Trademark Law in Japan ■ Multi-class application: An application is allowed to cover plural classes of goods and/or services. ■ Renewal: A trademark registration is renewable only by filing an application with the payment of the renewal registration fee. ■ Grace period for renewal application: A renewal application can be filed in the six-month period preceding the expiration date of the trademark registration and can be filed further six months after the expiration date on condition that the renewal registration fee be paid double. ■ Similar trademarks: The similar trademarks once applied for or registered as associated trademarks become separately transferable to different persons. In order to avoid cancellation of a trademark registration, every trademark has to be used. Consent system is not yet effective. ■ Post-registration opposition: An opposition can be raised only after the trademark has been registered. ■ Three-dimensional trademark and collective trademarks: They are registrable. ■ Reclassification of goods: Presently, registrations under five different classifications coexist. The Law implements reclassification for bringing all trademark registration under the International Classification System. Reclassification has started with the trademark registrations whose expiration dates are on or after October 1, 1998. Transliterated Trademark in Japan ■ What is a transliterated trademark?   For instance, The Coca-Cola Company owns not only a famous registered trademark “Coca-Cola” but also the following transliterated trademarks of “Coca-Cola” in phonograms such as katakana, hiragana and kanji letters.  These four (4) registered trademarks are common in pronunciation and similar to each other. RN: 403281  コカコーラ “Coca-Cola” in katakana letters RN: 403282  こかこーら  “Coca-Cola” in hiragana letters RN: 403283  古加琥羅  “Coca-Cola” in kanji letters ■ Why the transliteration of a registered trademark is necessary? Because a trademark in alphabetical letters is not always easy for the Japanese consumers to correctly pronounce it, especially in a case where the trademark is differently readable. For the owner, it will be desirable to specify how to read his trademark, and it will be preferable that his trademark is uniformly read in the world. The transliteration grants these owner's requests. ■ Is the transliteration of a trademark used on products and/or services? Yes, it is.  Especially, the transliteration written by katakana is practically and broadly used on the relevant goods and/or services in Japan.  Depending on a case, the sales agents in Japan may ask the owner to register the transliterated mark in katakana letters because of its usefulness. ■ Is it necessary to register the transliterated trademark under the Law in Japan? No, it is not compulsory to register the transliteration as a trademark.  But, it is strongly recommendable to register it in katakana or other Japanese phonograms because it apparently functions as a trademark.  Since the original is registered like in the case of “Coca-Cola” and its owner is an applicant, the registrability of the transliterated trademark is very high. (TM)

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