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.
(Posted on February 21, 2007)
