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Client Alert - Protecting Retail and Wholesale Service Marks in Japan

06.04.2007

A significant amendment to Japanese Trademark Law will allow for the registration of retail and wholesale service marks. The sunrise period for filing new applications for such marks ends on June 30, 2007.

While under the old Trademark Law retailers and wholesalers in Japan were forced to rely on trademark protection for physical goods or commodities, the amended Trademark Law offers protection for services as broad as “retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and livingware, carrying all goods together” (Japanese Classification Code 35K01) to services as narrow as “retail or wholesale services for meat.”

The scope of protection for retail and wholesale service marks will be broader than the scope of protection afforded to marks covering goods. For example, while the Japanese Patent Office (JPO) might not consider identical marks for “luggage” and “shoes” to be similar, the JPO may consider retail services for luggage to be similar to retail services for shoes. Persons applying for marks covering the broadest category of retail and wholesale services under Japanese Classification Code 35K01 will be required to prove that sales of the respective goods in each field amount to between 10% and 70% of their total sales.

In an exception to Japan’s first-to-file system, applications for retail and wholesale service marks filed during the sunrise period ending June 30, 2007 will be treated by the Japanese Patent Office as if they were filed on the same date. The JPO will apply special measures if more than one applicant applies for retail or wholesale services for identical or similar marks during the sunrise period. Generally, the measures will vary depending on whether or not one of the applicants has prior use of the mark in Japan and the extent to which the mark is well known in Japan.

A Japanese service mark registration has an initial term of ten years, but may be cancelled within five years of the registration date by entities that have prior rights to the mark and at any time if the registration was obtained in bad faith. Further, an action for cancellation of a registration for non-use can be filed after three consecutive years of non-use.

If your company currently offers or intends to offer retail or wholesale services in Japan, you should seriously consider filing a new application for such services before June 30, 2007.

We have a great deal of experience in assisting companies to protect and enforce their intellectual property rights throughout the world, and may have already assisted your company in registering one or more trademarks for goods in Japan. Please let us know if you need assistance protecting your service marks in Japan.

For more information on this Client Alert, please contact Joel Karni Schmidt.

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