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Newsletters and Bulletins / July 1997 / Japan |
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Japan - New Trademark Law As reported in our August 1996 Newsletter (N.S. 187), the new Trademark Law that was promulgated in Japan on June 12, 1996, entered into effect on April 1, 1997. The principal changes that have been effected by the new law are summarized below. 1) Three-dimensional trademarks consisting of the shape of goods or their packaging may be registered, provided they are distinguishable and are not indispensable to secure the function of the goods or their packaging. 2) Collective trademarks may be registered. 3) Associated trademarks registered or pending on April 1, 1997 are deemed to be independent trademarks. 4) Applications for trademarks that are held to be identical or similar to a well-known trademark filed with an unjust purpose will be rejected, irrespective of whether there is a likelihood of confusion between the respective goods and/or services. 5) A single application may cover several classes of goods and/or services. However, applications for the same mark filed on the same date in more than one class prior to April 1, 1997 may not be consolidated into one application. 6) It is no longer necessary to submit evidence of use to support renewals of trademark registrations. Belated renewals may be filed 6 months following the expiration date of the registration, subject to payment of additional fees. 7) It is no longer necessary to publish a Notice of Assignment of a registered trademark. 8) A general Power of Attorney is now accepted. 9) Any person may file a cancellation action based on non-use of a registered trademark for more than 3 consecutive years. 10) Use of a registered trademark by the owner or licensee within 3 months prior to the date of filing of a cancellation action will not be considered legitimate use, provided that the petitioner in the cancellation action can prove that the trademark owner or licensee commenced such use upon becoming aware of the prospective cancellation action. 11) If a cancellation action is successful, the trademark registration is deemed to have been cancelled retroactively as of the date of filing of the cancellation action. 12) A post-registration opposition procedure replaces the current pre-registration opposition system. An opposition may be filed by any interested party within 2 months following the date of publication of a registered mark. 13) Japan adopted the International Classification system on April 1, 1992. Under the new trademark law, the goods covered by those registered trademarks that were filed on or before March 31, 1992 in accordance with the four versions of the earlier Japanese classifications (of 1899, 1909, 1921 and 1959) will be reclassified in accordance with the International Classification system upon renewal. The reclassification will commence with trademark registrations that expire on or after October 1, 1998. |
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