As from April 1st of this year, we hereby inform you that a system to make possible the registration of trademarks or brands for retail services has been introduced.
The system for retail service trademark protection is a system for protecting the trademarks that retailers or wholesalers use, including trademarks used for signs on their premises, shop assistants' uniforms, or shopping carts, and also covers mail order sales.
The trademarks used by retailers heretofore have been protected by the procedure to register trademarks for products being handled. Retail services have been protected by the acquisition of rights for the products specified in Nos. 1 to 34 of the total 45 classifications for products and services. Although price-tags for products and folded leaflets, for example, have been protected until now, the display of trademarks on such items as shopping carts or shop assistants’ uniforms, has not been protected.
However, through the introduction of the retail services trademark system this time, in addition to the heretofore protected product trademarks on price-tags and folded leaflets, the trademarks shown on shopping carts, shopping baskets and shop assistants’ uniforms are to be inclusively protected as well.
Specifically, services including retail sales have been added to retail service classification No. 35.
Hereunder the following services offered by department stores and general supermarkets have been newly approved:
(Retail services or wholesale services for a variety of goods in each field of clothing, foods and beverages, and living ware, carrying all goods together)
For trade in any other individual product that is not mentioned in the table above, it is necessary to file an application with a description of the product which specifies the type of the product to a certain level.
For example, in the case of the trade in clothing, the following services have been newly designated:
(Retail services or wholesale services for clothing)
And in line with this, the kind of products in retail sales must be specified in detail and an application should be filed accordingly.
A particular feature of the cases where an application is made for retail sales of a specific product, the trademark of the specific product is identified and a cross-search takes place. In the case of filing for retail sales of a specific product, an examination of the trademark applied and registered for such specific product will also take place.
For example, in the above case when an application is made for:
Retail services or wholesale services for clothing
apart from the trademark for the retail sales of clothing, there has to be an examination of the application and registration of the trademark according to the product classification No.25:
Clothing and provisionally in the case of somebody else having already made an application for, and granted with registration of, the same or similar trademark for “clothing” within the classification No.25, rights to the retail sales of the clothing cannot be granted.
However, in the case of it being the same person, this is not applicable.
Regarding the ‘department stores and general supermarkets’ mentioned above, in the case when a cross-search of a product classification does not take place, this is because department stores and general supermarkets handle a broad spectrum of products and their relationship with specific products is deemed to be weak.
Also, in the case of specifying and making an application for retail services for products in more than one category as shown below, the applicant may be requested to present written proof of usage of the trademark that the applicant applied for at the stage of examination in order to ascertain whether the trademark being applied for is being used in the specified retail sales service.
- Retail services or wholesale services for foods and beverages
- Retail services or wholesale services for cosmetics, toiletries, dentifrices, soaps and detergents
- Retail services or wholesale services for clocks, watches and spectacles [eyeglasses and goggles]
Also, applications made between April 1st and June 30th are dealt with as applications filed on the same day in a limited case where such applications are for retail sales. In this case, applications that can show actual proof of trademarks being used will be given priority for registration, and in the case that both trademarks are being used, it will be possible that both trademarks will be accepted for registration.
We will be happy to answer any questions you have about this system, so please do not hesitate to contact us. Since the commencement of this retail services trademark system on 1st April, our institution has already been dealing with a large volume of applications to utilize this system.