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IP NEWS FLASH |
Retail and Wholesale Services
Will Be Able to Register Their Service Mark In Japan Effective
April 1, 2007 |
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A revision in Japanese Trademark Law that passed
the Diet in June 2006 will go into force in April 1, 2007. The new law
will allow retail and wholesale service marks to be registered for the
first time in Japan under International Class 35. The three months from
the effective date will comprise a transitional period in which the
first to file principle will not apply and all applications filed
at his time will be given an identical filing date.
Large numbers of applications will be examined at
once, and with that, the possibilities of there being many similar
service marks are high. In such a situation, the process for selecting
the qualifying applicant will be determined by an examiner-mediated
consultation among competing applicants. Priority will be given to those
who can prove that the service mark for the retail service has been in
continuous use in good faith prior to the effective date. If only one
applicant can prove this fact, the registration will go to that
applicant. A more likely scenario will be that there will be two or more
applicants with proof of prior use. In such a case, all applicants with
proof will be eligible to register their service marks. If, however, all
of the filed service marks are unused, or if none of the applicants can
prove prior use, one applicant will be chosen either by mutual agreement
or by lottery.
Although Japan has used the International
Classification since April 1, 1992, it is only now playing catch-up to
the US and other countries in terms of allowing retail and wholesale
service marks to be registered. Until now, retail service providers in
Japan have had to register each class of goods being sold in their store
in order to protect their service marks. The internet and e-commerce
have no doubt contributed to the breaking down or widening of previous
notions of what a “retail service” consists of, and one can say that
their prevalence has forced the Japanese Trademark Office to no longer
ignore this blatant omission in their trademark provisions.
Some of the benefits of being able to register
service marks for retail and wholesale services are the use of the marks
on store wrappers, fliers, catalogs and other means of advertisements.
Marks can also appear on staff nametags, shopping carts, billboards and
other signs, without the risk of a cancellation trial for non-use. |