Should an alphabetical trademark be registered in upper or lower case?

Is an alphabetical trademark the same whether it is in upper or lower case? If I’m going to use both, which one should I register? Is there a difference?
In conclusion, the difference between upper and lower case letters hardly affects the validity of trademark rights, so you can register your trademark in either case.

We are often asked, prior to filing a trademark application, whether it is better to register an alphabetical trademark in uppercase or lowercase.
Some may also wonder if they can use the same alphabetical trademark when it has been registered, if there is a difference between upper and lower case letters.

Handling of upper and lower case alphabetical characters

In the case of alphabetical trademarks, the difference between upper and lower case letters has little effect on the scope of rights. Therefore, it is advisable to apply for a trademark in the manner in which it will actually be used.

For example, if you register the trademark “Amazing” and someone else uses the trademark “amazing”, you can prohibit them from using it because it falls within the scope of the prohibition right of the registered trademark “Amazing”. The same is true for “AMAZING” or “AmazinG”.

In addition, a trademark that is identical/similar to a prior trademark cannot be registered, so if the trademark “Amazing” is registered, someone else cannot later register a similar trademark such as “AMAZING” or “AmazinG”.

In addition, the use of hiragana and katakana such as “あめーじんぐ” and “アメージング” can also be prohibited, similarly preventing other companies from registering.

Scope of Trademark Rights

The similarity of trademarks is determined based on whether they are similar in terms of appearance, pronunciation, and conception. The most important factor in judging the similarity of trademarks in Japan is “pronunciation”. Therefore, as long as the pronunciation is the same, the trademarks are similar even if there are differences in capitalization.

For example, if there is a registered trademark “AMAZING”, it sounds like “a-me-i-zi-n-gu”. The same sound is produced from “amazing”. Therefore, it means that “AMAZING” is a similar trademark to the trademark “amazing”.

If it is a commonly known English word like “Amazing”, it can be read as “A-me-i-zi-n-gu” normally, so there is no need to register an additional trademark in katakana.

For more information on the scope of effect, please see the following link.

Filing an application in the form in which it will actually be used

Although the difference between upper and lower case alphabet letters has little effect on the scope of trademark rights, it is a good idea to register a trademark application with the letters that will actually be used. For example, “Amazing” and “amazing” may look slightly different.

Is the issue of non-use cancellation safe?

A registered trademark may be cancelled by a non-use cancellation trial if it has not been used at least once during a continuous three-year period.

However, even if the trademark is not identical to the registered trademark, the cancellation can be avoided if the trademark is used in a manner that is identical in the socially accepted sense. A trademark that is identical in the socially accepted sense of the word means a trademark consisting of identical characters with changes only in the typeface (e.g., only the difference between upper and lower case Roman letters) or the type of characters (hiragana, katakana, romaji, or kanji).

Therefore, even in the case where a trademark with a capital alphabet is applied for and a trademark with a lower case alphabet is used, the trademark will not be canceled by a cancellation trial because the scope of the trademark is the same in the socially accepted sense of the word.

*Please note, however, that if the type of letters are changed so that the concept arising from the trademark is no longer the same, or if the trademark is a combined trademark, the decision will be made differently from the above.

Okay, I see what you mean! If I’m ever in doubt about whether to use upper or lower case, I can just register the one I’m going to use more often or the one I’m going to officially display and I’ll be fine!

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The above information is based on the Japanese Trademark Law. If you wish to register your trademark overseas, you will need to file an application that meets the examination standards of that country. We are an international patent firm, so please feel free to contact us if you are interested in registering your trademark overseas.

Supervisor for the article:
大阪法務戦略部長 八谷 晃典
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