Lexology has recently disseminated an introduction on trademark principles in Japan by Satoko Kubo. According to the article, in Japan one can file for trademark protection without establishing use of the mark in connection with goods and services. One need not establish proof of use when renewing the mark as well. An individual or company's registered mark can only be cancelled if another party requests the cancellation based on non-use. A registered mark may be cancelled when it has fallen into disuse for three consecutive years. As a result, companies regularly stockpile marks in Japan.
Additionally, the Japanese Patent Office allows for marks to be registered across a wider range of goods because it accepts broad descriptions (e.g. "clothing," "computer games"). In contrast, the U.S. trademark system requires a specific listing of goods leading to a limited set of rights.
If a video game developer were to have on its hands the next big IP money maker with the potential to be profitable across a wide range of goods (e.g. toys, clothes, think "Skylanders"), then at least with respect to the Japanese market that developer should register directly in Japan. Although registering in the U.S. would still allow for corresponding protection in Japan under the Madrid Protocol, the international registration in Japan would be tied to the limited U.S. registration. Additionally, the differences between the Japanese and U.S. trademark guidelines with respect to broad and specific designations usually requires further action by a party registering in the US first because it must explain its specific designation to the Japanese Patent Office.
Lexology
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