You can register intellectual property (IP) rights in Japan for patents, trade marks and designs.
The Japan Patent Office (JPO) is the government body responsible for registering IP protection. 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.
Japan has a very sophisticated IP system. The highest number of patents granted worldwide originate from Japanese residents.
In general terms, the registration process and protection of IP in Japan is similar to Australia. Filing fees are comparable, but examination and renewal fees tend to be more expensive. Businesses should also factor translation fees into the total cost of filing, as applications must be submitted in Japanese.
- Japan follows the first to file principle for obtaining trade mark rights. This means 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 therefore be filed as soon as possible.
- 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 to be 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.
- 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.
- Trade mark registrations may be removed if they are not used over a period of three or more consecutive years after registration.
- Japan Customs provide cross-border measures for the protection of registered trade marks.
- 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 have a six year term.
- 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 to deal with as the examination process is typically very rigorous.
- Certain types of subject matter cannot be patented in Japan.
- Design protection is available for a 20 year period after formality and substantive examinations are satisfied. There is no renewal option.
- Under the Unfair Competition Prevention Act, unregistered product designs may be protected within three years from the date of first sale of the product in Japan.
Case study: IP strategy to break into the Japanese market
Perfect Potion is an organic aromatherapy and skincare company founded by Salvatore Battaglia and Carolyn Stubbin.
For Salvatore and Carolyn, Japan has been an important market in their business strategy for Perfect Potion. Since opening their first store in Brisbane in 1991, Salvatore and Carolyn have worked to make shopping at Perfect Potion a 'total customer experience.’ This concept is now led by their 70 staff who work across eight Australian stores and 10 stores in Japan.
IP protection for exports
Solid protection of the company's IP before exporting was essential. 'It is so important before you enter a country for export that your trading name, your brand name, is going to be protected.'
To ensure the brand is well and truly covered, Perfect Potion has retained the services of experienced IP attorneys. 'We have really good trade mark attorneys and they've been able to achieve everything from their offices here in Australia,' Salvatore says. 'You can’t market your product overseas if somebody else has taken out your trade mark.'
The attorneys liaise with relevant IP organisations in Japan, lodging all applications and coordinating IP searches for all markets. 'And where they have needed to contact somebody overseas, they have done so on our behalf,' Salvatore says.
Partnership with a Japanese company
Salvatore says one of the secrets to Perfect Potion's success in Japan has been setting up a separate company with a business partner (a Japanese national).
Although there haven't yet been any infringements on their trade marks, daily communication with their Japanese partner means they can be alerted to any potential infringements quickly. Salvatore says that in his dealings in Japan so far he finds: 'There is a lot of integrity with people when you're doing business with them, and there's a lot of trust in the relationship. It takes a while to establish relationships, but there's so much trust in those relationships once you do.'