Japan
How Trademark Registration Works in Japan: Full Guide
Why Should You Register a Trademark in Japan?
When considering the protection and growth of your brand in Japan, registering a trademark offers numerous benefits. Here are key reasons why trademark registration is essential for businesses aiming to establish a secure and recognized presence in the Japanese market.
First-to-File System
Japan follows a first-to-file rule for trademarks, meaning that the first person to file an application will have the rights to the trademark, regardless of prior use. This system emphasizes the importance of registering your trademark early to secure your rights and avoid potential conflicts with others who may file for similar marks later on.
Brand Protection
Japan’s trademark system equally protects domestic and foreign nationals, encouraging international businesses to expand into Japan. Registering a trademark in Japan grants exclusive rights to use the mark for specified goods or services, preventing others from using identical or confusingly similar marks, thus safeguarding your brand’s identity and reputation. Also, you can enforce these rights through legal actions against infringers, including requesting injunctions and claiming damages, providing a robust legal framework to protect your business interests.
How Much Does a Trademark Registration in Japan Cost?
Registering a trademark in Japan involves 2 types of fees: application and registration.
Application Fees
- Basic Application Fee: ¥3,400 per application.
- Classification Fee: ¥8,600 per classification.
- Total Approximate Cost: ¥12,000 per classification.
Registration Fees
- Standard Registration Fee: ¥32,900 per class of goods or services.
- Installment Option: ¥17,200 per class, paid in installments.
The JPO (Japan Patent Office) does not accept direct payments from applicants residing outside Japan. Instead, all payments must be made through an appointed representative, such as a trademark attorney, who resides or is domiciled in Japan. This representative handles the payment process on behalf of the applicant, ensuring compliance with the payment policies.
How Long Does It Take to Register a Trademark in Japan?
The trademark registration process in Japan typically spans from 7 to 12 months from the filing date to completion.
Initially, the JPO examines within 4 to 7 months. Following this, they issue either a "Decision of Registration" or a "Notification of Reasons for Refusal." Any necessary adjustments may extend this timeline, but on average, it concludes within 7-12 months.
For faster processing, accelerated examination options can reduce this period by up to 2 months. Certain applications may even qualify for a fast-track examination, potentially cutting the examination time by up to 4 months.
How to File a Japan Trademark: Process
Before starting the registration process, it is essential to conduct a trademark search in Japan using the JPO trademark database to ensure the mark's availability. This step helps prevent potential conflicts, challenges, and risks from trademark trolls. It also reduces the chances of the application being rejected by the JPO or facing opposition from owners of similar existing trademarks.
Preparation and Eligibility
First, we need to check eligibility for both the applicant and the trademark.
Applicants with a permanent address or office in Japan can submit their application directly to the JPO. However, appointing a trademark attorney is strongly recommended due to the need for proficiency in Japanese and knowledge of relevant laws and procedures. Foreign applicants without a permanent address in Japan must appoint a trademark attorney with a permanent address in Japan to handle all necessary procedures.
To qualify for trademark registration in Japan, applicants must design a trademark that has distinctiveness, allowing it to identify and differentiate the source of goods or services without causing consumer confusion. The following types of marks are generally eligible:
- Names and Words: Unique names and words that are not commonly used.
- Graphical Representations: Logos, devices, and holograms.
- Motion and 3D Shapes: Dynamic elements and three-dimensional shapes.
- Trade Dress and Slogans: Unique packaging designs and catchy phrases.
- Colors and Sounds: Specific colors and sound marks that are distinctive.
Certain marks cannot be registered under Japan’s trademark laws.
- Immoral or Public Policy Violations: Marks that are offensive or contrary to public policy.
- Generic or Common Terms: Words that are too common or descriptive to distinguish goods or services.
- Official Symbols: Flags, emblems, and names of countries, regions, and international organizations.
- Lack of Distinctiveness: Marks that do not have a unique character or have not acquired distinctiveness.
- Unauthorized Use of Personal Identifiers: Marks that use a person's signature, portrait, or name without permission.
Application
To file a trademark application in Japan, certain requirements and documents must be prepared. Here’s a detailed overview of the application stage:
Requirements and Documents:
- Name and Address of Applicant: The full legal name and address of the individual or business entity applying for the trademark.
- Mark Representation: The type of mark being registered, such as a wordmark, device mark, or 3D mark. For 3D marks, photographs or drawings showing different perspectives (front, rear, and side) must be included.
- List of Goods and/or Services and Classification: A detailed list of the goods and services the trademark will cover, categorized according to the Nice Classification System.
- Priority Claim (if desired): If claiming priority based on an earlier application filed in another country, this must be declared at the time of filing. A certified copy of the original foreign application must be submitted within three months of the Japanese filing date.
- Official Fee: The application fee is ¥12,000 for the first class of goods or services, with an additional ¥8,600 for each subsequent class.
- Translation: If the trademark or any documents are in a language other than Japanese, a translation into Japanese is required.
- Power of Attorney: While not always required for the initial filing, a Power of Attorney may be needed for certain proceedings such as assignment or appeal filing.
Note that covering more than one class of goods or services in a single application is possible, but only one mark can be included per application. However, foreign-word trademarks can include Japanese characters in a single application.
To enhance trademark protection in Japan, it's recommended to register your trademark in both its original form and local Japanese characters. This dual registration prevents third parties from using or registering similar marks in Japanese and improves brand recognition and pronunciation among the local public, offering both legal and commercial benefits.
Examination
During a regular examination, the JPO checks the application for both formal and substantive requirements.
Formality Examination
Upon submission to the JPO, the application document undergoes a formality examination to ensure it meets all procedural and formal requirements. If any necessary documents are missing or sections need to be completed, the applicant will receive an invitation to correct these issues.
Substantive Examination
Following the formality check, the application is examined for substantive requirements. Trademarks that fail to meet these requirements, such as those that cannot distinguish the applicant's goods or services from others or those that are unregistrable due to public or private interests, will be refused.
Apart from the regular examination, there are also accelerated and fast-track examinations available.
The accelerated examination system, lasting up to 10 months on average, allows applicants with urgent needs to expedite the process. This service is available at no additional cost to those who meet specific criteria and submit a request for accelerated examination.
Applications that meet certain conditions, such as having designated goods or services selected from the Examination Guidelines for Similar Goods and Services, qualify for fast-track examination automatically. This process ensures that the examination is conducted within six months of the filing date.
Established Registration and Payment
If the examiner finds no reasons to reject your application or if any rejections are successfully addressed, a notification of registration will be issued. The registration fee must be paid within 30 days from the mailing date of the notification. Failure to pay the registration fee within this period will result in the application being irrevocably dismissed. The registration fee varies based on the number of classes in the application and can be paid in two installments.
Once the registration fee is paid, the trademark rights are established and recorded in the trademark register, becoming effective for ten years from the date of registration. However, if a registered trademark is not used for more than three years in Japan, it can be canceled upon a third party's request for non-use. In such cases, the registrant must provide proof of use within the prescribed time to retain the trademark rights.
Grant, Publication, and Oppositions
Once a trademark registration is established, it is published in the Official Gazette for opposition. Within two months from the publication date, anyone can file an opposition. If the opposition board decides to cancel the registration, they issue a Notice of Reasons for Cancellation to the registrant, who then has three months from the mailing date of the notice to file an argument.
If the examiner accepts the application, the JPO publishes the content in the gazette. This publication allows any third party to view the application and file an opposition within the two-month period if desired.
Renewal
Trademarks in Japan are valid for 10 years from the date of registration and can be renewed every 10 years. To renew a trademark, a request must be filed within six months before the current term expires, along with a renewal fee of ¥43,600 per classification. If the request is made within six months after expiration, it may still be accepted with an additional fee.
The renewal fee can be paid in a lump sum or in two installments. Proof of use is not required for renewal. During the renewal process, it is possible to reduce the number of classes. The JPO does not issue renewal certificates but sends postcards confirming the acceptance of the renewal request.
WPTO: Simplifying Your Japan Trademark Registration Journey
Navigating the Japan trademark registry can be complex, but WPTO is here to make it simple. With over 70 years of experience in providing comprehensive IP services, our team of expert attorneys, IP agents, patent engineers, and consultants is dedicated to ensuring the effective protection of your trademark rights in Japan.
Our experts, knowledgeable in various fields from electronics to biotech, have successfully secured numerous trademarks. Rely on WPTO's extensive experience and technical proficiency to ensure your intellectual property is well-protected.
Don't let the complexities of the Japan trademark registry deter you. Contact WPTO today to begin your seamless trademark registration journey.
FAQ
Is Japan a member of the Madrid System?
Yes, Japan is a member of the Madrid System, allowing international trademark registration through WIPO.
Does Japan use the "Nice Classification" system?
Yes, Japan uses the Nice Classification system for categorizing goods and services in trademark applications.
What are the types of trademarks that can be registered in Japan?
Japan allows registration of wordmarks, device marks, 3D marks, motion marks, holograms, trade dress, slogans, colors, and sounds.
How long is a trademark good for in Japan?
A trademark in Japan is valid for 10 years from the date of registration and can be renewed indefinitely.
How much does it cost to renew a trademark in Japan?
Renewing a trademark in Japan costs ¥43,600 per classification, payable every 10 years.
Why Should You Register a Trademark in Japan?
When considering the protection and growth of your brand in Japan, registering a trademark offers numerous benefits. Here are key reasons why trademark registration is essential for businesses aiming to establish a secure and recognized presence in the Japanese market.
First-to-File System
Japan follows a first-to-file rule for trademarks, meaning that the first person to file an application will have the rights to the trademark, regardless of prior use. This system emphasizes the importance of registering your trademark early to secure your rights and avoid potential conflicts with others who may file for similar marks later on.
Brand Protection
Japan’s trademark system equally protects domestic and foreign nationals, encouraging international businesses to expand into Japan. Registering a trademark in Japan grants exclusive rights to use the mark for specified goods or services, preventing others from using identical or confusingly similar marks, thus safeguarding your brand’s identity and reputation. Also, you can enforce these rights through legal actions against infringers, including requesting injunctions and claiming damages, providing a robust legal framework to protect your business interests.
How Much Does a Trademark Registration in Japan Cost?
Registering a trademark in Japan involves 2 types of fees: application and registration.
Application Fees
Basic Application Fee: ¥3,400 per application.
Classification Fee: ¥8,600 per classification.
Total Approximate Cost: ¥12,000 per classification.
Registration Fees
Standard Registration Fee: ¥32,900 per class of goods or services.
Installment Option: ¥17,200 per class, paid in installments.
The JPO (Japan Patent Office) does not accept direct payments from applicants residing outside Japan. Instead, all payments must be made through an appointed representative, such as a trademark attorney, who resides or is domiciled in Japan. This representative handles the payment process on behalf of the applicant, ensuring compliance with the payment policies.
How Long Does It Take to Register a Trademark in Japan?
The trademark registration process in Japan typically spans from 7 to 12 months from the filing date to completion.
Initially, the JPO examines within 4 to 7 months. Following this, they issue either a "Decision of Registration" or a "Notification of Reasons for Refusal." Any necessary adjustments may extend this timeline, but on average, it concludes within 7-12 months.
For faster processing, accelerated examination options can reduce this period by up to 2 months. Certain applications may even qualify for a fast-track examination, potentially cutting the examination time by up to 4 months.
How to File a Japan Trademark: Process
Before starting the registration process, it is essential to conduct a trademark search in Japan using the JPO trademark database to ensure the mark's availability. This step helps prevent potential conflicts, challenges, and risks from trademark trolls. It also reduces the chances of the application being rejected by the JPO or facing opposition from owners of similar existing trademarks.