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 J-PlatPat (Japan Platform for Patent information).
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.
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"
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 11-13 months to obtain a trademark registration if no notification of refusal is issued. If a notification of refusal is issued, it takes an additional 2 months or more (it depends on a reason for refusal).
Following marks are registrable in Japan.
characters, figures, signs, *three-dimensional shapes or any combination thereof, or any combination thereof and colors as well as color (itself), sound, position, moving, and hologram.
Studying for olfactor, touch and taste marks have been shelved.
*Obtaining registration for three-dimensional mark for product's shape itself, such as a bottle of drink, is very difficult, except acquiring the secondary meaning through use.
Please provide the followings:
Although "intent to use" is necessary under the Japanese Trademark Law, neither "actual use" nor "proof of use" are required for registration.
Please feel free to inquire about our service fees.
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 codes 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 22 in 1 Class, the notification of provisional refusal is issued. In order to overcome the refusal, you must restrict the specified goods/services within 21 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.
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.
The term for filing a response with JPO for a resident abroad is 3 months from the date of pronouncement and time extension is obtainable by paying the official fee for 3 months at the maximum. The measures for overcoming the rejection depend on the grounds as follows.
※Please note that a simple Letter of Consent will not overcome the citation in itself.
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.
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 to the notification is the signed Power of Attorney, which can be filed later.
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 that the evidence should be submitted along with the request. No official fee is required.
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.
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.
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.
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.
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.
10 years in one class: 28,200
each additional class: 28,200
5 years in one class: 16,400
each additional class: 16,400
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.
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.
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.
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.
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.
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.