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Every Country has different law for patent registration. The law governing Patent registration in India is Patent Act, 1970. Patent registration in India can be filed either alone or jointly with a partner or by legal representative of a deceased inventor. Several documents are required for further processing. Patent Registration in India is a specialized process need experts. As patent registration in india is a very complicated procedure so it can also be done with the help of good attorney who would able to guide through the entire process of patent registration in India.Patent registration offices established under the ministry of commerce & industry, department of industrial policy & promotion are available to guide the applicant. Patent office looks after the various provisions of patent law relating to grant of patent.

Whether its trademark registration in delhi, Bangalore or Mumbai, the important point to be noted regarding trademark registration in India is that Trademark registration confers on the proprietor a kind of monopoly right over the use of the mark which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purposes, certain restrictions are necessary on the class of words or symbols over which such monopoly right may be granted. Therefore while trademark registration in India one should make it a point that descriptive words, surnames and geographical names are not considered prima facie registrable as per Section 9 of the Trade and Merchandise Marks Act, 1958. To be an effective trademark registration in India one should keep in mind that the  registrable trademark should be distinctive and should not be similar to any other trade mark registered for the same or similar goods or used by a competitor whether registered or not because in the case of a similar mark used by a competitor but not registered difficulties for registration will arise if the owner of the mark chooses to oppose the registration.

Ever since the enacting of these laws, a remarkable change on protection system for trademarks has been accomplished. For instance, with the adoption of the Niza´s International Classification of Goods that gives a wider and greater protection to registered trademarks and eliminates the limited scope of former local classification with 70 classes of products.

Moreover, creation of National Office for Industrial Property (by law 20-00), has started the modernization of the trademark computer system and has incorporated the technology needed to expedite the process as from clearance search until possible administrative conflicts which might arise from the application in question.

TRADEMARKS AND TRADE NAMES

Registration of trademarks in Dominican Republic grants trademark owner the exclusive rights of prohibiting any use by third parties of the registered trademark, except for the cases when use by third parties is legitimate and made as a consequence of any trade relation started by the owner of the trademark direct or indirectly when the product is put in the local or international market as long as product or good has suffered no alteration or modification whatsoever.

Trade names are protected by law 20-00 and its rights are originated not for the registration but for the first use in commerce. Protection is granted even when not registered but is eliminated upon the abandonment of the trade name which takes place when no use of the trade name in question has been made for the last 5 years.

Registration applications may be filed with the National Office of Industrial Property. Registration is granted for a period of ten years, renewable for consecutive ten-year periods. Renewal applications must provide proof of use of the trademark along with a Declaration of Use or Non use based on the provisions of Act 20-00 on Industrial Property

Documents required to file a trademark or trade name application:

1- General information on the applicant such as Country or State of incorporation (for companies), name of the representative of the company, passport number and address.

2- Exact way the trademark is to be registered (specification on letters and colors if any claim is to be made upon them);

3- For cases of designs or labels, provide 6 samples of 3´x3´ size in color

4- Description of goods and services to be protected.

5- In the event priority benefits of the Paris Convention are to be claimed, it would be necessary to provide a certified copy of the application as filed in the country or origin. No further legalization is required.

6- Power of attorney form duly signed by the applicant, notarized and then legalized before Dominican Republic Consulate nearest to the applicant’s jurisdiction.

PATENTS

Dominican State grants Patents in order to protect inventions, utility models and industrial designs. Inventions are defined as any idea or creation of the human intellect, whether related to products or processes, capable of being applied to industry. Non patentable materials include natural substances, scientific theories and mathematic methods, solely aesthetic creations, presentations of information, computer programs, therapeutic, chirurgical or diagnostic methods for human or animal treatment, living matter and new uses of patented products or processes.

Patent applications are filed with the National Office of Industrial Property, and the whole procedure might take about two years. Patents are granted for twenty years counted from the date of filing.

Inventions patented abroad may also benefit from a Dominican patent. Furthermore, a foreign inventor may have priority rights for filing for a patent in the country, when he has filed a patent application in a member country of international treaties to which the Dominican Republic belongs, or which grants reciprocity to Dominican inventors, but only for a period of one year after having filed for a patent abroad.

Documents required to file a patent application:

1- Specifications, claims and summarization of invention or utility model in triplicate in Spanish language.

2- Original drawings (if any)

3- Power of attorney form (see legalization requirements on trademarks)

4- Assignment of rights from the inventor (if other than the applicant) duly signed by inventors and applicant; notarized and then legalized up to the Dominican Republic Consulate nearest to the applicant’s jurisdiction. Certified copy of the one filed in the country of origin is suitable as well.

5- If priority benefits are to be claimed, certified copy of the application filed with the Patent Office in the country of origin. No further legalization required.

COPYRIGHTS

Enacting of Law 65-00 was made in order to comply with requirements set by the World Trade Organization (WTO) on violations of copyrights in which Dominican Republic has one of the first places in the world for being responsible of a high level of infractions on this concern against copyrights particularly against software and music business.

Law 65-00 protects any original intellectual creation, whether literary, artistic or scientific, that may be fixed, transmitted or copied by any existing or future printing, reproduction or divulgation methods. It also protects independent creations deriving from original works, such as those resulting from adapting, translating or in any other manner transforming the original work. It also protects, and regulates the exercise of, related rights, which are granted to performing artists for their performances, phonogram producers for their recordings, and broadcasters their radio and television programs.

Moreover, law 65-00 protects works from authors having Dominican nationality or residing in the country, or who are nationals or residents of countries belonging to the international treaties ratified by the Dominican Republic, as well as works whose first publication has been made in the country (or in a member country of ratified international treaties) or that have been published here (or in a member country of ratified international treaties) thirty days after their first publication. In the absence of international treaties, protection will still be granted to foreign works, but subject to reciprocity.

Copyrights registration is not mandatory for enjoying the protection of the law and this non-registration does not affect the exercise of the author’s rights arising from the material creation; however, it is strongly advisable to register and thus reinforce by the publicity and guaranties of authenticity and security that ONDA provides the protection of copyrights.

Violations of intellectual property rights may be subject to criminal sanctions including fines and prison of up to three years. Administrative measures may be applied by ONDA and include warnings, fines, temporary or permanent closure of establishments, seizure of illegal copies or machinery used for their production, destruction of illegal samples and others.

Documents required to register copyright:

1- 6 copies of the work to be registered and 2 digitalized copies thereof (either in diskette, compact disk or digital video disk)

2- General information on the author, its editor or representative, printing editor or the person in charge of handling author’s interests (if any)

3- Power of attorney form (please see trademarks)

4- General written information of the work to be registered including publication date, area of art or design applicable to this work.

5- Other requirements might apply for different work areas.

SANITARY REGISTRATION OF PRODUCTS IN DOMINICAN REPUBLIC

It is necessary to obtain authorization permits before Ministry of Health in Dominican Republic in order to start trading any eatable, pharmaceutical, household, and personal care products in Dominican Republic territory.

According to this, manufacturer must accomplish certain requirements before proceeding with such registration of products, including among others:

To register an authorized distributor company (either Dominican company or a manufacturer’s subsidiary incorporated under Dominican laws) before the Ministry of Health. In the event the manufacturer decides to incorporate a company under Dominican Republic laws in order to represent it here and thus avoid all obligations provided by law 173 on Merchandising and Products Distribution Law, a Pharmaceutical regent must represent this company at its time before the Ministry of Health.

Incorporation of companies requires of registration of commercial name first. Incorporation process might take around 3 months and thus is suggested to start soon with this procedure. Once company is ready, this should be registered with the Ministry of Health by the attorney in charge through a Pharmaceutical Regent.

Once these requirements are completed, following documents shall be filed for each case as corresponds: WWW-WDALAW.COM

PHARMACEUTICAL PRODUCTS

1- Power granted to the distributor by manufacturer

2- Free sale certificated issued by Official authorities in the country of origin certifying the product is freely commercialized in such country. Consular legalization of this document is required.

3- Label of the product containing the legend “Keep away from the reach of children”

4- Package sample and literature

5- Qualitative and quantitative formula by duplicate

6- Pharmacology Studies (if any)

7- Analysis Method by duplicate

8- Manufacturing process

9- Clinic Essays (if any) and any other studies made if available

10- Analysis Certificate for the finished product

11- Analysis Certificate for the raw material

12- 6 samples of the finished product with 2 years of validity

13- Standards or raw materials samples (active substance sample)

For more information please check our website www.wdalaw.com WDA INTERNATIONAL LAW FIRM or email us at w.diaz@wdalaw.com

A trademark application is a way to protect the trademarks of an institution. An institution may lose a trademark if it stops using it, if the proper renewal forms are not filed, if proper quality control is not exercised over licenses.Trademark application is filed only after the trademark attorney conduct a complete trademark search and when your trademark receives a positive trademark register ability opinion, then the trademark lawyer prepare and file a trademark application for trademark registration in a single class. Trademark application can also be filed online by the trademark electronic application system. For applicants, federal registration is comparatively straightforward process. When completing the application, the service mark should be described. Online Trademark Application Process is the easiest process of filing a trademark application in India and grant of trademark registration certificate and involves simple steps to be followed.

The trademark office is an agency that provides protection to the inventors and business for their inventions and trademark registration for the product and intellectual property identification. The office is provided with funds by the fees that are charged for processing the patents and trademark.Trademark office examines the applications for trademark registration. The trademarks are registered on either the principal register or the supplement register depending upon the distinctive criteria. This function has now declined as the applicants move to cheaper and more straightforward registration. All the trademark information can be produced by these Trademark offices. The trademark applicants may be represented by any state bar licensed attorney capable of handling the trademark matters, governed by the rules of professional responsibilities.

Trademark office is mainly used to promote industrial and technological progress and also strengthen the national economy by administrating the laws relating to patents and trademarks. This provides advice on the trade-related aspects of intellectual property. Advising the secretary of commerce and the administration of patents, trademarks and copyright protection are the services carried on by the trademark office. A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. A patent registration provides protection for the invention to the owner of the patent. The protection is granted for a limited period, generally 20 years. Patent registration means that the invention cannot be commercially made, used, distributed or sold without the patent owner’s consent. These patent rights are usually enforced in a court, which, in most systems, holds the authority to stop patent infringement. Conversely, a court can also declare a patent invalid upon a successful challenge by a third party. Patents registration provides incentives to individuals by offering them recognition for their creativity and material reward for their marketable inventions. These incentives encourage innovation, which assures that the quality of human life is continuously enhanced.The patent drafting includes a written description of the invention and claims. It must be in full, clear, concise, and exact terms as to enable any person skilled in the technological area related to the invention to be able to duplicate the invention. Patent drafting must describe completely a specific embodiment of the process, machine, manufacture, composition of matter and must explain the mode of operation or principle wherever applicable.

The patent drafting must point out the part or parts of the process, machine, manufacture, or Composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperated with it or as may be necessary to a complete understanding or description of it.The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its Contracting States. A patent application filed under the PCT is called an international application or PCT application. Upon patent filing the international application, all Contracting States are automatically designated. Subject to reservations made by any Contracting State, an international patent application fulfilling the requirements of the treaty and accorded an international patent filing date has the effect of a regular national application in each designated State as of the international patent filing date, which date is considered to be the actual filing date in each designated State.

The trademark application is required, if you want to register your trademark in India. This application mostly comprises of the power of attorney and priority document. It should be noted that an undisputed registration process is finished within twelve to fifteen months. The term of a trademark is ten years, but after ten years it can be renewed after applying to the trademark office India. The advantages of trademark registration for the small or midsize online business should be considered. A registration mark is more impressive to a recipient of a cease-anddesist letter. Litigation, for the small online company, is often not feasible, so the ability to bring a lawsuit and claim certain enhanced damages is possibly of secondary importance to you.

Sometimes, Trademark registration is considered a very lengthy and cumbersome process, but under the guidance of trademark registration law firm India the process becomes very convenient and easy to follow. Filing requirements of India trademarks have been divided into two heading, individual applicants and corporate applicants. Therefore, the individual applicants have to furnish information such as address, name, nationality, and nature of business, trademark to be applied for, list of products or services, international class and priority details if any such claims have been made. On the other hand corporate applicants are required to furnish name, address, kind of incorporation, country of incorporation, nature of business, trademark to be applied, and print of the trademark, list of products and services and international class.

Before filing a trademark application for registering your company in India with the USPTO, you should conduct a trademark search in order to make sure that no one else has filed the same trademark. Trademark search is highly advisable to conduct a trademark search before filing an application for a trademark. A basic free trademark search includes applications for trademark registration in India. This search is only for information, but every possible effort has been made to ensure accurate results. Trademark registration in India varies depending upon the kind of product to be trademarked. Registrability of a collective trademark has a specific process and should be done after filing in the given form along with the payment of fee. In such case the organization can get the trademark after permitting its members usage of the same. The regulation should appropriately specify facts including the persons authorized the usage of trademark, condition of usage of trademark, condition of membership and relationship of such member with the organization and details of membership.

Basic Principles of Registration of Trademark India

The purpose of the Trade and Merchandise Marks Act, is to provide for the registration and better protection of trade of trade marks and to prevent the use of fraudulent marks on merchandise. In consonance with this object the following fundamental principles of trade mark law are embodied in the various provisions of the Act :

(i) Since registration confers on the proprietor a kind of monopoly right over the use of the mark which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purposes, certain restrictions are necessary on the class of words or symbols over which such monopoly right may be granted. Thus descriptive words, surnames and geographical names are not considered prima facie registrable (See Section 9 of the Trade and Merchandise Marks Act, 1958).

(ii) Registration of a trade mark should not interfere with the bona fide use by any person of his own name or that of his place of business, or the use of any bona fide description of the character or quality of the goods. (See Section 34 of the Act) 

(iii) Property rights in a trade mark acquired by use are superior to similar rights obtained by registration under the Act. It, therefore, follows that prior users of trade marks should be protected against any monopoly rights granted under the Statute (See Section 33 of the Act)

(iv) There are obviously two main interests to be protected when a trademark is presented for registration. There is first the interest of the public. A trade mark ought not to be registered if its use will be apt to mislead the public as to the origin of the goods they are purchasing. There is also the interests of other traders who are entitled to object if the use of the trade mark proposed for registration will be calculated to enable the applicant`s goods to be passed off on the public as such other traders` goods. Thus a mark which is similar to a mark already registered or used for similar goods will not be allowed registration. (See Section 11 and 12 of the Act)

(v)  It may so happen that a trader honestly used a trade mark for a number of years although an identical or similar mark has been registered or used by another. It will obviously cause hardship to such a trader if he is deprived of the benefits of registration. There is, therefore, provision for registration of such marks subject to suitable conditions and limitations. (See Section 12(3) of the Act).

(vi)  Broadly speaking, the life of a trade mark depends on its use ; and continued non-use may lead to its eventual death. There is, therefore, no equitable or logical basis for the continuance of the protection afforded by registration where the mark is no longer in use for a sufficiently long period. The principle is recognized in the Act by providing for removal of a mark from the register on the ground of non-use.( See Section 46 of the Act)

 (vii) A trade mark is recognized as a form of property. The term “proprietor of a trade mark” is used in the definition of a trade mark and also in various other provisions of the Ac. It should, therefore, be assignable and transmissible as in the case of other forms of property. Having regard to the peculiar nature of this property, the Act has taken care to impose various restrictions and conditions for the assignment or transmission of property rights in a trademark, whether registered or unregistered. (See Section 36-44 of the Act)

(viii) Granting the benefits of registration under the Statute is not only a matter of interest to the applicant seeking registration, but is a matter in which the public is also interested. It is, therefore, necessary that any member of the public who wants to object to the registration should be permitted to do so. The Act accordingly provides for advertisement of the application and opposition thereto by any interested party. (See Section 20 and 21 of the Act).

Trademarks not registerable India

 The following trademarks are not registrable :

(i) a trademarks the use of which would be likely to deceive or cause confusion ; (Section 11(a) of the Act.)

(ii) a trademark the use of which would be contrary to any law for the time being in force (See Section 11(b) of the Act)

(iii) a trademarks comprising or containing scandalous or absence matter ;  (See Section 11(c) of the Act)

(iv) a trademark comprising or containing any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India ;  (See Section 11(d) of the Act)

(v) a trademark which would be disentitled to protection in a court of law ; [Section 11(e) of  the Act.]

(vi) a trademark which is identical with or deceptively similar to a trade mark already registered in respect of the same goods or goods of the same description ; [Section 12(1) of  the Act.]

(vii) a word which in the accepted name of any single chemical name or chemical compound in respect of chemical substances ; [Section 13 of the Act.]

(viii) Trademarks prohibited under the Emblems and Names Act.

-Shantanu Jugtawat*

‘Trademarks have significance not only for private consumers but for corporations that sell goods and furnish services as well. Long ago, in an economy of face-to-face trade and of craftsmen and women, merchants considered credibility (or reputation) to be a vital asset. The more credible the merchant was, the more goodwill he or she acquired. At one point, merchants use the word “goodwill” as a mark to indicate consumer satisfaction, on other occasions the word was used to indicate a quality business organization. Marks are more unique in today’s highly developed distribution economy, but trademarks still play a role of immeasurable importance in facilitating economic activities.

Trademarks play a vital role in day-to-day choices made by the consuming public. Consider the effect of trademarks on those who purchase goods and receive services, consumers. Consumers rely on trademarks; for example, to more easily facilitate repeat purchases of goods or services based on a previous pleasurable experience or a manufacturer’s reputation for quality. Trademarks enable consumers to make repeated purchases without extensive research’*.

A trademark registration system was also implemented that, over time, encouraged the emergence of “trademark as property.” As the economy developed further, trademarks became recognized as important intellectual property. As a result of the evolving intellectual property perspective, a number of revisions of trademark legislation have been attempted and various interpretative studies have developed regarding Trademark Law. Because trademarks have great significance for consumers in the distribution economy, future Trademark Law examinations and interpretive studies should significantly take into account the perspective of consumer protection.

Section 1. Functions of Marks

Trademarks are signs that are associated with the exchange of goods and services. A “sign” is a mark; its function is identification. A trade “sign” is a representation enabling an article to be identified and distinguished from others on the basis of its origin.

Under the Trademark Law of Japan, marks are defined as “characters, figures, symbols, three-dimensional shapes or any combination thereof, or any combination thereof with colors.” (Article 2, Paragraph 1)

Japan’s Trademark Law protects trademarks and service marks. As is the case with patent applications, a resident agent (usually a lawyer or patent agent) must prosecute the trademark application and as with the processing of patent applications, Japan’s trademark registration process can be slow. Any company planning on doing business in Japan should file for trademark registration as early as practicable .

Unfair Competition and Trade Secrets:

The only protection available for a trademark in Japan prior to registration is under the Japanese Unfair Competition Prevention Law. Under this law, the owner of the mark must demonstrate that the mark is well known in Japan and that consumers will be confused by the use of an identical or similar mark by the unauthorized user. In 1990, Japan enacted amendments to the law that provided some protection from theft of trade secrets, such as know-how, customer lists, sales manuals, and experimental data. The law, which was amended completely in 1993, also provides for injunctions against wrongful use, acquisition, or disclosure of a trade secret by any person who knew or should have known that the information in question was misappropriated. The judicial process, however, makes the enforcement of rights without loss of trade secrets difficult.

Effectiveness of Trademarks

The trademark in Japan is valid only when it is registered for a certain category of goods. Thus it is possible to have the same trademark for different categories of products, without problem. The registration is with the Patent Agency.

However, to use the same trademark, or a similar one, for the same category of goods would violate the trademark. The trademark rights holder would then be able to seek an injunction and compensatory damages. There is also a possiblity of criminal penalties of five years imprisonment and 5 million yen in fines. This is obviously taken quite seriously, so it is advisable that adequate trademark research be carried out before using one. Nevertheless, even if another party had registered a trademark before you, if you have been using it from before, and it is well known among users, you may continue to use it. It is still advisable to make due research and timely registration in order to avoid conflict. Another exception is that if even a party registers a trademark first, if they do not use it for 3 years without suitable reason, another party can file an application for the cancellation of the trade mark in question.

Requirements for Registering a Trademark. –

Trademark registrations are made with the Patent Agency. The first to file gets the rights. The rights arise from the moment the moment it registered . As much as possible the symbol of the trademark should have characteristics such that as much as possible it can be distinguished from the products of services of other companies . There are two times when similarity becomes a problem. At the time of application and at the time of infringement. There are three aspects that are looked at in determining similarity.There is similarity in external appearance. Here if the trademark is looked at externally, and the lettering, drawings and markings look similar. Secondly is similarity in impression. If two trademarks have similar meanings there could be a similarity in impression. Finally, there is similarity in name, if they have similarity in sound. Thus Sony and Somy may fall in this category. In reality even experts often disagree in this area and there is a great Probaility existence of involving in litigation on these issues.

Obtaining Protection of Trademarks: Time priority in seeking registration is the major factor which enables one to exclude other potential users of a trademark in Japan. In terms of the time frame for obtaining registration, an application will typically be approved in two to three years from the date of filing if it is not contested. Electronic filing procedures have been created to streamline the application process. Neither current use nor the intention to make future use of a mark in commerce is a requirement for obtaining registration.

The following (among other) information must be included in an application for registration of a trademark in Japan:

(a) The applicant’s name (and, for companies, the representative’s name), address and place of incorporation;

(b) The specific “International Class(es)” in which registration of the trademark is desired. Also, the subclasses of goods and/or services in relation to which use is to be registered must be designated, including any desired limitation to specific goods and/or services contained in a subclass.

Invalidation Trial of Trademark Registration

(1) In the following cases, an interested person or an examiner may demand a trial to invalidate the registration of a trademark or the supplementary registration of designated goods. In such a case, if two or more designated goods are covered by the trademark registration, a demand for an invalidation trial may be made for each of the designated goods:

(i) the registration has been effected contrary to proviso of Article 3, Articles 6 to 8, Article 12(2) (second sentence), (5), and (7) to (9) of this Law or contrary to Article 25 of the Patent Law applied under Article 5 of the Law; ¡Amended on Aug. 22, 1997¡•

(ii) The registration has been affected in violation of a treaty;

(iii) The registration has been affected on the basis of an application filed by a person who is not a successor in title to the right deriving from the trademark application;

(iv) After the registration, the owner of the trademark right is no longer capable of enjoying such right under Article 25 of the Patent Law applied under Article 5 of this Law, or the registration no longer complies with a treaty.

(2) A trial for invalidation under paragraph (1) may be requested even after the extinguishment of a trademark right.

(3) Where a trial decision invalidating a trademark registration has become final and conclusive, the trademark right shall be deemed never to have existed; however, where a trial decision invalidating a trademark right has existed; however, where a trial decision invalidating a trademark right has become final and conclusive under paragraph (1)(iv), the trademark right shall be deemed not to have existed from the time when the trademark registration first fell under the said paragraph.

(4) Where a trial under paragraph (1) has been request the presiding trial examiner shall notify the contents of the demand to the exclusive licensee of the trademark right and to other persons who have any registered right relating to the trademark.

Article 72. Invalidation Trial of Registration of Renewal of Term of Trademark Right

(1) In the following cases, an interested person or an examiner may request a trial to invalidate the registration of the renewal of the term of a trademark right. In such a case, if two or more designated goods are covered by the registration of the renewal of the term of the trademark right, a demand for an invalidation trial may be made for each of the designated goods:

(i) ¡Deleted on Aug. 22, 1997¡•

(ii) The registration of the renewal has been affected contrary to Article 43(2);

(iii) The registration of the renewal has been applied for by a person who is not the owner of the trademark right concerned.

(2) A trial for invalidation under paragraph (1) may be requested even after the extinguishment of a trademark right.

(3) Where a trial decision invalidating the registration of the renewal of the term of a trademark right has become final and conclusive, the registration of the renewal of the term shall be deemed never to have existed.

(4) Article 71(4) shall apply mutatis mutandis to the request for an invalidation trial under paragraph (1).

Article 73. Trial for Cancellation of Trademark Registration

(1) A trial may be demanded for the cancellation of the registration of a trademark if the registered trademark falls under any one of the following subparagraphs:

(i) ¡Deleted on Aug. 22, 1997¡•

(ii) The owner of the trademark right intentionally uses a trademark similar to the registered mark on the designated goods or uses the registered trademark, or a trademark similar thereto, on goods similar to the designated goods in a manner that may be misleading as to the quality of the goods or which is liable to cause confusion with goods connected with another person’s business;

(iii) Neither the owner of the trademark right nor the exclusive or non-exclusive licensee has been continuously using the registered trademark for more than three years on the designated goods in the Republic of Korea without any justifiable reason before the date of the trial for cancellation;

(iv) The owner of the trademark right comes under the terms of Article 54(1) (second sentence), (5), or (7) to (9); ¡Amended on Aug. 22, 1997¡•

(v) The member of the association causes another person to use its collective mark contrary to the provisions of the statutes of the association;

(vi) A collective mark has become likely to mislead as to the quality of goods, or cause confusion among consumers with goods connected with another person’s business by a change of the statutes of the association under Article 9(3);

(vii) A trademark falling under the principal sentence of Article 23(1)(iv) has been registered and the owner of the original trademark requests a trial for cancellation within five years from the date of registration of the trademark;

(viii) The exclusive or non-exclusive licensee uses the registered trademark, or a similar trademark, on the designated goods, or goods similar thereto, in a manner that is liable to mislead consumers as to the quality of the goods or to cause confusion among consumers with goods connected with another person’s business; however, this provision shall not apply where the owner of the trademark right has taken appropriate care; or

(ix) Similar registered trademarks are owned by different owners of the trademark right resulting from a transfer of trademark right and one owner thereof uses his registered trademark for the purposes of unfair competition in respect of goods identical with, or similar to, the designated goods of his own registered trademark, causing consumers mislead as to the quality of that goods or have a confusion between his goods and the goods in relation with the other owners. ¡Added on Aug. 22, 1997¡•

(2) ¡Deleted on Aug. 22, 1997¡•

(3) Where a trial for cancellation is demanded for reasons referred to in paragraph (1)(iii), a trial for cancellation may be demanded for a part of the designated goods if the designated goods covered by the trademark registration arc two or more.

(4) Where a trial for cancellation is demanded for a reason referred to in paragraph (1)(iii), if the defendant cannot prove that the registered trademark has been used in the Republic of Korea within three years prior to the date of the demand for the trial on one or more of the designated goods to which the demand relates, the owner of the trademark right may not avoid the cancellation of the registration of the trademark for the designated goods; however, this provision shall not apply where the defendant can prove a justifiable reason for the failure to use the registered trademark. ¡Amended on Aug. 22, 1997¡•

(5) The reasons for cancellation shall not be affected when the facts giving rise to a demand for a cancellation trial no longer exist after the demand for trial is made for reasons referred to in paragraph (1)(ii), (iii), (v), (vi), (viii) or (ix).¡Amended on Aug. 22, 1997¡•

(6) A trial for cancellation under paragraph (1) may be demanded only by an interested person, except that a trial demanded for reasons referred to in paragraph (1)(ii), (vi), (viii) or (ix) may be demanded by any person. ¡Amended on Aug. 22, 1997¡•

(7) Where a trial decision ordering the cancellation of a trademark registration has become final and conclusive, the trademark right shall become extinguished as from that moment.

DefensiveMeasures:

A party may oppose the registration of a trademark (in relation to some or all of the designated goods and/or services) within two months of its publication in the Patent Office’s Official Gazette .

Trademarks are published subsequent to being approved for registration. As stated above, grounds for successfully opposing a trademark’s registration are essentially the same as those available to the Patent Office for denying it registration.

The criteria which prohibit registration include non-distinctiveness (however, distinctiveness may be acquired through use similarity to governmental or other official symbols, similarity to a pre-existing widely known mark, similarity to a previously registered mark, likelihood of misleading or confusion, unregistrability for other technical reasons ,

Process time consuming and costly

Obtaining and protecting patent and trademark rights in Japan can be time-consuming and costly. While the process to safeguard such rights might seem prohibitive, lack of protection would permit competitors in Japan to copy your product or production process, even if you have a US patent or trademark. Even when intellectual property rights have been acquired, pirating of technology and designs can occur in Japan, as it could in almost any country. Each company in a trading or licensing agreement should understand clearly what its rights and obligations are with respect to the intellectual property rights owned, acquired or subsequently developed by the other .

Japan’s Trademark Law protects trademarks and service marks. As is the case with patent applications, a resident agent (usually a lawyer or patent agent) must prosecute the trademark application. As with the processing of patent applications, Japan’s trademark registration process is slow, although processing times have been improving recently. It takes an average of 2.8 years to process a trademark registration in Japan, compared with an average of 13 months in the United States. Any company planning on doing business in Japan should file for trademark registration as early as practical.

The only protection available for a trademark in Japan prior to registration is under the Japanese Unfair Competition Law. Under this law, the owner of the mark must demonstrate that the mark is well-known in Japan and that consumers will be confused by the use of an identical or similar mark by the unauthorized user. Copying of American trademarks, particularly in the fields of sporting goods and clothing, occurs frequently and some smaller unscrupulous companies will file trademark registration applications for a US brand trademark, which they believe, will become popular in Japan.

Japan enacted amendments to the Unfair Competition Law in 1990, which provide some measure of protection from theft of trade secrets such as know-how, customer lists, sales manuals and experimental data. The law, which was amended completely in 1993, provides for injunctions against wrongful use, acquisition, or disclosure of a trade secret by any person who knew or should have known that the information in question was misappropriated. A problem with judicial procedure remains despite a 1996 amendment, and makes civil enforcement of rights without the loss of the trade secret difficult.

5.4.2 Cancellation of proxy registration

Japan’s trademark system protects the right of duly authorized trademark owners. For instance, where overseas-based goods or services are provided in Japan, and where the overseas company involved has entered into an agency agreement with a Japanese company, if that local agent applies for registration of the overseas company’s trademark without due cause, the duly authorized trademark owner may file a petition for the cancellation of the Japanese registration, and can thereby regain their trademark rights .

Application and registration fees

Naturally, applying for and being granted registration of a design incurs fees. The fees for this process in Japan are as follows.

1. Application fees

a. 16,000 yen per design

b. Note that the above amount is the official fee only, and does not include patent attorney’s fees, fees for design drawings, etc.

2. Registration fees

A registration fee is required when registering a design, however these fees differ from those of trademarks. The design registration fee for the first year is 8,500 yen and an annuity must be paid each year in order to maintain the validity of the design rights. The annuities are as follows.

Years 1 through 3: 8,500 yen per year

Years 4 through 10: 16,900 yen per year

Years 11 through 15: 33,800 yen per year

Similar designs: 8,500 yen (flat rate)

Remember that, if you engaged a patent attorney, you will be charged fees in addition to the above registration fees; these may include fees for the work involved in paying the official fees.

5.8.2 from application to registration

If the examination process goes smoothly, a design can be registered in as little as three months from the time of application. Generally, however, the examination takes approximately six months, and the registration takes another one or two months. Allow about eight months after application to complete the process.

Trademark Law

The 2005 revision of the Japanese Trademark Law introduces the regionally-based collective mark. The revision is intended to promote the credit of business, enhance industrial competitiveness and vitalize local economies.

Prior to the revision, a mark, which is the combination of the name of a region and goods or services, could not be registered as a word mark unless it acquired nationwide recognition or was combined with other designs or letters with a distinctive character. The problem was that an applicant could not exclude a third party’s free-ride use of such word marks until the mark gained a nationwide recognition, which usually requires huge investments and a long period of marketing efforts. Another pitfall is that the registrant of a trademark which comprised certain words and figures could not prevent a third party’s use of the words themselves or the mark which comprised the same words and other figures.

The official outlines of the bill gives key points of the revision:

1. Requirements for registration of regionally-based collective marks

ü Cooperative business associations and other associations established under the special laws with the status of legal entities and foreign legal entities corresponding thereto shall be entitled to obtain a regionally-based collective mark.

ü A trademark registration of a regionally-based collective mark may be obtained where, as a result of the use of the trademark, it has become widely known among consumers as an indication of the applicant’s or its members’ products or services.

ü Trademarks which may be registered as regionally-based collective marks are comprised of the name of the production area of the goods where the applicant or its members have been using the trademark prior to the filing, the place where the services are provided, or other corresponding areas which are recognized as having a close relationshipto the goods or services.

2. Opposition to the registration of regionally-based collective mark; Invalidation of the trademark registration

a. Any person may file an opposition to the registration of a regionally-based collective mark which has been made in violation of the requirements for registration.

b. When a registration has been made in violation of the requirements for registration of a regionally-based collective mark, an invalidation procedure of the registration may be demanded. In addition, when a registered regionally-based collective mark becomes not to meet the requirements for registration, an invalidation procedure of the registration may be demanded.

Thus, the revised law allows a business group, such as a cooperative business association to register a trademark, which is a combination of the name of a region and its goods or services, earlier than acquiring nationwide recognition of the trademark. This protects local businesses against a free-ride of their marks. The revision of the Japanese Trademark Law, adding regionally-based collective marks, will become effective on April 1, 2006.

The revision on the Japanese Unfair Competition Law and other related laws came into force on November 1, 2005

ELABORATE PROCEDURE FOR OBTAINING TRADEMARK

(1) Application

In order to obtain a trademark right, an applicant must fill out the forms prescribed in the relevant ordinances and submit them to the Japan Patent Office.

(2) Publication of Unexamined Application

The JPO will publish the content of an application in the Official Gazette after filing.

(3) Formality Examination

An application document submitted to the JPO will be checked to see whether it fulfills the necessary procedural and formal requirements. An invitation to correct will be made where necessary documents are missing or required sections have not been filled in.

(4) Substantive Examination

An examination will be made of whether the application fulfills the substantive requirements. The following trademarks will be refused as they are deemed not to meet the substantive requirements.

(i) Trademarks which do not enable consumers to differentiate the applicant’s goods or services from those belonging to other parties

(ii) Trademarks which are unregistrable for reasons of public interest or for the protection of private interests

(5) Notification of Reasons for Refusal

Where an application fails to meet the substantive requirements, a notification of reasons for refusal will be sent.

(6) Written Argument / Amendment

An applicant may submit either a written argument against a notification of reasons for refusal or an amendment that would nullify the reasons for refusal.

(7) Decision of Registration

If it is ultimately judged that there are no reasons for refusal, a decision to register a trademark will be made.

(8) Decision of Refusal

If a written argument and an amendment can not eliminate the reasons for refusal, and if the examiner judges that the trademark can not be registered, a decision of refusal will be made.

(9) Appeal against Decision of Refusal

When dissatisfaction is in the decision of refusal of the examiner, the applicant may appeal against the decision of refusal.

(10) Appeal Examination (against the decision of refusal)

An appeal examination against a decision of refusal is performed by a collegial body of three or five appeal examiners.

Decision of the appeal examiners is called appeal decision.

When it is judged, as a result of appeal examination, that the reasons for refusal was solved, an appeal decision to register a trademark is performed, and when the reasons for refusal is judged that the reasons cannot cancel and the trademark cannot be registered, an appeal decision of refusal is performed

(11) Registration (Registration Fee Payment)

With the payment of the registration fee, the registration of the trademark right will take place and the trademark right will come into force.

(12) Publication of a Trademark Gazette

As for the trademark right which has been registered and come into force, the contents are published on the trademark gazette.

(13) Opposition

Any person may file an opposition to the decision to register a trademark with the Commissioner of the JPO.

(14) Appeal for Invalidation / Revocation

Even after a trademark is registered, any person may appeal for invalidation of the trademark if it has a flaw.

Moreover, if the trademark has not been used after registration for three years or more, an appeal for revocation may be charged.

(15) Appeal Examination (Invalidation / Revocation)

An appeal examination of invalidation/revocation is performed by a collegial body of three or five appeal examiners.

About invalidation, if the appeal examiners judge that there is no flaw in the decision to register a trademark, they will make a decision to maintain the trademark registration. If however they judge that the decision to grant was flawed, they will make a decision to revoke the trademark right.

About revocation, when a right holder cannot prove using the trademark, an appeal decision of revocation is performed, and the trademark right is revoked.

(16) Intellectual property High Court

An applicant who is dissatisfied with an appeal decision of refusal of an appeal against decision of refusal, and an interested party who is dissatisfied with an appeal decision of invalidation, revocation or maintenance, may appeal to the Intellectual Property High Court.

Conclusion

‘Imagine for a moment a world in which trademarks on goods are unprotected. Counterfeiters and forgers, seeking to profit from the goodwill of merchants with skill and quality products, are unleashed to flood the marketplace with “knock-offs” and imitations. Consumer confusion as to true source results in inadvertent purchasing of low quality goods. From a merchant’s (or corporation’s) perspective, the incentive to build a reputation through sincere effort and scrupulous business practices is lost. The likely result of such a scheme is a haphazard distribution economy bordering on disorder and chaos.’

Like the Japanese patent system, the Japanese trademark system employs a first-to-file system. Under this system if one or more applications conflict with another, the application that was filed first is registered. In the unlikely event that two or more applications are filed for identical or similar marks on the same day for identical or similar goods or services, the parties involved are given the opportunity to decide which one may obtain registration. If no agreement can be reached within a specified time limit, the Director-General will draw lots.

Due to the first-to-file system and the low threshold for showing intention, many large companies in Japan have created their own trademark banks by registering many different trademarks. Many of these trademarks are never used. About one third of all registered trademarks have never been used. More than two thirds of all registered trademarks are currently not in use. The Japanese system does allow a party to demand a Trial for Cancellation of Trademark Registration (due to non-use).

An application must include the mark, designated goods or services, the applicant’s name and address, and the applicant’s area of business, and must be accompanied by a filing fee. No power of attorney is required. If the mark can be represented using ordinary characters, a sample is not required. However, if the mark is a figure, sign, three-dimensional mark, or any combination of the aforementioned, including characters, with or without colors, a sample must be submitted. A mark may consist of characters, figures, or signs. It may also be a combination of these. Assuming that it can be represented graphically, a mark may be any combination of characters, figures, or signs with colors. Three-dimensional trademarks can also be registered. Sounds and smells cannot be registered. Japanese law allows for multi-class applications. This means that the designation of more than one of the forty-two classes of goods and services is permitted on a single application.

Under Japan’s Trademark Law, trademarks can be registered even if they are not in use at the time under the first-to-file rule. However, if a trademark is not used at all within a period of three years following registration, an interested third party might file a petition for the cancellation of that trademark. Incidentally, “use” of a trademark is not limited to the displaying of the trademark directly on a product; the printing of a trademark in a pamphlet together with an image of the product, the use of the trademark in an advertisement for the goods such as in a newspaper, or the displaying of goods featuring the trademark on an Internet website all constitute “use.”

References

· Dr. Sheon Ono ‘Overview of Japanese Trademark Law’, 2nd edition

· ‘Examination Guidelines for trademark in Japan’- Japan Patent Office February 2003

· ‘Permissions and trademark guidelines’ Adobe. Retrieved on September 3, 2006.

· Pullum, Geoffrey K ‘A Guide to Proper Trademark Use’ Retrieved on December 5, 2006.

· Danny Bronski ‘MAKING YOUR MARK: TRADEMARK BASICS FOR TECHNOLOGY ENTREPRENEURS’

· Danny Bronski ‘A SENSIBLE APPROACH TO SECURING TRADEMARK PROTECTION’

· Gregory H. Guillot ‘All about trademarks’

Web Sites

· Japan External Trade Organization- http://www.jetro.go.jp/en/invest/setting_up/laws/section5/page3.html

· http://www.marcaria.com/

Trademark organizations

· INTA The International Trademark Association

· WIPO World Intellectual Property Organisation

· WIPO trademarks homepage