Access

Japanese Trademark System

Before Application

1-1Trademark Search

In order to prevent any trademark infringement and decrease the possibility of rejection, we highly recommend that you will conduct a trademark search before using a trademark and filing a trademark application in Japan.

You can conduct a trademark identical search by yourself by using "Searching Japanese Trademark Database" on IPDL (Industrial Property Digital Library).

If you would like us to conduct a trademark identical and/or similarity search, please feel free to ask us. Normally, we will conduct a word mark search within 5 business days and a device mark search within 10 business days.
1-2Trademark Flow (from Filing to Registration)

Trademark applications can be filed online to the Japan Patent Office (JPO). As soon as filing application is completed, we receive a copy of the application as filed with an assigned application number from the JPO in return via online system. Therefore, no official filing receipts are issued.

An application document will be undergone "Formality Examination" and after that "Substantive Examination" will be carried out.

If the application is judged that there are no reasons for refusal by the Examiner, the application is decided for registration. Accordingly, the registration fee must be paid within 30 days since then.

When the registration fee is paid, the registration of the trademark right will take place and the trademark right will come into force.

After a few weeks, the certificate of trademark registration will be issued and the registration will be published.

For more details, e.g. in case the application is refused by the Examiner, please refer to the following web page of the JPO.

JPO: "Procedures for Obtaining a Trademark Right"

1-3Time Frame (from Filing to Registration)

Japan declares that the refusal of International Trademark Registration shall be notified to the International Bureau within 18 months from the application date, so the JPO takes 1st action not only for International Trademark Registration but also all the applications at least within 18 months from the application date.

Actually, it takes about 8 months to obtain a trademark registration if no notification of refusal is issued. If a notification of refusal is issued, it takes an additional 6 months or more (it depends on a reason for refusal).

1-4Registrable Marks
Following marks are registrable in Japan.
  • characters, figures, signs, *three-dimensional shapes or any combination thereof, or any combination thereof and colors
Registrability of the following marks are currently studying.
  • color (itself), sound, position, moving, and hologram marks

Studying for olfactor, touch and taste marks have been shelved.

*To acquire the trademark registration for the three-dimensional shapes marks, such as a bottle of drink, are very difficult, except acquiring the secondary meaning through use.

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Filing Application

2-1Filing Requirements for Trademark Application
Please provide the followings:
  • the mark
  • the goods/services
  • name, address and nationality of the applicant
  • a certified copy of the priority document, if claimed
  • executed power of attorney (we will prepare and forward you a suitable form)

Although "intent to use" is necessary under the Japanese Trademark Law, neither "actual use" nor "proof of use" are required for registration.

2-2Schedule of Fees for Trademark
Official Fee (Yen)
  • Application
    • in one class: 12,000
    • each additional class: 8,600
  • Registration
    • 10 years in one class: 37,600
    • each additional class: 37,600
    • 5 years in one class: 21,900
    • each additional class: 21,900

Please feel free to inquire about our service fees.

2-3Specification of Goods/Services

Japan has adopted the International Classification of Goods/Services and multi-class applications.

The JPO classifies specified goods/services into some similar groups and the code numbers are assigned to each similar groups. It derives from the old Japanese original classification system. The JPO Examiners treat goods/services having same similar group codes as similar goods/services automatically almost without exception.

In addition, if the number of similar group codes exceed 8 in 1 Class, the notification of provisional refusal is issued. In order to overcome the refusal, you must restrict the specified goods/services within 7 or less similar groups or submit a proof of use for every group code.

For more information, please feel free to inquire.

Since Japan has adopted above mentioned peculiar similar group codes, first of all, please inform us of the goods/services for which trademark will be used. We will provide you with appropriate descriptions of the specified goods/services in Japan.

2-4Priority

You may file a trademark application claiming a priority based on an application filed in the country of the Union of the Paris Convention.
Since the application in Japan must be filed within 6 months from the prior filing date, please give us your filing instructions as soon as possible.

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Examination

3-1Options for Preliminary Rejection

The term for filing a response with JPO for a resident abroad is 3 months from the date of pronouncement and 1 month extension is obtainable by paying the official fee. The measures for overcoming the rejection depend on the reasons as follows.

  • Existence of prior registered (filed) trademark
    1. 1)Filing an argument explaining the dissimilarity of marks or the designated goods/services.
    2. 2)Filing an amendment to delete the goods/services in conflict with those of the cited mark.
    3. 3)Filing a non-use cancellation trial/invalidation trial against the cited registration.
    4. 4)Negotiating with the owner of the cited trademark to obtain the assignment.

    ※Please note that the Letter of Consent system is not adopted in Japan.

  • Lack of distinctiveness
    1. 1)Filing an argument explaining the distinctiveness of the trademark.
    2. 2)Filing an amendment such as deleting the related goods/services.
    3. 3)Filing an argument with the evidence of use to prove the acquired secondary meaning through sufficient use.

Please be informed that it is possible to file a divisional application with additional official filing fee in order to accelerate the registration for the class which has nothing to do with the refusals.

3-2Provisional Refusal for International Trademark Registration

It is possible to request a territorial extension to designate Japan under Madrid Protocol.

The international trademark application is examined in a similar manner to that of the domestic application, however, there are some exceptions such as any amendment should be made only during a designated time frame, and so on. Thus, early instructions would be appreciated.

The necessary documents for responding the notification is the signed Power of Attorney, which can be filed later.

3-3Accelerated & Preferential Examination

A request to accelerate the examination can be filed under the certain conditions, such as the possibility of trademark infringement.

Even though you have not started using the mark, it can be approved if you are preparing to use the mark to a considerable extent and there will be a possibility of infringement.

Please note the evidence should be submitted along with the request. No official fee is required.

3-4Amendment of Goods/Services

Only deleting the goods/services and limiting the goods/services covered by the application are allowed.

Thus, it is advisable to designate the goods/services of your interest specifically as much as possible at the time of filing in case it is not certain whether the goods/services are included in the broader concept.

3-5Amendment of Trademark

It is not allowed to amend the trademark even if it is just a change of the color from the black and white to red or change of the font from Tahoma to Century.

Thus, it is advisable to file the application for the mark you are going to use, if possible.

3-6Final Rejection

Applicant dissatisfied with the examiner's refusal can file an appeal trial against the refusal. The impartial decision may be expected to some extent since appeal decision is made by the collegial body of three or five examiners.

The official fees for filing appeal trial against refusal are as follows.

Official Fee (Yen)
  • in one class: 55,000
  • each additional class: 40,000

If you receive the trial decision of refusal, the suit against the trial decision can be filed with IP High court. The case is judged by the collegial body of three or five judges.

Should you require further information on the above, please feel free to let us know.

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Registration

4-1Final Registration

The registration fee is due to be paid within 30 days (this period can be extended upon request by a period not exceeding 30 days) from dispatching date of the acceptance for registration.

The applicant may choose the term of a trademark right from either for ten years or for five years when to pay the registration fee. The duration of the trademark right depends on what kind of business the applicant would run and how long the applicant would provide the goods/services to consumers.

The official fees for registration are as follows.

Official Fee(Yen)
  • 10 years in one class: 37,600
  • each additional class: 37,600
  • 5 years in one class: 21,900
  • each additional class: 21,900
4-2Publication & Opposition

After registration, the trademark is published in the Trademark Gazette for opposition purpose. Anyone may file an opposition within two months from the date of publication.

4-3Cancellation

If the registered trademark has not been used over the past three years, anyone can request a cancellation trail against the registration based on non-use. The registrant must then prove that the mark has been used by him/her or a licensee, or that there is good reason justifying non-use of the trademark. Otherwise, the registration will be cancelled with respect to the goods/services sought to be cancelled.

This trail is sometimes effective when the registered trademark is cited as an obstacle against a pending application.

4-4Renewal of Trademark Registration

The term of a trademark right is ten years from the date of registration and it may be renewed for another ten years, but a request for renewal must be filed within six months before the expiration date with the renewal fee. Even after expiration, a request for renewal may be accepted by paying an extra fee within another six months grace period.

In addition, the proof of use is not required at the time of renewal of registration. The proof of use is however necessary if a cancellation trial against the registration based on non-use is filed.

4-5Reclassification of Goods

Currently trademark applications in Japan are filed and registered in accordance with the International Classification of Goods and Services, however, before April 1st, 1992, applications were filed and registered in accordance with the Old Japanese Classification of Goods.

The differences between the International and Old Japanese Classifications caused many problems in connection with infringement affairs and also caused difficulties in searching.

Therefore, the JPO started reclassification of goods, from the Old Japanese Classification to the International Classification, against trademarks filed before April 1st, 1992 at the time of renewal.

Missing the reclassification, the trademark registrations cannot be renewed for the next period, which means that the renewal is accepted only once without the reclassification.

  "Old Japanese Classification of Goods"

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Others

5-1License Agreement

There are two types of licenses in Japan; an exclusive license and a non-exclusive license.

An exclusive license has to be registered with JPO in order to be entered into force. On the other hand, a non-exclusive license does not have to be registered to be given effect as such while registration of the non-exclusive license prevents the trademark owner from granting a conflicting license to a third party.

5-2Protection of Renowned Trademark

Even if the trademark is well known only in foreign countries in relation to goods/services, a third party cannot be allowed to register the mark which is identical with or similar to the well-known trademark when the mark sought to be registered has been applied for with an illicit purposes under Trademark Law in Japan(§4-1-19).

In addition, an owner of a trademark which is well known in overseas and also in Japan can prevent a third party from using the mark which is identical with or similar to the well-known trademark under Unfair Competition Prevention Act.

5-3Indication of "Registered Trademark"

Indication of "Registered Mark" is not strictly requested under the Japanese Law but the trademark owner is recommended to attach such indication in Japanese words to the registered trademark.

It should be noted that the indication of "Registered Mark" attached to the unregistered marks leads to a misrepresentation which is a criminal act punishable by law.

On the other hand, use of "®" mark is not officially accepted in Japan. It would pose little problem to use "®" mark attached to the unregistered mark in Japan.

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