represents a unique sign, expression or design which serves for the identification of the services or products of a certain source from those of others. Trademark registration in Japan
is useful for those company owners who are just starting a business and wish to protect the identity of their company as well as for international businesses that enter the Japanese market.
Legal framework for trademarks in Japan
The legal framework for trademarks in Japan
is set by the Trademark Act of 1959. This country
has adopted a first-to-file basis for the trademark protection. The scope of the act is to protect a chosen trademark, maintain business confidence and thus to ensure the proper development of the industry, at the same time protecting the interests of consumers.
Some of the main requirements for trademark registration in Japan, as defined in the first two chapters of the Act, are the following:
- • the trademark: those interested in trademark registration in Japan can choose any character, figure, sign or three-dimensional shape, as well as a combination thereof;
- • the use of the trademark: the proposed trademark shall be used in connection with the goods produced by a company or individual provider;
- • conditions for registration: any original trademark can be registered, unless it is customarily used in connection with the foods of services and unless is consists solely of a mark that indicates in a common manner and in a common name the types of goods and services that are being offered;
- • unregistrable trademarks: trademark registration in Japan is not allowed when a trademark is similar or identical to national symbols, a medal or foreign national flag (among others) or when it is identical or similar to a mark that was registered with the United Nations or another international organization as well as when it is similar or identical to another trademark registration submission made with the Japanese authorities on an earlier date.
Trademarks cannot be registered when they are likely to cause confusion regarding the goods or services they represent not when they are likely to mislead the customers in regards to the quality of the goods or services. Likewise, the mark cannot indicate a place of origin of Japanese wines or spirits that have been designated by the Commissioner of the Patent Office, not a place of origin for wines or spirits of a member of the World Trade Organization.
A trademark registration in Japan is valid for 10 years from the date it was registered and may be renewed for another 10 years prior to the date of expiration. Our team can assist interested individuals both with the initial registration and with the renewal.
General procedure for trademark registration in Japan
Trademark rights are effective throughout Japan and the owner has exclusive usage rights. The general procedure for obtaining the registration is described below by our Japan company formation agents:
- The initial application: the process starts by filling in the forms that are mandatory for this process; the application also includes a representation of the trademark;
- First publication: this is the publication of the unexamined application and it is done by the Japan Patent Office in the Official Gazette.
- Examination: trademark registration in Japan is subject to two examination phases, one for checking the mandatory formal and procedural requirements and another for a substantive examination (the trademark evaluation to determine if the proposed mark complies with the rules in force);
- Notification/Decision: two possible outcomes are possible after the examination – the applicant can receive a Notification of Reasons for Refusal or a Decision of Registration (alternatively, a Decision for Refusal if, following the Notification the arguments or amendments brought by the applicant were insufficient).
- Registration and publication: if the trademark is approved, the following steps include the registration and the payment of the fee as well as the publication of the trademark right in the Trademark Gazette.
Those who are interested in trademark registration in Japan should know that any individual can file an opposition to the decision to register a trademark. This is done with the Commissioner of the Japan Patent Office.
Having specialized assistance while submitting the request for a trademark registration (or even for an appeal or a trial for cancellation) is important. Our team can help with the following:
Our company registration
advisors in Japan
acknowledge the data received from you, such as the specimen of the mark, its services or goods and the registration details and others. We also offer the most recent quotation and we classify the services or goods;
• The client has to complete a trademark search or a registration order form and send it back to us;
• After we receive the payment receipt for the pre-filling search, we will effectuate, if requested, a pre-filling search. The official search report is sent to you in maximum 15 working days;
• In case the search results show that the application is to be expected for being accepted and you decide to go further, we will need a photocopy of an identity document, like a passport or a business registration license. Also, you will have to pay for filling the application;
• We inform you when the JPO publishes the content of the filing in the Official Gazette and it verifies if it meets the substantive and formal conditions. In case these are not respected, the Examiner objects to the mark;
• If the trademark was approved for registration, the certificate of the registration is issued by the JPO;
Accelerated and fact-track trademark examinations in Japan
The accelerated examination for trademarks in Japan is possible only in a number of cases and the following two requirements are important:
- the mark is already in use for the goods or services for which the application is made, or the applicant has made significant progress in preparing it for use;
- obtaining the trademark right is of an urgent nature; this is possible when the claimed mark was used by a third party, when the application was also filed in a foreign country, when a third party issued a warning, or when a basic application was submitted under the Madrid protocol; other situations may be possible and we advise those interested in discussing this matter in more detail with our trademark specialists.
Currently, the Japan Patent Office does not allow the option to submit an accelerated procedure for non-traditional trademarks. Included here are motion or hologram trademarks, color trademarks (those that are made up solely of colors), sound or position trademarks. This is the case due to the fact that these types of marks are subject to a higher level of examination in order to ensure quality and compliance. If you wish to know more, our team can help you.
The number of applications that are submitted under the accelerated procedure is growing in Japan. The statistics repotted by the Office highlight the fact that the total number of such submissions was 8,110 in 2019, compared to 1,587 in 2013. The industries for which the accelerated procedure was requested most often include industrial services (with 1,659 applications in 2019) and the general services (with 1.652 applications in 2019).
Another option that may be suitable for many of those who apply for trademark registration in Japan is the fast-track examination. Under this process, the examination phase takes place within approximately 6 months, compared to the average 12 months required for regular applications.
In all cases, the applicant who files for trademark registration in Japan under the fast-track procedure should keep in mind that the actual time needed for the Office to issue a decision on the registration can very from one case to another. In certain cases, applications submitted on or after February 1, 2020 are subject to the fast-track examination, however, for certain categories of goods or classes of services, this type of application is ineligible.
Some of the most important differences between the fast-track and the accelerated process are the following:
- duration: the fast-track option lasts for approximately six months from the date the application was filed while the accelerated examination ca last for 1.8 months in certain cases;
- applicants do not need to make a separate, special request for the fast-track process, however, they do need to state the request for the accelerated process;
- the fast track-examination is available for certain types of goods and services while for the accelerated one both of the two requirements stated above need to be met.
Entrepreneurs who wish to submit an application for trademark registration in Japan are not informed by the Office whether or not their application is eligible for the fast-track examination (according to the category of goods or services for which the application is made). Applicants are expected to check individually if they meet the conditions for the process. If you are interested, our team can give you more details about the applications that meet the requirements for the fast-track examination.
Japan Patent Office fees
The Japan Patent Office imposes a set of fees for each type of application, be it for trademarks, patents, designs or utility models. The fees that were in place starting with 2021 and at the time this article was written were the following for trademarks:
- ¥3,400 and ¥8,600 per classification for the initial, regular trademark application;
- ¥6,800 and ¥17,200 per classification for the defensive mark application;
- ¥38,800 per classification for the renewal of the trademark;
- ¥33,400 per classification for the defensive mark renewal fee;
- ¥3,000 and ¥8,000 per classification for the opposition of a trademark in Japan;
- ¥15,000 and ¥40,000 per classification for the appeal of a trademark registration in Japan.
The fees for the initial application, the renewal and the opposition/appeal/trial of patents or designs are different. Investors who wish to make more than one application with the Patent Office (for example, one for a trademark as well as one for a design – as may be needed in their specific industry) should take these costs into consideration when calculating the initial business budget.
Please feel free to reach out to our experts who specialize in both company formation and trademark registration in Japan. Complete assistance is provided to all our clients who are interested in registration, whether they are local or foreign ones.
According to the Japan Patent Office, the preliminary data released for 2020 (as of the end of September) indicates that there have been:
- • 34,508: national applications for trademarks and 3,154 international trademark applications during the first seven months of 2020;
- • 58,189 applications for the renewal of a trademark were submitted during the same period;
- • in 2019 the number of national trademark applications was higher, at 55,442;
- • 58 trials for invalidation and 560 trials for cancellation for trademarks took place in the first seven months of 2020; 198 trademark oppositions were lodged during the same period.
If you need to know more about the trademark registration in Japan
, we invite you to get in touch
with our company registration representatives in Japan