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

Flow from filing to registration

The trademark application filed with the Patent Office is processed as follows. If no rejection is issued by the Patent Office, the decision of registration is issued in seven months at earliest.

What are designated goods and designated services?

In filing a trademark application, it is necessary to designate goods or services on which the trademark is intended to be used. It is possible to prevent others from registering or using the trademark in the scope of goods and the like designated at the time of application. Thus, we recommend to widely designate goods and the like whose trademark is required not to be mimicked and goods and the like whose trademark will be possibly used in the future.

What is classification of designated goods and designated services?

The Patent Office classifies designated goods and designated services into some groups. The number of the classified groups is 45 in total. It is necessary to clearly recite the class in the application form, and the application fee changes according to the number of classes. For example, goods such as clothes are categorized in class 25, and services such as advertisement are categorized in class 35. Please inform us of goods and the like whose trademark will be used. We will appropriately classify the goods and the like.

Goods and services whose registration are not allowed

The following goods and the like are not regarded as goods under the trademark law even though the goods and the like exist in our daily lives, so that registration of the goods and the like is not allowed. For example, registration of the following goods and services is not allowed.
① Commercial match box, novelty good
② Real estate(for example, condominium and the like)
③ Delivery service, hotel employee’s pick-up service by bus

What is trademark?

The trademark is a name (mark) given to goods or services. The trademark is often called “bland” and is close to our daily lives.
The trademark is classified into four types.
① Word mark・・・Trademark made of letters, Chinese characters, and alphabets
② Design mark・・・Trademark made of a mark and a character
③ Three-dimensional mark・・・Trademark made of a character three-dimensional puppet and
the like
④ Combination of ① to ③

What is difference between business name and trademark?

The business name is a name of a company. Registration of the business name prevents others from register the business name only in the same city, town, or village. Thus, the third party can register the same business name in an area different from an area in which the business name is registered.
In contrast, the trademark is a name (mark) given to goods or services. Once the trademark is registered, only one right exists concerning identical or similar goods, and the right is effective throughout Japan.
Thus, if a trademark similar to your own business name is registered by the third party, your trademark application of the business name is not allowed. In some cases, your business operation may be limited. Accordingly, we recommend you to register not only the business name but also the trademark.

Trademark whose registration is not allowed

  Under the trademark low, it is necessary to satisfy some requirements in registration. For example, registration of the following trademarks is not allowed.
① Trademark which fails to clearly indicate a party providing the goods or services (for example,
      trademark constituted only of a generic term such as “desk” for a desk, trademark constituted
      only of a common name such as “Yamada”, “Suzuki”, and the like).
② Trademark which has not been registered and is identical to or similar to a trademark famous as
      other’s trademark under such condition that goods or services of the trademark compete with
      goods or services of other’s trademark.
③ Trademark which is identical to or similar to a trademark having been registered by other under
      such condition that goods or services of the trademark overlap goods or services of other’s
      trademark.

Necessity of trademark search

In filing a trademark application, if there is a similar trademark having been applied or registered prior to filing of the trademark application, the application is rejected. That is, after receiving the office action rejecting the trademark application, it is found that the similar trademark has been registered. This results in significant loss and false economy. Thus, we recommend you to conduct trademark search as carefully as possible.