IP is a valuable asset that can support you when doing business overseas. An Australian patent, trade mark, design or plant breeder’s right does not secure your rights outside of Australia. You should consider IP protection in the countries that you are planning on doing business, including manufacturing, or selling products online.
Please note, IP registration and protection can be a complex process, especially in an international context. It is recommended that you seek advice from an IP professional.
Japan has an estimated population of around 126.5 million and is the third largest economy in the world. In 2017, two-way trade in goods and services between Australia and Japan was valued at A$71.6 billion, making Japan our second largest trading partner. Japanese is the official language of Japan.
IP protection in Japan
An address for service in Japan and a local agent or attorney is generally required when seeking IP registration.
Japan is a member of international agreements for the protection of IP rights as administered through the World Intellectual Property Organization. See below for further details.
- Trade mark applications can be filed directly with the JPO, or made through the Madrid System for the international registration of trade marks. Applications can be submitted online.
- When deciding on whether or not to enter Japan with your trade mark (and ideally before you apply for a trade mark in Australia), you should consider two things when applying for an international application through the Madrid system.
- Firstly, you may wish to search the Global Brands Database to make sure your chosen trade mark is available to be registered.
- Secondly, acceptable claims for goods and services vary across the world. Consider consulting the Madrid Goods and Services Manager database, which outlines what claims are acceptable in various jurisdictions globally.
- The official language of Japan is Japanese; a number of other languages and dialects (e.g. Ryukyuan languages) are also used. Applicants using word elements in their trade marks may need to consider protecting in relevant characters as well as translations and transliterations.
- Unlike Australia, Japan has a “first to file” rule for obtaining trade mark rights. This means that if there is a dispute between you and another party over a trade mark, whoever filed for registration first will generally have superior rights, regardless of who developed or first used the trade mark.
- Trade mark registrations may be removed from the register if they are not used within three years of the date of registration and any consecutive three-year period thereafter.
- A trade mark’s validity can generally no longer be challenged after five years from the initial registration date.
- There are other circumstances under which a trade mark may be challenged, cancelled or removed. Please check the relevant requirements prior to application.
- A trade mark registration is valid for 10 years and may be renewed indefinitely for 10 year periods upon payment of fees.
- Applications may be made directly to JPO or can enter through national phase entry via the Patent Cooperation Treaty (PCT).
- Applications may be filed in English, but must be accompanied by a Japanese translation, or be supported by a Japanese translation within a specified period from submitting the initial application.
- Japan also offers protection for “utility models”. These generally operate the same way as patents, but only cover aspects of devices relating to shape, construction or combination of articles. Utility models differ in undergoing no substantive examination and having no opposition system. They are granted for 10 years from the date of filing.
- Japan has a six-month grace period from public disclosure to filing of the patent. If an invention is publicly demonstrated or sold in another country before securing a priority application in that overseas country, then Japan will not grant a patent for that invention.
- Japan allows for the patenting of new plant varieties, provided that the requirements for patentability are complied with. New plant varieties may also be protected under separate rights for new plant varieties (see Plant varieties further down).
- Patent protection is for up to 20 years from the date of filing. A patent can only be extended for up to an additional five years where laws to ensure safety to others have hindered the working of the patent invention.
- Patents for pharmaceutical products and agricultural chemicals have an initial five years of protection, but this period can be extended.
- The Global Patent Prosecution Highway (GPPH) may be used by Australian applicants to speed up the examination process for corresponding patent applications filed in Japan.
- Applications may be made directly to the JPO.
- If a design is made public prior to filing for an application, design registration can still be sought so long as the application is filed within six months of the public disclosure.
- Protection is available for up to 20 years from the date of registration, with no extension.
- Japan is a member of the Hague Agreement and can therefore be designated in an international application where the applicant is able to establish entitlement. Australia is not currently a member of the Hague Agreement.
- Like Australia, copyright arises automatically at the time of creation of an eligible work.
- The term of protection varies depending on the type of work. In general, most published works are protected for the life of the author plus 50 years.
- For more information on copyright, visit the Agency for Cultural Affairs website.
- Applications may be made directly to the Plant Variety Protection Office.
- Protection is granted for up to 25 years from the registration date, and up to 30 years for ornamental, timber or fruit trees, etc.
Enforcing your IP rights in Japan
Preventing and policing IP infringement and counterfeiting in Japan is a matter of national policy. Significant infrastructure has been put in place to allow government agencies, companies and the public to work together to manage enforcement.
Preferred options include warning letters, negotiations, opposition proceedings through the Japan Patent Office (JPO) or alternative dispute resolution. In some cases court action may ultimately be the most effective option and you will need support from IP professionals with relevant expertise.
The Japanese IP High Court has been in operation since 2005 as a specialist branch of the Tokyo High Court. In Japan, infringements of business interests by 'unfair competition' are treated as IP for the purpose of the IP High Court's jurisdiction. This means the IP jurisdiction of this court is available whether or not a registered IP right is involved.
Customs seizure and border enforcement
Japanese Customs tariff law allows for seizure of imported or exported goods that infringe IP rights such as patents, trade marks, design or copyright.
Doing business in Japan
Before entering the business market in Japan, there are a number of factors to take into account including culture, politics and business etiquette.
You can start by taking a look at the extensive information about doing business in Japan on the Austrade website.
- Japan Patent Office
- Agency for Cultural Affairs
- Plant Variety Protection Office
- Madrid System
- Hague Agreement
- Patent Cooperation Treaty
- DFAT – Country Brief
- Export Council of Australia
- Professional advice - 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. Australian IP professionals can facilitate this contact.