Use/ Intent-to-Use of a trademark to obtain a trademark right in Japan

August 19, 2013

Requirements for Use or Intent-to-use

The Japanese trademark Law adopts the principle of registration protection.  In this principle, trademark rights are conferred only by registration as contrasted with the principle of use where trademark rights are conferred by use.

However, use of a trademark is not always exempted to obtain a trademark right.  There are some specific cases where an applicant should submit a Statement of Use (with evidence of use) or a Declaration of intent-to-Use (with documents of business plan) to obtain a trademark right:

  1) when an application filed by an individual designates so-called "general retail services or wholesale services*1",
  2) when an application filed by a corporation designates so-called "general retail services or wholesale services*1" but the fact finding of providing services by the applicant under the examination by the examiner's authority fails,
  3) when an application designates plurality of retail services or wholesales services dealing in "specific goods*2" which are categorized into two or more similar codes, or
  4) when an application designates goods or services which are categorized into more than seven similar codes in one class.

*1: As provided on the JPO’s website, if retail services or wholesale services deal in a variety of goods in each field of clothing, food and beverages, and livingware, and these goods are carried in a single business establishment (e.g. Retail services provided by a department store), the service is deemed as "general retail services or wholesale services" (See 1.(1) in the PDF: ).

*2: An applicant can designate the retail services or wholesale services dealing in either a variety of goods ("general retail services or wholesale services" ) or "specific goods" in Class 35 (See 1.(1) and (2) in the PDF: ).

The applicant will automatically receive an Office Action from the JPO if no Statement of Use or Declaration of intent-to-Use is submitted.  Submitting such documents will overcome the Office Action.  Regarding the case 3) and 4), deleting the goods or services is also available.
To avoid the Office Action, the documents can be submitted along with the application.

“Use in Japan”

A trademark should be used in Japan when a Statement of Use or a Declaration of intent-to-Use is submitted. 

Then, what is “use in Japan”?  If an applicant physically conducts business related to the designated goods or services in Japan using the Japanese language, no problem will be found concerning “use” of their trademark “in Japan”.  A problem may occur when an applicant is doing business without using the Japanese language (only on the net ) when they do not have any real business offices within the jurisdiction of Japan.

A related precedent of H17 Gyo-ke 10095 provides good criteria.  In this case, a trademark holder had been advertizing their “pizzas” (the designated goods of their registered trademark) with their registered trademark on their website in English but they did not have any real shops in Japan, and the server of the website was located in their country (out of the jurisdiction of Japan).  The court did not affirm “use” of the trademark in Japan on the grounds that the website was not deemed targeting Japanese customers.

If you are conducting business only on your website in English of which server is located outside of Japan, probably no use of a trademark will be affirmed even if the website can be accessed from Japan.

End of report

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