During each phase of startup
Intellectual property that increases corporate value

Rather than diverting or extending the traditional intellectual property services for mid-sized and small-to-medium-sized companies, our team of intellectual property experts and patent attorneys who are familiar with the startup market provide intellectual property services tailored to the startup phase.

The existing patent system menu focuses too heavily on traditional small and medium-sized business support services, and does not necessarily provide a system that is suitable for start-up companies. HARAKENZO IP ValueUP! In terms of services, we improve the market value of startup companies that create new business models, make intellectual property useful for raising funds, and work together as a team to support them all the way to exit.

 

professional support

A common problem for startup companies is that they cannot secure sufficient human resources like major companies. In particular, securing intellectual property personnel who can be involved in management is extremely difficult. HARAKENZO IP ValueUP! In terms of services, we provide professional human resources who can help startup companies improve their intellectual property value as external CIPOs.

 

Startup phase
Intellectual property services tailored to your needs

Generally, a startup's cash flow often follows a J-curve, and appropriate intellectual property care is required at each phase.

At each phase, we propose intellectual property strategies based on our extensive experience and actually implement them as a CIPO.

 

Custom made for each client
Strategy planning

In addition to phase analysis of a startup company, we comprehensively consider the specific market environment, financial environment, and other comprehensive risk management to formulate the optimal startup intellectual property strategy for each client.

 

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,

  • ①It was already a registered trademark of another person and was infringing the trademark rights of another person without knowing it.
  • ② Someone else stole the trademark and registered it, making it impossible for the company to use it.
  • ③ Someone else is using your company's trademark without permission, but you cannot sue for trademark infringement.

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.

  • Trademark change
  • Have the other party transfer the trademark rights
  • get a license
  • Cancel or invalidate the other party's trademark rights through a non-use cancellation trial or invalidation trial.

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.

  • "PlayStation" (Registration No. 5695839) Right holder: Sony Interactive Entertainment Co., Ltd.
  • "LEXUS" (Registration No. 5192338, etc.) Right holder: Toyota Motor Corporation
  • "” (Registration No. 1461327) Right holder: The Procter & Gamble Company

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.

“JUST DO IT” (Registration No. 4206837-2, etc.) Rights holder: Nike Innovate CB

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.

  • Logo has not been decided
  • There are plans to change the logo

  • A trademark consisting of characters with no distinctiveness.
    *Even if you do not have the ability to identify characters, there are ways to aim for registration by representing them in special forms or adding symbols and figures.
    *Discrimination refers to the ability to distinguish one's own products and services from those of others. For example, for the product "apple," the following trademarks are judged to lack distinctiveness.

    ・"Apple" (common name of product)
    ・"Nagano" (Product production area)
    ・“Delicious” (product quality)

<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.

*For example, "APPLE WATCH" (Registration No. 5819569) has acquired trademark rights not only for "watch" but also for a wide range of rights including the following products and services.

·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

Trademark: Pixie Dust Technologies
Registration number: No. 6049000 (International registration No. 1508583)
District: 7, 9, 12, 28, 35, 38, 41, 42, 45
Application date: August 2017, 8
Trademark: Pixie Dust Technologies
Registration number: No. 6373589
区  分:7、9、10、12、15、16、28、35、37、38、41、42、43、45
Application date: August 2020, 3
Trademark: Pixie Dust Technologies
Registration number: No. 6610486
区  分:3、5、6、7、10、15、17、19、20、27
Application date: August 2022, 5

<Features>

  • Legalizes two types of standard characters: English and katakana notation.
  • Specify a wide range of rights
  • Regarding ①, rights have also been obtained in China, South Korea, and the United States through international applications.

(2) Protection of the proposed concept

Trademark: Digital Nature
Registration number: No. 6083268
区  分:7、9、10、12、28、35、38、41、42、45
Application date: August 2017, 12
Trademark: Digital Nature
Registration number: No. 6465063
District: 9, 16, 39, 42
Application date: August 2020, 10

<Features>

  • Rights to only English notation in standard characters
  • Although not as extensive as a house mark, it specifies a wide range of rights.

*“Digital Nature” is a concept advocated by Yoichi Ochiai that can be interpreted as “a new natural environment that will be rebuilt through the compatibility of computers and non-computer resources.”

(3) Protection of product brand name

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
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
Trade mark:
Registration number: No. 018720915 (EUIPO)
District: 6, 17, 19, 20, 27, 42
Application date: August 2022, 6

<Features>

  • Obtained rights to two types of typefaces: designed typefaces and standard characters.
  • ①② are registration examples at the Japan Patent Office, ③ are registration examples at the European Union Intellectual Property Office (EUIPO)

(4) Protection of technology brand

Trademark: DeepWear
Registration number: No. 6255302
Ward: 9, 14, 18, 25, 35, 41, 42, 45
Application date: August 2019, 4

<Features>

Trademark a technical name rather than a product or service name
⇒Provide multifaceted protection rather than “technology = patent”

*DeepWear is a technology and mechanism that generates new designs using deep learning.

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

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

<Features>

  • ① is registered in China, the European Union Intellectual Property Office (EUIPO), South Korea, and the United States through an international application.
  • ②③ are registered in the United States through individual applications, not international applications.
    ⇒In addition to international applications, trademark applications are filed individually in the United States, and application strategies vary depending on the country.

(2) Protection of corporate logo after rebranding

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
Trade mark:
Registration number: No. 6062348
District: 5, 9, 16, 17, 20, 24, 25
Application date: August 2017, 10
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>

  • The scope of rights regarding corporate logos is gradually expanding.
  • Along with the rebranding of the corporate logo, the new logo ③ has also been acquired.

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

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

<Features>

  • Obtaining rights based on the composition of figures and characters
    ⇒Protect company names consisting of words that are considered to have no distinctiveness by turning them into logos.
  • The corporate logo after rebranding, ④⑤, is an international application.
  • ④ is registered in Myanmar, Thailand, and Vietnam, and ⑤ is registered in Singapore and the United States.
    ⇒It is assumed that the company will expand its business overseas after rebranding.

*What is “Euglena”?
・It is a microalgae that has the properties of both plants and animals, and is another name (scientific name) for Euglena.
- Euglena Co., Ltd. succeeded in outdoor mass cultivation, and it has come to be used in various foods and cosmetics, including supplements.
・Because it is a common name and not a coined word, there are many rights holders other than Euglena Co., Ltd. that own trademarks containing "Euglena."
・"Eglenmushi" (Commercial Application No. 2009-94355) and "Yugurena" (Commercial Application No. 2009-97417), which consist only of letters, have been rejected in the past due to a lack of discernment.

(2) Character protection

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

<Features>

  • Rights to character logo and character name
  • Rights have been acquired over a wide range of areas, including designated products such as “clothes.”

(3) Protection through joint application

Trademark: DeuSEL
Registration number: No. 5424614
District: 3, 29, 30
Application date: August 2010, 12

<Features>

In addition to Euglena Co., Ltd., Isuzu Motors Co., Ltd. is the right holder.

*Euglena Co., Ltd. has entered into a joint research agreement with Isuzu Motors Corporation for the practical application of next-generation biodiesel fuel derived from Euglena.
*“DeuSEL” is a coined word that combines “DIESEL” and “euglena”.

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

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

<Features>

  • Rights available in 3 patterns: text only, text and figures, and figure only
  • The scope of rights is gradually expanding

(2) Protection in local languages

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

<Features>

The Chinese name for “PeptiDream” has been granted rights in China.
⇒We can see business development in the local language in China.

(3) Multifaceted protection of in-house technology

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

<Features>

Protecting the name of our unique drug discovery and development platform system with a trademark
*Multiple patents have been obtained for the technology of this system.

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

Trade mark:
Registration number: No. 5787967
District: 9, 35, 36, 38, 41, 42
Application date: August 2015, 2
Trademark: Money Forward
Registration number: No. 5868070
District: 9, 35, 36, 38, 41, 42
Application date: August 2015, 11
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
Trademark: Manefo
Registration number: No. 6560770
Ward: 9, 35, 36, 38, 39, 41, 42, 45
Application date: August 2021, 11

<Features>

  • Even the same "Money Forward" has rights in various forms such as logo and standard characters, English and katakana, etc.
  • The abbreviation ⑤ of “Money Forward” is also registered as a trademark.
  • An international application has been filed for the standard English notation in ④, and it has been registered in China, Indonesia, Singapore, Thailand, and the United States.

(2) Protection of catchphrases and slogans

Trade mark: Money forward. Move forward in life.
Registration number: No. 5789878
District: 9, 41
Application date: August 2015, 2
Trade mark: Money forward. Move forward in life.
Registration number: No. 5820863
District: 35, 36
Application date: August 2015, 8
Trade mark: Money forward. Move forward in life.
Registration number: No. 6504649
District: 42
Application date: August 2021, 4

<Features>

Applying the same catchphrase/slogan three times
⇒It is thought that the scope of rights is added from time to time according to the business content.

 

 

 

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.

  • For trade names, only the name is subject to registration, but for trademarks, marks (shapes) other than names are also subject to registration.
  • A trade name can be registered if no identical name exists at the same address, but a trademark must be registered if no identical or similar name (mark) exists in the specified field of goods or services. .
  • Even if it is registered as a trade name, it does not mean that you can use it freely. For example, if there is a registered trademark of a third party that is the same as or similar to the registered trade name, the trademark use (*) may result in trademark infringement.
*Trademark use refers to the use of a trademark (name or mark) in relation to products or services to distinguish between one's own products and those of other companies or to indicate the source.
 

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.

  • Trademark change
  • Have the other party transfer the trademark rights
  • get a license
  • Cancel or invalidate the other party's trademark rights through a non-use cancellation trial or invalidation trial.

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

Monchouchou Co., Ltd. (currently Mon Cher Co., Ltd.) (hereinafter referred to as the defendant) uses a trademark that can be called "Monchouchou" for Western confectionery or the retail of Western confectionery, and Goncharov Confectionery Co., Ltd. (hereinafter referred to as the plaintiff) was found to infringe on the trademark rights of the registered trademark "MONCHOUCHOU" and was ordered to pay approximately 5100 million yen in compensation.

As a result of this case, the defendant decided to change its company name (trade name).

(2) Background

The defendant owned a registered trademark specifying services related to "providing food and beverages." On the other hand, the defendant was famous for selling "roll cakes." In other words, the trade name of "Western confectionery" was also used as a trademark.

The plaintiff owned the registered trademark ``MONCHOUCHOU'' as ``confectionery, bread.''

The court ordered damages on the grounds that the defendant's use of the trademark for "Western confectionery" infringed the plaintiff's registered trademark.

The defendant used a domain name that included the plaintiff's trademark for packaging paper bags, etc. The court also determined that the domain name was used as a trademark, and found that it infringed the plaintiff's registered trademark.

The request for an injunction was not granted on the grounds that the defendant changed its trade name while the lawsuit was pending and reflected it in the name on stores and packaging, so there was no longer any risk of the defendant's mark being used.

Main plaintiff registered trademark
Commercial mark:
Registration number: No. 1474596
Designated goods/services: Confectionery, bread (Class 30)
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

The following trademarks related to the changed trade name have been registered. It can be seen that rights have been acquired over a wide range of areas, including Class 30, which applies to "confectionery." Additionally, it can be seen that additional categories are added as the scope of business expands or as the need arises.

  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

It was found that the use of the trademark related to the trade name by Lockon Co., Ltd. (currently Ilgrum Co., Ltd.) (hereinafter referred to as the defendant) infringed the trademark rights of Business Lariat Co., Ltd. (hereinafter referred to as the plaintiff).

Although the defendant appealed, the case was eventually settled with the defendant paying the plaintiff 6000 million yen.

After this case, the defendant changed its company name (trade name) to "Ilgulum Co., Ltd."

(2) Background

Before the plaintiff filed suit against the defendant for trademark infringement, the defendant had sued the plaintiff for trademark infringement and requested an injunction against the plaintiff for using the "LOCKON" trademark. (hereinafter referred to as the first incident)

The plaintiff in the first case (Lock-On Co., Ltd.) claimed that the defendant in the first case (Business Lariat Co., Ltd.) was using its trademark in Class 35 "Advertising Business." However, the court determined that the defendant in the first case (Business Lariat Co., Ltd.) was using the trademark for Category 35 ``Provision of computer programs'' and not Category 42 ``Advertising''. The claim of the plaintiff (Lockon Co., Ltd.) in one case was dismissed.

Subsequently, the plaintiff (Business Lariat Co., Ltd.) sued the defendant (Lockon Co., Ltd.) for trademark infringement. The defendant claimed that the trademark was used in class 35. However, the court determined that Category 42 "Provision of computer programs" is also used. (hereinafter referred to as the second incident)

Trademark used by main defendant


*L (logo) and Impact On the World are registered trademarks (③ below)

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.
Main defendant registered trademark
Trade mark:
Registration number: No. 5671044
Designated classification: Class 35, Class 41

⇒Class 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

``The defendant (Lockon Co., Ltd.) has registered the following trademark in conjunction with the change of trade name.It includes Category 42 ``Provision of computer programs,'' which was not specified in the registered trademark before the change of trade name. I am.

  Trade mark: Ilgulum
Registration number: No. 6223835
Designated classification: Class 9, 35, 41, 42
  Trademark: IRUGULUMU
Registration number: No. 6223836
Designated classification: Class 9, 35, 41, 42

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.

Trademark: ONE TOKYO
Rights holder: Tokyo Marathon Foundation
Registration number: No. 6414746
Designated classification: Class 9,18,24,25,26,35,36,38,41,42,44, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX
Trademark: Edo All United
Rights holder: Edo All United Co., Ltd.
Registration number: No. 6438220
Designated classification: Class 9,18,25,35,38,41,42, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX, XNUMX

Summary

You need to carefully check which designated goods/services your company's products/services fall under, and consider the designated goods/services of your trademark, including future business development.

If there is a prior trademark, measures such as changing the trade name must be considered in consideration of its use as a trademark.

Even if you are able to register a trademark, if you use it outside of the registered scope, you may infringe on someone else's trademark rights.

As with Keisuke Honda's change of the name of his soccer club team, it is often the case that a registered trademark already exists for a name that was used without any malice, and a lack of awareness regarding trademarks can lead to business problems. It can be a big risk.

 

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.

 

 

 

How to prevent startup companies from failing with patents

 

"If you obtain a patent right, you can practice it with peace of mind without infringing on the patent rights of others."

"Even before the application is filed, it is okay to talk about the invention in sales meetings."

 These are misunderstandings.
 Even if you have a patent right, practicing the patented invention (using it in business) may infringe on the patent rights of others.You may.
 In addition, if you discuss your invention with a business partner before it has been filed, even if there is only one other party, you may not be able to obtain the rights.

 Here's what you need to know to avoid ruining your IP strategy.

 

Business activities may prevent patent rights from being obtained.

Business activities such as business negotiations, advertising, and exhibitions may prevent you from obtaining the rights to your invention.
 Even if there is only one person involved, if someone who is not under a duty of confidentiality learns of an invention before it has been filed, the invention will lose its "novelty."
 "Novelty" refers to the newness of an invention. This is the most important element when examining whether or not a patent is granted. If there is no novelty, a patent cannot be obtained.

 For example, an invention loses its novelty through business negotiations, advertising, exhibitions, provision of prototypes, publication of an invention in a publication, and sales of products related to an invention.
 Possible solutions include signing a confidentiality agreement with the other party and utilizing remedies provided by patent law.

It is safe to start sales activities after filing the application.
 It is safe to start sales activities after the patent application procedure is completed.
 It is desirable to proceed with patent application procedures without resorting to the remedies provided by the Patent Act mentioned above.
 Additionally, if a patent application is a joint application by two or more companies, it is desirable that the joint applicants discuss the timing of business activities, etc. For example, if one of the co-applicants starts marketing activities for a product related to the invention without consulting the other applicants before the application is filed, an article about the marketing activity will be published on the Internet, and the article will be used as the basis. Because it loses its novelty.

 

 

You cannot acquire rights just by filing an application.

Just filing a patent application does not mean you can obtain a patent right..
 Completing the patent application procedure does not automatically mean that you will obtain a patent right. Details of the process to obtain a patent are explained on the following website.
 https://www.harakenzo.com/column/getpatent/main.html

Patent fees must be paid to maintain patent rights.
 After registering the establishment of a patent right, it is necessary to pay a patent fee (annuity) every year to maintain the patent right. Please note that even after the patent application process, costs will be incurred to acquire and maintain rights.

This does not mean that the scope of rights you aimed for when you filed the application will be granted as is.
 If the examiner determines that a patent cannot be granted for the scope of rights desired by the applicant, the reasons for refusal will be notified. In response, the applicant is given the opportunity to amend the claims (defining the scope of rights). Amendment means a change in the scope of rights. In many cases, amendments to eliminate the reasons for refusal involve narrowing the scope of rights.

 The term of a patent right is 20 years from the date of filing of the patent application. It is expected that product improvements will occur during the term of the patent. In order to protect improved products with patent rights, it is necessary to carefully consider amendments, taking into consideration future development trends.

 

“Obtaining a patent right” does not mean “it can be safely implemented”

 For example, suppose Company A invents a pencil and obtains a patent at a time when the only writing instrument in the world was a brush.
 Suppose that Company B subsequently improves the pencil and obtains a patent for a pencil with an eraser.
 However, if Company B sells a pencil with an eraser, it will infringe on Company A's pencil patent.
 Cases like this patent for a pencil with an eraser are called "utilization inventions" under patent law.
 If you create a new invention by improving someone else's invention, you can obtain a patent right if the invention is innovative. However, it must be noted that implementing an improved invention may infringe on the patent rights of another person's invention on which the improvement is based.

 

pencil
Company A's patent
pencil with eraser
Company B's patent
Application: first Application: After

 

 By the way, if Company A sells a pencil with an eraser, it will infringe on Company B's patent for the pencil with an eraser. Therefore, Company A and Company B may consult and license each other's patents. This type of license is also called a cross license.

◎It is important to investigate patent rights of other companies
 As mentioned above, even if a patent is obtained, it may not be possible to put the patented invention into practice. Therefore, it is very important to investigate whether the product you are planning to implement infringes on another company's patent rights or uses another company's patented invention.

 The research and analysis services we provide are explained on the website below.
 https://www.harakenzo.com/patent/investigation.html#1

 

 The Japan Patent Office's website has published ``14 challenges facing startups as seen through intellectual property strategy support and countermeasures.''
 https://www.jpo.go.jp/support/startup/index.html
 As mentioned on the above website, it can be said that obtaining a patent is meaningful only when the invention related to the obtained patent is utilized. Just as getting into your desired school is not the goal, obtaining a patent is not the goal. I would like you to consider your intellectual property strategy without forgetting the strategy after patent acquisition.

 

 

Intellectual property information

  • "Research Report on Intellectual Property Issues Faced by Startups" has been published. New
    The Japan Patent Office has released a research report on intellectual property issues faced by startups.
    Although some companies have been working on intellectual property strategies from an early stage, we can see that they have not been able to adequately respond to investigations and applications, and that they are having difficulty with costs. Please take advantage of our low-cost intellectual property support service.Online IP DepartmentPlease also use ``.
  • "Intellectual Property Strategy Guide for Intellectual Property Managers of Small and Medium Enterprise Venture Startups" has been published.
    The Japan Patent Attorneys Association has released the ``Intellectual Property Strategy Guide for Intellectual Property Managers of Small and Medium Enterprise Venture Startups''.
    It provides an easy-to-understand summary of basic knowledge about intellectual property, whether to apply for a patent or whether to keep it confidential, how to check the specification draft delivered by a patent attorney, etc. The full text is available at the bottom of the linked page.
  • Open innovation portal site
    A model contract (contract template) has been released that can be used as a reference for startup companies and other companies when signing contracts with other companies.
    Model contracts are divided by field (AI, new materials) and by situation (confidentiality, joint research, licensing, etc.).
    Article-by-article explanations of each contract clause are also published, which is very helpful.
  • How to prevent startup companies from failing with patents
    This is a column created by our office. We have briefly summarized the points that are often misunderstood about startup companies and the points that you should be aware of.

 

 

System/service introduction

Application preparation

Cost measures

Examination request fee/patent fee reduction/deferment system
Examination request fee refund system

Examination request fee/patent fee reduction/deferment system

I want to save as much money as possible on patent application procedures. The examination request fee/patent fee reduction/deferment system is a system that responds to such needs.

(1) Reduction system for R&D-oriented small and medium-sized enterprises
  • Half price reduction of examination request fee
  • Patent fees reduced by half for 1st to 10th years
(2) Reduction and grace system based on Articles 109 and 195 of the Patent Law
  • Half price reduction of examination request fee
  • Exemption or half-price reduction of patent fees for 1st to 3rd year
  • Patent fees reduced by half for 4st to 10th years
(3) Reduction system based on the Industrial Competitiveness Enhancement Act

From April 26 to March 4

  • Examination request fee reduced to 1/3
  • Patent fees for 1st to 10th years reduced to 1/3
  • Search fees and sending fees reduced to 1/3 (limited to international applications filed in Japanese)
  • Preliminary examination fee reduced to 1/3 (limited to international applications filed in Japanese)

The requirements, effects, required documents, and procedures are published on the Japan Patent Office website. You can also use simple judgment.

Please feel free to contact us regarding the circumstances in which the reduction/exemption system can be applied, requirements, required documents, fees, etc. When we receive your request, our office will determine whether the requirements are met and carry out the necessary procedures.

 

Examination request fee refund system

After filing a request for review, changes in business strategy or social circumstances may eliminate or significantly reduce the need to obtain rights. In such a case, half of the paid examination fee will be refunded by withdrawing the application and requesting a refund of the examination fee under certain conditions.

Our office will process the refund of the examination request fee upon request. Please contact us separately regarding fees.

Our office's small and medium-sized business support services
  1. If our office is the application agent, we will apply for the main investigation upon request. Please contact us separately regarding our office fees.
  2. This investigation targets cases after a patent application has been filed. Please let us know if you need a pre-application investigation.
  3. We welcome consultations and requests regarding how to effectively utilize the results of this survey and preventive measures.

 

procedural strategy

・Application trend survey
 Target companies: Companies that want to understand the application trends of rival companies
 Companies that want to create and improve their patent maps
・Early examination
 Target companies: Companies that want to have their patent applications examined early.
・Interview screening
 Target companies: Companies that wish to have a speedy examination by explaining the technical content and key points of the invention to the examiner.
 Companies that want to check the examiner's opinion
・Prompt translation service for cited foreign documents when submitting a notification of reasons for refusal
 Target companies: Companies that want to quickly understand the content of foreign language cited documents
・Pension management support
 Target companies: Companies that want to prevent pension management mistakes
 Companies that want to outsource pension management
 

Application trend survey

The application trend survey analyzes fields in which Japanese industry has an advantage and fields to be pioneered based on patent information. This information will be useful for future research and development strategies and business strategies. You can also explore the application trends of other companies and understand areas in which applications should be strengthened and the need for licenses.

Our office conducts research on other companies' application trends based on your company's business objectives and business strategies.

 

Early examination for small and medium-sized enterprises

Accelerated examination is a system in which examinations are conducted earlier than normal examinations of patent applications. If you apply for accelerated examination of your patent application, you will receive the examination results from the Japan Patent Office in about 2 to 3 months on average from the time of application.

In addition, guidelines have been published by the Japan Patent Office in order to improve convenience for small and medium-sized businesses and to spread the use of the service. Small and medium-sized enterprises refer to small and medium-sized enterprises as defined in the Small and Medium Enterprise Basic Act, etc., and are companies that meet the following criteria for "number of employees by industry" or "amount of capital (or total amount of capital invested) by industry". Even if you do not meet the requirements for small and medium-sized enterprises, you can apply for accelerated examination if you meet other requirements.

Number of employees by industry
Industry Employees
Retail trade 50 or fewer
Wholesale trade, service industry
(Excluding software industry, information processing services, and hotel industry)
100 or fewer
Inn business 200 or fewer
Rubber product manufacturing industry
(Excluding automobile or aircraft tire and tube manufacturing industry and industrial belt manufacturing industry)
900 or fewer
Manufacturing industry, construction industry, transportation industry, etc. 300 or fewer
Amount of capital (or total amount of investment) by industry
Industry amount
Retail industry, service industry (excluding software industry and information processing service industry) 5 million yen or less
Wholesale trade 1 million yen or less
Manufacturing industry, construction industry, transportation industry, etc. 3 million yen or less

Small business support system for accelerated examination

(1) Reducing the burden of prior art searches

When a small to medium-sized company files a patent application, there is no need to conduct a prior art search, and it is sufficient to list documents known to the applicant by the time the application for accelerated examination is made.

In the case of a joint application with a large company, if it falls under special provisions, it is not necessarily necessary to conduct a prior art search, and it is sufficient to include documents known to the applicant by the time of application for accelerated examination.

(2) Example of application form

Examples of descriptions required for applying for accelerated examination (examples of prior art search results, document names, comparative explanations) are listed in the guidelines.

In addition to patent applications, accelerated examination is also used for design registration applications and trademark registration applications. The accelerated examination/trial guidelines can be viewed on the Japan Patent Office website below.

Please feel free to contact us if you have any questions regarding the requirements for accelerated examination/hearing, required documents, our office fees, etc.

 

Interview examination

Interview examination refers to an examiner conducting an on-site interview examination with the purpose of communicating smoothly with applicants residing in local areas and streamlining the examination procedure. If you are represented by an agent, as a general rule, an interview will be conducted with the agent.

Our office's small and medium-sized business support services

Based on the customer's requests and opinions, we will specifically consider the timing, content, etc. of the interview from a strategic perspective.

 

Rapid translation service for cited foreign documents when filing a notification of reasons for refusal

When a notice of reasons for refusal has been sent to a patent application and the period for response is extended, if the applicant is a foreigner, the reason is to conduct a comparative experiment with the invention described in the cited document or the procedural documents. Extensions of up to three months are allowed for translation reasons.

On the other hand, if the applicant is a resident of Japan, the extension can only be extended for one month if the applicant is conducting comparative experiments with the invention described in the cited document. Therefore, if the cited document is in a foreign language, there is a need to understand the content of the document as early as possible in relation to the response period.

Our office's small and medium-sized business support services

Our office is proficient not only in English but also in other languages ​​(Chinese, Korean, Taiwanese, German, French), so we can quickly translate foreign cited documents to meet your needs. I can help you.

 

Pension management support

When a patent application, utility model registration application, design registration application, trademark registration application, or variety registration application is registered, registration fees and annual fees must be paid in order to maintain the rights. Pension management errors can lead to pension rights being extinguished, resulting in wasted costs incurred in acquiring rights. Pension management is therefore extremely important.

Our office's small and medium-sized business support services

Based on our established in-house management system, our office will notify you in advance of the payment period for your requested case.

 

 Intellectual property strategy measures

・General discussion
・Measures for using lab notebooks
 Target companies: Companies that want to strengthen records and management systems for the invention process
 Companies that want to strategically utilize lab notebooks as a way to deal with disputes and other problems that may arise in the future.
・Intellectual property risk mitigation measures
 Target companies: Companies that want to reduce intellectual property risks as much as possible
 Companies that want to strengthen their intellectual property management capabilities with an awareness of intellectual property risks
・Brand strategy measures
 Target companies: Companies that want to strengthen their brand strategy
 Companies that want to leverage the strengths of their own brand

General remarks

Intellectual property is invisible and requires a sufficient management system.

For example, let's say your job involves checking the contents of documents. When you have a pile of documents in front of you, you can recognize the tasks that need to be done, so you usually don't forget them. On the other hand, if you don't have a document in front of you and have to look for it yourself, you may forget it unless you write it down so you can recognize it.

In this way, there is a difference in the need for management between visible and invisible things, and invisible things require adequate management. The same goes for intellectual property; since it is invisible information, a management system is important. It is also a good idea to make things visible.

Examples of this "visualization" include the creation of intellectual asset reports and patent/technology maps. Intellectual asset reports are information disclosures that show to interested parties, such as employees and business partners, the activities of a company to generate sustainable profits and improve corporate value for the future. The Patent/Technology Map is a map created to allow you to analyze your company's patent/technical information from multiple angles.

There are various intellectual property strategies, but here we will discuss the use of lab notebooks, measures to reduce intellectual property risks, and brand strategy.

Measures for using lab notebooks

A lab notebook is a notebook used to record the research process. Lab notebooks are important not only for companies that expand their business internationally, but also for companies that do not expand internationally.

For example, lab notes can be used to determine whether or not they are employee inventions, they can be used as materials to identify the inventor, and the invention can be visualized by expressing the process up to the completion of the invention in writing. It is useful as an effective resource for managing intellectual property.

Our firm provides advice on how to write lab notes, management systems, and strategic use from a legal perspective.

Intellectual property risk mitigation measures

Business decisions involve risks. There are many situations in which intellectual property becomes an issue in business decisions. Intellectual property risk is an important issue that affects a company's profits and credibility. In particular, company executives have a duty of care and loyalty to the company, so they are responsible for intellectual property rights from various aspects, including compliance with laws and regulations, the rationality of business decisions, and the fulfillment of monitoring and supervisory duties. We must strive to prevent risks. Therefore, intellectual property management can be said to be an important measure to avoid and prevent a company's intellectual property risks.

Examples of intellectual property risks include the following:

  • Risks that are difficult to predict due to complications due to frequent revisions of domestic laws and insufficient accumulation of precedents
  • Risk of infringing on the rights of another company without knowing it
  • Risks if the need to obtain rights disappears due to changes in domestic and international socio-economic conditions
  • Risk of information leakage due to insufficient internal controls and management

In this way, intellectual property risks occur in various situations. If you can understand what kind of intellectual property risks exist in advance, you can take measures to reduce or avoid risks.

As intellectual property experts, our firm examines intellectual property risks in each situation and provides advice on avoidance and prevention measures.

Brand strategy measures

The importance of establishing a brand image

Consumers and businesses make purchases and transactions based on comprehensive judgments about a product/service's price, quality, durability, popularity, functionality, design, trust in the manufacturer/seller, etc. In this case, a trademark is a mark of judgment. In addition, a company's trade name functions as an important brand that creates the image of the company. Trademarks are legally protected by trademark law, and trade names are legally protected by commercial and company laws.

By establishing your own brand using a trademark or trade name, you can increase the credibility of your products/services and trade name, increase customer attraction, and expect long-term sales prospects. In addition, added value other than price increases, and there is a potential to withstand competition in areas other than price competition. Therefore, it is especially important for small and medium-sized enterprises to establish a brand image unique to their company.

brand strategy

To establish a brand image, it is first necessary to establish a business strategy.

Next, we decide on the target product/service and naming, decide on the mark to be used, and conduct a pre-application investigation to obtain trademark rights as early as possible. This is because unless trademark rights are obtained, it is impossible to eliminate the risk that others will use the mark and reduce the credibility of the mark.

In addition, it is necessary to be fully aware of the scope of trademark rights, the scope of license permission, etc. This is because trademark rights have a scope in which the trademark right holder can use the trademark themselves and a scope in which they can only exclude others, so the scope of licensing is also limited. Additionally, there is a risk that trademark registration may be canceled depending on the licensee's usage.

With the enactment of the Companies Act, the similar trade name system has been abolished, and there is a possibility that someone else may register a trademark similar to your company's trade name. Therefore, it is important to actively protect trademarks that are similar to your trade name under the Trademark Law. One option is to consider receiving protection (there is also negative protection under the Unfair Competition Prevention Act, but the requirements are strict).

brand management

Establishing a brand image takes time, and trust is built through constant daily efforts. Therefore, it is necessary to monitor whether anyone is using similar marks, take measures to prevent the use of common names, and supervise licensees. In addition, it is necessary to record sales volumes and advertising results on a daily basis, and to manage and preserve data and documents in case of future disputes.

Please contact us if you have any questions regarding brand strategy for small and medium-sized businesses, trademark registration applications, measures to be taken after obtaining rights, etc.

 

Information site for supporting startup companies

Technology transfer/patent distribution information

As technology becomes more complex, the number of situations in which other companies' technologies are used is increasing. As an example of the use of intellectual property, by introducing and providing technology through a license agreement, the licensee can manufacture and sell its own products using another company's technology, and the licensor can earn profits from license fees. In addition, companies are transferring patents, trademark rights, etc. based on business succession, and buying and selling their own intellectual property rights and establishing security interests as a means of raising funds.

Our firm investigates the technology required by your company based on patent information and negotiates with companies that hold patent rights related to the technology. In addition, we prepare license contracts with a view to both domestic and international markets and take into account the relationship with antitrust laws, provide legal advice, and handle rights transfer procedures to the Japan Patent Office.

 

Counterfeit product information

If your company's products are imitated, you may not only suffer losses but also lose your company's credibility. However, counterfeit products are often manufactured overseas, and it is difficult to identify the specific infringer. Therefore, countermeasures against counterfeit products are necessary.

Through our international network of overseas agents, our office takes countermeasures against counterfeit products and provides consultation, advice, and procedures regarding border control measures at customs.

 

 


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Venture/cocreation Support Station Startup Trademark Guide
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