Supervisor: Patent Attorney Tomoharu Ishiguro
Product names, service names, company logos, characters, and sounds used in commercials can all be registered as trademarks if they meet certain requirements. Regardless of the business field—whether it's sporting goods, clothing, games, food and beverage services, or online services—properly protecting the names and marks of your products and services is the first step in protecting your brand.
In Japan's trademark system, in addition to traditional types such as word marks and figurative marks, newer types such as motion marks, sound marks, and position marks are also eligible for registration. When choosing the type of trademark, it is important to clearly define "what you use to distinguish your company's goods and services from those of other companies." The appropriate application method will differ depending on whether you want to protect the name, the logo design, or even the shape and sound of the product.
It should be noted that "trademark type" and "classification of goods/services" are separate concepts. Trademark type refers to the composition and expression of the mark, while classification categorizes the goods and services on which the trademark is used into classes 1 through 45. This article will provide a list of trademark types, explain the differences between trademark types and classes, the trademark registration process, and how to choose the right type.
table of contents
What is a trademark?
A trademark is a mark used by a business to distinguish its own goods or services from those of others. Under trademark law, letters, figures, symbols, three-dimensional shapes, colors, and sounds can all be protected.
Upon trademark registration, you gain the exclusive right to use the registered trademark for the designated goods and services, and can use it exclusively within a certain scope. Furthermore, you may be able to exclude others from using the same or similar trademark. However, the scope of these rights is not determined solely by the type of trademark. It is determined based on the composition of the registered trademark, the designated goods and services, and the actual circumstances of the trade.
List of Trademark Types
In practice, trademarks eligible for registration in Japan are often categorized into the following 10 types.
| Types | Main contents | Examples and Usage Scenarios |
|---|---|---|
| wordmark | Trademark consisting of text only | Product name, service name, company name, brand name |
| Figurative trademark | Trademarks consisting of shapes and illustrations | Symbol marks, character shapes |
| Symbol or trademark | Trademarks consisting of symbols or geometric shapes | Distinctive symbols, stylized marks |
| combined trademark | Trademarks combining letters, figures, symbols, etc. | Logos with text, brand logos |
| 3D trademark | Trademarks consisting of three-dimensional shapes | Product containers, packaging, and display figures. |
| motion trademark | Trademarks whose text, images, etc., change over time. | Video ads, moving logos on the screen |
| hologram trademark | Trademarks whose text, images, etc., change depending on the viewing angle. | Holograms on cards and labels |
| Trademark consisting only of colors | Single colors or combinations of multiple colors without outlines | Colors of packaging, signs, and store displays |
| Sound trademark | Trademarks consisting of music, voices, nature sounds, etc. | CM sound logo, startup sound |
| position trademark | A trademark in which the location on which the mark is affixed to goods, etc., is specified. | Shapes in specific locations on shoes, containers, cards, etc. |
Word marks, figurative marks, symbol marks, combined marks, and three-dimensional marks have traditionally been protected. Since April 2015, five more types of marks—motion marks, hologram marks, marks consisting solely of color, sound marks, and position marks—have also become eligible for registration. The characteristics of each are described below.
Five types of trademarks that have existed in the past
wordmark
A word trademark is a trademark composed of characters such as hiragana, katakana, kanji, the alphabet, and numbers. It is suitable when you want to protect the name itself, such as product names, service names, company names, store names, and app names.
Word trademarks can be broadly divided into two methods: filing an application using standard characters designated by the Japan Patent Office ("standard characters"), and filing an application using characters represented in a specific typeface as a trademark sample. If you do not have a particular preference for a typeface and wish to obtain rights, standard characters are a strong option. However, if the special typeface itself is a characteristic of the brand, you may consider filing an application that includes the design of that typeface.
When using the same name across multiple media such as paper brochures, printed materials, product packaging, websites, and blogs, a word trademark is effective because it allows you to easily protect the name even if the display changes across different media.
Figurative trademark
A figurative trademark is a trademark consisting of visual shapes such as illustrations, patterns, and designs. Typical examples include a company's symbol mark, a logo that does not contain text, and illustrations of characters.
In figurative trademarks, the overall appearance and impression of the design are crucial. Even without text, through continuous advertising and sales, the design alone can sometimes be recognized as representing a specific company or product.
Symbol or trademark
Symbolic trademarks consist of circles, triangles, arrows, stars, and other symbols, or stylized versions of symbols. In practice, they may be similar to figurative trademarks, but even simple symbols can have the function of distinguishing one's own goods and services from those of others, depending on their composition and usage.
However, simple symbols commonly used or markings that merely indicate the quality or specifications of a product may not be eligible for registration due to a lack of distinctiveness.
combined trademark
A combined trademark is a trademark consisting of a combination of two or more letters, figures, or symbols. Word marks, which are combinations of two or more words, are also included in the category of combined trademarks. Company and brand logos often fall under the category of combined trademarks, as they integrate the name and symbol.
When a combined trademark is registered, the entire registered combination generally forms the basis of the rights. Therefore, if you plan to use the name portion on its own, you should consider filing separate applications for the word mark and the combined trademark. Since the cost increases with the number of applications, it is important to organize the actual usage and the priority of protection.
3D trademark
A three-dimensional trademark is a trademark consisting of a three-dimensional shape, such as a product, container, packaging, store fixtures, or character figurine. It is not enough for it to simply be a new design; the three-dimensional shape must be recognized as an indicator of the origin of the goods or services.
In particular, shapes that are essential to ensuring the functionality of a product, or shapes that are commonly used in similar products, tend to be difficult to register as trademarks.
In some cases, the fact that a product is widely recognized as belonging to a specific company through long-term use and advertising can be an important factor in determining whether or not to register it for registration.
For new product designs, protection under design rights, rather than just trademark rights, may be more appropriate. Since trademarks and designs differ in their purpose of protection, registration requirements, and duration, it is effective to consider an intellectual property strategy during the development phase.
①
②
Five types that became eligible for registration in 2015
motion trademark
An animated trademark is a trademark in which text, images, or other elements change over time. Examples include displays in television commercials, websites, and app startup screens where a company logo or character moves in a specific sequence.
When filing an application, you must illustrate the changes using one or more diagrams or photographs, provide a detailed description of the trademark, and specify the sequence and content of the movements. Not only are the movements themselves important, but the changing letters, figures, etc., are also components of the trademark.
≪Registration example»
hologram trademark
A hologram trademark is a trademark in which letters, figures, or other elements appear to change depending on the viewing angle, etc., using holography or other methods. Holograms attached to cards, certificates, product labels, etc., may function as indicators of a specific business.
In the application, the trademark for which protection is sought must be clearly identified with multiple diagrams or photographs showing the before and after of the change, along with a detailed description. Simply having a glossy material or decoration does not automatically qualify it for trademark registration.
≪Registration example»
Trademark consisting only of colors
A trademark consisting solely of color is a trademark that does not include letters or outlines of figures, and is composed only of a single color or a combination of multiple colors. The colors consistently used on product packaging, advertising signs, store fixtures, etc., may indicate the origin of the brand.
Because many businesses are free to use colors, it is generally difficult to recognize their distinctiveness, and the hurdles for registration are high. Documentation demonstrating that distinctiveness has been acquired through use, such as the period of use, sales performance, advertising status, and consumer perception, may be important.
≪Registration example»
①
②
Sound trademark
Sound trademarks are trademarks that consist of music, voices, nature sounds, or other sounds, and are recognized by hearing. Typical examples include short melodies used repeatedly in commercials, voices announcing company names, and product startup sounds.
The sound to be registered must be represented in the trademark description section using text or musical notation, and identified by submitting an audio file. Sounds that are normally emitted by the product, common sound effects, or sounds that are simply recognized as musical pieces may be difficult to register.
≪Registration example»
①
②
position trademark
A positional trademark is a trademark that consists of a mark such as letters or a graphic placed in a specific location on a product or item. For example, this could involve repeatedly placing the same graphic on the side of a shoe, in a specific location on a container, or on a specific part of a card.
When filing an application, the mark and its location are identified by showing the mark to be protected with a solid line and other parts of the goods with dashed lines. Unlike three-dimensional trademarks, which protect the shape of the goods themselves, the focus of a positional trademark is "which mark to affix and where to place it."
≪Registration example»
①
②
Are catchphrases and characters trademarks?
A catchphrase is not a separate "type" under trademark law. If it is filed as text alone, it is treated as a word trademark; if it is combined with a distinctive typeface or design, it is treated as a combined trademark.
If a catchphrase is perceived only as a standard advertising slogan or a general statement of a company's philosophy, it may be rejected for lacking distinctiveness. On the other hand, if it is a neologism that does not have a direct meaning in relation to the designated goods or services, or if it has been recognized as an indicator of origin through long-term use, there is a possibility that it will be registered.
Similarly, for characters, the character name can be filed as a word trademark, the illustration as a figurative trademark, a combination of the name and illustration as a combined trademark, and the three-dimensional shape of a doll as a three-dimensional trademark. It is necessary to consider each type of protection separately.
≪Registration example»
①
②
Differences between trademark types and classifications
Trademark types refer to the composition and expression of a trademark, such as letters, figures, or sounds. In contrast, trademark registration classifications are used to categorize the goods and services for which a trademark is used.
The classifications range from Class 1 to Class 45, based on international classifications. Classes 1 through 34 cover goods, while Classes 35 through 45 cover services. For example, cosmetics, confectionery, clothing (including apparel), advertising, communications, education, and the provision of food and beverages each belong to different classifications and have different designated goods and services.
Even with the same name or logo, separate trademark registrations may coexist if the designated goods or services differ. However, different classifications do not necessarily mean dissimilar, and even within the same classification, not all goods and services are similar. It is necessary to individually check the similarity of trademarks and the similarity of goods and services.
How to choose the right type of trademark for your company
If you intend to continue using the name, consider using a word trademark.
If you plan to use product or service names in various fonts and designs, the basic option is to file a trademark application for the name itself using standard characters. The advantage of this method is that even if you change your logo, it is easier to protect the name within the scope of the registered word trademark.
If the logo is central to the brand, consider using graphic or combined trademarks.
If the design of the shapes or letters is strongly recognizable to customers, consider obtaining a figurative or combined trademark. If you use both the name and logo as important brand assets, another strategy is to register the word trademark and logo trademark separately.
The application should be filed in a way that makes it difficult for the usage to change.
Since trademark rights are based on registered trademarks, significantly changing the logo's design or colors after registration may result in it not being considered as a registered trademark. It is important to choose a design that can be used long-term, taking into account future redesigns and overseas expansion.
To obtain trademark rights in foreign countries, you generally need to consider registration for each target country or region. If your overseas name, translation, and logo used locally differ from those used domestically, you should organize your international brand strategy, including foreign applications, as soon as possible.
For specialized terminology, consider the evidence and application procedures early on.
Three-dimensional trademarks, trademarks consisting solely of colors, and sound trademarks are types of trademarks where distinctiveness and methods of identification are often problematic. Since evidence such as sales performance, advertising materials, usage period, media coverage, and consumer surveys may be required, consulting with a patent attorney from the planning stage will make it easier to formulate an application strategy.
Basic flow of trademark registration
The general process for trademark registration is as follows: ① search for prior trademarks, ② prepare and submit an application, ③ formal and substantive examination by the Japan Patent Office, ④ registration decision, ⑤ payment of registration fee, and ⑥ registration. After registration, a trademark registration number is assigned, and it can be identified as "Trademark Registration No. XX".
Before filing an application, you can use the J-PlatPat search screen to enter the name and pronunciation of the trademark to check for similar trademarks, applicants, designated goods/services, and registration numbers. While you can perform a simple search yourself for free, determining similarity and selecting the appropriate classification requires expert consideration.
If reasons for denial of registration are found during the review process, a notice of refusal will be issued. In this case, you will need to submit a written opinion or amendment within the specified period to address the issue. If the application is ultimately rejected, you may be able to file an appeal against the rejection decision.
Points to note when proceeding with trademark registration
Firstly, it is necessary to search for prior trademarks before filing an application. J-PlatPat allows you to search for registered trademarks and pending trademark applications for free, but you must check not only for trademarks with exact names, but also for trademarks that are similar in pronunciation, appearance, and meaning.
Secondly, it is important to design the trademark type and the designated goods and services together. Simply deciding on a product name is insufficient if it is unclear which goods and services the rights cover.
Thirdly, the possibility of registration and the risks of use should be considered separately. Even if a trademark is registered after examination by the Japan Patent Office, issues may arise regarding copyright, design rights, and unfair competition laws, as well as relationships with well-known trademarks of others. Conversely, even if a trademark is not registered, it does not necessarily mean that it will not infringe on the rights of others.
The trademark application process involves properly completing the application form, trademark sample, designated goods and services, and paying the necessary fees. For new types of trademarks, documents and materials different from those required for regular word trademarks may be necessary, such as a detailed description of the trademark or an audio file. If there are deficiencies in the application, corrections or responses to grounds for rejection will be required, so for brands that are important to your business, it is advisable to consider consulting a patent attorney or patent office.
While sole proprietors and small businesses can file applications themselves, mistakes in describing designated goods and services or in judging similarity to existing trademarks can lead to extra time and expense in obtaining rights. If you choose to use the support of a professional, be sure to check in advance what services they can provide, including research, application preparation, application procedures, examination support, and overseas expansion.
Post-registration management is also important.
Trademark rights last for 10 years from the date of registration, and the rights can be maintained through renewal registration. It is important to manage the renewal deadline and to regularly check whether the registered trademark has changed significantly from the logo or name actually being used, and whether new goods and services require protection due to business expansion.
We also investigate whether other companies have filed applications for similar trademarks or are using them improperly, and consider taking appropriate action such as filing opposition, invalidation trials, warnings, or lawsuits as needed. Trademark registration is not a one-time event; it needs to be continuously managed in accordance with the brand's operating policies.
Summary
Trademarks include word marks, figurative marks, symbol marks, combined marks, three-dimensional marks, as well as motion marks, hologram marks, marks consisting solely of color, sound marks, and position marks.
Choosing the right type of trademark for your company starts with considering what customers use to identify your products and services—whether it's the name, logo, shape, color, or sound. Furthermore, you need to consider not only the type of trademark, but also the classification of goods and services, the designated goods and services, similarity to existing trademarks, actual usage, and future overseas expansion.
Trademarks are crucial intellectual property for protecting your brand and preventing imitation and preemptive filings by other companies. We recommend conducting research once you have decided on your name and logo, proceeding with trademark registration in a category and classification that suits your business plan, and managing it properly thereafter.