[Trademark Support Station] HARAKENZO WORLD PATENT & TRADEMARK - Leading Patent Law Firm in Japan(Osaka & Tokyo)

A1: Trademark is a mark that you can attach to your goods or services thereby to distinguish your goods or services from those of others. Letters, symbols, marks, three-dimensional shapes, and the like which are visually distinguishable can be used as a trademark.

Q2: Is it possible to register a shop name or a site name or a domain name in the Internet as a trademark?

A2: It is possible to register them as a trademark by specifying goods or services provided by the shop or the site.

Q3: How about a design made by integrating a letter, symbol, and mark? Can it be a trademark?

A3: Apart from letters, symbols, and marks solely, integration of them can be regarded as a trademark. Yes, the design made by integrating a letter, symbol, and mark can be registered as a trademark.

Q4: Is it possible to register a three-dimensional shape such as dolls and the like as a trademark?

A4: It is possible to register a three-dimensional shape like an advertising doll as a trademark as long as the shape makes the goods or services distinguishable from those of others.

Q5: Is it possible to register sound or smell as a trademark?

A5: In Japan, sound, smell, and the like, which cannot be visually distinguished, cannot be registered as a trademark.

Q6: What is a difference between “trade name” and “trademark”?

A6: Trade name is a name of a corporation or a business. Registration of the trade name in one district prevents others from using or registering the trade name in the district. The trademark distinguishes the goods or services to which it is attached. Once the trademark is registered, it is possible to prevent others from using or registering the trademark throughout Japan. Thus, to seek for protection of the “trade name” throughout Japan, it is necessary to register the trade name as a trademark.

Q7: Is it possible to register a trademark that has not been used yet?

A7: Nonuse of the trademark cannot be a reason of rejection of the registration thereof. But, you should have an intention to use it. If you do not use your trademark for three years after registration, a third party may file a trial for cancellation of the registered trademark not in use. This may result in cancellation of the registered trademark.

Q8: Can a corporation (legal entity) be an applicant for a trademark application?

A8: A corporation as well as natural person (individual) can file a trademark application as long as they have capacity and power to do so.

Q9: Can a plurality of applicants file a trademark application in their joint names?

A9: Like a single applicant (corporation) does, a plurality of applicants (corporation) can file a trademark application in their joint names, which is sometimes called a joint application.

Q10: What documents are necessary to register a trademark?

A10: A trademark application shall be filed with a Request for Registration. When it comes to payment of a registration fee, it is necessary to file an Annual Fee Payment Document for Registration.
A Written Opinion and an Amendment are documents necessary to traverse or make an amendment etc. in response to rejections/objections raised in examination which is carried out by the Patent Office after the trademark is filed.
Apart from these documents, we request our clients for power of attorney in order to let us work on behalf of them in proceeding such trademark application.
We can prepare all the aforementioned documents for you if you provide us with necessary information.

Q11: Is there anything to do before filing of a trademark application?

A11: A trademark application would be rejected if there was a similar or identical trademark having been applied or registered prior to the filing of the trademark application. Thus, it is advisable to conduct search before filing of a trademark application, to find out whether any similar/identical trademark of others has been applied (and published)/registered so far.

Q12: Is it possible to conduct trademark search by myself?

A12: If you would like to conduct the trademark search by yourself, you can assess IPDL (http://www.ipdljpo.go/homepg.ipdl) of the Japanese Patent Office, at which you can search for the published and registered trademarks in Japan. However, expertise is required in determining whether or not a trademark of others is similar to one’s own trademark in view of the Japanese practices for trademark examination. Thus, we recommend you to entrust a patent law firm, like us, to conduct the trademark search for you.

Q13: Can trademark search promise successful registration of the trademark?

A13: The trademark search is to foresee a possibility of registration. In some cases the Examiner may have a different view in the examination from that of the patent law firm in the search. Further, trademarks filed two months before the trademark search are not stored in the database of the Patent Office (that is, such a trademark is not yet published), so that such a trademark is out of the scope of the search. If the trademark which is not stored in the database is similar to the subject trademark, the subject trademark may be rejected.

Q14: To determine whether an application is “earlier” than another or not, what should I refer to?

A14: To say an application is earlier than the other, the application should be filed on an earlier filing date “earlier” than the other.

Q15: If two identical trademarks are filed on the same date, which one will be registered?

A15: The applicants of such applications of identical trademarks filed on the same date are requested to have a discussion to decide which one of them is to be registered. If they cannot reach to an agreement, it is decided by lot in a fair way.

Q16: Where can I file a trademark application?

A16: Trademark applications are filed in the Patent Office (JPO; an affiliated agency of the ministry of economy, trade, and industry). To be registered, the trademarks then go through examinations conducted by JPO. If the examination are successful, the trademark will be registered therein against the payment of annual fees.

Q17: Is it possible to file a trademark application by an applicant himself/herself without a representative (such as a patent attorney)?

A17: Yes, it is possible. But the expertise is necessary to make a proper response if the Patent Office finds a problem in the trademark application as a result of examination. It is advisable to entrust a patent law firm to take care of the trademark application from filing.

Q18: What is “Patent Attorney”?

A18: A patent attorney is a person holding a license admitted by the national government to be a representative for any proceedings regarding patents, utility models, designs, and trademarks before the Patent Office, and to be a representative for proceedings relating to other intellectual property laws (Copyright law, Unfair Competition Prevention Law, Tariff act, Seeds and Seedlings Law, Act on Circuit Layouts of Semiconductor Integrated Circuits, etc.) or to advise on such intellectual property laws.

Q19: What is the difference between application and registration?

A19: Application is a just a “request” for trademark registration, and you will not be endowed with any right before the trademark is registered.

Q20: How long does it take to get a trademark registered from the filing of a trademark application?

A20: Generally, it takes about 8 months to 1 year.

Q21: May I pay the annual fee in installation?

A21: Annual fee for the 10-year term can be paid in lump sum or in installation every 5 years. If you look at the annual fee on one-year basis, the installation payment is more expensive. But the installation payment would be advantageous if the trademark was expected to have such a short life cycle that it may be out of use within 5 years.

Q22: What is the merit of trademark registration?

A22: Trademark registration grants the “trademark right”, with which the registered trademark can be used in Japan exclusively, that is, prohibiting the others from using it in Japan. The trademark right also prohibits the others from using a trademark identical with or similar to the registered trademark.

Q23: How long does a trademark right last?

A23: The term of a trademark right is 10 year from the date it is registered, and can be renewed every 10 year. So, the trademark can last forever if its registration of renewal is repeated every ten years.

Q24: What is necessary for the registration of renewal?

A24: It is necessary to file a Request for Trademark Registration of Renewal and pay renewal fee in 6 months before the expiry of the term.

Q25: If somebody is using my registered trademark without my permission, what can I claim for it.

A25: In this case, you can claim for his “infringement” of your registered trademark. You can demand the infringer to cease the infringement, pay compensation for damages and compensation for unfair profits gained by the infringer, and take measures for recovery of reputation (that is, to publish an apology), etc.

Q26: Is a trademark registered in Japan endowed with the same rights in the other countries?

A26: No. A trademark registered in Japan is valid only in Japan. To be valid in another country, the trademark should be filed in the country as well. If you need trademark right in more than one country, you may consider “international application for trademark registration”, which is more convenient than filing a trademark to each country individually.

Q27: Is trademark right assignable?

A27: Yes. Trademark right can be assigned to somebody else by registering the transfer in the Patent Office.

Q28: Is it possible to let the other person to use a registered trademark?

A28: You can let the other person to use part or whole of the registered trademark (i.e., to license the part or whole of the registered trademark to him/her). You may get license fee from the other person if you and the other person make a contract to do so.

Q29: If somebody registered my unregistered trademark which I started use before the registration, should I stop using my trademark?

A29: If your unregistered trademark had been used and publicly known before the registration, you could continue to use it. However, if it was not publicly known, you should stop using it, unfortunately.

A30: ® is a mark to mean “Registered Trademark” in US and the other countries. The meaning of ® is customarily accepted in Japan, but not officially.
TM means “Trademark” regardless of whether it is registered or not (in many cases, the trademark with TM has not been registered).
© is a mark to mean “Copyright”, and this meaning is customarily accepted in Japan.

Q1: What is a trademark?