How to File a Trademark with the Japan Patent Office (JPO): A Comprehensive Guide 

Table of Content

Introduction
Safeguarding Your Brand: The Importance of Trademark Registration in Japan
Who is Responsible for Trademark Registration in Japan?
What Type of Trademarks Can Be Registered in Japan?
Types of Trademarks
Who is Eligible to Register a Trademark in Japan?
Key Aspects of Japan’s Trademark Registration System
International Agreements with Japan
What You Need to Know the Nice Classification System in Japan
Recent Updates in Japan's Trademark Registration
Trademark Duration and Renewal in Japan
Applying for a trademark in Japan: A Step-by-Step Guide
Monitoring Your Application
Hiring a Local Representative or Lawyer
5 Key Takeaways for Trademark Registration in Japan

Introduction

In our daily lives, trademarks surround us, guiding our choices and instilling confidence in the products we choose. Whether it's the logo on your favorite snack or the symbol on your go-to tech gadget, these marks are more than just labels – they represent trust and quality assurance.

Familiar brands ease our shopping experience, helping us make informed decisions effortlessly, while also ensuring consistency and reliability across products. However, misuse of trademarks can harm a brand's reputation and create obstacles for new entrants in the market. Despite these challenges, trademark registration offers businesses in Japan a powerful tool to protect their brand integrity, secure exclusive rights, and stand out in a competitive landscape.

Discover the ins and outs of trademark registration in Japan in our upcoming blog post, where we demystify the process and equip you with the knowledge to safeguard your brand effectively.

Safeguarding Your Brand: The Importance of Trademark Registration in Japan

Whether you're establishing a new business, rebranding, expanding locally or internationally or developing new product lines, securing your trademark is a key move to protect your brand. Registering your trademark gives you exclusive rights to use your mark in commerce, making it easier to fend off imitators and maintain brand integrity. With a registered trademark, enforcement is a breeze compared to dealing with unregistered marks.
Without this protection, you risk others infringing on your brand, which can lead to lost sales, tarnished reputation, and in some cases, the inability to continue using your mark in Japan. To avoid these pitfalls, registering your trademark is a smart strategy.

Registering your trademark in Japan also offers several other advantages:

• Enhanced Brand Value: A registered trademark increases the overall value of your brand, which can be crucial if you plan to sell or franchise your business.

• Legal Deterrence: The mere fact that your trademark is registered can deter others from attempting to infringe upon your mark, knowing that you have the legal grounds to take action.

• Licensing Opportunities: A registered trademark allows you to license your brand, creating additional revenue streams through partnerships or franchising.

• Customs Protection: With a registered trademark, you can enlist the help of Japanese customs to prevent counterfeit goods from entering the market, protecting both your brand and your customers.

• International Expansion: If you plan to expand internationally, having a registered trademark in Japan can simplify the process of obtaining trademark protection in other countries.

Who is Responsible for Trademark Registration in Japan?

Trademark registration in Japan is overseen by the Japan Patent Office (JPO) and is regulated by the Trademark Law. To secure a trademark, an application must be filed with the JPO, which will then review and examine the application before making a registration decision. The filing process is flexible, allowing for online submission, mail, or in-person delivery at the JPO office.
 

What Type of Trademarks Can Be Registered in Japan?

A trademark is a distinctive sign used by businesses to differentiate their goods and services from those of others. Trademarks can encompass a variety of forms including:

• Characters: These are letter marks such as "SONY" or "UNIQLO."

• Figures: Symbolic or illustrative marks like the "Hello Kitty" mascot or the "Asahi" logo.

• Character and symbol combination: both textual elements and graphic symbols. A classic example is the Lacoste logo, which combines a stylized image of a crocodile with the word "LACOSTE" beneath it.

• Symbols and Shapes: This includes both two-dimensional and three-dimensional shapes, such as the "Toyota" logo or the shape of the iconic LEGO® bricks, which are registered trademarks of the LEGO Group.

• Combinations: Trademarks can also be a combination of the above elements.

In April 2015, Japan expanded the types of trademarks that can be registered to include:

Types of Trademarks

• Motion: consists of a moving image or animation that represents a brand such as the iconic "Nintendo" splash screen on gaming consoles.

• Hologram: this involves the use of holographic images that change appearance depending on the angle from which they are viewed, enhancing their appeal and uniqueness. An example is the holographic effect on Pokémon trading cards.

• Color Per Se: these are based solely on a specific color or combination of colors, without any additional design elements, used to identify a brand. A notable example is the distinctive blue of Tiffany & Co., which is instantly recognizable.

• Sound: auditory trademarks where a specific sound or jingle is used to identify a brand. For instance, the jingle of "Panasonic" products or the famous "PlayStation" startup sound.

• Position: These trademarks are based on the specific placement of a sign on a product. A well-known example is the red tab on the back pocket of Levi's jeans, which distinguishes them as a Levi's product.

Who is Eligible to Register a Trademark in Japan?

For Local Applicants

People living in Japan or having an office can directly apply to the Japan Patent Office (JPO) for their trademark registration. It's advisable to work with a trademark attorney who understands Japanese well and is familiar, with the processes to ensure an application and approval process.
 

For Foreign Applicants 

For applicants without an address in Japan it's necessary to appoint a legal representative typically a trademark attorney residing in Japan, who will manage all procedures on behalf of the foreign applicant.
 
Trademark registration in Japan aims to be fair and inclusive for both international applicants. The Trademark Law of Japan ensures treatment, for everyone regardless of nationality or residency status. This ensures that both Japanese citizens, companies and foreign individuals or entities follow the rules and undergo the thorough examination process when registering trademarks. This approach aligns with Japan’s goal of attracting investment by providing a legal system. Whether you're a business owner, in your community or part of a company you can trust that the Japanese Patent Office will handle your trademark requests with care and equity. This ensures that your brand and business endeavors, in Japan are safeguarded effectively.
 

Key Aspects of Japan’s Trademark Registration System

1) First-to-File Rule

One of the major differences between the trademark registration systems in Japan and other systems such as that used in the U.S. is how the state of use of a trademark affects its registration. In the U.S., for instance, the trademark system is use-based, meaning that applicants must either be actively using the trademark in commerce or have a bona fide intention to use it before it can be fully registered. Applicants must provide evidence of this use to secure registration.

Japan allows trademarks to be registered based on the intention to use them in the future, without the applicant having to demonstrate its current use. As long as the application meets all other requirements and does not conflict with existing trademarks, it can proceed to registration. This policy is particularly beneficial for foreign business owners considering expansion into Japan. By securing trademark registration before starting business operations, they can safeguard their brand and avoid potential legal disputes. It’s a strategic move to ensure that their trademarks are protected from the outset.

2) Multi-Class Application

Japan’s trademark registration system also accommodates multi-class applications, allowing a single application to cover multiple classes of goods and/or services. This is a streamlined approach that can save time and reduce administrative burden for businesses offering a wide range of products or services. Instead of filing separate applications for each class, businesses can consolidate their trademark protection efforts into one comprehensive application, ensuring broader and more efficient protection of their intellectual property.

International Agreements with Japan

1) Conventional Priority

For businesses already holding trademark applications in other countries, Japan offers a six-month priority period under the Paris Convention. This allows applicants to claim the original filing date of their foreign application as their filing date in Japan, provided they file their Japanese application within six months of the original. This provision is a significant advantage, as it helps to establish early rights and can be crucial in competitive markets where timing is essential.

2) Madrid Protocol

Japan is a member of the Madrid Protocol, an international treaty that facilitates trademark registration in multiple countries through a single application. Japanese nationals or foreign nationals domiciled or resident in Japan can file international applications for trademark registration based on their JPO filing or registration. This simplifies the process for those looking to secure trademark protection in multiple jurisdictions, leveraging the efficiencies of the Madrid Protocol.

When a trademark application under the Madrid Protocol designates Japan, it undergoes a substantial examination by the Japan Patent Office (JPO). If a provisional refusal is issued, the applicant must appoint a local agent to respond to the refusal.

What You Need to Know About the Nice Classification System in Japan

When submitting a trademark application to the Japan Patent Office, it's crucial to specify the classification of the goods or services according to the NICE classification system.

Understanding Classification

Goods and services offered by businesses are organized into 45 distinct classes. Goods are divided into classes 1 through 34, while services are categorized in classes 35 through 45. Since the trademark application document includes a section to declare the classification as "Class XX," it's essential to ascertain the relevant classification for your goods or services beforehand.

Evolution of International Classification

Classification is not unique to Japan; it's part of an international system. Japan previously employed its classification system. However, upon joining the "Nice Agreement on the International Classification of Goods and Services for the Registration of Marks" in 1990 to harmonize the trademark system internationally, it adopted the international classification system outlined in the Nice Agreement.

Recent Updates in Japan's Trademark Registration

• New Consent Letter System: From April 2024, if your trademark is too similar to an existing one, you can now submit a letter of consent from the original trademark holder. If there's no risk of confusing customers, the rejection can be overturned.

• Easier Name Registration: Using someone else's name in your trademark just got simpler. Now, if the name isn’t famous in your field or you have a significant connection to it, you don’t need to track down everyone with that name for consent. This is great news for designers and entrepreneurs alike.

• Simplified Design Grace Period: As of January 2024, if you've already shown off your design, you only need to submit evidence for the first public disclosure. This change makes protecting your designs a lot less stressful.

These updates aim to make trademark registration in Japan more straightforward and user-friendly.

Applying for a Trademark in Japan: A Step-by-Step Guide

STEP 1. Create a Distinctive Sign

For a trademark to be eligible for registration, it must be distinctive. The purpose of a trademark is to distinguish a recognizable source of goods or services for the consumer. A name, logo, or any other brand element that is too descriptive or customary is less likely to be registered by the Japan Patent Office (JPO).
 

STEP 2. Conduct a Prior Search

Before applying, ensure your trademark is not confusingly similar to already registered marks. Many new businesses face rejection from the JPO or opposition from competitors due to insufficient prior research. In trademark law, earlier filed trademarks have stronger positions over similar marks applied for later. To avoid this, it is highly recommended to search the JPO’s trademark database before submitting an application.

You can also use the user friendly Nominus Trademark Search Tool, where you can select several search options such as by trademark, owner and class.

STEP 3. Submit an Application

To obtain a trademark right, fill out the prescribed forms and submit them to the JPO. The application can be submitted in English, but Japanese translations must be provided within 16 months from the filing date. The application process includes the following stages:
 

STEP 4. Examination

• A. Regular Examination

The JPO will review your application to ensure it meets all formal and substantive requirements. If necessary, they will request corrections. Failure to respond adequately to these requests can result in a refusal decision.
Timeline: up to 12 months

• B. Accelerated Examination

For applicants needing quicker processing, the JPO offers an accelerated examination system at no additional cost. Applicants must meet certain criteria to qualify.
Timeline: up to 10 months

•  C. Fast-Track Examination

Applications that meet specific conditions, such as selecting designated goods or services from pre-approved lists, are eligible for fast-track examination. This process ensures examination within 6 months from the filing date.
 

STEP 5. Publication for Oppositions

Once the examiner accepts the application, the JPO will publish it in the Official Gazette. During the 2-month publication period, any third party can file an opposition against the application.
Timeline: 2 months
 

STEP 6. Registration

If no objections arise or they are overcome, the JPO will issue a registration decision. Upon payment of registration fees, a certificate of trademark registration will be issued within approximately one month. The trademark registration formally comes into effect upon entry in the JPO register.
Timeline: up to 1 month

Trademark Duration and Renewal in Japan

In Japan, trademarks remain valid for 10 years from the application filing date. To maintain protection, trademark owners can renew their trademarks every 10 years. The renewal process involves submitting a renewal request and paying the associated fee within six months before the trademark's expiration date.

Monitoring Your Application

After submitting your trademark application to the Japan Patent Office (JPO), it's crucial to keep an eye on its progress to ensure a smooth registration process. Here's how you can monitor your application effectively:

1. Regular Status Checks: Periodically check the status of your application on the JPO website. This helps you stay informed about any updates, such as examination results or requests for additional information.

2. Responding to Office Actions: If the JPO issues an Office Action requesting further information or corrections, respond promptly. Delays in addressing these requests can result in the rejection of your application.

3. Publication and Opposition Period: Once your application passes the initial examination, it will be published in the Official Gazette. Monitor this phase closely, as third parties have a two-month window to file oppositions against your trademark. If an opposition is filed, you'll need to prepare a response to defend your application.

4. Regular Updates: Stay in contact with the JPO or your legal representative to receive timely updates on the status of your application. This proactive approach ensures that you are aware of any potential issues and can address them quickly.

By diligently monitoring your trademark application, you can ensure a smoother registration process and address any challenges promptly, increasing the likelihood of successfully securing your trademark rights in Japan.
 

Hiring a Local Representative or Lawyer

Navigating the trademark registration process in Japan can be challenging, especially for foreign applicants. Hiring a local representative or lawyer simplifies this process significantly. They bring essential language skills, ensuring all documents are correctly translated and completed. Their expert knowledge of Japanese trademark law helps you meet all legal requirements and avoid common pitfalls. They can handle all legal procedures, such as responding to Office Actions and dealing with oppositions, efficiently.

A local expert provides strategic advice, conducts thorough prior searches, and suggests modifications to improve your trademark’s chances of approval. They also ensure smooth communication with the JPO and keep you updated on your application’s progress. While there is a cost involved, their expertise can save you time and prevent costly mistakes, making it a worthwhile investment for securing and registering your trademark in Japan.

5 Key Takeaways for Trademark Registration in Japan

1. Distinctiveness is Key: Ensure your trademark is unique and distinguishable to meet the JPO's requirements, which enhances your chances of successful registration.

2. Conduct a Thorough Search: Before filing, perform a comprehensive search to identify any potential conflicts with existing trademarks, saving time and resources in the long run.

3. Understand the Process: Familiarize yourself with the step-by-step registration process, including examinations and the opposition period, to navigate the system effectively.

4. Monitor Your Application: Regularly check the status of your application, respond promptly to any JPO requests, and be prepared to address oppositions to maintain momentum.

5. Hire a Local Expert: Consider hiring a local representative or lawyer to guide you through the complexities of Japanese trademark law, ensuring accurate and efficient handling of your application.