Protecting your brand abroad series: Japan

By Trish Sawhney

Photo by Jezael Melgoza on Unsplash

​The information in this guide has been provided by the Canadian Department of Industry. Please note that this guide does not constitute legal advice and is merely intended to act as an aid if you are considering global expansion.

Where is IP registered?
The Japan Patent Office (JPO) is the Japanese government agency responsible for granting trademark, patent, utility model and design rights.

Trademarks

Filing System: Japan follows a "first-to-file" system for trademark rights, which means that whoever registers a trademark first holds the exclusive right to the use of the trademark.

Registration Period: In Japan, a trademark is registered for 10 years and can be renewed every 10 years.

Non-Use: If you are not regularly using your trademark in the Japanese marketplace, it may be subject to a dispute or challenged for non-use. Cancellation may be requested if the trademark is not used for 3+ consecutive years.

Madrid Protocol: As a member of the Madrid Protocol, Japan can be designated in an international application filed via the Madrid System.

IP Enforcement
There are several ways to enforce your rights against unauthorized use of your IP in Japan:

• Japan maintains a strong framework of enforcement measures to protect against IP infringement. IP owners can send a warning letter to notify the infringer of their actions in hopes that the infringer ceases all wrongful actions.
  
  
• IP right holders can request a provisional injunction to prevent infringing acts from continuing until the case is resolved.
  
  
• The Japan Customs tariff law gives IP owners the option of filing for custom suspension of infringing goods. If the goods are found to be infringing, the company may face a fine of up to USD 100,000.
  
  
• Japan also provides the option of ADR processes, such as mediation and arbitration. ADR processes are generally more informal, less adversarial, cheaper and settlement focused. They can be used before or as an alternative to going to court.

Interested in expanding your trademark protection into Japan? Contact us today.