Japan is a leading economic power that attracts businesses from all over the world. With a robust economy, unique culture, and advanced technology, it is no surprise that many companies choose to establish a presence in Japan.
As a business owner or entrepreneur, it is essential to protect your intellectual property, and one of the best ways to do so is by registering your trademark. In this article, we will discuss the process of trademark registration in Japan and the importance of protecting your brand in this market.
Contents
1. What can be registered as a trademark in Japan?
2. Why can you be refused to register a trademark in Japan?
3. Documents required for the registration of a trademark in Japan
4. The process of trademark registration in Japan
5. Trademark opposition process in Japan
6. The cost of trademark registration in Japan
1. What can be registered as a trademark in Japan?
In Japan, any sign capable of distinguishing the goods or services of one company from another can be registered as a trademark. This includes:
- word marks;
- color marks;
- combined marks;
- service marks;
- collective marks;
- regional collective trademarks;
- quality marks (certification marks);
- 3D marks;
- defensive marks.
However, the trademark must meet certain requirements to be registered, such as not being identical or similar to existing trademarks, not being descriptive or generic, and not being against public order or morality.
Accurate classification of goods and services is a crucial aspect of trademark registration in Japan. The International Classification of Goods and Services serves as the basis for this classification, and is a globally recognized system that ensures consistency in trademark registration across the world.
It is also possible to submit a multi-class trademark application to register various classes of goods and services under a single trademark. An additional fee will be charged for each added class.
2. Why can you be refused to register a trademark in Japan?
Your trademark registration in Japan may face rejection on either absolute or relative grounds. Absolute reasons are based on objective criteria, while relative grounds consider the potential for confusion with an existing trademark. Therefore, before filing an application, it is advisable to conduct a search in the Japanese trademark database to identify any similar trademarks that may result in a rejection.
A trademark cannot be registered in Japan due to absolute grounds if it:
- Is a common name or term used for the goods or services;
- Contains a place of origin, price, quantity, or other descriptive details about the goods or services;
- Is a common surname or very simple and common mark;
- Is identical or similar to national or international emblems, flags, or famous marks;
- Contains the portrait, name, or abbreviation of another person without approval;
- Is likely to mislead about the quality of goods or services;
- Is a three-dimensional shape that is necessary for the goods or packaging to function;
- Is identical or similar to a well-known trademark indicating another person’s business, used for unfair purposes.
A trademark cannot be registered due to relative grounds if it:
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- is too similar to another person’s well-known trademark that indicates goods or services in connection with that person’s business, if the new trademark is used with those same goods or services or similar ones;
- is identical or too similar to another person’s already registered trademark for the same or similar goods or services, if the new trademark is used with those designated goods or services or similar ones;
- is identical to a registered defensive mark of another person, if the new trademark is used with designated goods or services related to the defensive mark.
3. Documents required for the registration of a trademark in Japan
To start the trademark registration process, you must file a trademark application containing:
- a request to register a trademark, including:
– representation of a trademark;
– the list of goods and services; - name, address, and nationality of the applicant;
- copy of priority application (if applicable).
The language of application is Japanese. For applicants not residing in Japan, it is necessary to appoint a local representative.
You must also file a certified copy of the basic application within 3 months from filing. A translation of the front page into Japanese is required.
The exhibition priority term is 6 months.
4. The process of trademark registration in Japan
The trademark registration process in Japan involves several steps, including a trademark search, application, examination, opposition, and issuance of the certificate. The average time from filing up to registration of a trademark in Japan is 4-10 months.
First, a trademark search should be conducted to determine if there are any conflicting trademarks already registered or pending. This can be done online through the trademark database or by hiring a trademark professional to conduct a more thorough search.
Once the search is complete, the trademark application can be filed with the Japan Patent Office. The application should include information about the trademark owner, a description of the goods or services associated with the trademark, and a representation of the trademark itself.
After the application is filed, the Japan Patent Office will conduct an examination of the trademark to determine if it meets the requirements for registration. This examination includes a review of the trademark’s distinctiveness, similarity to existing trademarks, and whether it meets other legal requirements. Read also about the process of patent registration in Japan.
If the trademark is approved, it will be published for opposition, which allows third parties to challenge the registration if they believe it infringes on their trademark rights. If the trademark is rejected or opposed, the trademark owner has the option to appeal the decision or attempt to resolve any disputes through negotiation or other means.
If no opposition is filed within a certain period of time, the trademark will be registered and a certificate of registration will be issued. You must pay the official grant fee within 30 days from the date of receipt of the Notice of Allowance.
The validity term of a trademark is 10 years from the registration date. It can be renewed every 10 years by paying a renewal fee within 6 months before the expiration date. It may also be renewed within 6 months after the renewal due date with penalty.
5. Trademark opposition process in Japan
In Japan, any person can oppose a trademark application during the opposition period, which starts after the JPO publishes the application in the official gazette. The opposition period is two months from the publication date, but it can be extended for two additional months upon request.
To initiate an opposition, the opposing party must file a written opposition stating the grounds for opposition and pay a fee. After the opposition is filed, the JPO will notify the applicant, who has the right to submit a response to the opposition. If the applicant submits a response, the opposing party has the right to submit a rebuttal.
If the opposition cannot be resolved by mutual agreement between the parties, the JPO will make a decision based on the evidence and arguments presented by both sides. If the opposition is successful, the trademark application will be rejected. If the opposition fails, the trademark will be registered.
It’s worth noting that the opposition process can be a lengthy and costly procedure. Therefore, it’s important to conduct a comprehensive trademark search before filing an application to minimize the risk of opposition.
6. The cost of trademark registration in Japan
| Application | ¥3,400 + ¥8,600 per class |
| Defensive mark application | ¥6,800 + ¥17,200 per class |
| Registration fee | ¥32,900 per class |
| Payment of registration fee by installments | ¥17,200 per class |
| Defensive mark registration fee | ¥32,900 per class |
| Renewal fee | ¥43,600 per class |
| Payment of renewal fee by installments | ¥22,800 per class |
| Defensive mark renewal fee | ¥37,500 per class |
| Opposition | ¥3,000 + ¥8,000 per class |
| Appeal | ¥15,000 + ¥40,000 per class |
| Registration of transfer of right | ¥30,000 |
| Change in the name of owner | ¥1,000 |
The cost of trademark registration in Japan via the iPNOTE platform starts from as low as $575, which covers all official fees as well as document preparation. Search for the best Japanese trademark attorney on iPNOTE.
7. Final thoughts
As the Japanese market continues to grow and attract more businesses, it is essential to protect your intellectual property to stay competitive. With the help of a qualified trademark attorney, you can navigate the complex process of trademark registration in Japan and ensure that your business is well-protected in this dynamic market.
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