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Revisions to Japan’s trademark classification system.
A key jurisdiction for most companies when devising their international trademark strategies, Japan has recently enacted a series of amendments to its trademark filing and examination processes. We outline some of the key changes below.
Following the latest (tenth) revision to the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement, a number of changes to trademark classification came into effect in Japan at the beginning of 2012. At the same time, the Japanese Patent Office (JPO) revised its own rules for judging the similarity of goods and services in order to bring practices in line with the Nice Agreement.
Dietary supplements, nappies and video games.
For European brand owners, the most important changes relate to the following goods and services:
Dietary supplements and nappies (diapers) – now in Class 5.
‘Dietary supplements’ are now in Class 5 (pharmaceutical, veterinary and sanitary preparations). Previously, applications for fruit/vegetable-based supplements were filed in Class 29, while applications for dairy/cereal-based supplements were filed in Class 30.
Nappies (known in Japan as diapers) are now also in Class 5. Previously, nappy-based applications would need to be filed in Class 25 if the nappies were made of cloth, and/or in Class 16, if the nappies were paper-based.
Video games – now divided between Class 9 and Class 28.
The game program itself is still in class 9, but the actual machine or apparatus for playing the game is now in Class 28. The amendment applies to home video game machines and not just those to be found in arcades.
Redefining issues over similarity.
The JPO has also revised its approach to determining the similarity of goods and services in potentially conflicting applications in certain classes, notably:
Previously considered to be dissimilar goods for examination purposes, the JPO now considers applications relating to music and videos as relating to the same product areas – for example, music CDs, downloadable music, videos, DVDs and downloadable videos are now considered similar goods. For this reason, trademark applicants will now need to search against existing marks and/or applications under both music and videos when seeking to file an application in Class 9.
Gloves (clothing) and gloves for protection – Classes 25 and 9.
Previously considered to be similar goods, the JPO now recognises a distinction between fashion-based gloves/clothing and gloves/clothing that have been designed for protection purposes; for example, industrial gloves for the protection against accidents.
Wheelchairs and medical apparatus – Classes 12 and 10.
Previously considered to be similar goods, the JPO now recognises a distinction between wheelchair-specific apparatus, as opposed to more generic apparatus for medical devices.
Further information about these changes is available on the JPO website (in Japanese); however, English versions of the amend classifications (and sub-classifications) are available at the following link by clicking on the class numbers: jpo. go. jp/cgi/link. cgi? url=/shiryou/kijun/kijun2/ruiji_kijun10_eng. htm.
For further information please contact our Customer Support team. You can do this by using the contact form on the right top of the page.

Japanese Trademark FAQs.
Japanese Trademark Classification.
1. How are goods classified in Japan?
The International Classification of goods and services was adopted on April 1, 1992. Prior to that, Japan had its own classification systems, i. e., Classification of 1899, Classification of 1909, Classification of 1921 and Classification of 1959. At present, trademarks registered under the above five different classifications coexist. This makes it difficult to determine the scope of a trademark registered under the old classifications.
In order to clarify the scope of a trademark registered under the old classifications, a reclassification system has been introduced, which will change registrations to the International classification system in stages beginning from the oldest classification.
2. What is the so-called re-classification system?
Registration under five classification systems co-exist in Japan, including the International Classification System of goods and services, which was introduced on April 1, 1992.
The JPO requires that goods under the old classifications be reclassified in accordance with the International Classification within a specified period. Therefore, the owner of a trademark registration which was registered under the Japanese Classification System, must file a request for re-classification of the designated goods in accordance with the current International Classification System within the period from six months prior to the date of expiration of the registration to one year after the date of expiration. The JPO will notify the owner of a trademark registration of this period. Reclassification is not mandatory. However, if reclassification is not performed during this period, the next application for renewal will be denied.
Copyright ONDA TECHNO Intl. Patent Attys. All Rights Reserved.

Brief Introduction of Japanese Trademark System.
Flow Chart (basic pattern)
1. Filing Trademark Application.
What must be indicated in an application form?
1) Name and address of Applicant.
2) Mark (wordmark, device mark, 3D mark)
3) List of Goods and/or Services, and Classification.
4) Priority Claim, if desired.
It is possible to cover more than one class of goods or services in an application. The official fee is 12,000 yen for the first class and 8,600 for each additional class. You cannot include more than one mark in an application. However, you can add Japanese characters to your foreign-word trademark and file it in a single application.
Japan has adopted the International Classification System. Priority must be claimed at the time of filing. A certified copy of the original foreign application must be submitted within three months from the Japanese filing date.
As to three-dimensional marks, it is necessary to submit photographs or drawings showing the mark in different perspectives, such as front, rear and perspective.
Each application is transmitted to the Japanese Patent Office via computer terminal.
Once an application is filed, an application number will be assigned. The date of submission of the application before the Japanese Patent Office is the filing date.
2. Examination.
Once an application is filed, the examiner at the Japanese Patent Office will examine it. If the examiner finds that the trademark cannot be registered, he/she will issue a Notification of Reasons of Refusal and grants the applicant an opportunity to respond to the examiner's findings. Normally, a response must be submitted within three months from the mailing date of the Notification of Reasons of Refusal. If necessary, a one-month extension of time to respond can be requested. Although the descriptions of goods and/or services may be amended, it is not possible to amend the mark itself.
If the examiner is not persuaded by the response, he/she will issue a final rejection. In order to challenge the examiner's decision, it is possible to file an appeal against the final rejection. Since an appeal is examined by a group of three or five examiners, a more objective decision can be expected.
3. Notification of Registration.
4. Payment of Registration Fee.
If the examiner cannot find any reasons to reject your application or if the examiner's rejection is successfully overcome by a response, a notification of registration will be issued. Then, a registration fee must be paid within 30 days from the mailing date of the Notification. If the registration fee is not paid, the application will be irrevocably dismissed. Registration fees increase according to the number of classes in the application. The registration fee can be paid in two-installments. Usually, the trademark rights are effective for ten years from the date of registration.
5. Establishment of a Trademark Right.
Once the registration fee is paid, trademark rights will be established and recorded in a trademark register. The trademark rights are effective for ten years from the date of registration. If a registered mark is not used for more than three years in Japan, the registration can be canceled by a third party's request based on non-use. If such a request is filed, the registrant must produce proof of use of the registered mark within a prescribed time.
6. Publication.
After registration is established, the registration will be published for opposition. Anyone can file an opposition within two months from the date of publication.
7. Opposition.
Within two months from the date of publication of trademark registration, anyone can file an opposition. If the opposition board decides to cancel the registration, the opposition board issues a Notice of Reasons for Cancellation to the registrant. Then, the registrant can file an argument within three months from the mailing date of the notice.
The term of a trademark right is ten years from the date of registration. Its term can be renewed for subsequent ten year periods, but a request for renewal must be filed within six months before the current term expires. Even after expiration, the request for renewal may be accepted by paying an extra fee if the request is filed within six months after expiration. The renewal fee may be paid in a lump sum at the time of the renewal request. Alternatively, the payment may be made in two installments. Proof of use is not required upon renewal.
It is possible to reduce class(es) at the renewal request. The JPO does not issue renewal certificates. Only postcards showing acceptance of renewal are issued.
Copyright ONDA TECHNO Intl. Patent Attys. All Rights Reserved.

Japanese trademark classification system

In order to prevent any trademark infringement and decrease the possibility of rejection, we highly recommend that you will conduct a trademark search before using a trademark and filing a trademark application in Japan.
You can conduct a trademark identical search by yourself by using "Searching Japanese Trademark Database" on IPDL ( I ndustrial P roperty D igital L ibrary).
If you would like us to conduct a trademark identical and/or similarity search, please feel free to ask us. Normally, we will conduct a word mark search within 5 business days and a device mark search within 10 business days. 1-2 Trademark Flow (from Filing to Registration)
Trademark applications can be filed online to the Japan Patent Office (JPO ). As soon as filing application is completed, we receive a copy of the application as filed with an assigned application number from the JPO in return via online system. Therefore, no official filing receipts are issued.
An application document will be undergone "Formality Examination" and after that "Substantive Examination" will be carried out.
If the application is judged that there are no reasons for refusal by the Examiner, the application is decided for registration. Accordingly, the registration fee must be paid within 30 days since then.
When the registration fee is paid, the registration of the trademark right will take place and the trademark right will come into force.
After a few weeks, the certificate of trademark registration will be issued and the registration will be published.
For more details, e. g. in case the application is refused by the Examiner, please refer to the following web page of the JPO .
1-3 Time Frame (from Filing to Registration)
Japan declares that the refusal of International Trademark Registration shall be notified to the International Bureau within 18 months from the application date, so the JPO takes 1st action not only for International Trademark Registration but also all the applications at least within 18 months from the application date.
Actually, it takes about 8 months to obtain a trademark registration if no notification of refusal is issued. If a notification of refusal is issued, it takes an additional 6 months or more (it depends on a reason for refusal).
1-4 Registrable Marks Following marks are registrable in Japan. characters, figures, signs, *three-dimensional shapes or any combination thereof, or any combination thereof and colors Registrability of the following marks are currently studying. color (itself), sound, position, moving, and hologram marks.
Studying for olfactor, touch and taste marks have been shelved.
*To acquire the trademark registration for the three-dimensional shapes marks, such as a bottle of drink, are very difficult, except acquiring the secondary meaning through use.
Filing Application.
the mark the goods/services name, address and nationality of the applicant a certified copy of the priority document, if claimed executed power of attorney (we will prepare and forward you a suitable form)
Although "intent to use" is necessary under the Japanese Trademark Law, neither "actual use" nor "proof of use" are required for registration.
Please feel free to inquire about our service fees.
2-3 Specification of Goods/Services.
Japan has adopted the International Classification of Goods/Services and multi-class applications.
The JPO classifies specified goods/services into some similar groups and the code numbers are assigned to each similar groups. It derives from the old Japanese original classification system. The JPO Examiners treat goods/services having same similar group codes as similar goods/services automatically almost without exception.
In addition, if the number of similar group codes exceed 8 in 1 Class, the notification of provisional refusal is issued. In order to overcome the refusal, you must restrict the specified goods/services within 7 or less similar groups or submit a proof of use for every group code.
For more information, please feel free to inquire.
Since Japan has adopted above mentioned peculiar similar group codes, first of all, please inform us of the goods/services for which trademark will be used. We will provide you with appropriate descriptions of the specified goods/services in Japan.
You may file a trademark application claiming a priority based on an application filed in the country of the Union of the Paris Convention.
Since the application in Japan must be filed within 6 months from the prior filing date, please give us your filing instructions as soon as possible.
Examination.
The term for filing a response with JPO for a resident abroad is 3 months from the date of pronouncement and 1 month extension is obtainable by paying the official fee. The measures for overcoming the rejection depend on the reasons as follows.
Existence of prior registered (filed) trademark 1) Filing an argument explaining the dissimilarity of marks or the designated goods/services. 2) Filing an amendment to delete the goods/services in conflict with those of the cited mark. 3) Filing a non-use cancellation trial/invalidation trial against the cited registration. 4) Negotiating with the owner of the cited trademark to obtain the assignment.
Ѓ¦Please note that the Letter of Consent system is not adopted in Japan.
Please be informed that it is possible to file a divisional application with additional official filing fee in order to accelerate the registration for the class which has nothing to do with the refusals.
3-2 Provisional Refusal for International Trademark Registration.
It is possible to request a territorial extension to designate Japan under Madrid Protocol.
The international trademark application is examined in a similar manner to that of the domestic application, however, there are some exceptions such as any amendment should be made only during a designated time frame, and so on. Thus, early instructions would be appreciated.
The necessary documents for responding the notification is the signed Power of Attorney, which can be filed later.
3-3 Accelerated & Preferential Examination.
A request to accelerate the examination can be filed under the certain conditions, such as the possibility of trademark infringement.
Even though you have not started using the mark, it can be approved if you are preparing to use the mark to a considerable extent and there will be a possibility of infringement.
Please note the evidence should be submitted along with the request. No official fee is required.
3-4 Amendment of Goods/Services.
Only deleting the goods/services and limiting the goods/services covered by the application are allowed.
Thus, it is advisable to designate the goods/services of your interest specifically as much as possible at the time of filing in case it is not certain whether the goods/services are included in the broader concept.
3-5 Amendment of Trademark.
It is not allowed to amend the trademark even if it is just a change of the color from the black and white to red or change of the font from Tahoma to Century.
Thus, it is advisable to file the application for the mark you are going to use, if possible.
3-6 Final Rejection.
Applicant dissatisfied with the examiner's refusal can file an appeal trial against the refusal. The impartial decision may be expected to some extent since appeal decision is made by the collegial body of three or five examiners.
The official fees for filing appeal trial against refusal are as follows.
If you receive the trial decision of refusal, the suit against the trial decision can be filed with IP High court. The case is judged by the collegial body of three or five judges.
Should you require further information on the above, please feel free to let us know.
Registration.
The registration fee is due to be paid within 30 days (this period can be extended upon request by a period not exceeding 30 days) from dispatching date of the acceptance for registration.
The applicant may choose the term of a trademark right from either for ten years or for five years when to pay the registration fee. The duration of the trademark right depends on what kind of business the applicant would run and how long the applicant would provide the goods/services to consumers.
The official fees for registration are as follows.
After registration, the trademark is published in the Trademark Gazette for opposition purpose. Anyone may file an opposition within two months from the date of publication.
If the registered trademark has not been used over the past three years, anyone can request a cancellation trail against the registration based on non-use. The registrant must then prove that the mark has been used by him/her or a licensee, or that there is good reason justifying non-use of the trademark. Otherwise, the registration will be cancelled with respect to the goods/services sought to be cancelled.
This trail is sometimes effective when the registered trademark is cited as an obstacle against a pending application.
4-4 Renewal of Trademark Registration.
The term of a trademark right is ten years from the date of registration and it may be renewed for another ten years, but a request for renewal must be filed within six months before the expiration date with the renewal fee. Even after expiration, a request for renewal may be accepted by paying an extra fee within another six months grace period.
In addition, the proof of use is not required at the time of renewal of registration. The proof of use is however necessary if a cancellation trial against the registration based on non-use is filed.
4-5 Reclassification of Goods.
Currently trademark applications in Japan are filed and registered in accordance with the International Classification of Goods and Services, however, before April 1 st , 1992, applications were filed and registered in accordance with the Old Japanese Classification of Goods.
The differences between the International and Old Japanese Classifications caused many problems in connection with infringement affairs and also caused difficulties in searching.
Therefore, the JPO started reclassification of goods, from the Old Japanese Classification to the International Classification, against trademarks filed before April 1 st , 1992 at the time of renewal.
Missing the reclassification, the trademark registrations cannot be renewed for the next period, which means that the renewal is accepted only once without the reclassification.
There are two types of licenses in Japan; an exclusive license and a non-exclusive license.
An exclusive license has to be registered with JPO in order to be entered into force. On the other hand, a non-exclusive license does not have to be registered to be given effect as such while registration of the non-exclusive license prevents the trademark owner from granting a conflicting license to a third party.
5-2 Protection of Renowned Trademark.
Even if the trademark is well known only in foreign countries in relation to goods/services, a third party cannot be allowed to register the mark which is identical with or similar to the well-known trademark when the mark sought to be registered has been applied for with an illicit purposes under Trademark Law in Japan(§4-1-19).
In addition, an owner of a trademark which is well known in overseas and also in Japan can prevent a third party from using the mark which is identical with or similar to the well-known trademark under Unfair Competition Prevention Act.
5-3 Indication of "Registered Trademark"
Indication of "Registered Mark" is not strictly requested under the Japanese Law but the trademark owner is recommended to attach such indication in Japanese words to the registered trademark.
It should be noted that the indication of "Registered Mark" attached to the unregistered marks leads to a misrepresentation which is a criminal act punishable by law.
On the other hand, use of " ® "Ѓmark is not officially accepted in Japan. It would pose little problem to use " ® " mark attached to the unregistered mark in Japan.