IP Passport

JAPAN

JPN
IP Australia has prepared this information to help businesses protect their intellectual property (IP) in Japan (JPN).

Exporting FactSheet
PROFILE
Japan is Australias second-largest merchandise export market and merchandise trading partner. In 2011, Australian exports of goods and services to Japan amounted to A$52.3bn.

Australian IP professional can facilitate such contact. Japan has a very sophisticated IP system. The second highest number of patents granted worldwide originates from Japanese residents*. In general terms, the registration process and protection of IP in Japan is similar to Australia. Filing fees are also comparable, however examination and renewal fees tend to be more expensive. Be aware that documents filed with the Japan Patent Office will need to be translated into Japanese, therefore translation fees should be factored into the total application cost.
* Source: World Intellectual Property Organisation www.wipo.org, 2012

MAJOR AUSTRALIAN EXPORTS TO JAPAN (2011*)

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Coal: A$16.6bn r
Iron ores & concentrates: A$11.2bn r
Beef: A$1.6bn r
Copper ores & concentrates: A$1.4bn
* Source: Department of Foreign Affairs and Trade, www.dfat.gov.au, 2012

TRADE MARKS IN JAPAN

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Unlike Australia, Japan follows the first to file principle for obtaining trade mark rights. This means that the first person to file a trade mark application will generally have priority over a prior user of the mark in Japan. When considering entry into the Japanese market, trade mark applications should be filed as soon as possible. r
Additional protections are afforded to well-known trade marks. If a trade mark that is well-known in Australia is filed by a third party in Japan in bad faith, the trade mark is considered unregistrable. If a trade mark is well-known in Japan, the mark can be protected under the Unfair Competition Prevention Act even if it is not registered. r
Protection for three-dimensional marks has been available in Japan since 1997. However, other non-traditional marks such as sounds and smells are not yet registrable. r
Trade mark registrations may be removed if they are not used over a period of three or more consecutive years after registration. r
Japan Customs provide cross-border measures for the protection of registered trade marks.

MEMBERSHIP OF SELECT INTERNATIONAL TREATIES ON REGISTERED IP RIGHTS

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Trade marks: Madrid Protocol since 2000 r
Patents: Patent Cooperation Treaty (PCT) since 1978 r
Paris Convention since 1899 The Madrid Protocol and the PCT permit the filing of a single application with the effect of potential protection in multiple countries. The Paris Convention for the Protection of Industrial Property provides a priority right for domestic patent, trade mark and design applicants seeking protection overseas, provided that subsequent applications are made within a prescribed period (12 months for patents and six months for trade marks and designs).

OVERVIEW OF IP PROTECTION IN JAPAN

Registered IP protection is available in Japan for patents, trade marks and designs. The Japan Patent Office (JPO) is responsible for registering IP rights. The JPO website also provides searchable trade mark, patent and design databases. Foreign businesses must file trade mark, patent and design applications through an attorney or agent based in Japan. An

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PATENTS IN JAPAN
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Two forms of patent protection are available in Japan: patents (equivalent to Australian standard patents) and utility models (for lower level inventions). Patents have a 20-year term, while utility patents apply for ten years. r
The requirements for granting a patent are similar to those in Australia and many other developed nations. However, the Japanese system is often more challenging and the examination process typically very rigorous. r
Certain types of subject matter cannot be patented in Japan such as methods of calculation and encryption.

TOP TIPS FOR PROTECTING IP IN JAPAN

If you are considering exporting to Japan, it is recommended that you contact an IP professional experienced in Japanese IP law and trade to advise on local IP, customs and other laws regulating imports and trade in Japan. An Australian IP professional can facilitate such contact. Strategies for effectively protecting your IP in Japan include: r
conducting searches to avoid infringing third party rights. Trade mark searches should cover prior trade marks consisting of Japanese or Chinese characters which are equivalent in sound or meaning to the English version of the trade mark r
seeking registration of available IP rights before entering the market. Registration of both an English and Japanese equivalent trade mark is recommended r
specifying ownership of IP rights in research and development agreements, joint venture agreements, distribution and franchising agreements and original equipment manufacturer agreements r
implementing protective measures in respect of confidential information and trade secrets r
being watchful of potential IP violations and responding swiftly and resolutely to any infringements of your rights.

DESIGNS AND OTHER IP IN JAPAN

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Designs: Design protection is available for a 20-year period after formality and substantive examinations, for examplefor novelty are satisfied. There is no renewal option. r
Under the Unfair Competition Prevention Act, unregistered product designs may be protected within three years from the date of first sale of the products in Japan.

FURTHER INFORMATION
Japan Patent Office www.jpo.go.jp (administers the patents, trade marks and designs systems in Japan) IP Australia www.ipaustralia.gov.au (administers the patents, designs, trade marks and plant breeders rights systems in Australia) Japan External Trade Organisation www.jetro.go.jp (works to promote mutual trade and investment between Japan and the rest of the world) Australian Trade Commission (Austrade) www.austrade.gov.au (provides advice and guidance on export and international business, overseas investment and joint venture opportunities)

Disclaimer: This information is intended to help the reader gain a basic understanding of some IP concepts. It is not designed to provide legal, business or other relevant professional advice. IP Australia recommends that you seek independent legal, business or other relevant specialist advice as necessary. This fact sheet has been developed in conjunction with Griffith Hack Lawyers and Aoyama & partners (Japan).

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