Trademark Act Article 8: First-to-File

1. Explanation of the Article

This article stipulates the first-to-file principle in trademark registration applications.

Specifically, this article provides that if multiple trademark registration applications for identical or similar trademarks (used on identical or similar goods, etc.) are filed on different days, only the earliest trademark applicant may obtain a trademark registration for that trademark (Article 8(1) of the Trademark Act).The identical scopeis the so-calledscope of exclusive rights (Article 25 of the Trademark Act)and thesimilar scopeis the so-calledscope of prohibition rights (Article 37(1) of the Trademark Act).

Article 8(1) of the Trademark Act assumes a situation where multiple trademark registration applicants compete. For this reason, if the same applicant files trademark registration applications for identical or similar trademarks on different days, they will not be rejected on the grounds of their own prior application. This is also clear from the fact that Article 8(1) is not listed as a ground for refusal under Article 15 of the Trademark Act. Viewed differently, I think that the Trademark Act, like the Design Act which protects variations of designs, also protects variations of trademarks.

If the similar scope of the designated goods, etc., related to the application overlaps, registration can be obtained legally. In this case, regarding the overlapping part of the rights, both are unusable regardless of the first-to-file relationship. However, if the same person files multiple applications where the similar scope of designated goods, etc., overlaps, they can be used even in the overlapping range.

Note that this article does not apply between regular trademark registration applications and defensive mark applications.

If multiple trademark registration applications for identical or similar trademarks (used on identical or similar goods, etc.) are filed on the same day, only the applicant determined by consultation between the applicants may obtain registration (Article 8(2) of the Trademark Act). The Commissioner of the Japan Patent Office issues a consultation order (Article 8(4) of the Trademark Act). If a report of the consultation result is submitted, applications other than the applicant determined by the consultation will be rejected (Article 15 of the Trademark Act). If no report of the consultation result is submitted, the Commissioner of the Japan Patent Office will determine the applicant who can obtain registration by lottery (Article 8(5) of the Trademark Act).

If an application is abandoned, withdrawn, or dismissed, or if a decision or trial decision becomes final and binding, the status of the prior application is lost (Article 8(3) of the Trademark Act).

2. Announcements and press releases should be made on or after the trademark registration application date!

When you file a trademark registration application or similar (including patent applications), you may want to announce or issue a press release about it.

However, you should avoid making announcements or press releases on the application date.

This is because it gives competing companies or plagiaristic applicants a chance to file an application with content that overlaps with what you have filed.

Under the Trademark Act, if applications with overlapping content are filed on the same day, only one trademark registration applicant determined by consultation can obtain registration (Article 8(2) of the Trademark Act).

* If the consultation is unsuccessful, the person who can obtain the trademark registration is determined by lottery (Article 8(5) of the Trademark Act).

If a plagiaristic applicant files an application with content that overlaps with your company's application, it cannot be denied that they might demand a large sum of money during this "consultation" (Article 8(2) of the Trademark Act).

For this reason, we recommend that announcements and press releases be made on or after the day following the trademark registration application date.

3. Lottery by a fair method

Article 8(5) of the Trademark Act states that if two or more applications compete and no agreement is reached through consultation, a lottery by a fair methodwill be conducted.

I tried to look into this, but Mr. Makoto Onda had already summarized the situation when he actually participated in a lottery.

I want to participate in a lottery too!!!

Information from the Japan Patent Office has also been provided!

・Trademark Act Article 8

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