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HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
TEL:+81-6-6351-4384
(Main Number)
FAX:+81-6-6351-5664
(Main Number)
E-Mail:

TOKYO
HEAD OFFICE

WORLD TRADE CENTER BLDG. 21 F,
2-4-1, HAMAMATSU- CHO, MINATO-KU,
TOKYO 105-6121,JAPAN
TEL:+81-3-3433-5810
(Main Number)
FAX:+81-3-3433-5281
(Main Number)
E-Mail:


HIROSHIMA
OFFICE

NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPAN
TEL:+81-82-545-3680
(Main Number)
FAX:+81-82-243-4130
(Main Number)
E-Mail:


In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.

Privacy policy






Asia & Oceania

  • Indonesia Joins Madrid Protocol (October 26, 2017)
    • On October 2, 2017, the Indonesian government deposited its instrument of accession to the Madrid Protocol with the WIPO Director General. Indonesia is the 100th country to be included in the Madrid Protocol, and the WIPO website reported the event as "a landmark moment in Madrid System history."

      From January 2, 2018, it will be possible to file trademark applications in Indonesia via the Madrid System.

      The instrument of accession deposited with WIPO includes declarations of the extension of the refusal period to 18 months, and that recording of licenses in the international register has no effect in Indonesia

  • New Critical Requirement for Trademarks is Established - Declaration of Actual Use Needs to be Filed within One Year from Renewal (October 5, 2017)
    • A new critical requirement for trademarks was established in the Philippines. According to the requirement, trademark right holders must file a declaration of actual use within one year from the date on which their trademarks are renewed. From now on, the declaration of actual use must be filed at the renewal or within one year from the renewal.

      In the Philippines the declaration of actual use must be filed within the prescribed periods as below:
      (1) within 3 years from the application date;
      (2) within 5 through 6 years from the registration date;
      (3) at the renewal or within one year from the renewal; or
      (4) 5 or 6 years after the renewal.

      This newly-established critical requirement will be applied to the trademark registrations whose renewal is due on and after January 1, 2017.

  • Thailand joins the Madrid Protocol, which will take effect on November 7, 2017 (September 19, 2017)
    • On August 7, 2017, the Government of Thailand submitted to the WIPO an application to join the Madrid Protocol. The joining will take effect on November 7, 2017.

      The fees announced on August 7, 2017 are 418 Swiss franc per category in a case of filing a trademark application or subsequent designation, and 522 Swiss franc per category in a case of renewal. It was also announced that the period of examination is 18 months.

      Since Thailand joined the Madrid Protocol, simplification of filing a trademark application to Thailand and managing a trademark in Thailand will be expected. Thailand, however, has unique examination standards for designated goods and/or designated services. It is therefore necessary to, for example, properly narrow down designated goods and/or designated services before filing a trademark application even after Thailand joined the Madrid Protocol.

  • China Has Most Trademark Applications for 15 Years Running (March 3, 2017)
    • The State Administration for Industry and Commerce of the People’s Republic of China (SAIC) has announced that the total number of trademark applications filed in China in 2016 was 3,691,000, marking the 15th year running that China has seen the largest number of trademark applications in the world. The region of China with the most applications was Guangdong, which accounted for 689,434 applications.

  • Revision On GCC Trademark Law And Regulations Will Come Into Force On September 29, 2016(October 28, 2016)
    • The Saudi Trademark Office announced that the revision on the GCC Trademark Law and Regulations will come into force on September 26, 2016. The GCC Trademark Law and Regulations will be revised in the following points.

      ・ The definition of trademark is expanded. Accordingly, marks consisting solely of colors, marks consisting of combination of colors, sounds, and smells will be newly recognized as trademarks.
      ・ Previously, oppositions needed to be raised through the administrative court. With the revision, oppositions can be raised through the Department of Appeal of the Trademark Office. Furthermore, the decision on opposition will be mailed within 90 days from hearing of both interested parties. This will greatly shorten the time of examinations.
      ・ Previously, similarity with prior trademark was determined such that, if a mark falls under a class identical to that of the prior trademark, such a mark is determined as being similar to the prior trademark. With the revision, similarity will be determined in terms of specific designated products and/or designs that fall under an identical class or a related class.

  • Thailand Publishes Amendments to Trademark Act (May 20, 2016)
    • On April 29, 2016, the Bill for amendment to Thailand’s Trademark Act was published in the official gazette. This allows the amendment to Thailand’s Trademark Act to come into effect on July 29, 2016 (90 days after the publication).
      According to the amendment, significant amendments are made. For example, sound marks are included in the definition of trademarks and thus sound marks can be registered as trademarks, and multiple-class application system is introduced. Further, provisions regarding periods are also amended. For example, a response period for a notification of reasons for refusal and an opposition period are reduced.
      Amendments were also made to the provision in light of joining the Madrid protocol. However, it is unclear when Thailand will become a member of the Madrid protocol.

  • UAE (United Arab Emirates) Official Fees Set to Double or More (July 11, 2014)
    • The UAE (United Arab Emirates) increased official fees for intellectual properties as of May 29, 2015.

      The official fees are increased to double for, for example, application, publication, registration, and renewal of a trademark. The official fees charged for the registration and renewal of a trademark was already high, and are now each set to 10,000 dirhams (local currency), which is equivalent to more than 300, 000 yen.

      Although not officially announced, the new official fees may be actually applied to existing trademark applications which have been already filed. Thus, caution is required for the procedures in future.

  • UAE Trademark Examination Guidelines Changed (July 3, 2014)
    • In the United Arab Emirates, the guidelines for trademark examination have been greatly changed as of June 1, 2014. Before that date, in a case where there was a reason for refusal, a Notification of Reasons for Refusal was issued and it was possible for an applicant to file an amendment and a written argument.

      However, as from June 1, 2014, in a case where there is a reason for refusal, the Examiner issues a Decision of Refusal etc. without issuing a Notification of Reasons for Refusal, i.e., without providing an applicant with an opportunity to file an amendment and a written argument.

      Although the applicant can file a request for appeal against the Decision of Refusal, filing of such a request requires a long period of time. Therefore, re-filing of an application is recommended with respect to a Decision of Refusal for informalities of designated goods and services.

  • Termination of Similar Design Registration System in Korea.(March 7, 2014)
    • According to the present similar design registration system in Korea, a similar design which is deemed after the registration as not being similar to a basic design may be invalidated for this ground. The similar design registration system in Korea is different, in this point, from the related design registration system in Japan.
      According to the revised law which will be put into force from July 2014 in Korea, the present similar design registration system will be terminated and shifted to the related design registration system. According to the revised law (which applies to related design applications filed after July 1, 2014), a similar design is not invalidated for the above ground, as with the related design registration system in Japan.



  • Registration of Trademark “Arita Ware” Is Cancelled in China (January 17, 2014).
    • Regarding an issue such that registration by a Chinese individual owner-manager of a trademark “Arita ware” in Chinese character (brand name for Japanese porcelain) prevented use of labeling of “Arita ware” in China, the town of Arita in Saga prefecture in Japan and the porcelain industry cooperative in Saga prefecture filed, with the China's Trademark Office, a request for cancellation of the registered trademark. The request was accepted last October, and the registration of the trademark was cancelled in China.

      In response to the cancellation, the porcelain industry cooperative in Saga prefecture filed an application for the trademark “Arita ware (figure)” with the China's Trademark Office, aiming at market expansion and branding in China.

  • Yamagata Prefecture Gets Its Brand of Rice as Trademark in Chinese Characters in Taiwan (January 10, 2014).
    • On December 24, 2013, Yamagata prefecture announced that the trademark of its own brand of rice "Tsuyahime" was registered in Chinese characters "山形滋雅" (which reads "Shan xing zi ya") in Taiwan. The trademark is a coined term made by a combination of the word "滋", which means beauty etc., and the word "雅", which means noble etc. Since the Chinese pronunciation "zi ya" is phonetically similar to the Japanese pronunciation "tsuya" of "Tsuyahime", the registration of "Tsuyahime" in Chinese characters is considered to match the strategy of branding "Tsuyahime".
      Yamagata prefecture also announced that it is applying for the registration of the trademark "Shan xing zi ya" in Hong Kong and the PRC.
      The seeming purpose of getting this trademark registered in Chinese characters is to sell the brand of rice with a trademark that is easily recognized by local customers.


  • JPO and KIPO Agree to Compile Concordance Lists Indicating Corresponding Relationships of Similar Group Codes (December 13, 2013).
    • On December 5, 2013, the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) held the 25th JPO-KIPO Commissioners Meeting and discussed cooperation extending over many fields such as a field of trademark. Under the current system, the good and service classification codes (“similar group codes”) used in the JPO and the KIPO inconveniently have some differences. For example, the same goods have different codes between the JPO and the KIPO.
      Therefore, in order to enhance efficiency and stability in examination, and convenience of users, the JPO and the KIPO agreed to compile concordance lists that indicate corresponding relationships of the similar group codes between the JPO and the KIPO, publish the concordance lists on the JPO and KIPO web sites, and expand its contents in the future.


  • Iwate Prefecture’s Opposition Against Registration of Trademark “Iwate” Has Been Accepted
    • Iwate Prefecture announced on October 22, 2013 that an opposition against two applications for a registration of a trademark “Iwate”, which were filed in China, has been accepted.
      The two applications, in which abalones etc. were designated products, were filed in 2009 by a person who lives in Hong Kong. A staff member of the Iwate prefectural government found the filing of the two applications. Iwate Prefecture made the opposition because the registration would remarkably affect export of products made in Iwate to China. The China Trademark Office concluded in June, 2013 that “the registration was not accepted because “Iwate” is a foreign place-name which is recognized by consumers” The person who filed the applications did not appeal against the conclusion during a time period during which the person can appeal.
      In China, applications for registrations of trademarks of Japanese place-names are being filed one after another. Imabari city and Shikoku Towel Industry Association made an opposition against an application for a registration of a trademark “Imabari”, which was filed in China. However, the opposition was not accepted. Therefore, on October 31, 2013, Imabari city and Shikoku Towel Industry Association will visit the Chinese Embassy to build a friendly relationship with China and to explain Imabari city’s stance on the problem of the registration of the trademark “Imabari”.

  • China to revise trademark law
    • On August 30, 2013, the standing Committee of the National People’s Congress finally passed the decision to revise the Trademark Law of the People’s Republic of China. The revised Trademark Law shall come into force on May 1, 2014.

      The following are main points of the revision.

      • Introduce a system for registration of sound trademarks
      • Change from single-class application to multi-class application, which allows an applicant to file one (1) application for a trademark in multiple classes
      • Add provisions for prevention of bad faith registration
      • Add provisions for acts to restrict use of Chinese branded trademarks
      • Shorten an examination period (Chinese Trademark Office must finish examining a trademark application within 9 months)
      • Introduce provisions for right of prior use
      • Increase limit on damages
      • Add requirements for eligibility to claim for damage (to allow defense to be put forward by non-occurrence of damage)

  • Changes to Examination Standards for Product Trademarks and Service Marks in Korea
    • Until now, in Korea, similar applications for product trademarks and service marks were examined together to determine which had been applied for first. In other words, a prior service mark could form a reason for the refusal of an application for a similar product trademark (and vice versa).

      However, on August 17, 2012, the Korean Patent Office announced that as long as rights holders of service marks do not raise objections, the registration of a service mark would no longer be a reason for the refusal of a trademark application (and vice versa).

  • Changes to official fees for Korean trademark applications (from April 1, 2012)
    • Due to the adoption of the Madrid Protocol, the former system of increasing the cost of trademark registration depending on numbers of designated products and services in a category has been discontinued in Korea.
      However, following cessation of this system, applications that designate products or services with which the trademark will not really be used have increased. This is causing the burden on examiners to grow, and accordingly the amount of time it takes to complete examination is increasing. The result is that people are blocking genuine applicants from registering trademarks for certain products or services.

      To solve this problem, the Korean Patent Office will introduce a system on April 1, 2012 under which the cost of designating products or services in a single category increases after the 20th item.

      Further, time charges related to amending, updating or registering designated products or services will be subject to the same system.

  • Revisions to Korean Trademark Law
    • Together with the enactment of the Free Trade Agreement (FTA) between Korea and the USA on November 22, 2011, a revised Trademark Law was announced on December 2, 2011. The revised law came into effect on the same day the FTA was enacted.

      The main changes to the revised law are as follows:
      1. Protection added for Audio Trademarks/Scent Trademarks
      "Non-traditional trademarks" consisting of sounds or odors are now recognized under the Trademark Law. At the application stage, an explanation of the visual expression associated with the trademark must be written, and materials of the types listed below must be attached.

      ① Audio trademarks:
      → Electronic file of the sound (MP3, WAV or WMA format, under 3MB)
      → Musical notation of the sound
      ② Scent Trademarks:
      → Sample of the scent (liquid form in a sealed container)

      2. Introduction of verifying symbols
      A system has been introduced to handle symbols verifying the special quality, origin, production method etc. of a product or service.

      3. Cessation of system obligating registration of specialist usage rights
      Regarding specialist usage rights, the previous system requiring registration for the rights to be effective has been changed under the revised Trademark Law. Now, the rights are effective even if they have not been registered. However, for the protection of the owner of a trademark or third parties of good intent, registration is required for the opposition of third parties.

      4. Introduction of Secret Retention System
      In cases of trademark damages litigation, the trade secrets of the parties concerned are covered by the introduction of a secret retention order system.

      5. Introduction of Legal Compensation System
      Only in cases where infringement can be proven, the revised trademark law stipulates that payment of appropriate compensation up to 50,000,000 Won can be received.

      In addition, the charges of the Korean Patent Office will be revised on April 1, 2012. When applying for or registering trademark and the number of designated category 1 products or services is over 20, each designated product or service will carry an additional charge of 2000 Won. This also applies to registration renewals.

  • Singapore Patent Office partially increases official fees from December 1
    • From December 1, 2011, the Singapore Patent Office (IPOS) is raising some of its official fees, including those regarding trademark application and patent search procedures.
      As a result, the official fee when applying for a trademark with the IPOS (in the case of an online application) has increased to $341.

      http://www.ipos.gov.sg/topNav/svc/New+Fees+and+Form.htm

  • Singapore: trends concerning Trademark system
    • Implementation of Nice Classification, 10th Edition
      The Intellectual Property Office of Singapore (IPOS) plans to conduct examination based on the Nice Classification, 10th Edition, with regard to trademark applications filed on or after January 1, 2012.

      Harmonization of descriptions of designated goods
      The Intellectual Property Office of Singapore has signed a document with the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Office for the Harmonization of the Internal Market (EUIPO) (the Trilateral offices), stating that description of designated goods/services recognized by any one of the four Offices will be mutually recognized as valid.
      If this is implemented, there will be a lower risk of rejection due to a difference in the descriptions of designated goods/services. In addition, using the same description in different countries to obtain rights for the goods/services will benefit the applicants by saving time and money.

      Obligation to present evidence of use in non-use cancellation trials
      Due to a change of regulations, when submitting a written reply, the trademark owner (demandee) will hereafter have to submit evidence of use along with the declaration of use.
      However, the above does not apply in cases where there is a legitimate reason for non-use.

  • Taiwan Trademark Law draft amendment approved
    • On May 9, 2011, Taiwan’s Economic Committee of the Legislative Yuan approved a draft amendment to the Taiwanese Trademark Law. If the draft bill passes the readings at future Legislative Yuan meetings, the amended Trademark Law will be promulgated and put into effect.

      Below are the main revisions:

      1. Expansion of the items eligible for protection“Moving trademarks”, “holograms”, and “olfactory trademarks” will be newly added to the items eligible for protection.

      2. Stipulation of trademark usage conduct

      3. Abolition of the system of registration fee installment payments The current system is to be abolished and changed to lump payment of the registration fee for ten years at the time of registration.

      4. Addition of restrictions to system of consentEven if a declaration of consent has been submitted, in case that co-existing registrations are not recognized as appropriate, a system of not recognizing the registration will be adopted and the decisions will be made by the intellectual property office.

      5. Addition of definitions and regulations concerning the system of certificate of origin marks.

  • Malaysia amends its trademark regulations
    • The amended regulations went into effect on February 15, 2011. The main changes are as follows:

      1. Increase of Official Fee
      The revenue stamp fee in connection with the filing procedures has increased.

      2. Introduction of PPH
      In order for an application to undergo an accelerated examination, it must be a case of one of the following circumstances.

      1. The application involves the national or public good
      2. There are ongoing legal procedures concerning infringement, or there is evidence that there is danger of infringement

  • 2010 rankings of numbers of trademark applications by foreign companies in Korea (Madrid System)
    • (Unit: one application)
      rankingApplicantNationalityNo. of Applications
      1Philip Morris Products S.A.Switzerland87
      2Novartis AGSwitzerland59
      3Koninklijke Philips Electronics N.V.Netherlands38
      4SANOFI-AVENTISFrance36
      5Microsoft CorporationU.S.A.36
      6Apple Inc.U.S.A.27
      7Boehringer Ingelheim International GmbHGermany26
      8BASF SEGermany25
      9Cendres+Metaux Holding SASwitzerland23
      10Ares Trading S.A.Switzerland20
      KIPO



  • China tops world trademark rankings
    • A senior official from the Chinese State Administration for Industry and Commerce (SAIC) announced a series of figures putting in a new light China’s already established domination on the world of trademarks. With approximately 8,07 million applications and 5,39 million valid registered trademarks as of October 2010, the country is indeed in top place of world trademark rankings in terms of sheer numbers.

      The SAIC is aiming to solve the issue of abandoned trademarks within three years and to reach international standards within five years. Another objective is the acceleration of the trademark examination process.

      The number of trademark applications received by the SAIC from January to October 2010 is already reaching 859 thousand, and it is expected to exceed one million if the current pace is maintained.

  • New Chinese Trademark Office formality requirements
    • The Chinese Trademark Office has recently issued new formality requirements. The new rules started to take effect since July 1, 2010.Main changes are as follows:

      1. The applicant’s signature is required on all application forms to be submitted to the Chinese trademark Office, including application forms relating to trademark filings, trademark renewal, oppositions, an appeal for cancellation on non-use, etc.
      2. An original power of attorney is required for each application.
      3. All application forms are partially changed in formality. For applicant’s convenience, notes for filling up the application form and proceeding with the application are written on the backside of each application form. Each application form (in Chinese) can be downloaded from the site below.

      http://sbj.saic.gov.cn/sbsq/txsm

  • JETRO releases Japanese translation of China IP laws
    • The Japan External Trade Organization (JETRO) has released on its website Japanese translations for a number of Chinese judicial texts, including Chinese IP laws (Patent, utility model and design law, and trademark law), administrative regulations (for example administrative instructions on patent, utility model and design law, and ordinances on the enforcement of the trademark law) and law interpretations. A Japanese translation of the Chinese examination guidelines for patent, utility model and design was released as well.
      As the strategic importance of patent, design and trademark filing in China is on the increase, these translations will most likely come in handy for Japanese companies and IP practitioners.


      http://www.jetro.go.jp/world/asia/cn/ip/law/
  • India adopts the 9th edition of the Nice Classification for trademarks(India)
    • India has adopted the 9th edition of the International Classification of Goods and Services for trademarks (“Nice Classification”), following an amendment of its Trade Marks Rules dated May 20, 2010.With this amendment, the service classes 43, 44 and 45 have become available for use in the country.Published and registered trademarks may be registered or renewed with their original classes, as reclassification for these trademarks is not mandatory.However, it will be necessary to undertake specific procedures for currently pending trademark applications, such as filing a petition for reclassification into the appropriate class(es) or limiting the scope of the application to the services of class 42.

  • Chinese trademark law: SAIC issues examination guidelines for trademarks including the characters for “China” and for trademarks beginning with the character for “National”
    • The State Administration for Industry & Commerce (SAIC) of China published on July 28, 2010 its trademark examination guidelines regarding trademarks including the characters for “China” (中国) and trademarks beginning with the character for “National” (国). The contents of the guidelines are shown below.

      1. Trademarks including the characters for “China”An application for a trademark containing the official name of the People’s Republic of China or resembling that name will be registered only if all four of the following conditions are met:
      1) The applicant has obtained the approval of the State Council or of an organ authorized by the State Council and is thus qualified for the filing of such an application, and the name of the applicant is lawfully registered in the official name registry.
      2) The applied-for trademark and the name of the applying company or its abbreviation are identical, and the abbreviation of the name of the applying company has obtained the approval of the State Council or of an organ authorized by the State Council.
      3) There is a close relationship between the applied-for trademark and the applicant.
      4) The scope of the designated goods/services in the trademark application matches the scope of business.

      2. Trademarks beginning with the character for “National”A trademark beginning with the character for “National” will be strictly examined based on the following guidelines:
      1) Trademarks such as “National + name of the designated good” or trademarks including “National + name of the designated good” will be refused due to “being excessively promotional and deceiving in nature”, “lacking any noticeable features” and “causing a negative influence”.
      2) Trademarks beginning with the character for “National” but not of the type “National + name of the designated good” will not be examined along the guideline stated in 1).However, trademarks merely indicating the quality of the designated goods or of a deceiving nature, trademarks likely to cause damage to market order, and trademarks likely to cause a politically negative influence will be refused.

      Note: The applicant can submit as evidence relevant documents during the application process.

  • Korean trademark law: changes in the renewal procedure
    • The Official fee remittance system for trademarks in Korea was revised on July 28, 2010, as described below.

      1) Introduction of an installment payment system for the registration fee
      * In the former system, the registration fee (ten-year period) had to be remitted in a lump sum
      * With the new system, it is possible to remit the registration fee in two installments (five-year period). The second installment must be remitted before the beginning of the second half of the ten-year period of the duration of the trademark right.

      2) Shift to an application system for registration renewal
      * In the former system, the renewal application fee had to be remitted at the time of filing of the application for renewal; the renewal registration fee then had to be remitted following the receipt of the Decision to Register from the Korean Intellectual Property Office.
      * With the new system, remitting the renewal registration fee at the time of filing of the application for renewal makes it possible to obtain without examination an extension of the duration of the trademark right.

  • Famous Chinese tea to be authenticated by trademark seals
    • In order to protect from imitation their local Longjing tea, known as one of the finest teas in China, the authorities of the Zhejiang province will introduce in 2010 a system of trademark seals.
      The Zhejiang province obtained in 2009 the rights to the certification trademark for “Longjing tea”. Under the new system, seals showing the certification trademark will be stuck on authentic Longjing tea products, thus preventing the name from being used in connection with tea leaves produced outside the province.

  • Korea : introduction of a priority examination system for trademark on April 1
    • A system of priority examination for trademark was introduced in Korea on April 1, 2009. Thanks to this system, the examination of a trademark application will begin two months after the filing of the request for priority examination.

      This system can be used in the following situations:
      1)The applicant is using or preparing to use the totality of the designated goods and services of the trademark related to the application
      2)The applicant has sent warnings or has requested a provisional disposition forbidding the use of the trademark against a third party currently using with no legitimate reason a trademark identical or similar to the trademark related to the application
      3)A third party is using commercially and with no legitimate reason a trademark identical or similar to the trademark related to the application

      In addition, a system of “intervening right” and a system of “non-demand of right” are currently under study, with a scheduled introduction in 2010.

      Reference material




Africa

  • (August 31, 2015)
    • On July 31, 2015, Algeria acceded to the Madrid Protocol.
      The Protocol will enter into force with respect to Algeria on October 31, 2015, and thereafter it will be possible to designate Algeria in an application for international registration under the Madrid Protocol.
      Algeria is the 95th signatory to the Madrid Protocol.

  • OAPI and Zimbabwe to Join Madrid Protocol (December 18, 2014)
    • On December 5, 2014, the OAPI (Organisation Africaine de la Propriete Intellectuelle)* joined the Madrid Protocol. This will allow the OAPI to be a designated jurisdiction for the Madrid Protocol application, as of March 5, 2015.

      At present, however, no effect of the international registration is defined in the Trade Mark Act of the OAPI, and it is unknown whether the revised Trade Mark Act of the OAPI will come into force by March 5, 2015, when the OAPI can be designated for the Madrid Protocol application.

      Accordingly, if the OAPI is to be designated for the Madrid Protocol application in the future, caution needs to be taken to determine whether the right can be exercised.

      On December 11, 2014, the Republic of Zimbabwe also joined the Madrid Protocol, making it possible for Zimbabwe to be a designated jurisdiction for the Madrid Protocol application from March 11, 2015.

      Thus, 93 countries are currently the members of the Madrid Protocol.

      *The OAPI (Organisation Africaine de la Propriete Intellectuelle) consists of African countries, mainly French speaking countries (e.g., Cote d'Ivoire), and is an international organization related to intellectual property rights.

  • Tunisia becomes a member of the Madrid Protocol
    • On July 16, 2013, Tunisia joined Madrid protocol. This allows Tunisia to be designated for Madrid Protocol Patent Application officially from October 16, 2013.
      Tunisia is located in North Africa, whose currency is Tunisian dinar (TND). Recently, the foreign-direct investment to Tunisia, which has been working on investment promotion, has been rapidly increased in fields of manufacture, energy, and so on. Japanese companies have also taken more interest in investment in Tunisia.

  • Republic of Rwanda Joins Madrid Protocol (August 8, 2013)
    • On May 17, 2013, the Republic of Rwanda joined the Madrid Protocol, bringing the total number of member states to 90.
      As of August 17, 2013, international trademark applicants for requesting protection on trademarks by international registration will have the option to designate Rwanda.

  • Union of Comoros joins OAPI
    • On March 25, 2013, the Union of Comoros ratified Bangui Agreement, and became a member of the Organisation Africaine de la Propriété Intellectuelle (OAPI).
      OAPI, the African Intellectual Property Organization to which French-speaking countries are member states, is an organization for accepting and registering application for intellectual property rights in the member states.
      Besides the OAPI, there is an organization called African Regional Intellectual Property Organization (ARIPO), which is mainly for English-speaking countries in Africa.




Japan

  • KOMEHYO Launches Application Specialized for Bland Items, Striving Against Intellectual Property Right Infringement [November 9, 2017]
    • KOMEHYO launched a flea market application "KANTE", which is specialized for bland items. The application has a feature by which the users can request for authentication of sold items from professional authenticators. According to the company, this feature is not an after-the-sale service which has recently been reinforced in existing flea market applications, but a "before-the-sale" service for eliminating the users' anxiety before buying.
      The company pointed out that, since used brand items such as used high-class watches, jewelries, and luxury bags are often sold through personal transactions, many users feel anxiety about circulation of counterfeit items (such as intellectual property right-infringing items). With the application, they aim for reliable and trustful personal transactions of bland items.
  • Opinions Sought on Proposed Revision to Trademark Examination Guidelines [February 3, 2017]
    • On January 26, 2017, the Industrial Structure Council Intellectual Property Division Trademark System Committee Working Group for Trademark Examination Guidelines began widely inviting opinions on a published proposed revision to the trademark examination guidelines.

      The proposed revision focuses on Article 4 of the Trademark Law, and the main points that it would revise are as follows.

      ・Regarding judgment of similarity (taking into account similarity of outward appearance, name, and concept; similarity of goods and services; similarity of composite trademarks; and state of business), the basic method of consideration is described, guidelines for judging each element of name, concept and appearance are clarified and examples will be added and revised.
      Also, in cases where there is a controlling relationship between the applicant and the owner of a cited trademark, and the owner of said cited trademark acknowledges the receipt of registration of the trademark applied for, it will be clarified that the current section does not apply to the handling of the case (Article 4-1(xi)).

      ・The composition of sections regarding well-known trademarks belonging to other people (Article 4-1(x)), confusion in connection with goods or services (Article 4-1(xv)) and trademarks used for unfair purposes which are identical with, or similar to, trademarks which are well known (Article 4-1(xix)) will be revised to make the basic objectives of these sections clear, etc.

      ・To improve the ease of trademark rights management, it is made clear that a notification of refusal will be issued for the reasons of violation of the objective of Trademark Law Article 3 only in cases in which the same person applies for an identical trademark specifying identical goods/services to a prior filing/registration.

      The deadline for submitting opinions on the revision to the guidelines is Friday, February 24, 2017 (opinions submitted by postal mail must arrive by this date).

      https://www.jpo.go.jp/iken/170126_shohyo_kizyunkaitei.htm
  • Suzaki City, Kochi Prefecture Files Trademark Application for Local Mascot Character "Shinjo-kun" [December 12, 2016]
    • In October 2016, Susaki City, Kochi Prefecture filed a trademark application for its local mascot character "Shinjo-kun", which won the 2016 Yuru-chara Grand Prix.

      Susaki City filed the trademark application after finding out that a private company had filed in January 2016 a trademark application for a name of sweets including "Shinjo-kun" before the filing of the trademark application of Susaki City.

      Although the trademark application of the private company was rejected by the Japan Patent Office, Susaki City found out in June 2016 the situation based on information received from an outside source, and filed the trademark application in twelve classes including foods, toys, and clothing. The trademark application of Susaki City is under examination.

      The "Shinjo-kun" is a character which was created in 2002 in the motif of a Japanese otter, and was unknown for a long time. After a design of the character was renewed in 2013, however, the Shinjo-kun became nationally famous and ranked high in the Grand Prix for the fourth consecutive year.
  • Iceland Files Trademark Suit Against UK Company "Iceland Foods" [December 1, 2016]
    • On November 24, 2016, the government of Iceland filed a suit with the European Union Intellectual Property Office to invalidate the trademark held by supermarket chain "Iceland Foods."

      Iceland has complained that the trademark prevents domestic companies from using the country's name. The island nation reportedly decided to pursue legal action after negotiations with Iceland Foods proved unsuccessful.
  • Okayama Prefecture Files Opposition Against "OKAYAMA" Trademark [November 24, 2016]
    • On November 21, 2016, it was reported that Okayama Prefecture, the Okayama Chamber of Commerce and Industry, and other related parties jointly filed an opposition against a Hong Kong company's application for trademark registration of the name "OKAYAMA." Other trademarks indicating the name "Okayama" in Roman and Chinese characters have reportedly already been registered in China.

      Under similar circumstances in September and November of this year, Wakayama Prefecture filed an opposition against Chinese trademark applications relating to the characters for Wakayama.

      Chinese trademark law stipulates that known foreign place names cannot be registered. Trademark registration of place names by non-related parties can become an obstacle to both regional brand strategy and exports by local companies wishing to use the place name. Such cases therefore require legal action.
  • TPP-related Bills Are Yet To Be Passed Floor Session in Lower Hous[November 8, 2016]
    • On November 8, 2016, the Japan's ministerial part postponed passage of the bill to seek Diet approval of accession to Trans-Pacific Partnership (TPP) Agreement and its auxiliary bills, which passed the Special Committee on November 4, 2016, during the Floor Session in the Lower House. The bills are expected to be passed the session on or after November 10, 2016.

      If the TPP-related bills pass the Session, Japan's laws related to intellectual property rights will be revised in the following points:

      [Patent Law]
      • Exception to loss of novelty will be admitted in a longer period (6 months → 1 year).
      • Extension of patent right will be admitted for a patent for which registration of establishment of a patent right has been made after later one of (i) a date after 5 years from filing of a patent application or (ii) a date after 3 years from filing of a request for examination.

      [Trademark Law]
      • In the case of infringement by a trademark that is deemed identical from common sense perspective with a registered trademark, it will be possible to claim, as a damage compensation, a presumed amount corresponding to cost that is generally required for acquisition and maintenance of the registered trademark.

      [Laws related to protection for names of specific agricultural and marine products]
      • Foreign geographical indication will also be protected.

      [Copyright Law]
      • Copyrights will be protected for longer periods (50 years → 70 years).
      •Non-complaint provision will be introduced.
  • Number of Infringement Product Imported And Suspended In First Half Year Of 2016[September 12, 2016]
    • On September 9, 2016, the Ministry of Finance announced that the number of intellectual-property-infringing products imported and suspended in the first half year (January to June) of 2016 reached 13,846.
      The number dropped down as compared with the last year's record of 16,405 cases, yet has been exceeding 10,000 cases for 10 years in a row in terms of the first half year.
      The suspended products were imported mainly from China (91.7%), Hong Kong (2.5%), South Korea (1.7%), and Singapore (1.3%). The number of trademark-infringing product was 13,687 (98.5%) whereas the number of copyright-infringing product was 164 (1.2%).
  • Sum Total of Registered Regional Collective Trademarks Reaches 600 [2016.6.23]
    • On June 17, 2016, the JPO announced that the sum total of registered regional collective trademarks reached 600. The 600th regional collective trademark was “HIBAGYU”, a designated good of which is Japanese branded beef from Hiroshima pref.

      The regional collective trademark is a system introduced to protect and encourage regional brands in April 2008. So far, various regional brands of agriculture products, craft products, hot spring resorts, and local gourmet foods have been registered across the country.

      The JPO will continue to promote the regional collective trademark system so as to encourage regional economies via the regional collective trademarks.
  • JPO Advices Not to Abandon Trademark Application Filing Due to Preemptive Trademark [May 31, 2016]
    • On May 17, 2016, the Japan Patent Office (JPO) made an announcement regarding cases where some of applicants have filed a large number of preemptive trademark applications for preemptively registering a trademark of another person. In the announcement, the JPO advices not to abandon filing a trademark application even in such cases.

      In recent years, some individuals and companies have filed a large number of "preemptive trademark applications" for, for example, well-known phrases of another person, and the number of such trademark applications ranks high. According to the JPO, most of such trademark applications are flawed applications for which no payment of the fee is made, and thus will be dismissed. However, the Trademark Act and the Trademark Law Treaty, to which Japan acceded, provide that a filing date of such an application is admitted even in a case where no payment of the fee is made, and a process for dismissal of the application requires a certain time period. Thus, if a trademark search is conducted before the process is complete, the trademark that has preemptively applied is shown as a search result.

      The JPO advices not to abandon filing a trademark application in the above case, stating that even if a payment of the fee is made, a trademark is not registered in a case where:
      (1) a trademark filed for registration is not to be used for goods or services pertaining to a business of the applicant; or
      (2) a trademark application is, for example, a preemptive application for registering another person's well-known trademark.
  • "Kumamon" Product Sales Surpasses 100 Billion Yen
    • On March 2, 2016, the Kumamoto Prefectural Government announced that sales of products featuring Kumamoto Prefecture’s PR character "Kumamon" surpassed 100 billion yen in 2015 for the first time.

      In 2015, sales of Kumamon products reached 100.7 billion yen (including 2.1 billion yen of overseas sales), up 57 percent from the previous year. The figure represented the fifth straight year of record sales for the Kumamon products since the local government began keeping track of sales. Active use of the character has been promoted by the fact that the Kumamoto Prefecture allows companies etc. to use the trademark with no charge.

      The Governor of Kumamoto Prefecture Ikuo Kabashima stated “Kumamon is greatly contributing to the economic wealth of the prefecture. It is surprising that they sold this much overseas”.
  • JPO Starts FY 2015 "Anti-Counterfeiting Campaign" (December 3, 2015)
    • On December 1, 2015, the Japan Patent Office (JPO) started the FY 2015 "Anti-Counterfeiting Campaign". In FY 2015, the JPO strongly calls for public attention to the Campaign through, for example, a dedicated website for the Campaign, targeting consumers who use the Internet.

      In recent years, the e-commerce via the Internet has become active, leading to an increase in the number of victims of counterfeit products. From January to June in 2015, 16,367 goods infringing intellectual property rights were suspended at customers, and the number of such goods continues to be at a high level. The number of infringing goods such as personal items (e.g., hair accessories) and key cases was increased, and infringing goods dangerous in health and safety were also found in various cases.

      The Ministry of Economy, Trade and Industry reported that approximately 60% of Japanese companies that incurred damages from counterfeit products were damaged on the Internet. The dedicated website for the "Anti-Counterfeiting Campaign" posts examples of anti-counterfeiting efforts made on the websites for the Internet shopping and auctions and provides information such as how to spot counterfeit products, so as to raise consumers awareness of the counterfeit products.
  • Application Filed for Registration of "Kunisaki Shittoui" as GI under "Geographical Indications (GI) Protection System" (July 13, 2015)
    • On June 1, 2015, the Ministry of Agriculture, Forestry and Fisheries of Japan started to receive applications for registration of geographical indications under the geographical indications (GI) protection system.
      While many of the applications filed so far from around Japan are related to foods such as "Yubari melon" and "Kobe beef", applications are also filed for items other than foods, such as "Kumamoto-made rush " and "Iyo raw silk" (Ehime Prefecture) which aims at revitalizing the sericultural industry.
      "Kunisaki Shittoui Association" filed a geographical indication application for Shittoui (a plant used for tatami) on June 26, 2015, aiming at improving the brand image and the added value of the Shittoui.
      Appeals of "Shittoui" such as a traditional cultivation method is reacknowledged, and the application is aimed at making it clear a difference from Shittoui which is made in China and is available inside and outside Japan.
  • The "geographical indication protection system" started. (June 12, 2015)
    • On June 1, 2015, the Ministry of Agriculture, Forestry and Fisheries started receiving request for registration according to the "geographical indication protection system" based on which Japan protects the names of local products. On the first day of June 1, 2015, the Ministry of Agriculture, Forestry and Fisheries received requests for registration of 19 products from every region of Japan.

      According to the geographical indication protection system, upon reception of a request from a local producer's group, Japan examines a traditional production method, quality, etc., and decides whether a product name can be registered or not. A product whose name has been registered can indicate a certification mark. The geographical indication protection system is expected to distinguish a registered product from similar products and to promote export.

      Furthermore, for example, unauthorized use of a certification mark is punished. Japan positively clamps down on the unauthorized use of the certification mark so as to increase effectiveness of the geographical indication protection system.

      The Ministry of Agriculture, Forestry and Fisheries will proceed examination while taking into consideration opinions etc. of a third party and experts, and determine whether a product name is registered or not.
  • 25% Reduction in Trademark Registration Fee (February 12, 2015)
    • On February 10, 2015, the Japan Patent Office (JPO) established a policy to reduce the current trademark registration fee by 25%. Under this policy, the fee for registration of renewal of the term of a trademark will also be reduced by about 20%. The fees were revised in 2008, and will be revised for the first time in seven years.
      The JPO will submit a bill related to the revision to the Diet, and the reduction in the fees will come into force in 2015.
      The reduction in the fees makes it easier to file a trademark application. This will contribute to intellectual property protection.
  • JPO Announces Effective Date of Revision of Trademark Act Including "New Types of Trademarks" (February 5, 2015)
    • On January 23, 2015, the Japan Patent Office (JPO) announced that the revision of the Patent Act, etc. will come into force on April 1, 2015. The Trademark Act is one of the Acts to be revised, and a highlight of the revision this time is an expansion of the scope of protection.

      The revision of the Trademark Act will introduce the "new types of trademarks" as follows:
      (1) Motion mark (a mark whose figure, text, etc. change with time)
      (2) Hologram mark (a mark whose figure, text, etc. have a different appearance when viewed from different angles)
      (3) Color mark without a delineated contour
      (4) Sound mark
      (5) Position mark (a mark that consists of a figure, etc. and specifies a position in a product to which the figure, etc. is attached)

      These "new types" of trademarks were first introduced in the West and Korea and are going to be eligible for registration in Japan. This will promote the globalization of the trademark system. "Scent or smell marks" and other types of marks will not be introduced this time. However, it is expected that a revision of the Trademark Act in the future will allow further new types of trademarks to be eligible for registration.
  • Kamakura Seika publishes logo of "Kamakura Ichiba Brand" (Dec. 26, 2014)
    • A company called "Kamakura Seika" in Kajiwara, Kamakura-city published a logo of their registered trademark "Kamakura Ichiba Brand".
      Kamakura Seika manages the vegetable and fruit wholesaling local market of Kamakura to which about 150 agricultural producers in suburbs of Kamakura market their products. The logo is assigned to safe, secure, and high-quality vegetables.

      The Director of the company says that he would like to make a progress in building a brand by advertising good qualities of vegetables produced in the suburbs of Kamakura.
  • Trademark offices of Japan, U.S.A., EU, China, and Korea (TM5) held annual meeting (December 11, 2014)
    • From December 3 to 5, 2014, the trademark offices of Japan, the U.S.A., EU, China, and Korea (TM5) held the TM5 Annual Meeting in Tokyo.

      In this meeting, the TM5 offices organized a report on systems and practices on the so-called "bad faith trademark filings", in which a third party who is no way related to the owner of a trademark, such as a famous region or brand name, files an application for the trademark and registers it with other offices of overseas without the owner's consent.

      Also, presentation and panel discussion were made concerning certain issues, including the introduction of case examples about sound marks and motion marks etc., for which the JPO will start accepting applications around the spring of 2015.
  • Osaka Prefecture’s mascot renamed due to trademark issue (September 18, 2014)
    • Osaka Prefecture’s mascot, for which Osaka Prefecture had invited suggestions about a new name from July 1, 2014, was renamed “Mozuyan”. The mascot’s previous name was “Moppy”. However, since USJ (Universal Studio Japan) in Osaka Prefecture has its trademarked mascot “Moppy”, Osaka Prefecture invited suggestions about a new name for Osaka Prefecture’s mascot.
      On the invitation, 1905 names were submitted. The award ceremony was held in USJ on September 18, 2014 for the winner of the first prize for the name “Mozuyan” and the other prize winners. At the award ceremony, the Osaka prefectural governor, Osaka Prefecture’s mascot “Mozuyan”, and USJ’s trademarked mascot “Moppy” attended. The mascot “Mozuyan” was appointed as “Deputy Governor in charge of Public Relations”.
      The mascot “Mozuyan” is a character designed based on a shrike, the Osaka prefectural bird. In Osaka Prefecture, there are many other mascots. Therefore, Osaka Prefecture is planning to integrate the mascots into the mascot “Mozuyan”. In accordance with the change in name, the costume of the mascot “Mozuyan” was reformed. The mascot “Mozuyan” is expected to appeal attractiveness of Osaka Prefecture.
  • Japan’s First Registration of Three-Dimensional Trademark for Shape of Notebook, “Japonica Notebook” (August 29, 2014)
    • SHOWA NOTE CO., Ltd., which manufactures and sells various school supplies, announced that “Japonica notebook”, which is a popular notebook among elementary school students, was registered as a Japan’s first three-dimensional trademark for a shape of a notebook.

      “Japonica notebook” has become a long-selling product since the company started manufacturing and selling the notebook in 1970. The notebook is characterized in its cover having a plant’s or animal’s large photograph thereon. The design of the notebook varies depending on school years and subjects of elementary school.

      Normally, in a case where a product can be distinguished by consumers from another product only depending on a shape of the product as a result of observation of the whole product, a three-dimensional trademark of the product is not allowed. However, even such a product will be registered as a three-dimensional trademark if the product is closely correlated with its three-dimensional trademark as a result of a long-term use by specific users, thereby having a function of showing the origin of the product.

      Though the trademark application for the notebook was rejected once as being undistinguishable from another notebook, the JPO acknowledged that “Japonica notebook” has been highly recognized by many users from one generation to the next, and consequently allowed the registration of the notebook as a three-dimensional trademark.

  • Expansion of the Range of Applicants for Regional Collective Trademark System Comes Into Force on August 1, 2014
    • For the purpose of the revitalization of regional economy and protection of regional brands, the Regional Collective Trademark System started on April 1, 2006, and more than 560 regional products throughout Japan have been registered as regional collective trademarks until now. Before August 1, 2014, the applicants who can file an application for the regional collective trademark were limited to cooperatives incorporated under special Acts such as business cooperatives (e.g., Agricultural Cooperatives) and foreign corporations equivalent to thereto. However, after August 1, 2014, the partial revision of the Trademark Act enables commercial and industrial associations, Chamber of Commerce and Industry, incorporated non-profit organizations, and foreign corporations equivalent thereto to file an application for the regional collective trademark.

  • Patent Royalty Income from Foreign Countries Increases by 80%(July 10, 2014)
    • On July 8, 2014, the Ministry of Finance announced the Preliminary figures of the International Balance of Payments in May 2014.

      According to the Preliminary, the sum of incomes from “charges for the use of intellectual properties”, such as patent royalties, which Japan received from foreign countries in May 2014 was 481 billion yen, which represents an increase of 84% over the previous month. Japan’s surplus calculated by deducting the sum of royalties which Japan paid to foreign countries was 275.4 billion yen, which is the highest level in the previous 26 months. These factors mainly boost the current account surplus in the same month.

      On the other hand, net balance of payments in copyright royalties alone showed a deficit.

  • IPO Comes out with English Booklet on “Regional Collective Trademarks”– Supporting Japanese Regional Brands in Spreading Oversea.(June 18, 2014)
    • On June 13, 2014, the Japan Patent Office (JPO) announced that it came out with “Regional Brands in JAPAN”, an English booklet on 528 previously-registered regional collective trademarks.

      The booklet will be sent to governmental organizations and trademark examination organizations in major countries. JPO expects that this booklet will be used for the spread and promotion of Japanese brands in foreign countries.

  • Honda’s “Super Cub” Become the First Vehicle Registered as Three-Dimensional Trademark in Japan.(May 29, 2014)
    • Honda Motor Co., Ltd. announced that the shape of the motorcycle “Super Cub” was registered as a three-dimensional trademark in Japan. This is the first time in Japan for the shape of a vehicle itself to be registered as a three-dimensional trademark.

      For not less than 50 years since the Super Cub was first sold in 1958, Honda has maintained a consistent design concept of the Super Cub. Therefore, just by seeing the design of the Super Cub, people can recognize it as a Honda’s product.

  • The largest-ever number of import prohibitions of fake branded goods etc. in 2013.(March 20, 2014)
    • The Ministry of Finance announced on March 13, 2014 the situation where Japanese customs prohibited intellectual property infringing goods from being imported from abroad in 2013. According to the announcement, the total number of import prohibitions of the goods reached an all-time large of not smaller than 20,000 for seven consecutive years.
      Note that the number of import prohibitions of intellectual property infringing goods from China occupied 90% of the total number of import prohibitions for four consecutive years. Note also that in 2013, as in other years, the number of import prohibitions regarding trademark rights occupied most of the total number of import prohibitions, i.e., 98.4%.

  • Priority Registration Opens for Trademark Owners for New gTLD domain ".みんな" (December 20, 2013).
    • On December 10, 2013, Interlink Co., Ltd. opened priority registration for trademark owners (sunrise registration) for a Japanese domain name ".みんな" ("everybody" in Japanese).
      The "generic Top Level Domain" available in any countries or regions are currently limited to 22 including ".com". In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN), an international organization for managing the internet's domain name system, accepted application for new generic Top Level Domains (new gTLDs) and received more than 1900 applications. It is expected that about 1000 region names and company names including ".tokyo" and ".apple" will be added next spring.
      The domain name ".みんな" is one of the new gTLDs to be added and it is the first new gTDL to be operated in Japanese language. The sunrise registration is open to February 14, 2014.
      The ICANN will also take measures so that a trademark owner can lodge an objection against false use of his/her trademark, thereby temporarily suspending the use of the alleged domain name.


  • Shizuoka Prefecture Permits Use of Trademark "Fujippi" at No Fee on Condition of Advertising Prefecture
    • Shizuoka prefecture has launched a new program utilizing its mascot character "Fujippi". Shizuoka prefecture permits the commercial use of the trademark of Fujippi at no fee, on condition that the trademark is, for example, used with a slogan to advertise Shizuoka prefecture. Shizuoka prefecture also exclusively permits social welfare organizations etc. in the prefecture to manufacture and sell Fujippi merchandise. The first Fujippi merchandise is schedule to go on sale at Mt. Fuji Shizuoka Airport, etc. on 21st of August.
      "Fujippi" is a mascot character of Shizuoka prefecture created in 2000. More than 200 illustrations for the character have trademarks granted. Those who wish to use the character can submit an application form together with a product sample accompanied by a draft advertising slogan(s). Once the application is considered to satisfy the conditions such as "the name "Fujippi" is not included in a product name " and "the use of "Fujippi" does not cause false recognition or confusion", a permission is granted so that the product or packaging can have an illustration of "Fujippi".

  • AIPPI JAPAN Publishes Report on New Types of Trademark
    • In September 2012, AIPPI JAPAN published a report on its homepage regarding the national system for/implementation of new types of non-visual trademark.
      In the report, 'new type of non-visual trademark' is defined as a trademarked sound or smell, etc. These types of trademarks are coming into use worldwide.
      In its report, AIPPI JAPAN investigates and analyses the implementation of trademark systems that already include these new types of trademark, such as the European and U.S. systems, and the influences on and problems faced by the Japanese trademark system due to protecting these new types of trademarks.

      The report (in Japanese) can be read via the link below.
      http://www.aippi.or.jp/japan/info_500-1.htm

  • Familymart Looks to Utilize its Overseas Development with Trademarks
    • Familymart has begun preparations for developing its Private Brand (PB) in foreign stores.
      As preparation, Familymart will be registering trademarks in the near future. Altogether over half of Familymart's 21,200 stores are overseas, and the company will take advantage of this economy of scale in lot production and sales.

      Familymart plans to consolidate the many brands used across around 300 of its products into a single new brand, the Familymart Collection, and expand the range of products this brand contains. Initially, from October 23, 2012, 400 delicatessen, processed food and daily use products will be introduced, and afurther 100 products will be added later for a total of around 500 products under this brand.

  • JPO trial decision to refuse the registration as a 3D trademark of Yakult’s plastic bottle declared illegal by IP High Court
    • The IP High Court of Japan issued on November 16, 2010 a judgment ordering the Japan Patent Office (JPO) to revoke its earlier trial decision to refuse the registration as a three-dimensional trademark of the plastic container used for the Yakult drink.
      A milk-based drink widely known in Japan, Yakult is manufactured by Yakult Honsha, which had previously filed with the IP High Court a request for trial in revocation of the JPO’s trial decision.
      The registration of the Yakult bottle by the JPO, if it happens, would constitute the second time that the shape of a container is registered as a 3D trademark in Japan – following the registration of the Coca-Cola bottle.


      http://www.yakult.co.jp/news/article.php?num=515
  • The prefectural vice-governor of Kagawa, et al. visited China Trademark Office (CTMO) for solving the problem of place-name trademark such as “讃岐 (Sanuki)”
    • In May, 2009, Kagawa prefecture and the industry groups in Japan filed an appeal in response to the published application for a trademark “讚岐烏冬 (Chinese characters representing wheat noodle made in Sanuki district in Japan) in China On June 11, 2010, the prefectural vice-governor Takagi and the executives of the industry groups visited CTMO for requesting not to permit the registration.The prefectural vice-governor Takagi, et al. requested accelerated examination of their appeal and rejection of the registration, by insisting that “讃岐 (Sanuki)” is an old name of Kagawa prefecture and is still used in some place-names such as “讃岐平野 (Sanuki Plain)”, and the place-names “讃岐 (Sanuki)” and “香川 (Kagawa)” are widely known in China.In the interview this time, the Chinese authorities answered that they would appropriately deal with this case in accordance with the Chinese domestic low. The prefectural vice-governor Takagi says “we believe that the intention of our appeal and our concern on the registration of the place-name trademark have been understood. We will continue to take necessary actions so that our appeal would be approved”.

  • Hikone city will charge for commercial use of trademark “Hikonyan”
    • The mayor of Hikone City announced on March 1, 2010, that the city would charge for the use of the trademark “Hikonyan”, owned by the city.
      This will come into force from this July over sales of products using the trademark, etc. for commercial purpose.
      Meanwhile, the use of the trademark by public corporations, citizen groups, etc. for non-commercial purpose will stay charge-free.
      The companies in the city will be also allowed to use the trademark for free, even for commercial purpose.
      “Hikonyan” is a character created for “the 400th Anniversary of the Construction of Hikone Castle (a national treasure)”, and “A Commemoration of Ii Naosuke and the Opening of Japan 150th Year Festival”.
      “Hikonyan” soon became popular, but the city has not charged for the use of the trademark so as to promote the events.
      According to the announcement, the city will charge for the use of the trademark, in accordance with the scale of a business, a sales plan, etc.By the end of last year, the city permitted approximately 1000 use of the trademark, and the total sales amount of Hikonyan-related products for 2 years (2007 and 2008) is estimated as much as about 270 million JPY.

  • Establishment of Examination Criteria for Applications of Trademarks Involving the Name of a Historical Figure, etc
    • The current Trademark Law has no written provision to prohibit registration of trademarks involving the name of a historical figure. However, there is a concern over registration of a trademark involving the name of a historical figure by a person with no connection to the historical figure; such registration may have an adverse effect on the local industries of the birthplace of the historical figure, undermining its efforts for regional development, or may offend the descendants.
      In view of this, the Japanese Patent Office is planning to establish examination criteria for a violation of public order (Trademark Law, Article 4, Paragraph 1, Item 7) in relation to applications for trademarks involving the name of a historical figure, etc, so as to avoid simply examining individual cases on the basis of the trend of trial decisions. This reflects a standpoint of ensuring uniformity, clarification, and foreseeability of examination.


      Examples of trademarks involving the name of a historical figure, etc, that were not allowed to be registered as a result of trial decisions

       ・“Yukichi Fukuzawa” (invalidation trial No. 2004-89021): Yukichi Fukuzawa was an enlightenment thinker and the author of “Gakumon no susume (Encouragement of Learning; an enlightenment book on the author’s opinion about the nation and learning)”
       ・“CARNEGIE SPECIAL” (Tokyo High Court decision of August 29, 2002; No. 529 filed in 2001): Dale Carnegie was a writer and lecturer. Educational courses having titles beginning with his name are widely known in a lot of countries including Japan.
       ・“Hideyo Noguchi” (appeal trial No. 2003-18577): Hideyo Noguchi was a world-famous bacteriologist.





Global

  • Apple Loses Lawsuit over Trademark “IPHONE” in China (May 20, 2016)
    • The Beijing Court dismissed Apple’s claim in the lawsuit that Apple sued Chinese company, demanding invalidation of the trademark “IPHONE” in China.
      In 2002, Apple filed an application for a trademark “iPhone” in class 9 of the international classification (telecommunication devices, electronic application devices and parts thereof). Meanwhile, Xintong Tiandi Technology (Chinese company) filed, in 2007, an application for a trademark “IPHONE” in class 18 of the international classification (leather and imitations of leather, travelling goods and saddlery). Apple claimed that its trademark “iPhone” was prominent in China and filed opposition to the registration of the trademark “IPHONE” of the Chinese company. However, the Trademark Office of China did not admit Apple’s claim. Then, the lower court for trial for invalidation also dismissed Apple’s claim, saying “it cannot say that the trademark “iPhone” was prominent at the time of 2007.” After that, Apple appealed against the ruling but the Beijing Municipal High People's Court made the same ruling as in the lower court, and Apple lost the case. Apple announced its dissatisfaction with the ruling and announced that it will appeal to the supreme court for demanding a retrial.

  • Kuwait started receiving applications claiming priority (January 1, 2015)
    • Kuwait joined the Paris Convention on September 2, 2014, and it went into effect on December 2, 2014. Accordingly, the Trademarks Office of Kuwait announced that it started receiving trademark applications claiming priority on and after January 1, 2015.
      A priority certificate requires to be certificated by a consul, and can be submitted within 3 months after filing of an application.

  • TPP Negotiations: Expected to Agree on 70-year Copyright Protection Period.(May 8, 2014)
    • At the TPP Chief Negotiators’ meeting held in Vietnam, 12 participating countries are likely to agree on uniformly setting the copyright protection period at “70 years”, in the intellectual property field where negotiations between the U.S. and emerging countries were proceeding with difficulty. The U.S. called for the other countries to uniformly set their protection periods to be the same as its own 70-year period. Canada and Japan, which have currently set a 50-year protection period in principle, worked in harmony with the U.S., whereas the emerging countries were against the U.S. However, the developed countries and the emerging countries are expected to reach a settlement on this issue, as the developed countries made their concessions to the emerging countries by setting patent protection periods for new medicines at about 10 years in the developed countries and 5 years or less in the emerging countries. This may contribute to significant progress toward conclusion of the entire TPP negotiations.

  • Five Trademark Offices (TM5) (Japan, US, Europe, PRC, and ROK) Website Launched.(May 1, 2014)
    • The Five Trademark Offices (TM5) aim at providing an environment where trademarks are properly protected and utilized all over the world, and are currently carrying out nine cooperative projects.

      As one of the nine cooperative projects, the TM5 official website has been launched.

      The TM5 website was developed for the purpose of the following two points:
      • Develop and implement the website for sharing results of the cooperative projects among the TM5 partners
      • Provide useful information regarding trademarks via the website

      The TM5 website currently provides an outline of the TM 5 cooperative projects, TM5 partners’ respective trademark laws, news, and information on events.

      *Trademark 5 (TM5) partners are patent offices in Japan, the US, Europe, PRC, and ROK.

      Trademark 5 (TM5) official website: http://tmfive.org/main.php

  • Delay of publication of WIPO Gazette of International Marks is reduced by seven days.(January 23, 2014).
    • The International Bureau of the World Intellectual Property Organization (WIPO) shortens, by seven days, delay of publication of WIPO Gazette of International Marks which is the official publication of the Madrid System. Every Thursday the International Bureau publishes data concerning new international registrations, subsequent designations, etc. Since delay of publication of a WIPO Gazette which is published first on January 16, 2014 or after is shortened by seven days, the date of publication of the WIPO Gazette becomes identical to the date of notification to a designated state(s).

      The following URL shows the reference page concerning this article, presented by the Japan Patent Office.
      http://www.jpo.go.jp/tetuzuki/t_shouhyou/kokusai/wipo_kouhou.htm

  • Versace Group Wins Over Counterfeiters Who Sold Counterfeit Products on eBay
    • On May 28, 2013, Versace Group won in the court of California over Griffith Suisse Luxury Group who had been selling counterfeit VERSACE-branded products through eBay in Philippines and Australia. Griffith Swiss Luxury Group is now prohibited from using VERSACE trademarks and using eBay as a selling platform. This lawsuit continued for 4 and a half years.
      eBay is the world largest auction website. In the past, Louis Vuitton and others had filed lawsuits against counterfeiters who sold counterfeit products through eBay.
      Victims of forgery and/or counterfeit products through websites also tend to increase in Japan. According to an investigation by the Japan Patent Office, companies suffered from imitations on internet account for 53.9% of all the companies targeted for the investigation. Trademark infringement accounts for 35.6% of damages sorted by rights.

  • Madrid Protocol: sending of the Decision to Grant a Registration to become automatic
    • On September 1, 2009, the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (also called the Madrid Protocol) will be modified as described below.

      - Current system -
      When filing an application for international registration under the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, the designated authority in each member state examines the application in the twelve or eighteen months following the filing of the application, and sends the applicant a notice detailing the reasons for refusal if such reasons were found. On the other hand, if no reason for refusal has been found, the sending of a notice in this regard (that is the Decision to Grant a Registration) is left to the discretion of the authority.

      - Revised system -
      From September 1, 2009, the sending of a Decision to Grant a Registration in the case that no reason for refusal has been found will be compulsory in all member states. Accordingly, it will be possible for the applicant to be informed earlier that the application has been registered.




North & Central America

  • [U.S.A.] Store name appearing in fiction benefits from trademark protection even if not registered as trademarks [January 27, 2017]
    • On January 1, 2017 the Federal Court of Texas passed a summary judgement according to which store names, which appear in fiction, benefit from trademark protection, even if they are not registered as a trademark
      This related trial is related to the trademark "The Krusty Krab" which IJR Capital Investments had filed as a restaurant name in 2014. Viacom, the parent company of Nickelodeon, sued IJR for trademark violation, since the trademark is identical to the name of the fictional restaurant "The Krusty Krab" located in Kraby Land, which appears in the cartoon series "Spongebob Squarepants" from Nickelodeon.
      Viacom did not register the trademark "The Krusty Krab". However, the federal court found that a trademark right arises through use rather than through registration, and judged that the trademark "The Krusty Krab" of the fictional restaurant is valid.

      http://www.excite.co.jp/News/it_g/20170115/Slashdot_17_01_15_0523234.html

  • Canada Extends Enforcement of Revised Trademark Act
    • The CEO of the Canadian Intellectual Property Office announced that the Madrid Protocol, the Nice Agreement, and the Singapore Treaty will come into effect in 2018. The enforcement of the revised Trademark Act, which was planned to come into force in 2016 or 2017, is postponed.

      According to the revision of the Trademark Act, a "statement of use," which is required when a trademark application is filed based on proposed use will be abolished. The revised Trademark Act will be also applied to pending applications that are applied under the current Trademark Act.

  • Google Responds to Office Action on Trademark "GLASS" (April 10, 2014)
    • Google filed an official response this spring to an Office Action issued by the USPTO against their trademark application for the trademark "GLASS".
      Google has already obtained a trademark right for "Google Glass" for their new product "Google Glass". Meanwhile, Google made a trademark application for a single word "GLASS" as a graphic. The Office Action was issued last autumn against the application. The USPTO rejected the application because (1) the similarity between the mark and product of Google Glass and other existing trademarks is likely to cause confusion and (2) the word "GLASS" is merely a descriptive word that describes characteristics of the product.
      In response to the Office Action, Google's attorney submitted a 1928-page argument on March 20, 2014 and made an amendment on April 3, 2014. In the argument, Google argues that (i) the trademark of the subject application does not have similarity to existing trademarks, (ii) the word "GLASS" is not descriptive, and (iii) the word "GLASS" gained distinctness through the use of the word by Google. If the USPTO agrees that the word "GLASS" gained distinctness through advertisements and sales of Google Glasses by Google, the rejection (2) will be overcome. It is believed that the key is whether or not the about 1900 pages of material, which is attached to the argument, can prove this point.

  • Mexico Establishes System for Online Applications
    • On September 28, 2012, the Mexico Patent Office began accepting online applications for trademarks etc. through its website. Subsequently, trademark applications, group trademark applications, trade name notifications, slogan trademark applications and design application may now be applied for 24 hours a day, 365 days a year using the online system.

  • USPTO Debuted TMIN
    • On March 31, 2010, the U.S. Patent and Trademark Office (USPTO) debuted the Trademark Information Network (TMIN). At TMIN, it is possible to view broadcast-style videos which cover important topics and important information on trademark applications.

  • Apple’s iPad: trademark battle brewing?
    • After Apple unveiled its new tablet PC “iPad” on January 27, 2010, it was discovered that a number of companies, including the U.S. subsidiary of Fujitsu, had already applied for the iPad name. A dispute over trademark rights between Apple and these companies could be on the horizon.




South America

  • Colombia Joins the Madrid Protocol
    • On May 29, 2012, Colombia applied to join the Madrid Protocol.
      From August 29, 2012, it became one of the countries that can be specified on an international registration application under the Protocol.
      Colombia's entry into the Madrid Protocol brings the number of member nations to 86.

  • Chile's accession to the Trademark Law Treaty takes effect
    • On May 11, 2011, WIPO announced that the Chilean government had completed accession procedures for the Trademark Law Treaty.
      The accession came into effect on August 5, 2011.




Europe

  • Benelux Partially Revised Trademark Procedure (December 6, 2013).
    • On October 1, 2013, Benelux partially revised the trademark procedure.
      The following (i) through (iv) show how the trademark procedure was revised.

      (i) The trademark procedure can be done in English, in addition to Dutch and French.

      (ii) The period during which an opposition procedure can be suspended was extended from two months to four months.

      (iii) The date from which the opposition period (of two months) is reckoned was changed to the date when a patented trademark application is published from the first date of a month subsequent to the month when the patented trademark application is published.

      iv) The procedure for renewal of a registered trademark was simplified to a mere payment of the fee for renewal of the registered trademark. It is therefore unnecessary to file any written application for renewal of the registered trademark.

  • Nice Classification, Reversion of Class Headings
    • According to the ‘IP TRANSLATOR’ judgment in June 2012, description, in a EUTM application, of only goods and services which fall under the following eleven class headings of Nice Classification is not accepted, because bold-faced parts of the eleven class headings are neither clear nor precise.

      The remaining 186 class headings of Nice Classification are still accepted.


      Class 6:
      Goods of common metal not included in other classes

      Class 7:
      Machines and machine tools

      Class 14:
      Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes

      Class 16:
      Paper, cardboard and goods made from these materials [paper and cardboard], not included in other classes

      Class 17:
      Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials [rubber, gutta-percha, gum, asbestos and mica] and not included in other classes

      Class 18:
      Leather and imitations of leather, and goods made of these materials [leather and imitations of leather] and not included in other classes

      Class 20:
      Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics

      Class 37:
      Repair, Installation services

      Class 40:
      Treatment of materials

      Class 45:
      Personal and social services rendered by others to meet the needs of individuals

  • Italy enforces trademark opposition proceedings
    • From May 1, 2011, opposition proceedings are to go into effect with regard to Italian trademark law.However, the opposition proceedings will not apply to trademark applications filed before the date of enforcement.

  • Number of applications filed with Europe's Community Trade Mark (EUTM) and Registered Community Design (RCD) recovers
    • The number of applications filed with the Community Trade Mark (EUTM) in 2010 has increased by 11% from 2009, reaching 98,000 applications. Out of this number, applications from Germany and the U.S.A. in particular have increased greatly.

      The number of applications filed with the Registered Community Design (RCD) has also increased by 7% from 2009, reaching 82,000 cases. The number of applications from Germany, Italy, etc. has slightly decreased from 2008, but as a whole, the annual applications have reached a new high.

  • Information regarding relief measures, etc. by Europe's Office of Harmonization for the Internal Market (EUIPO)
    • The European Office of Harmonization for the Internal Market (EUIPO) has provided relief measures in response to the recent Tohoku earthquake.
      As a result, all time limits which affect persons who have their residence or a registered office(s) in Japan and are in the process of following procedures with the EUIPO, and which were to expire between March 11 and March 28, 2011 (March 11 and March 28 inclusive), have been extended until April 28.

  • Establishment of Website concerning European Community Trade Mark (EUTM) and European Registered Community Design (RCD) in Japanese language.
    • A Website in Japanese language has been established to introduce Community Trade Mark (EUTM) and Community Design (RCD) for which EUIPO is responsible. For details, please refer to the homepage below.

      http://www.registerbrandeurope.jp


  • Montenegro revises its Trademark Law
    • Montenegro’s new Trademark Law went into effect on December 16, 2010. Main changes are as follows.
      1. Establishment of an application system for acquisition of protection of Serbian trademarks in Montenegro: in order to acquire protection in Montenegro of a Serbian trademark registered before May 28, 2008, a new application is required (the deadline for the application is December 16, 2011). The following items do not need this new application: (a) ones which for which proof of trademark right have already been requested; (b) ones for which request for renewal in Montenegro of the Serbia-based trademark has been submitted; (c) ones based on Serbian trademarks and for which request for registration in Montenegro has been made by assignment, name change, etc.
      2. Implementation of an appeals system: the period for making an appeal is within 3 months of the announcement of an application. In the examination, similarity with previous trademarks (i.e., examination on relative grounds) will not be determined.
      3. If one does not accept the trademark office’s decision, one may request an appeal with the office with proper jurisdiction. Furthermore, if one still refuses to accept that further decision, an administrative lawsuit is possible.
  • TMview adds data on Bulgarian domestic trademark applications and registrations
    • TMview added domestic trademark data (application and registration information) for Bulgaria to its searchable database. With the addition of Bulgaria’s domestic trademark data (approximately 79,000 cases), TMview’s stored data includes more than 4.7 million items. What is TMview? TMview is a free online trademark search service offered from April 13, 2010. It offers data for the following countries and organizations: EUIPO, WIPO, Great Britain, Czech Republic, Italy, Benelux, Portugal, Denmark, Spain, Slovakia, Slovenia, Estonia, Bulgaria.

  • Revised trademark law in Norway
    • Norway revised its trademark law on July 1, 2010. The main points of the revision are as follows.
      Following this revision, it is now possible to file a trial for cancellation or invalidation to the Norwegian Patent Office (before the revision, it was necessary to file a lawsuit in a court of law).
      The term of registration is now of ten years from the filing date (instead of ten years from the registration date).The period to file an opposition is now of three months from the date of disclosure (instead of two months).

      Other countries revised their trademark law recently.In Italy, an opposition system was introduced on March 10, 2010.
      Romania also revised its trademark law on March 29, 2010. Following this revision, the Romanian State Office for Inventions and Trademarks no longer examines relative grounds for refusal; examination is thus conducted only regarding absolute grounds for refusal.

  • Revision of the Community Trademark fees scheduled to early May
    • The European Commission has announced that a fee reduction and revision of the fee system regarding Community Trademarks (EUTM) will take place in early May.
      Following the revision, EUTM fees will be paid as a single sum at the time of filing, in contrast to the current system where fees are paid separately as “filing fees” and “registration fees”.
      Details of the revision are as follows:


       Current feeRevised fee from May 2009
      EUTM application fee (paper) (1)9001050
      EUTM application fee (e-filing) (1)750900
      EUTM registration fee (2)8500
      Madrid Protocol registration fee (3)1450870

      (1) Effective for applications filed after the implementation of the new fee system.
      (2) Effective for applications that reached the registration stage after the implementation of the new fee system (if the EUIPO issues the letter inviting the applicant to pay the registration fee before the new fee system becomes effective, the pre-revision fees will apply).
      (3) The new fees related to Madrid protocol applications will become effective about 3 months after the implementation of the revision.





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