisions, etc.)

Article 63 (1) The Tokyo High Court shall have exclusive jurisdiction over any action against a

rescission decision or appeal/trial decision, an action against a ruling to dismiss an

amendment under Article 16­2(1) as applied mutatis mutandis pursuant to Article 55­2(3)

(including cases where it is applied mutatis mutandis pursuant to Article 60­2(2)) and an

action against a ruling to dismiss a written opposition or a written request for appeal/trial or

retrial.

(2) The provisions of paragraphs (2) to (6) of Article 178 (time limit for institution of action,

etc.), 179 to 182 (appropriate party as defendant, notice of institution of action, opinion of the

Commissioner of the Patent Office in litigation rescinding the appeal/trial decision, rescission

of the appeal/trial decision or ruling and delivery of original copy, etc. of judgment) of the

Patent Act shall apply mutatis mutandis to the actions under the preceding paragraph. In this

case, the term "invalidation trial or invalidation trial of the registration of extension of the

during" in Article 179 of the Patent Act shall be deemed to be replaced with "appeal/trial

under Article 46(1), 50(1), 51(1), 52­2(1), 53(1) or 53­2 of the Trademark Act."

(Relationship between objection and litigation)

Article 63­2 The provision of Article 184­2 (Relationship between (administrative) objection

and litigation) of the Patent Act shall apply mutatis mutandis to an action demanding the

rescission of measures (excluding measures provided in Article 77(7)) imposed by this Act or

an order thereunder.

CHAPTER 7 DEFENSIVE MARK

(Requirements for defensive mark registration)

Article 64 (1) Where a registered trademark pertaining to goods is well known among

consumers as that indicating the designated goods in connection with the business of a holder

of trademark right, the holder of trademark right may, where the use by another person of the

registered trademark in connection with goods other than the designated goods pertaining to

the registered trademark or goods similar thereto or in connection with services other than

those similar to the designated goods is likely to cause confusion between the said other

person's goods or services and the designated goods pertaining to his/her own business,

52

obtain a defensive mark registration for the mark identical with the registered trademark in

connection with the goods or services for which the likelihood of confusion exists.

(2) Where a registered trademark pertaining to services is well known among consumers as that

indicating the designated services in connection with the business of a holder of trademark

right, the holder of trademark right may, where the use by another person of the registered

trademark in connection with services other than the designated services pertaining to the

registered trademark or services similar thereto or in connection with goods other than those

similar to the designated services is likely to cause confusion between the said other person's

services or goods and the designated services pertaining to his/her own business, obtain a

defensive mark registration for the mark identical with the registered trademark in connection

with the services or goods for which the likelihood of confusion exists.

(3) For the purpose of the application of the preceding two paragraphs in relation to defensive

mark registrations pertaining to a trademark right pertaining to a regionally based collective

trademark, the term "his/her own" in the said paragraphs shall be deemed to be replaced with

"its own or its members' ."

(Conversion of application)

Article 65 (1) An applicant for trademark registration may convert an application for trademark

registration into an application for defensive mark registration.

(2) The conversion of an application under the preceding paragraph may not be made after the

examiner's decision or the appeal/trial decision on the application for trademark registration

becomes final and binding.

(3) The provisions of Articles 10(2), 10(3) and 11(5) shall apply mutatis mutandis to the

conversion of an application under paragraph (1).

(Duration of right based on defensive mark registration)

Article 65­2 (1) The duration of a right based on defensive mark registration shall expire after

ten years from the date of registration of the establishment of such right.

(2) The duration of a right based on defensive mark registration may be renewed by filing an

application for registration of renewal; provided, however, that this shall not apply to the case

where the registered defensive mark becomes unregistrable as a defensive mark pursuant to

Article 64.

(Registration of renewal of duration of right based on defensive mark registration)

Article 65­3 (1) A person filing an application for registration of renewal of the duration of a

right based on defensive mark registration shall submit to the Commissioner of the Patent

53

Office an application stating the following matters:

(i) the name and the domicile or residence of the applicant;

(ii) the registration number of the defensive mark registration; and

(iii) in addition to those listed in the preceding two items, matters provided by

Ordinance of the Ministry of Economy, Trade and Industry.

(2) An application for registration of renewal shall be filed during the period from six months

prior to the expiration of the duration of the right based on defensive mark registration to the

date of expiration thereof.

(3) Where a person filing an application for registration of renewal of the duration of a right

based on defensive mark registration has justifiable reasons for having been unable to file the

application for registration of renewal within the time limit for such application pursuant to

the preceding paragraph, the person may file such application only within the time limit

provided by Ordinance of the Ministry of Economy, Trade and Industry.

(4) Where an application for registration of renewal of the duration of a right based on defensive

mark registration is filed, the duration shall be deemed to have been renewed upon expiration

of the duration (where an application is filed under the preceding paragraph, upon filing of

the application); provided, however, that this shall not apply to the case where the examiner's

decision or appeal/trial decision to the effect that the application is to be refused becomes

final and binding or the renewal of the duration of a right based on defensive mark

registration is registered.

Article 65­4 (1) Where an application for registration of renewal of the duration of a right based

on defensive mark registration falls under any of the following items, the examiner shall

render a decision to the effect that the application is to be refused:

(i) the registered defensive mark pertaining to application is filed becomes

unregistrable as a defensive mark pursuant to Article 64; and

(ii) the applicant is not a person who has the right based on the defensive mark

registration.

(2) Where no reasons for refusal are found in connection with an application for registration of

renewal of the duration of a right based on defensive mark registration, the examiner shall

render a decision to the effect that the renewal is to be registered.

Article 65­5 The provisions of Articles 14 and 15­2 of this Act and Articles 48 (Exclusion of

examiners) and 52 (Formal requirements for examination) of the Patent Act shall apply

mutatis mutandis to an examination of an application for registration of renewal of the

duration of a right based on defensive mark registration.

54

(Registration of renewal of duration of right based on defensive mark registration)

Article 65­6 (1) Where a registration fee under Article 65­7(2) is paid, the renewal of the

duration of the right based on defensive mark registration shall be registered.

(2) Upon registration under the preceding paragraph, the following matters shall be published in

the trademark bulletin:

(i) the name and the domicile or residence of the person who has the right based on

defensive mark registration;

(ii) the registration number and the date of registration of renewal; and

(iii) other necessary matters in addition to those listed in the preceding two items.

(Registration fees)

Article 65­7 (1) A person obtaining a registration of establishment of a right based on defensive

mark registration shall pay as a registration fee for each defensive mark registration the

amount of 28,200 yen multiplied by the number of classes.

(2) A person obtaining a registration of renewal of the duration of a right based on defensive

mark registration shall pay as a registration fee for each defensive mark registration the

amount of 33,400 yen multiplied by the number of classes.

(3) The provisions of paragraphs (3) to (5) of Article 40 shall apply mutatis mutandis to the

preceding two paragraphs.

(Time limit for payment of registration fee)

Article 65­8 (1) A registration fee under Article 65­7(1) shall be paid within 30 days from the

service of a transcript of the examiner's decision or the appeal/trial decision to the effect that

a defensive mark is to be registered.

(2) A registration fee under Article 65­7(2) shall be paid within 30 days from the service of a

transcript of the examiner's decision or the appeal/trial decision to the effect that the renewal

of the duration of the right based on defensive mark registration is to be registered (where the

service is made prior to the expiration of the duration of the right based on defensive mark

registration, the date of expiration of the duration).

(3) The Commissioner of the Patent Office may extend the period of time provided in the

preceding two paragraphs by a maximum of 30 days upon the request of a person who is

required to pay the registration fee.

(4) Where a person required to pay a registration fee is unable to pay the registration fee within

the time limit under paragraph (1) or (2) (where the time limit under the preceding paragraph

is extended, the extended time limit), the said person may, in accordance with Ordinance of

55

the Ministry of Economy, Trade and Industry, pay the said registration fee only within the

time limit as provided in Ordinance of the Ministry of Economy, Trade and Industry, even

after the expiration of the time limit.

(5) Where, due to reasons beyond the control of a person, the person paying a registration fee is

unable to pay the registration fee within the time limit for payment of registration fees

pursuant to the preceding paragraph, the said person may, notwithstanding the said paragraph,

pay the registration fee within 14 days (two months for resident abroad) from the date on

which the reasons for not paying ceased to be applicable, but not later than six months after

the expiration of the said time limit.

(Payment of registration fees by interested persons)

Article 65­9 (1) Any interested person may make the payment of the registration fee under

Article 65­7(1) or 65­7(2) even against the intention of the person by whom the said fee is to

be paid.

(2) The interested person who makes the payment of the registration fee under the preceding

paragraph may request the person by whom the said payment was to be paid to reimburse the

expense thereof to the extent that the said person receives actual benefits therefrom.

(Refund of registration fee paid in excess or in error)

Article 65­10 (1) A registration fee under Article 65­7(1) or 65­7(2) paid in excess or in error

shall be refunded upon the request of the person that paid them.

(2) No refund of a registration fee may be requested under the preceding paragraph after the

lapse of one year from the date of payment.

(3) Where the person making a request for the refund of a registration fee prescribed in

paragraph (1) is unable to make the request within the period prescribed in the preceding

paragraph due to reasons beyond his/her control, the person may make the request within 14

days (within 2 months for residents abroad) from the date the reason ceased to be applicable

but no later than 6 months after the lapse of the period, notwithstanding the provision of

paragraph (1).

(Incidental nature of right based on defensive mark registration)

Article 66 (1) The right based on defensive mark registration shall become extinguished when

the trademark right relating thereto is divided.

(2) When a trademark right is transferred, the right based on defensive mark registration shall be

transferred with the trademark right relating thereto.

(3) When a trademark right becomes extinguished, the right based on defensive mark

56

registration relating thereto shall become extinguished.

(4) Where a trademark right is deemed to have become extinguished under Article 20(4), the

effects of the right based on defensive mark registration pertaining to the trademark right

restored under Article 21(2) may not extend to the acts provided in each of the items of

Article 67 committed during the period after the expiration of the time limit for the filing of

an application for registration of renewal provided in Article 20(3) but before the registration

of renewal of the duration of the trademark right by an application under Article 21(1).

(5) Where a trademark right is deemed to have been extinguished under Article 41­2(6), the

right based on defensive mark registration pertaining to the trademark right restored under

Article 41­3(2) shall not be effective against the acts provided in each of the items of Article

67 conducted after the expiration of the time limit for making late payment of a

later­installment registration fee but before the registration to the effect that the trademark

right is deemed to have been existed under Article 41­3(2) is made, pursuant to Article

41­2(5).

(6) The provision of the preceding paragraph shall apply mutatis mutandis to the effects of the

right based on defensive mark registration pertaining to the trademark right restored under

Article 41­3(2) as applied mutatis mutandis pursuant to Article 41­3(3).

(Acts deemed to constitute infringement)

Article 67 The following acts shall be deemed to constitute infringement of a trademark right or

an exclusive right to use:

(i) the use of the registered defensive mark in connection with the designated goods

or designated services;

(ii) the possession for the purpose of assignment, delivery or export of the

designated goods affixed with the registered defensive mark on the goods or their

packages;

(iii) the possession or importation of articles affixed with a registered defensive

mark, that are used in the course of the provision of designated services by a

person who receives the said services, for the purpose of the provision of the said

services through use of the said articles;

(iv) the assignment, delivery, or possession or importation for the purpose of

assignment or delivery of articles affixed with a registered defensive mark, that

are used in the course of the provision of designated services by a person who

receives the said services, for the purpose of causing the provision of the said

services through use of the said articles;

(v) the possession of articles indicating a registered defensive mark, for the purpose

57

of using the registered defensive mark in connection with the designated goods or

designated services;

(vi) the assignment, delivery, or possession for the purpose of assignment or delivery,

of articles indicating a registered defensive mark, for the purpose of causing the

registered defensive mark to be used in connection with the designated goods or

designated services; and

(vii) the manufacture or importation of articles indicating a registered defensive

mark, for the purpose of using the registered defensive mark or causing the

registered defensive mark to be used in connection with the designated goods or

designated services.

(Mutatis mutandis application of provisions concerning trademarks)

Article 68 (1) The provisions of Articles 5, 5­2, 6(1), 6(2), 9­2 to 10, 12­2, 13(1), and 13­2 shall

apply mutatis mutandis to an application for defensive mark registration. In this case, the

term "(iii) the designated goods or designated services and the class of the goods or services

provided by Cabinet Order as provided for in Article 6(2)" in Article 5(1) shall be deemed to

be replaced with "(iii) the designated goods or designated services and the class of the goods

or services provided by Cabinet Order as provided for in Article 6(2), (iv) the registration

number of the trademark registration pertaining to the application for defensive mark

registration," the term "(iv) the designated goods or designated services are not stated" in

Article 5­2(1) shall be deemed to be replaced with "(iv) the designated goods or designated

services are not stated, (v) the registration number of the trademark registration pertaining to

the application for defensive mark registration is not stated" and the term "Article 37" in

Article 13­2(5) shall be deemed to be replaced with "Article 67 (except the part pertaining to

item (i))."

(2) The provisions of Articles 14 to 15­2 and 16 to 17­2 shall apply mutatis mutandis to the

examination of an application for defensive mark registration. In this case, the term "Articles

3, 4(1), 7­2(1), 8(2), 8(5), 51(2) (including cases where it is applied mutatis mutandis

pursuant to Article 52­2(2)), 53(2)" in Article 15(i) shall be deemed to be replaced with

"Article 64", and the term "Articles 5(5), or 6(1) or (2)" in Article 15(iii) shall be deemed to

be replaced with "Article 6(1) or (2)."

(3) The provisions of Article 18, 26 to 28­2, 32 to 33­3, 35, 38­2 and 69 of this Act and Article

104­3(1), (2) of the Patent Act as applied mutatis mutandis pursuant to Article 39 of this Act

shall apply to a right based on defensive mark registration. In this case, the term "the

registration fee under Article 40(1) or the registration fee due and payable within thirty days

from the date of service of a transcript of the examiner's decision or appeal/trial decision to

58

the effect that the trademark is to be registered pursuant to Article 41­2(1)" in Article 18(2)

shall be deemed to be replaced with "the registration fee under Article 65­7(1)."

(4) The provisions of Articles 43­2 (except item (iii)) to 45, 46 (except paragraph (1)(iii) and

(vii)), 46­2, 53­2, 53­3, 54(1) and 55­2 to 56­2 shall apply mutatis mutandis to an opposition

to registration and appeal/trial pertaining to defensive mark registration. In this case, the term

"Articles 3, 4(1), 7­2(1), 8(1), 8(2), 8(5), 51(2) (including cases where it is applied mutatis

mutandis pursuant to Article 52­2(2)), 53(2)" in Articles 43­2(i) and 46(1)(i) shall be deemed

to be replaced with "Article 64" and the term "where ... the registered trademark has become

a trademark that falls under any of Articles 4(1)(i) to 4(1)(iii), 4(1)(v), 4(1)(vii) and

4(1)(xvi)" in Article 46(1)(vi) shall be deemed to be replaced with "where ... the trademark

registration becomes in violation of Article 64."

(5) The provisions of Articles 57 to 63­2 shall apply to a retrial and litigation pertaining to

defensive mark registration. In this case, the term "each of the items in Article 37" in Article

59(ii) shall be deemed to be replaced with "items (ii) to (vii) of Article 67," the term "a

trademark right pertaining to ... trademark registration" in Article 60 shall be deemed to be

replaced with "a right based on defensive mark registration in connection with ... defensive

mark registration," the term "an application for trademark registration" in the same article

shall be deemed to be replaced with "an application for the registration of a defensive mark or

an application for the registration of a defensive mark or an application for registration of

renewal of the duration of a right based on defensive mark registration," the term "the

establishment of a trademark right ... has been registered" in the same article shall be deemed

to be replaced with "the establishment of a right based on defensive mark registration or the

renewal of the duration of a right based on defensive mark registration ... has been registered"

and the term "the registered trademark or a trademark similar thereto ... in connection with

the designated goods or designated services or in connection with goods or services similar

thereto" in the same article shall be deemed to be replaced with "a trademark identical with

the registered defensive mark."

CHAPTER 7­2 SPECIAL PROVISIONS UNDER THE PROTOCOL

RELATING TO THE MADRID AGREEMENT

Section 1 Application for international registration

(Application for international registration)

Article 68­2 (1) A Japanese national or a foreign national domiciled or resident (or, in the case

of a juridical person, with a place of business) in Japan who desires to obtain an international

registration (hereinafter referred to as an "application for international registration") provided

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in Article 2(1) of the Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks adopted at Madrid on June 27, 1989 (hereinafter referred

to as the "Protocol") shall file with the Commissioner of the Patent Office an application

(hereinafter referred to as an "application for international registration") pursuant to Article

2(2) of the Protocol based on any of the following items; in this case, where requirements

provided by Ordinance of the Ministry of Economy, Trade and Industry are applicable, two

or more persons may jointly file the application for international registration:

(i) the application for trademark registration or application for defensive mark

registration of the applicant that is pending before the Patent Office (hereinafter

referred to as the "application for trademark registration, etc."); or

(ii) the trademark registration or defensive mark registration of the applicant

(hereinafter referred to as the "trademark registration, etc.").

(2) Any person who desires to file an application for international registration shall submit the

prescribed application and required documents in foreign language pursuant to Ordinance of

the Ministry of Economy, Trade and Industry.

(3) The application shall state the following matters:

(i) the name(s) of the Contracting Party to the Protocol in which the protection of

the trademark pertaining to the application for international registration is

sought; and

(ii) the goods or services in connection with which the protection of the trademark

pertaining to the application for international registration is sought and the class

of the goods and services provided by Cabinet Order in Article 6(2).

(4) Any person who desires to apply Article 3(3) of the Protocol in connection with a trademark

or a mark pertaining to the application for international registration shall state in the

application a statement indicating thereof and the color or the combination of colors claimed

and append to the application copies of the trademark or mark pertaining to the application

for trademark registration, etc., in color, or of the registered trademark or registered defensive

mark in color.

Article 68­3 (1) The Commissioner of the Patent Office shall send the application for

international registration and the required documents to the International Bureau provided in

Article 2(1) of the Protocol (hereinafter referred to as the "International Bureau").

(2) In the case of the preceding paragraph, where the matters stated in the application

correspond to the matters stated in the basic application for trademark registration, etc. or in

the basic trademark registration, etc., the Commissioner of the Patent Office shall state in the

application the fact thereof and the date of receipt of the application for international

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registration.

(3) In the case of paragraph (1), the Commissioner of the Patent Office shall send to the

applicant of the application for international registration a copy of the application for

international registration sent to the International Bureau.

(Subsequent designation)

Article 68­4 The registered holder of international registration may present to the Commissioner

of the Patent Office, pursuant to Ordinance of the Ministry of Economy, Trade and Industry,

a request for territorial extension provided in Article 3ter of the Protocol (hereinafter referred

to as "territorial extension") subsequent to the international registration (hereinafter referred

to as the "subsequent designation.")

(Application for renewal of the duration of international registration)

Article 68­5 The registered holder of international registration may file with the Commissioner

of the Patent Office, pursuant to Ordinance of the Ministry of Economy, Trade and Industry,

an application for renewal of the duration of international registration provided in Article 7(1)

of the Protocol (hereinafter referred to as "renewal of the duration of international

registration").

(Request for recording of change in the ownership of international registration)

Article 68­6 (1) The registered holder or transferee of international registration may, pursuant to

Ordinance of the Ministry of Economy, Trade and Industry, present to the Commissioner of

the Patent Office a request for the recording of a change in the ownership of an international

registration, as provided in Article 9 of the Protocol (hereinafter referred to as "change in the

ownership of international registration").

(2) The request provided in the preceding paragraph may be made for each of the goods or

services listed in the international registration or for each of the Contracting Parties in which

the international registration has effect.

(Mutatis mutandis application of provisions concerning application for trademark

registration)

Article 68­7 Article 17(3) (limited to the part pertaining to item (iii)) and Article 18(1) of the

Patent Act as applied mutatis mutandis pursuant to Article 77(2) of this Act, shall apply

mutatis mutandis to the application for international registration, subsequent designation, an

application for the renewal of the duration of international registration and a request for the

recording of a change in the ownership of international registration.

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(Delegation to Ordinance of the Ministry of Economy, Trade and Industry)

Article 68­8 In addition to the provisions of Articles 68­2 to 68­7, details of matters relating to

the application for international registration, subsequent designation, an application for

renewal of the duration of international registration and a request for the recording of a

change in the ownership of international registration required for the implementation of the

Protocol and the regulations thereunder shall be provided by Ordinance of the Ministry of

Economy, Trade and Industry.

Section 2 Special Provisions pertaining to International Application for

Trademark Registration

(Application for trademark registration based on request for territorial extension)

Article 68­9 (1) Any request for territorial extension to designate Japan shall be deemed to be an

application for trademark registration filed on the date of international registration provided

in Article 3(4) of the Protocol (hereinafter referred to as the "date of international

registration"); provided, however, that in the case of subsequent designation, such request

shall be deemed to be an application for trademark registration filed on the date on which the

subsequent designation pertaining to the international registration pursuant to Article 3ter(2)

of the Protocol(hereinafter referred to as the "date of subsequent designation") is recorded in

the International Register of the International Bureau provided in Article 2(1) (hereinafter

referred to as the "International Register").

(2) Matters stated in the left column of the following table contained in the International

Register pertaining to the international registration designating Japan shall be deemed to be

the matters stated in the right column of the said table contained in the application submitted

pursuant to Article 5(1).

The name and the domicile or residence

of the registered holder of international

registration

The name and the domicile or residence

of the applicant for trademark

registration

The trademark subject to international

registration

The trademark for which registration is

sought

The goods or services listed in the The designated goods or designated

62

international registration and the class

of the goods or services

services and the class of the goods or

services provided by Cabinet Order as

provided for in Article 6(2);

Among matters stated in the

International Register, those required

for the interpretation of the meanings of

statement of the trademark that is a

subject of an international registration

provided by Ordinance of the Ministry of

Economy, Trade and Industry

Detailed description of the trademark

(Special provisions concerning time of filing of international application for

trademark registration)

Article 68­10 (1) Where a registered trademark (hereinafter in this article referred to as a

"registered trademark based on international registration") pertaining to the request for

territorial extension which is deemed to have been an application for trademark registration

pursuant to Article 68­9(1) (hereinafter in this chapter referred to as an "international

application for trademark registration") is identical with the registered trademark prior to the

trademark registration (except registered trademarks based on international registration,

hereinafter referred to in this article as a "registered trademark based on national

registration") and the designated goods or designated services pertaining to the registered

trademark based on international registration overlap with the designated goods or designated

services based on national registration, and further the holder of trademark right of the

registered trademark based on international registration is identical with the holder of

trademark right of the registered trademark based on national registration, the international

application for trademark registration shall be deemed to have been filed on the date of filing

of the application for trademark registration pertaining to the registered trademark based on

national registration to the extent of the scope which is overlapping.

(2) The provisions of paragraphs (3) and (4) of Article 68­32 shall apply mutatis mutandis to the

international application for trademark registration under the preceding paragraph.

(Special provisions concerning time of filing of application)

Article 68­11 For the purpose of application of Article 9(2) to an international application for

trademark registration, the term "at the time of filing of the application for trademark

registration" in the said paragraph shall be replaced with "within thirty days from the date of

63

the international application for trademark registration."

(Special provisions concerning division of application)

Article 68­12 Article 10 shall not apply to an international application for trademark

registration.

(Special provisions concerning conversion of application)

Article 68­13 Articles 11 and 65 shall not apply to an international application for trademark

registration.

(Special provisions concerning matters to be contained in the trademark bulletin

pertaining to laying open of application)

Article 68­14 For the purpose of application of Article 12­2(2) to the international application

for trademark registration, the term "the number and date of the application for trademark

registration" in item (ii) of the said paragraph shall be replaced with "the number and the date

of the international registration (in the case of the international application for trademark

registration pertaining to the subsequent designation, the date of subsequent designation)."

(Special provisions concerning proceedings for priority claim governed by the Paris

Convention, etc.)

Article 68­15 (1) The provisions of paragraphs (1) to (4), and (7) to (9) of Article 43 of the

Patent Act as applied mutatis mutandis upon reading the specified terms in accordance with

Article 13(1) of this Act shall not apply to an international application for trademark

registration.

(2) For the purpose of application of Article 43(1) of the Patent Act as applied mutatis mutandis

pursuant to Article 43­3(3) of the Patent Act as applied mutatis mutandis upon reading the

specified terms in accordance with Article 13(1) of this Act to the international application

for trademark registration, the portion "within the time limit provided by Ordinance of the

Ministry of Economy, Trade and Industry" in the said paragraph shall be replaced with

"within thirty days from the date of the international application for trademark registration."

(Special provisions concerning the right deriving from application for trademark

registration)

Article 68­16 (1) For the purpose of application of Article 34(4) of the Patent Act as applied

mutatis mutandis pursuant to Article 13(2) of this Act to the international application for

trademark registration, the portion ", except in the case of general succession including

64

inheritance, without the Commissioner of the Patent Office." in the said paragraph shall be

replaced with "without notification to the International Bureau."

(2) The provisions of paragraphs (5) to (7) of Article 34 of the Patent Act as applied mutatis

mutandis pursuant to Article 13(2) of this Act shall not apply to an international application

for trademark registration.

(Treatment of international application for trademark registration in the case of

change in the ownership of international registration)

Article 68­17 Where all or some of the goods or services listed in the international registration

are divided and transferred as a result of a change in the ownership of international

registration, the international application for trademark registration shall be deemed to have

become applications for trademark registration with respect to each of the registered holders

after the change.

(Special provisions concerning new application for trademark as amended)

Article 68­18 (1) Article 17­3 of the Design Act as applied mutatis mutandis pursuant to Article

17­2(1) or 55­2(3) (including cases where it is applied mutatis mutandis pursuant to Article

60­2(2)) of this Act shall not apply to an international application for trademark registration.

(2) Article 17­4 of the Design Act as applied mutatis mutandis pursuant to Article 17­2(2) of

this Act shall not apply to an international application for trademark registration.

(Special provisions concerning registration of establishment of trademark right)

Article 68­19 (1) For the purpose of application of Article 18(2) to the international application

for trademark registration, the term "where the registration fee under Article 40(1) or the

registration fee due and payable within thirty days from the date of service of a transcript of

an examiner's decision or a appeal/trial decision to the effect that the trademark is to be

registered under Article 41­2(1) is paid" in the said paragraph shall be replaced with "where

the communication is made by the International Bureau notifying that the payment of the

individual fee in the amount prescribed in Article 68­30(1)(ii) has been recorded in the

International Register."

(2) For the purpose of application of Article 18(3) to the international application for trademark

registration, in item (ii) of the said paragraph the portion "the number and date of the

application for trademark registration" shall be replaced with "the number and the date of

international registration (in the case of the international application for trademark

registration pertaining to the subsequent designation, the date of subsequent designation)" and

in item (v) of the said paragraph the portion "the registration number and the date of

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registration of establishment" shall be replaced with "the number of international registration

and the date of registration of the establishment."

(Effect of the lapse of international registration)

Article 68­20 (1) Where all or a portion of the international registration on which the

international application for trademark registration is based has lapsed, the international

application for trademark registration shall be deemed to have been withdrawn in respect of

all or the portion of the designated goods or designated services that have lapsed.

(2) Where all or a portion of the international registration on which the international

registration is based has lapsed, the trademark right based on such international registration

the establishment of which has been registered under Article 18(2) as applied upon reading

the specified terms in accordance with Article 68­19(1) (hereinafter referred to as the

"trademark right based on international registration") shall be deemed to have lapsed in

respect of all or the portion of the designated goods or designated services that have lapsed.

(3) The preceding two paragraphs shall take effect as of the date the international registration

lapses in the International Register.

(Duration of trademark right based on international registration)

Article 68­21 (1) The duration of a trademark right based on international registration shall

expire after ten years from the date of the international registration (where the duration of the

international registration has been renewed prior to the registration of the establishment of the

trademark right, the date of most recent renewal).

(2) The duration of a trademark right based on international registration may be renewed based

on the renewal of the duration of the international registration.

(3) Where the duration of international registration is renewed, the duration of the trademark

right based on international registration shall be renewed at the time of expiration of the

duration.

(4) Where the duration of international registration is not renewed, the trademark right based on

international registration shall be deemed to have extinguished retroactively at the time of

expiration of the duration.

(Special provisions concerning registration of renewal of duration)

Article 68­22 (1) Articles 19 to 22, 23(1) and 23(2) shall not apply to a trademark right based on

international registration.

(2) For the purpose of application of Article 23(3) relating to a trademark right based on

international registration, the portion "registration as set forth under the preceding two

66

paragraphs" in the said paragraph shall be replaced with "renewal of the duration of

international registration" and the portion "the registration number and the date of registration

of renewal" in item (ii) of the said paragraph shall be replaced with "the number of

international registration and the date of renewal of the duration of international registration."

(Special provisions concerning division of trademark right)

Article 68­23 Article 24 shall not apply to a trademark right based on international registration.

(Special provisions pertaining to transfer of collective trademark right)

Article 68­24 (1) A collective trademark right based on international registration may not be

transferred, unless the document provided in Article 7(3) is submitted.

(2) Article 24­3 shall not apply to a trademark right based on international registration.

(Special provisions concerning waiver of trademark right)

Article 68­25 (1) The holder of trademark right based on international registration may abandon

the trademark right.

(2) Article 97(1) of the Patent Act as applied mutatis mutandis pursuant to Article 35 of this Act

shall not apply to a trademark right based on international registration.

(Special provisions concerning effects of registration of trademark right)

Article 68­26 (1) A transfer, modification due to trust, extinguishment by waiver or restriction

on disposition of a trademark right based on international registration shall have no effect

unless registered.

(2) Articles 98(1)(i) and 98(2) of the Patent Act as applied mutatis mutandis upon reading the

specified terms in accordance with Article 35 of this Act shall not apply to a trademark right

based on international registration.

(Special provisions concerning registration in the Trademark Registry)

Article 68­27 (1) For the purpose of application of Article 71(1)(i) to a trademark right based on

international registration, the term "the establishment, renewal of the duration, division,

transfer, modification, extinguishment, restoration or restriction on disposition of a trademark

right" in the said item shall be replaced with "the establishment, modification due to trust or

restriction on disposition of a trademark right."

(2) The renewal of the duration, the transfer, the modification (excluding a modification due to

trust) or the extinction of a trademark right based on international registration shall have

effect in accordance with that registration in the International Register.

67

(Special provisions concerning amendment of proceedings)

Article 68­28 (1) Any amendment to the designated goods or designated services stated in the

international application for trademark registration may be made only within the time limit

designated in Article 15­2 (including cases where it is applied mutatis mutandis pursuant to

Article 55­2(1) (including cases where it is applied mutatis mutandis pursuant to Article

60­2(2))) or Article 15­3 (including cases where it is applied mutatis mutandis pursuant to

Article 55­2(1) (including cases where it is applied mutatis mutandis pursuant to Article

60­2(2))).

(2) Article 68­40 shall not apply to an international application for trademark registration,

except for matters deemed to be the detailed description of a trademark under Article 68­9(2).

(Extra provisions relating to special provisions on trademark right covering two or

more designated goods or designated services)

Article 68­29 For the purpose of the application of Article 69 relating to a trademark right based

on international registration, the portion "20(4) or 33(1) of this Act, Article 97(1) or 98(1)(i)

of the Patent Act as applied mutatis mutandis pursuant to Article 35 of this Act" in Article 69

shall be replaced with "33(1), 68­25(1) or 68­26(1)" and the term "Article 71(1)(i)" in Article

69 shall be replaced with "71(1)(i) as applied mutatis mutandis upon reading the specified

terms in accordance with Article 68­27(1), 68­27(2)."

(Individual fee for trademark right based on international registration)

Article 68­30 (1) Any person who desires to obtain a registration of establishment of a

trademark right based on international registration shall pay to the International Bureau, as

the individual fee provided in Article 8(7)(a) of the Protocol (hereinafter referred to as the

"individual fee") for each registration in the following amounts:

(i) the amount equivalent to 2,700 yen plus 8,600 yen for each class of the goods and

services; and

(ii) the amount equivalent to 28,200 yen multiplied by the number of classes of the

goods and services.

(2) The individual fee in the amount prescribed in item (i) of the preceding paragraph shall be

paid prior to the international registration and the individual fee in the amount prescribed in

item (ii) thereof shall be paid within the time limit provided by Ordinance of the Ministry of

Economy, Trade and Industry.

(3) Where an examiner's decision or appeal/trial decision is rendered to the effect that a

trademark pertaining to an international application for trademark registration is to be

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registered, the Commissioner of the Patent Office shall notify the International Bureau of the

time limit for the payment of the individual fee pertaining to the application, in the amount

prescribed in item (ii) of paragraph (1).

(4) Where the individual fee in the amount prescribed in items (ii) of paragraph (1) is not paid,

and as a result the international registration on which the international application for

trademark registration is based is rescinded, the said application shall be deemed to have been

withdrawn.

(5) A person requesting the renewal of the duration of a trademark right based on international

registration shall pay as the individual fee to the International Bureau for each registration the

amount equivalent to 38,800 yen multiplied by the number of classes.

(6) Articles 40 to 43 and 76(2) (limited to the portion listed under item (i) of the appended table)

shall not apply to an application for international trademark registration and a trademark right

based on the international registration.

(Delegation to Ordinance of the Ministry of Economy, Trade and Industry)

Article 68­31 In addition to the provisions of Articles 68­9 to 68­30, details of matters required

for the implementation of the Protocol and the regulations thereunder shall be provided by

Ordinance of the Ministry of Economy, Trade and Industry.

SECTION 3 SPECIAL PROVISIONS CONCERNING APPLICATION FOR

TRADEMARK REGISTRATION, ETC.

(Special provisions concerning application for trademark registration after

rescission of international registration)

Article 68­32 (1) Where an international registration relating to a trademark that was the subject

of an international registration designating Japan is rescinded pursuant to Article 6(4) of the

Protocol in respect of all or some of the goods or services listed in the international

registration, the person who was the registered holder of the international registration may

file an application for trademark registration in relation to all or some of the said goods or

services.

(2) Where an application for trademark registration under the preceding paragraph falls under

all of the following items, the application shall be deemed to have been filed on the date of

international registration (where the international registration under the said paragraph is

related to the subsequent designation, the date of the subsequent designation pertaining to the

said international registration) of the international registration under the said paragraph.

(i) the application for trademark registration under the preceding paragraph is

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filed within three months from the date on which the international registration

under the said paragraph was rescinded;

(ii) the trademark for which the registration is sought is identical with the

trademark that was the subject of the international registration under the

preceding paragraph; and

(iii) the designated goods or designated services in connection with the application

for trademark registration under the preceding paragraph are within the scope of

the goods or services listed in the international registration under the preceding

paragraph.

(3) Where an international application for trademark registration pertaining to an international

registration under paragraph (1) enjoyed a right of priority pursuant to Article 4 of the Paris

Convention, the application for trademark registration under the said paragraph shall also

enjoy the same right of priority.

(4) The preceding paragraph shall also apply to the case where an international application for

trademark registration pertaining to an international registration under paragraph (1) enjoyed

a right of priority pursuant to Article 43­3(2) of the Patent Act as applied mutatis mutandis

upon reading the specified terms in accordance with Article 9­3 or 13(1) of this Act.

(5) For the purpose of the application of Article 10(1) to an application for trademark

registration under paragraph (1), the portion of the said paragraph "part of an application"

shall be replaced with "part of an application(limited to the goods or services that fall under

the scope of those listed in the international registration under Article 68­32(1))."

(6) Where, due to reasons beyond the control of the person filing an application for trademark

registration under paragraph (1), the person is unable to file the application within the time

limit as provided in paragraph (2)(i), the said person may, notwithstanding the said item, file

the application within 14 days (two months for resident abroad) from the date on which the

reasons for not filing ceased to be applicable, but not later than six months after the expiration

of the said time limit.

(7) The application for trademark registration filed under the preceding paragraph shall be

deemed to have been filed at the time of expiration of the time limit under paragraph (2)(i).

(Special provisions concerning application for trademark registration after

denunciation of Protocol)

Article 68­33 (1) Where, pursuant to Article 15(5)(b) of the Protocol, the registered holder of

the international registration designating Japan becomes no longer entitled as a person

eligible to file the international application pursuant to Article 2(1) of the Protocol, the person

who was the registered holder of the said international registration may file an application for

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trademark registration in connection with the goods or services listed in the said international

registration.

(2) The provisions of paragraphs (2) to (7) of Article 68­32 shall apply mutatis mutandis to an

application for trademark registration under the preceding paragraph. In this case, the portion

"within three months from the date on which the international registration under the said

paragraph was rescinded" in paragraph(2)(i) of the said Article shall be deemed to be

replaced with "within two years from the date on which the denunciation under Article 15(3)

of the Protocol took effect."

(Special provisions concerning reasons for refusal)

Article 68­34 (1) For the purpose of the application of Article 15 to an application for trademark

registration pursuant to Article 68­32(1) or 68­33(1), the portion "falls under any of the

following items" in Article 15 shall be replaced with "falls under any of the following items

or where an application for trademark registration under Article 68­32(1) or 68­33(1) does

not comply with the requirements provided in Article 68­32(1), 68­33(1) or each item of

68­32(2) (including cases where applied mutatis mutandis upon reading the specified terms in

accordance with Article 68­33(2))."

(2) The provision of Article 15 (limited to the part pertaining to item (i) and (ii)) shall not apply

to an application for trademark registration under Article 68­32(1) or 68­33(1) pertaining to a

trademark right that was related to the international registration (referred to in Article 68­37

and 68­39 as "re­filing of trademark right pertaining to former international registration").

(Special provisions concerning registration of establishment of trademark right)

Article 68­35 Notwithstanding Article 18(2), where, in connection with an application for

trademark registration under Article 68­32(1) or 68­33(1), the examiner's decision or the

appeal/trial decision to the effect that the trademark is to be registered has been rendered

within ten years from the date of international registration of the international registration

pertaining to the said application (where the duration of the international registration has been

renewed, the date of most renewal) and the individual fee in the amount prescribed in Article

68­30(1)(ii) has been paid to the International Bureau prior to the date on which the

international registration pertaining to the said application is rescinded pursuant to Article

6(4) of the Protocol or to the date on which the denunciation under Article 15(3) of the

Protocol takes effect, the establishment of the trademark right shall be registered.

(Special provisions concerning duration)

Article 68­36 (1) The duration of a trademark right provided in Article 68­35 shall expire after

71

ten years from the date of the international registration of the international registration

pertaining to the said application (where the duration of the international registration has been

renewed, the date of most recent renewal).

(2) Article 19(1) shall not apply to the duration of a trademark right provided in the preceding

paragraph.

(Special provisions concerning opposition to registration)

Article 68­37 For the purpose of application of Article 43­2 to a trademark registration

pertaining to the re­filing of a trademark right pertaining to a former international registration,

the term "trademark registration" in the said article shall be replaced with "trademark

registration (in the case of a trademark registration pertaining to the re­filing of a trademark

right pertaining to a former international registration, except any trademark registration for

which the term provided in this Article has lapsed without any opposition to registration of

the former trademark registration pertaining to the former international registration)."

(Special provisions concerning invalidation trial of trademark registration)

Article 68­38 For the purpose of the trial prescribed in Article 46(1) for the trademark

registration pertaining to an application for trademark registration under Article 68­32(1) or

68­33(1), the term "falls under any of the following items" in the said paragraph shall be

replaced with "falls under any of the following items or has been made in violation of the

provision of Article 68­32(1), 68­33(1) or each item of Article 68­32(2) (including cases

where applied mutatis mutandis upon reading the specified terms in accordance with Article

68­33(2))."

Article 68­39 For the purpose of the application of Article 47 to a trademark registration

pertaining to the re­filing of a trademark right pertaining to a former international registration,

the portion "may not be filed" in the said article shall be replaced with "may not be filed. The

same shall also apply, in relation to the trademark registration pertaining to the re­filing of the

trademark right pertaining to former international registration, even prior to a lapse of five

years from the date of registration of the establishment of the trademark right, when a request

for trial under Article 46(1) can be no longer filed pursuant to this article pertaining to the

trademark registration pertaining to the former international registration."

CHAPTER 8 MISCELLANEOUS PROVISIONS

(Amendment of proceedings)

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Article 68­40 (1) The person undertaking a procedure before the Patent Office with regard to an

application for trademark registration, an application for defensive mark registration, any

requests or any other procedures relating to trademark registration or defensive mark

registration, may make amendments relating thereto only when the case is pending in

examination, examination on opposition to registration, appeal/trial or retrial.

(2) Notwithstanding the preceding paragraph, a person who has applied for trademark

registration may, at the time of payment of the registration fee under Article 40(1) or 41­2(1),

make amendments to reduce the number of classes pertaining to the application for trademark

registration.

(Special provisions on trademark right covering two or more designated goods or

designated services)

Article 69 For the purpose of the application of Article 13­2(4) (including where it is applied

mutatis mutandis pursuant to Article 68(1)), 20(4) and 33(1) of this Act, Article 97(1) or

98(1)(i) of the Patent Act as applied mutatis mutandis pursuant to Article 35 of this Act,

Article 43­3(3), 46(3), 46­2 or 54 of this Act, Article 132(1) of the Patent Act as respectively

applied mutatis mutandis pursuant to Article 56(1) of this Act or Article 174(3) of the Patent

Act as applied mutatis mutandis pursuant to Article 61 of this Act, Article 59, 60, 71(1)(i) or

75(2)(iv) of this Act, to the trademark registration or trademark right covering two or more

designated goods or designated services, the trademark shall be deemed to have been

registered or the trademark right shall be deemed to exist, for each of the designated goods or

designated services.

(Special provisions on trademarks, etc., similar to registered trademarks)

Article 70 (1) The term "registered trademark" as used in Article 25, 29, 30(2), 31(2), 31­2(1),

34(1), 38(3), 50, 52­2(1), 59(i), 64, 73 or 74 shall include trademarks similar to the registered

trademark that would be regarded as being identical with the registered trademark if they

were in the same color(s) as the registered trademark.

(2) The term "registered defensive mark" as used in Article 4(1)(xii) or 67 shall include marks

similar to the registered defensive mark that would be regarded as being identical with the

registered defensive mark if they were in the same color(s) as the registered defensive

trademark.

(3) The term "trademark similar to the registered trademark" as used in Article 37(i) or 51(1)

shall not include any trademark similar to the registered trademark that would be regarded as

being identical with the registered trademark if they were in the same color(s) as the

registered trademark.

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(4) The preceding three paragraphs shall not apply to a trademark that consists solely of colors.

(Registration in Trademark Registry)

Article 71 (1) The following matters shall be registered in the Trademark Registry maintained in

the Patent Office:

(i) the establishment, renewal of the duration, division, transfer, modification,

extinguishment, restoration or restriction on disposition of a trademark right;

(ii) the establishment, renewal of the duration, transfer or extinguishment of right

based on defensive mark registration;

(iii) the establishment, maintenance, transfer, modification, extinguishment or

restriction on disposition of exclusive right to use or non­exclusive right to use;

and

(iv) the establishment, transfer, modification, extinguishment or restriction on

disposition of a right of pledge on a trademark right, exclusive right to use or

non­exclusive right to use.

(2) The Trademark Registry may be prepared, in whole or in part, in the form of magnetic tapes

(including other storage media using a similar method that may record or reliably store

certain matters; the same shall apply hereinafter).

(3) In addition to those provided in this act, matters relating to the registration shall be provided

by Cabinet Order.

(Issuance of certificate of trademark registration, etc.)

Article 71­2 (1) Upon registration of the establishment of a trademark right or upon registration

of the establishment of rights based on defensive mark registration, the Commissioner of the

Patent Office shall issue a certificate of trademark registration or defensive mark registration

to the holder of trademark right.

(2) The re­issuance of a certificate of trademark registration or defensive mark registration shall

be provided by Ordinance of the Ministry of Economy, Trade and Industry.

(Request for certificate, etc.)

Article 72 (1) Any person may file a request with regard to trademark registration or defensive

mark registration to the Commissioner of the Patent Office to issue a certificate, a transcript

of documents or an extract of documents, to allow the inspection or copying of documents or

materials under Article 5(4), or to issue documents stored on the magnetic tapes that

constitute a part of the Trademark Registry; provided, however, that if the Commissioner of

the Patent Office considers it necessary to keep such documents confidential, this provision

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shall not apply in the case of the following documents:

(i) documents pertaining to a trial under Article 46(1) (including cases where it is applied

mutatis mutandis pursuant to Article 68(4)), 50(1), 51(1), 52­2(1), 53(1) or 53­2 (including

cases where it is applied mutatis mutandis pursuant to Article 68(4)) or a retrial of the final

and binding trial decision rendered in the said trial, with respect to which the party in the case

or an intervener has given notice that a trade secret owned by the said party in the case or

intervener has been described (trade secret as provided in Section 2(6) of the Unfair

Competition Prevention Act (Act No. 47 of 1993));

(ii) documents which are likely to cause damage to an individual's reputation or peaceful

existence; and

(iii) documents which are likely to cause damage to public policy.

(2) Where the Commissioner of the Patent Office approves of the request under the main clause

of the preceding paragraph with regard to the documents as provided in item (i) or (ii) of the

said paragraph, the Commissioner of the Patent Office shall notify the person who submitted

the said documents thereof and reasons therefor. (3) Provisions of the Act Concerning Access

to Information Held by Administrative Organs (Act No. 42 of 1999) shall not apply to the

documents concerning trademark registration or defensive mark registration and the part of

the Trademark Registry stored on magnetic tapes.

(4) Provisions in Chapter 4 of the Act Concerning Protection of Personal Information Possessed

by Administrative Organs (Act No. 58 of 2003) shall not apply to the possessed Personal

Information (referring to the possessed Personal Information as provided in Article 2(3) of

the said Act) recorded in the documents concerning trademark registration or defensive mark

registration and the part of the Trademark Registry stored on magnetic tapes.

(Indication of trademark registration)

Article 73 Where the holder of trademark right, exclusive right to use or non­exclusive right to

use affixes the registered trademark to the designated goods, packages of the designated

goods or articles to be used for the provision of the designated services, or affixes, in the

provision of the designated services, the registered trademark to the goods pertaining to the

provision of the designated services that belong to the person receiving the designated

services pursuant to the provisions of Ordinance of the Ministry of Economy, Trade and

Industry, he/she shall make efforts to affix to the trademark an indication (hereinafter referred

to as an "indication of trademark registration") stating that the trademark is a registered

trademark.

(Prohibition of false indication)

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Article 74 It shall be prohibited for a person to do the following acts:

(i) in using a trademark that is not a registered trademark, to affix an indication of

trademark registration or an indication confusing therewith to the trademark;

(ii) in using a registered trademark for goods or services that are not the designated

goods or designated services, to affix an indication of trademark registration or an

indication confusing therewith to the trademark;

(iii) the possession, for the purpose of assignment or delivery, of articles affixed on

goods or on their packages, a trademark other than a registered trademark,

articles affixed on goods other than the designated goods, or on their packages, a

registered trademark in connection with goods, or articles affixed on goods or on

their packages, a registered trademark in connection with services, where the

indication of trademark registration or an indication confusing therewith is

affixed to the said trademark;

(iv) the possession or importation of articles affixed with a trademark other than a

registered trademark, that are used in the course of the provision of services by a

person who receives the said services, articles affixed with a registered trademark

in connection with services, that are used in the course of the provision of services

other than the designated services by a person who receives the said services, or

articles affixed with a registered trademark in connection with goods, that are

used in the course of the provision of services by a person who receives the said

services, where the indication of trademark registration or an indication

confusing therewith is affixed to the said trademark (hereinafter referred to in

the following item as "articles with a false indication of trademark registration

pertaining to services"), for the purpose of the provision of the said services

through use of the said articles; and

(v) the assignment, delivery, or possession or importation for the purpose of

assignment or delivery of articles with a false indication of trademark

registration pertaining to services, for the purpose of causing the provision of the

said services through use of the said articles;

(Trademark Gazette)

Article 75 (1) The Patent Office shall publish the trademark gazette

(2) In addition to those matters provided in this Act, the trademark gazette shall contain the

following matters:

(i) examiner's decisions to the effect that an application is to be refused, or the

waiver, withdrawal or dismissal of applications for trademark registration or

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applications for defensive mark registration after laying open of application;

(ii) succession of right deriving from an application for trademark registration after

laying open of application;

(iii) amendments made to the designated goods or designated services stated in an

application, to the trademark for which the registration is sought, or to the mark

for which the defensive mark registration is sought after laying open of

application;

(iv) extinguishments of trademark rights (except due to the expiration of the

duration and the provision of Article 41­2(6) (including cases where it is applied

mutatis mutandis pursuant to Article 41­2(8));

(v) filing of an opposition to registration or request appeal/trial or a retrial, or

withdrawal thereof;

(vi) final and binding decisions on the opposition to registration, final and binding

appeal/trial decisions or the final and binding decision or appeal/trial decision on

retrial; and

(vii) final and binding judgments in actions under Article 63(1).

(Fees)

Article 76 (1) Fees shall be paid by the following persons in an amount to be provided by

Cabinet Order in view of the actual costs:

(i) persons notifying of succession under Article 34(4) of the Patent Act as applied

mutatis mutandis pursuant to Article 13(2) of this Act;

(ii) persons filing a request for an extension of the term under Article 17­4 of the

Design Act as applied mutatis mutandis pursuant to Article 17­2(2) (including

cases where it is applied mutatis mutandis pursuant to Article 68(2)) of this Act,

Article 41(2), Article 41­2(2), 43­4(3) (including cases where it is applied mutatis

mutandis under Article 68(4)) of this Act, Article 65­8(3) or Article 4 of the Patent

Act as applied mutatis mutandis pursuant to 77(1) of this Act or Article 5(1), or a

change of the date under Article 5(2) of the Patent Act as applied mutatis

mutandis pursuant to Article 77(1) of this Act.

(iii) persons filing an application for international registration to the Commissioner

of the Patent Office pursuant to Article 68­2;

(iv) persons presenting to the Commissioner of the Patent Office a request for

subsequent designation pursuant to Article 68­4;

(v) persons filing an application for renewal of the duration of international

registration to the Commissioner of the Patent Office pursuant to Article 68­5;

77

(vi) persons filing a request to the Commissioner of the Patent Office for the

recording of a change in the ownership of international registration pursuant to

Article 68­6;

(vii) persons filing a request for the re­issuance of a certificate of trademark

registration or defensive mark registration;

(viii) persons filing a request for the issuance of a certificate pursuant to Article

72(1);

(ix) persons filing a request for the issuance of a transcript of documents or an

extract of documents pursuant to Article 72(1);

(x) persons filing a request to allow the inspection or copying of documents or

materials under Article 5(4) pursuant to Article 72(1); and

(xi) persons filing a request for the issuance of documents whose contents are stored

on magnetic tapes that constitute part of the Trademark Registry pursuant to

Article 72(1).

(2) The persons listed in the center column of the attached table shall pay fees in the amount as

provided by Cabinet Order within the range of the amounts specified in the corresponding

right­hand column of the table.

(3) The preceding two paragraphs shall not apply where the person to pay the fee in accordance

with these paragraphs is the State.

(4) Where the State has co­ownership of a trademark right, a right deriving from an application

for trademark registration or a right based on an application for defensive mark registration

with a person other than the State, and the portion of their respective shares of the said right

has been agreed, notwithstanding the provisions of paragraph (1) or (2), the fees payable

thereunder (limited to those provided by Cabinet Order) shall be determined as the sum of the

provided fees multiplied by the ratios of the share of each person other than the State, and, the

person(s) other than the State shall pay such sum.

(5) Where the amount of the fees calculated under the preceding paragraph has a fractional

figure of less than ten yen, the said portion shall be discarded.

(6) The payment of the fees under paragraph (1) or (2) shall be made by patent revenue stamps

as provided by Ordinance of the Ministry of Economy, Trade and Industry; provided,

however, that where so provided by Ordinance of the Ministry of Economy, Trade and

Industry, a cash payment thereof shall be accepted.

(7) Fees paid in excess or in error shall be refunded upon the request of the person who made

payment thereof.

(8) No request for a refund of the fees under the preceding paragraph may be filed after one year

from the date on which the payment thereof has been made.

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(9) Where, due to reasons beyond the control of the person, the person filing a

request for refund a registration fee is unable to file the request within the time

limit as provided in paragraph (7), the said person may, notwithstanding the said

paragraph, file the request within 14 days (two months for resident abroad) from

the date on which the reasons for not filing ceased to be applicable, but not later

than six months after the expiration of the said time limit.

(Mutatis mutandis application of Patent Act)

Article 77 (1) The provisions of Articles 3 to 5 (time periods and dates) of the Patent Act shall

apply mutatis mutandis to time periods and dates provided in this Act. In this case, the term

"Article 121(1)" of Article 4 of the Patent Act shall be deemed to be replaced with "Article

44(1) or 45(1) of the Trademark Act."

(2) Articles 6 to 9, 11 to 16, 17(3) and 17(4), 18 to 24 and 194 (procedures) of the Patent Act

shall apply mutatis mutandis to an application for trademark registration, an application for

defensive mark registration, any petitions or any other procedures pertaining to trademark

registration or defensive mark registration. In this case, the portion "appeal against an

examiner's decision of refusal" in Article 9 of the Patent Act shall be deemed to be replaced

with "appeal under Article 44(1) or 45(1) of the Trademark Act," the portion "appeal against

an examiner's decision of refusal" in Article 14 of the Patent Act shall be deemed to be

replaced with "appeal under Article 44(1) or 45(1) of the Trademark Act," the portion "(ii)

where the procedures do not comply with the formal requirements provided by this Act or an

order thereunder" in Article 17(3) of the Patent Act shall be deemed to be replaced with "(ii)

where the procedures do not comply with the formal requirements provided by this Act or an

order thereunder; (ii)­2 where, pertaining to the procedures, the registration fee under Article

40(2) of the Trademark Act or the registration fee (including the registration surcharge due

and payable pursuant to Article 43(1) or 43(2) of the Trademark Act) payable at the time of

application for registration of renewal pursuant to Article 41­2(7) of the Trademark Act is not

paid," the portion "any of the items in Article 38­2(1)" in Article 18­2(1) of the Patent Act

shall be deemed to be replaced with "any of the items in Article 5­2(1) of the Trademark Act

(including cases where it is applied mutatis mutandis pursuant to Article 68(1) of the

Trademark Act))."

(3) The provision of Article 25 (Enjoyment of rights by foreign nationals) of the Patent Act

shall apply mutatis mutandis to a trademark right and other rights relating to the trademark

registration.

(4) Article 26 (Effect of treaties) of the Patent Act shall apply mutatis mutandis to the trademark

registration and defensive mark registration.

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(5) The provisions of Articles 189 to 192 (Service) of the Patent Act shall apply mutatis

mutandis to service provided in this Act.

(6) Article 195­3 of the Patent Act shall apply mutatis mutandis to dispositions under this Act or

under an order based on this Act.

(7) Article 195­4 (Restriction on appeals under Administrative Appeal Act) of the Patent Act

shall apply mutatis mutandis to an examiner's decision, a ruling to dismiss an amendment, a

rescission decision, appeal/trial decision, a ruling to dismiss a written opposition, a ruling to

dismiss a written request for appeal/trial or retrial under this Act and to a disposition against

which no appeal lies in accordance with this act.

(Transitional measures)

Article 77­2 Where an order is established, revised or abolished pursuant to this Act, transitional

measures (including transitional measures relating to penal provisions) to the extent deemed

reasonably necessary for the establishment, revision or abolishment may be provided by the

said order.

CHAPTER 9 PENAL PROVISIONS

(Crime of infringement)

Article 78 An infringer of a trademark right or an exclusive right to use (excluding one who has

committed an act that shall be deemed to constitute infringement of a trademark right or an

exclusive right to use under Article 37 or Article 67) shall be punished by imprisonment with

work for a term not exceeding ten years or a fine not exceeding 10,000,000 yen or

combination thereof.

Article 78­2 Any person who has committed an act that shall be deemed to constitute

infringement of a trademark right or an exclusive right to use under Article 37 or Article 67

shall be punished by imprisonment with work for a term not exceeding five years or a fine not

exceeding 5,000,000 yen or combination thereof.

(Crime of fraud)

Article 79 Any person who has obtained a trademark registration, defensive mark registration,

registration of renewal of the duration of trademark right or right based on defensive mark

registration, decision on opposition to registration or appeal/trial decision by means of a

fraudulent act shall be punished by imprisonment with work for a term not exceeding three

years or a fine not exceeding 3,000,000 yen.

80

(Crime of false indication)

Article 80 Any person who fails to comply with Article 74 shall be punished by imprisonment

with work for a term not exceeding three years or a fine not exceeding 3,000,000yen.

(Crime of perjury, etc.)

Article 81 (1) A witness, an expert witness or an interpreter who has taken an oath under this

Act and made a false statement or given a false expert opinion or a false interpretation before

the Patent Office or a court commissioned thereby, shall be punished by imprisonment with

work for a term of between three months and ten years.

(2) Where a person who has committed the offense in the preceding paragraph has made a

voluntary confession before a transcript of the judgment on the case has been served, or a

decision on an opposition to registration or appeal/trial decision has become final and binding,

the punishment may be reduced or waived

(Crime of breach of confidentiality order)

Article 81­2 (1) Any person who fails to comply with an order pursuant to Article 105­4(1)

(including cases where it is applied mutatis mutandis pursuant to Article 13­2(5)) of the

Patent Act as applied mutatis mutandis pursuant to Article 39 of this Act shall be punished by

imprisonment with work for a term not exceeding five years or a fine not exceeding

5,000,000yen or combination thereof.

(2) The prosecution of the crime under the preceding paragraph may not be instituted unless a

complaint is filed.

(3) The crime under paragraph (1) shall apply to a person who commits the crime under the said

paragraph while outside Japan.

(Dual liability)

Article 82 (1) Where a representative of a juridical person or an agent, employee or other staff

member of a juridical person or an individual has committed, in the course of performing

social activities for the juridical person or individual, any act in violation of the provisions

prescribed in the following items, in addition to the offender, the juridical person shall be

punished by fine as provided in the corresponding items and the individual shall be punished

by fine as provided in each article prescribed in the following items:

(i) Article 78, Article 78­2 or 81­2(1), a fine not exceeding 300 million yen; and

(ii) Article 79 or 80, a fine not exceeding 100 million yen.

(2) In the case of the preceding paragraph, a complaint under Article 81­2(2) against the

81

offender shall also have effect on the juridical person or individual and a complaint against

the juridical person or individual shall also have effect on the offender.

(3) Where a fine is imposed on a judicial person or individual pursuant to paragraph (1) with

regard to a violation of Article 78, 78­2 or 81­2(1), the period of prescription shall be

governed by the same rules as for crimes in the provisions thereof.

(Non­penal fine)

Article 83 Where a person who has taken an oath under Article 207(1) of the Code of Civil

Procedure as applied mutatis mutandis pursuant to Article 151 of the Patent Act as applied

mutatis mutandis pursuant to Article 71(3) of the Patent Act as applied mutatis mutandis

pursuant to Article 28(3) (including cases where it is applied mutatis mutandis pursuant to

Article 68(3) of this Act) of this Act, Article 43­8 (including cases where it is applied mutatis

mutandis pursuant to Article 60­2(1) and 68(4) of this Act) or Article 56(1) (including cases

where it is applied mutatis mutandis pursuant to Article 68(4) of this Act), Article 174(3) of

the Patent Act as applied mutatis mutandis pursuant to Article 61 (including cases where it is

applied mutatis mutandis pursuant to Article 68(5) of this Act), Article 58(2) of the Design

Act as applied mutatis mutandis pursuant to Article 62(1) (including cases where it is applied

mutatis mutandis pursuant to Article 68(5) of this Act), or Article 58(3) of the Design Act as

applied mutatis mutandis pursuant to Article 62(2) (including cases where it is applied

mutatis mutandis pursuant to Article 68(5) of this Act) has made a false statement before the

Patent Office or a court commissioned thereby, the said person shall be liable to a non­penal

fine not exceeding 100,000 yen.

Article 84 A person who has been summoned by the Patent Office or a court commissioned

thereby in accordance with this Act and fails to appear or refuses to take an oath, make a

statement, testify, give an expert opinion or interpret without a just cause shall be liable to a

non­penal fine not exceeding 100,000yen.

Article 85 A person who has been ordered by the Patent Office or a court commissioned thereby

to submit or present documents or other materials for the purpose of examination or

preservation of evidence in accordance with this Act, and fails to comply with the order

without a just cause shall be liable to a non­penal fine not exceeding 100,000yen.

Supplementary provisions (Extract)

within the period specified by Ordinance of the Ministry of Economy, Trade and

Industry

82

Attached Table (In relation to Article 76)

Person responsible for

payment Amount

1

Person filing an

application for trademark

registration

6,000 yen per case plus

15,000 yen for each class

2

Person filing an

application for defensive

mark registration or for

registration of renewal of

the duration of a right

based on defensive mark

registration

12,000 yen per case plus

30,000 yen for each class

3

Person responsible for the

procedures under Article

43(7), Article 41(3), Article

41­2(3), Article 65­8(4) of

the Patent Act as applied

mutatis mutandis under

Article 9(3) and Article

13(1), or Article 5(3) of the

Patent Act as applied

mutatis mutandis under

Article 77(1)

4,200 yen per case

4

Person requesting the

division of a trademark

right

30,000 yen per case

5 Person requesting an 40,000 yen per case

83

advisory opinion pursuant

to Article 28(1) (including

cases where it is applied

mutatis mutandis

pursuant to Article 68(3))

6 Person filing an opposition

to registration

3,000 yen per case plus

8,000 yen for each class

7

Person requesting to

intervene in proceedings

of an opposition to

registration

11,000 yen per case

8 Person filing a request for

appeal/trial or retrial

15,000 yen per case plus

40,000 yen for each class

9

Person requesting to

intervene in a trial or

retrial

55,000 yen per case

84