Startup Trademark Guide

For startup companies, intellectual property is an important factor supporting growth. Among intellectual property, trademarks are particularly effective from the perspective of eliminating business risks. Below, we will explain the importance of "trademark registration" for startups and strategies for filing trademark registration applications.

Importance of “trademark registration”

Trademark registration is a procedure to legally protect names, logos, naming, etc. related to products and services provided by a company.
If a start-up company does not register the name, etc. of its products or services as a trademark, that is, does not obtain trademark rights, the following risks will occur.

Risks in relation to other trademarks

Trademark rights are only effective upon registration. In other words, trademark rights are not established as rights unless you apply for a trademark and it is not approved for registration.
Furthermore, acquisition of the rights is determined on a first-come, first-served basis, so whether or not the rights have been used first is generally not taken into account.
Therefore, if you use a trademark without filing a trademark registration application,

A situation like this can occur.

In cases ① and ②, you will have to take the following actions, which will take time and cost, and will have a negative impact on your business.

Additionally, if someone copies your company's trademark without permission, as in ③ above, you will not be able to sue for infringement of your rights, so you may end up in a situation where you will not be able to properly protect your brand.

Risks in EXIT

Generally, one of the elements for evaluating corporate value includes "intellectual property information." Trademark rights are also included in intellectual property information, so acquiring trademark rights can improve the value of your intellectual property.
However, as mentioned above, if you do not register your company's trademark, you may run into trouble with others. Therefore, at the time of IPO or M&A, it is checked whether the company owns intellectual property such as trademark rights.
As a result of the check, if it is determined that the company does not own intellectual property such as trademark rights, it is determined that there is a high possibility that there is a risk in proceeding with the business, and it is considered that there is a high possibility that the company has risks in proceeding with the business. is likely to have a negative impact.
In other words, by acquiring trademark rights, you can protect your brand from infringement by third parties, maintain your business credibility, and grow your trademark. This is expected to increase the evaluation from investors.
If you do not obtain trademark rights as described above, you may run the risk that your company will not be evaluated by investors, or even if it is evaluated, its evaluation will be low.
Obtaining trademark rights can be said to be an effective means to protect the brand value of a startup company, grow it, and prevent negative impacts on business.

Strategy for trademark registration application

What should I trademark?

A. Company Name

First of all, the company name should be considered as the object for which trademark rights should be obtained.
Even if it is registered as a corporate name or you have acquired a domain that includes the company name, this does not mean that the use of the company name as a trademark is legally guaranteed.
Therefore, by using the company name as a trademark, it is possible that the company may have unknowingly infringed on the trademark rights of a third party. Furthermore, if you do not have trademark rights, you cannot enforce your rights even if your product is imitated.
Therefore, it can be said that it is necessary to first apply for a trademark for a company name that you want to be recognized as a brand. In particular, if the company name and product/service name match, filing is essential.
*If the company name and product/service name match, there are benefits such as reducing the number of trademark applications and making brand management easier. There are many examples, such as "SUBARU Co., Ltd." and "SmartHR Co., Ltd.," where the company name was later changed to match the name of a product or service with strong brand power.

On the other hand, if you do not want to expose your company name at all and do not use it as a trademark, or if you only want to recognize and protect your product or service name as a brand, you may want to lower the priority of trademark registration for your company name.
*If "〇〇 Co., Ltd." is displayed, if it is simply a trade name and is used in a commonly used manner, it is considered trademark infringement even if there is a prior trademark "〇〇". It won't.

When acquiring trademark rights for a company name, the scope of trademark rights is often wide because it generally covers all of the business handled by the company.
When filing an application for trademark registration, even if you are not actually doing business in an area, if you plan to do business in the near future, make sure to obtain trademark rights to include that area as well. You should.
On the other hand, as the scope of rights becomes broader, trademark application and registration costs may increase. Therefore, it is important to carefully consider the usage of the company name and business development expectations before deciding whether to register a trademark.

B. Product/service name

In addition to the company name, you may want to recognize the product names and services offered by your company.
In that case, you will need to separately obtain trademark rights for the relevant product/service name.

C. others

In addition, the following items may also be considered for acquisition.

a.Character
Corporate characters are generally used in a wide range of corporate activities such as advertising. Therefore, it is necessary to obtain a wide range of rights.
Additionally, in order to fully protect rights, it is desirable to protect not only the illustrations but also the character names.

(Registration No. 5077073) Right holder: Nintendo Co., Ltd.

b.Words, slogans, and phrases that express the distinctive content of the company, products, and services
Slogans and phrases can also be used exclusively by registering them as trademarks.

D. Text or logo?

When acquiring trademark rights, there is the issue of how characters, logos, etc. should be protected.
In principle, you should register a trademark for the way it is actually used, but you may consider setting the following criteria.

<important point>
It should be noted here that "trademarks consisting of figures and letters," "trademarks consisting only of figures," and "trademarks consisting only of letters" are different trademarks.
Therefore, for example, simply acquiring trademark rights for a "trademark consisting of a figure and letters" may prevent a third party from registering a trademark consisting of a figure only or a trademark consisting only of letters. You may not be able to exercise your rights regarding the use of
Therefore, it is considered best to obtain trademark rights for both "trademarks consisting only of figures" and "trademarks consisting only of letters."

E. Designated goods/services

When filing an application for trademark registration, select the designated goods and services that define the scope of trademark rights. Selection of designated goods and services requires specialized knowledge and experience, and even if trademark rights are obtained without sufficient consideration, it may not be possible to obtain the necessary and sufficient rights.
Therefore, it is best to hire an experienced patent attorney whenever possible.

·Computer
・Electronic portable games
・Instruction and teaching of fitness and exercise, and provision of information related to these (including information provided via the website)
etc.

When should I apply?

A. First-to-file rule

Japan's trademark law adopts a first-come, first-served system. Therefore, as a general rule, the sooner you apply for a trademark to be used, such as when deciding on a name, the better.
For example, if you expose your name or logo to the public through a press release or other means before filing an application for trademark registration, there is an increased risk that a third party with malicious intent will preemptively file an application for trademark registration.
There are measures to prevent registration or cancel registration in the case of a malicious third party's application, but these are reactive measures and cannot be guaranteed to be successful. Furthermore, such measures require a lot of effort and cost.
Additionally, the larger your business, the more expensive it will be to rebrand if you are forced to change your trademark. Therefore, it is important to file an application before public recognition increases in order to prevent problems from occurring.
However, startups often have limited budgets.
If a name change is acceptable, it would be a good idea to file an application once the business is on track, as long as it does not infringe on the rights of others.

B. Business expansion/rebranding

As your business expands, you may find that your trademark rights no longer fall within the scope of your originally envisioned rights. In that case, you will need to file a separate trademark registration application for the same trademark specifying the goods and services that encompass the expanded scope of your business.
Additionally, companies may review and rebrand their brands. In that case, you will need to apply for a rebranded logo, etc.

C. Overseas expansion

a.Need to acquire rights abroad
Even if trademark rights have already been obtained in Japan, trademark rights cannot be similarly exercised in foreign countries. Therefore, in order to protect a trademark in a foreign country, it is necessary to register the trademark in each country.

b. How to apply abroad
There are two ways to file an application in a foreign country: one is to apply directly for each country, and the other is to file an international application based on a trademark that is pending or registered with the Japanese Patent Office. For more information, please check the URL below.
https://trademark.ip-kenzo.com/first_tm/step3/

c. Things to note when applying to a foreign country
Even if a trademark is approved for registration in Japan, it does not necessarily mean that it will be registered in a foreign country as well. Please note that registration may not be approved due to local distinctiveness or the relationship with previous trademarks.

d. Foreign application fees
Foreign filings are more expensive than domestic filings. It is best to apply after you have secured funding and are clear on which country you will expand into.

Foreign application fees are subsidized by the Japan Patent Office, and the independent administrative agency Japan External Trade Organization (JETRO) and prefectural small and medium-sized business support centers act as points of contact. For more information, please see the URL below.
https://www.jpo.go.jp/support/chusho/shien_gaikokusyutugan.html

Exmaples

Below are some specific examples of trademark registration for startup companies.
The importance of trademark registration for startups and basic trademark application strategies are explained at the URL below.
Please refer.

Startup Trademark Guide From the importance of trademark registration to application strategy:
https://www.harakenzo.com/enterprise/trademark_guides.html
*The trademarks introduced below are registered trademarks of each company.

Pixie Dust Technologies Co., Ltd.

This is a startup from the University of Tsukuba, and is headed by media artist Yoichi Ochiai.

(1) Protection of house marks

<Features>

(2) Protection of the proposed concept

<Features>

(3) Protection of product brand name

①	Trade mark: Registration number: (i) No. 6480555 (ii) No. 6621422 District: (i) 6, 9, 12, 17, 19, 20, 37, 42 (ii) 27 Application date: (i) January 2021, 1 (ii) April 29, 2022
②	Trademark: iwasemi Registration number: No. 6524931 区　　分：6、7、9、12、15、17、19、20、27、35、37、40、42、43 Application date: August 2020, 12
③	Trade mark: Registration number: No. 018720915 (EUIPO) District: 6, 17, 19, 20, 27, 42 Application date: August 2022, 6

<Features>

(4) Protection of technology brand

<Features>

Mercari Co., Ltd.

Mercari was established in February 2013 as ``Kouzo Co., Ltd.'', but the company name was changed to ``Mercari Co., Ltd.'' in November 2. The app ``Mercari'' started providing services in July 2013, and this is an example of changing the company name to match the service name.

(1) Protection in foreign countries

①	Trade mark: mercari Registration number: No. 5686537 (International registration No. 1201083) District: 9 Application date: August 2014, 2
②	Trade mark: Registration number: No. 6147954 (US registration) District: 9 Application date: August 2018, 3
③	Trade mark: Registration number: No. 5590156 (US registration) District: 42 Application date: August 2018, 3

<Features>

(2) Protection of corporate logo after rebranding

①	Trade mark: Registration number: (i) No. 5739826 (ii) No. 5981252 (iii) No. 5988642 (iv) No. 6022271 District: (i)9, 35 (ii)36 (iii)42 (iv)43 Application date: (i) January 2014, 10 (ii) April 29, 2017 (iii) March 2017, 3 (iv) June 2, 2017
②	Trade mark: Registration number: No. 6062348 District: 5, 9, 16, 17, 20, 24, 25 Application date: August 2017, 10
③	Trade mark: Registration number: No. 6231701 区　　分：9、16、17、20、24、25、35、36、41、42、43 Application date: August 2018, 10

<Features>

Euglena Co., Ltd.

A bio-venture that conducts research and development on Euglena and manufactures and sells related products.

(1) Protection of company names consisting of common names

①	Trade mark: Registration number: No. 5021177 District: 3, 29, 30 Application date: August 2006, 4
②	Trade mark: Registration number: No. 5227772 District: 35 Application date: August 2007, 6
③	Trade mark: Registration number: No. 5424614 District: 3, 29, 30 Application date: August 2010, 12
4	Trade mark: Registration number: No. 6593576 (International registration No. 1657269) District: 3, 5, 32 Application date: August 2022, 1
⑤	Trade mark: Registration number: No. 6593577 (International registration No. 1657270) District: 3, 5, 32 Application date: August 2022, 1

<Features>

(2) Character protection

①	Trade mark: Registration number: No. 5572053 District: 9, 14, 16, 18, 25, 26, 28 Application date: August 2012, 9
②	Trademark: Yugurin Registration number: No. 5572054 District: 9, 14, 16, 18, 25, 26, 28 Application date: August 2012, 9

<Features>

(3) Protection through joint application

<Features>

PeptiDream Co., Ltd.

A bioventure company originating from the University of Tokyo that conducts research and development of pharmaceuticals by applying special peptides.

(1) Protection in various ways

①	Trade mark: Registration number: No. 5027870 District: 5 Application date: August 2006, 8
②	Trade mark: Registration number: No. 6438997 District: 1, 5, 35, 40, 42 Application date: August 2020, 10
③	Trade mark: Registration number: No. 6618212 Ward: 1, 5, 9, 10, 35, 40, 42, 44 Application date: August 2022, 2

<Features>

(2) Protection in local languages

①	Trade mark: Registration number: No. 18127178 (registered in China) District: 42 Application date: August 2015, 10

<Features>

(3) Multifaceted protection of in-house technology

①	Trade mark: Registration number: No. 5652110 District: 5, 40, 42 Application date: August 2013, 3

<Features>

Money Forward Co., Ltd.

It was established as ``Money Book Co., Ltd.'', but the trade name was later changed to ``Money Forward Co., Ltd.''. We provide financial web services.

(1) Protection in various ways

①	Trade mark: Registration number: No. 5787967 District: 9, 35, 36, 38, 41, 42 Application date: August 2015, 2
②	Trademark: Money Forward Registration number: No. 5868070 District: 9, 35, 36, 38, 41, 42 Application date: August 2015, 11
③	Trade mark: Registration number: No. 6203306 District: 9, 35, 36, 38, 41, 42 Application date: August 2018, 10
4	Trademark: Money Forward Registration number: No. 6321841 District: 9, 35, 36, 38, 41, 42 Application date: August 2019, 8
⑤	Trademark: Manefo Registration number: No. 6560770 Ward: 9, 35, 36, 38, 39, 41, 42, 45 Application date: August 2021, 11

<Features>

(2) Protection of catchphrases and slogans

<Features>

Trademark registration of trade name (company name)

When starting a business, you must decide on a trade name (company name). The name of the company is something that those who started the business have fond memories of. However, if you do not register your company name as a trademark, you may not be able to use your company name or you may be sued for damages by a third party.

Below, we will explain how to register a company name as a trademark, including important points to keep in mind. A must-read for anyone who has started a business or is planning to start a business.

Difference between trade name (company name) and trademark

Trade names (company names) and trademarks are easy to confuse because they have similar names, but there are differences as shown below.

Trademark: A mark used to distinguish your company's products and services from those of other companies and to indicate their origin. It is stipulated in the Trademark Law, and registration is done by submitting an application to the Patent Office.
Trade name: A name used by a company to identify itself when conducting business, and is used to distinguish it from other business entities. It is stipulated in the Commercial Law and the Company Law, and is registered at the Legal Affairs Bureau.

Key points of trade names and trademarks

When deciding on a company name, we recommend that you conduct a trademark search and register the trademark. This is because if the same or similar trademark registration (prior trademark) already exists for the candidate company name, there is a possibility of trademark infringement as mentioned above. Therefore, before deciding on a company name, be sure to conduct a trademark search to make sure there are no problems with its use as a trademark.
When conducting a trademark search, you must be careful about the scope of the search.
Because company names are often used as trademarks for all of the company's business, they tend to require a broader range of rights than just product or service names. The key is to properly investigate the scope of your business.
If a prior trademark exists outside the scope of the search, using the trademark within the scope of the prior trademark's rights may result in trademark infringement as described above. In other words, it is necessary to conduct a trademark search to an appropriate extent, and then file a trademark application to an appropriate extent and register the trademark.
As a result of the investigation, if a prior trademark is discovered within the scope of your business, you will be forced to take the following actions.

Exmaples

The following are cases where troubles occurred because a company had not acquired trademark rights for its trade name, or had used a trademark without acquiring trademark rights to an appropriate extent.

Monchouchou incident

(XNUMX) Overview

(2) Background

①	Main plaintiff registered trademark Commercial mark: Registration number: No. 1474596 Designated goods/services: Confectionery, bread (Class 30)
②	Defendant registered trademark Commercial mark: Registration number: No. 4939769 Designated goods/services: Provision of food and drinks, mainly cakes or sweets, and provision of information related to these (Class 43)

(3) Trade name and trademark after change

	Trade mark: 登録番号（指定区分）：第5276767号（第30類），第5460770号（第29類，第43類），第5555454号（第3類，第31類），第5582119号（第18類，第24類，第25類）

Lock-on incident

(XNUMX) Overview

(2) Background

①	Trademark used by main defendant *L (logo) and Impact On the World are registered trademarks (③ below)
②	Main plaintiff registered trademark Trade mark: Registration number: No. 4839624 Designated classification: Class 9, 38, 42 ⇒Class 42 is specified. The claim of the plaintiff (Lockon Co., Ltd.) in the first case that "the defendant in the first case (Business Lariat Co., Ltd.) is using the above trademark in Class 35" was not accepted.
③	Main defendant registered trademark Trade mark: Registration number: No. 5671044 Designation classification: Category 35, Category 41 ⇒ Category 42 is not specified. In the second case, the defendant's argument that his trademark was used in Class 42 rather than Class 35 was not accepted. On the other hand, the registered trademark below is designated as Class 42. Trade mark: Registration number: No. 5450134 Designated classification: Class 9, 35, 42 Trademark: Impact On The World Registration number: No. 5450135 Class 9, 35, 42

(3) Trade name and trademark after change

Change of soccer club name initiated by Keisuke Honda

There was a situation where the name of the soccer club started by former Japan national soccer team member Keisuke Honda had to be changed due to a prior trademark.
The soccer club ``Edo All United'' was started by Keisuke Honda, but the club was initially established under the name ``ONE TOKYO.'' However, during the process, it was discovered that the Tokyo Marathon Foundation (General Incorporated Association) owns the registered trademark "ONE TOKYO."
After many discussions with the Tokyo Marathon Foundation, it was decided that the name "ONE TOKYO" could no longer be used, and the club name would be changed to "Edo All United." In the selection process for the new name, the name candidates were narrowed down through a trademark search conducted by a patent attorney.

Summary

The above examples demonstrate the importance of conducting trademark research, appropriately determining the scope of rights, and filing and registering trademarks. At our office, we provide consistent support to our customers, from trademark searches and trademark applications to registration, as well as subsequent management. Please feel free to contact us.

<Contents within the page>