Why Trademark Filing Matters Before Entering Japan
Why U.S., European, and other overseas companies should file before entering Japan

When launching products or services in Japan, it is risky to assume that “using the mark first” will be enough to protect your brand.

Japan does have a prior-use right that may allow a party to continue using a trademark that it used before another party's trademark application. However, Japanese prior-use rights are not granted merely because the mark was used first.

1. Prior-use rights under Japanese Trademark Law

Article 32(1) of the Japanese Trademark Act provides, in substance, that a person who used a trademark in Japan before another party's trademark application, without an unfair competition purpose, may continue using the mark for the relevant goods or services if the mark had become widely recognized among consumers as indicating that person's goods or services at the time of the later application.

Accordingly, the following facts are important, but may not be enough by themselves:

• the mark was used earlier than the other party's filing;
• the business had operated for many years;
• the business had sales, stores, or customers;
• advertising and promotional activities had been conducted;
• there were distributors, clients, or repeat customers.

Even if prior-use rights are recognized, the trademark owner may request that the prior user attach an appropriate indication to prevent confusion. Prior-use rights are therefore not a complete substitute for trademark registration.

2. Why overseas use may not be enough in Japan

Use of a brand in the United States, Germany, the EU, or another overseas market does not automatically create trademark rights in Japan. To rely on prior use in Japan, it is generally necessary to show that the mark was already widely recognized among Japanese consumers at the relevant time.

For this reason, overseas companies should not assume that prior use abroad will be sufficient. Trademark clearance and filing in Japan should be considered before sales, exhibitions, distributor negotiations, e-commerce launch, or public brand promotion in Japan.

3. The “Takoyaki Kobo” case: a strict Japanese example

A useful example is the Osaka District Court judgment of April 26, 2021, often referred to in connection with the “Takoyaki Kobo” mark.

In that case, the plaintiff owned a trademark registration for “たこ焼工房” (“Takoyaki Kobo”). The defendant had used the sign “蛸焼工房” from around 1999 in connection with takoyaki and related food sales.

The defendant argued that it had used the sign for many years, operated stores across multiple prefectures, and achieved annual sales in the billion-yen range. The defendant also pointed to customer numbers, advertising, newspaper and radio exposure, online reviews, and other circumstances.

Nevertheless, the court did not recognize the defendant's prior-use right.

The court considered the nature of takoyaki as a food product and the actual business circumstances, including store locations, commercial area, advertising methods, media exposure, and online review activity. It concluded that the defendant's sign had not been widely recognized among many consumers in Aichi Prefecture and neighboring prefectures at the time of the plaintiff's trademark application.

The important lesson is that the defendant was not a very small business. Even long-term use, multiple stores, and substantial sales may be insufficient if the evidence does not establish the required level of recognition among relevant consumers.

4. Practical risks of not filing in Japan

If a company uses a brand in Japan without filing a trademark application, it may face the following risks:

• a third party may file or register the same or a similar mark first;
• the company may receive a trademark infringement claim;
• a prior-use defense may fail due to insufficient evidence of recognition;
• product names, store names, logos, packaging, websites, and marketing materials may need to be changed;
• damages claims, settlement negotiations, or license discussions may become necessary.

Even if a brand has already been used in the United States, Germany, the EU, or another overseas market, that does not guarantee sufficient protection in Japan unless trademark rights are properly secured in Japan.

For food and restaurant businesses, Class 43 alone may not be sufficient. If takeout products, processed foods, frozen foods, seasonings, e-commerce sales, or branded goods are contemplated, filings in relevant goods classes such as Class 30 should also be considered.

5. Conclusion

In Japan, prior use alone does not automatically establish a prior-use right. Article 32(1) of the Japanese Trademark Act requires that the mark be widely recognized among consumers at the time of the later application, and proving this requirement is not easy.

Japan imposes a high threshold for relying on prior use as a defense. Therefore, companies planning to do business in Japan should consider trademark clearance and filing before public brand launch, sales commencement, trade show exhibition, distributor negotiations, or e-commerce launch.

A trademark application is not merely an administrative formality. It is an early investment to prevent future disputes and protect brand value.

6. How MEVRO International IP Services can assist

MEVRO International IP Services assists clients with trademark clearance, trademark filing in Japan, selection of appropriate goods and services, responses to office actions, and trademark strategies for U.S., European, and other overseas companies entering the Japanese market. If you are planning to launch or expand your brand in Japan, early consultation is recommended.

References
Japanese Trademark Act, Article 32
Osaka District Court judgment of April 26, 2021, Heisei 31 (Wa) No. 784