table of contents
Trademark consultation
Q. I would like to register a trademark for my company's products. How can I register?
A. In order to register a trademark, you need to tell us the name (or mark) to be used for the product and the product you plan to use it for.
Our office not only provides consultation on determining whether a trademark can be registered, but also advises on the selection of designated products.
Q. What kind of trademarks can be registered?
A. There are certain restrictions under the Trademark Law regarding what kinds of trademarks can be registered.
- For example, a trademark that is a generic name and cannot be distinguished from other products (this is called product distinctiveness) cannot be registered. (Article 3 of the Trademark Law).
- Furthermore, trademarks that are similar to other people's registered trademarks, trademarks that may cause misunderstanding of quality (for example, the trademark ``udon'' for the product ``ramen''), and trademarks that are similar to well-known trademarks cannot be registered.
- The specified product may differ depending on the product's use and field (for example, chemicals/pharmaceuticals/household use, etc.). Therefore, if you choose the wrong designated product, you may not be able to enforce your rights if someone else uses a similar trademark, so please be careful.
Q. After I applied, I received a notice of reasons for refusal from the Japan Patent Office. It is said that the trademark cannot be registered because it is the same or similar to another person's trademark that was applied for earlier. Is it okay to give up on registration and continue using it as is?
A. If you continue to use the trademark as is, the holder of the prior trademark right may determine that it is an infringement of their rights and may be required to stop using the trademark or demand compensation for damages. Therefore, we recommend that you argue in your written opinion that the prior trademark is a dissimilar trademark.
Additionally, if registration is not approved, you should consider changing the trademark. If you file a new application for the changed trademark and it is registered, you can use the trademark with peace of mind.
Q. I am operating my store after registering the name as a trademark, but it seems that a major competitor has recently opened a new store with a similar name and has also registered the trademark. I'm worried that a major company will sue me to stop using it.
A. There is no problem if you apply for a trademark before your competitors and use the registered trademark for the designated goods/services.
However, if you are using a trademark with changes, please note that if the registered trademark has not been continuously used in Japan for three years or more, it may be subject to cancellation of non-use. In order to avoid being subject to cancellation for non-use, please provide as much objective evidence as possible to prove that the registered trademark is being used for designated goods/services, such as newspapers and magazine products in which the trademark is published. We recommend that you keep any advertisements, flyers, catalogs, pamphlets, transaction documents, etc. In this case, the relationship between the product and the trademark must be clear in the transaction document. Furthermore, the trademark that certifies use must be one that is recognized as the same as the registered trademark based on social conventions.
Q. I sell a certain product in Japan and am planning to open a store overseas. Is it necessary to register a trademark overseas?
A. Yes. We recommend registering even if you are overseas.
The principle of trademarks is territoriality, and Japanese trademark rights and foreign trademark rights are independent, and trademark rights in each country are protected only within that country and not in other countries (as per the Paris Convention). Article 6). If you use an unregistered trademark overseas, others will imitate your trademark and your brand value will decline.Also, since most countries have adopted the first-to-file system, someone else could register your trademark ahead of time, which could damage your trademark. Your business may suffer significant losses, such as not being able to use your trademark. (As an exception, prior use rights may be recognized, but this will result in a financial burden for resolving disputes over trademarks.)
Also, when registering overseas, care must be taken when selecting designated products. Regarding the international classification of goods/services, they are mostly classified based on the "Nice Agreement on the International Classification of Goods and Services for the purpose of Registering Marks," but the method of describing designated goods differs depending on each country's system. Therefore, it is necessary to request a local agent to confirm the specified product. Furthermore, the systems in each country vary, and you need to be careful about the documents required for registration and whether they use the multi-classification system or the usage system.
Regarding trademark registration overseas, in addition to direct application to each country, there are other methods such as international registration application and European Community trademark application, each of which has its own advantages and disadvantages, so please feel free to consult with us.
Q. I would like to manufacture products overseas and sell them in Japan. Is trademark registration necessary in foreign countries?
A. Yes.
Even if a trademark is registered in Japan, its rights do not extend overseas. Therefore, even if you manufacture a product in a foreign country and import it into Japan, please be aware that if you attach a trademark to the product in a foreign country, it will be used as a trademark and you will also need to register the trademark in the foreign country. For example, if a product with a trademark is manufactured and exported to Japan without registering the trademark, and a trademark that is the same or similar to that trademark is already registered in a foreign country, it will be considered an infringement of trademark rights. There is also the risk that your trademark will be taken over by someone else. In such a case, it will no longer be possible to manufacture the product in that country. We also recommend that you apply to customs to prevent fake products from being exported.
Q. It seems that a counterfeit product of my product is being imported. What should I do?
A. The act of "importing a product or a product with a mark affixed to its packaging" is an act of using a trademark, so if the product's trademark affixed to the product is registered in Japan, the trademark cannot be used. The act of importing a counterfeit product with a mark on it is an act of infringement of trademark rights, so the trademark right holder can seek an injunction against import, compensation for damages, and return of unjust profits.
Even if the trademark is not registered, you may be able to claim for infringement of design rights or an injunction or compensation for damages under the Unfair Competition Prevention Act. It is also possible for the package to be detained at customs. Furthermore, even if the goods are imported by individuals, it is possible for them to be detained at customs, although this will depend on a case-by-case basis.
Q. What should I do if I want to sell goods using characters?
A. The Legal Strategy Department can answer questions not only about trademark rights, but also about design rights and copyrights.
Generally speaking, if a character is an original creation, copyright will naturally arise at the time of creation. No registration or examination is required at this time. Additionally, if the character functions to indicate the source of goods or services, it is subject to trademark registration. If the name or logo of a character is registered as a trademark, it is possible to conclude a license agreement for that trademark as well.