Japan: New Trademark Law 55/2006
New Law 55/2006 will amend the existing trademark law in Japan. The following are the highlights of the amendments:
Service Mark Registration for Retail Services
Trademarks may be registered for retail or wholesale services in International Class 35. The Trademark Office will accept applications for registration of such marks starting on April 1, 2007 and:
Applications for retail service marks filed within three months of the effective date of April 1, 2007 (grace period), will be deemed to have been filed on the same date.
The first to file principle will not apply to such applications.
Retail marks for which no registration is sought will be protected from claims by other similar retail marks that are registered provided that the owner of the unregistered mark can show that the unregistered mark has been in continuous use since before the effective date of the revised law.
Applications for retail service marks that have been used in good faith before implementation of the amendment, and continue to be so used, shall be given priority over applications by third parties to register identical or similar unused marks, provided the application for the retail service mark is made within the grace period.
Wider Range of Entities now Entitled to Register Collective Marks
Certain entities such as chambers of commerce, business associations and non-profit organizations are now entitled to register collective marks under Article 7 of the amended law.
“Act of Exporting” and Possessing Counterfeits for Export may Constitute Infringement
The “act of exporting” may constitute an illegal act and the act of possessing counterfeit products for the purpose of export will constitute infringement under the Trademark law.
More Rigorous Criminal Penalties
More rigorous criminal penalties will apply effective as of January 1, 2007.
