Can your trademark be registered in Japan? Deciding on your trademark, and let’s start with trademark search!

I decided to launch a new clothing business in Japan, so I think about the　brand name now. I do my best effort on this project, then I don’t want others to imitate my bland, so I’d like to register my trademark in Japan. Can my trademark be registered if I just file trademark application?

Certainly, registration of a brand name as your trademark is a very effective way to ensure that you can continue to use it safely without being imitated by others!
However, because there is an examination by the Japan Patent Office, it is not always possible to register your application. Trademarks that cannot be registered are stipulated by the Japan Trademark Law, so let’s check together to register your trademark.

Is it possible that my mark cannot be registered in Japan ?
In order to avoid the situation that “the brand name I think about is something it couldn’t register “, let’s check it carefully in advance!

What kind of trademark cannot be registered？

A trademark is an identification mark for distinguishing goods and services, and consumers purchase goods or use services based on the brand image of the trademark.
Therefore, the trademark itself has the credit of each business owner and the added value of goods and services, which has the effect of boosting the sales of goods and the use of services. At the same time, it protects the interests of consumers in that the goods and services bearing the trademark are guaranteed to a certain level of quality.

Therefore, the following trademarks are not permitted to be registered.

1. Trademarks that are indistinguishable from the goods and services of others
2. Trademarks that are confusing with public institution marks or other people ‘s trademarks
3. Trademarks that may harm the interests of consumers

1．Trademarks that are indistinguishable from the goods and services of others

An essential role of a trademark is to have “discrimination” that can be distinguished from other people’s goods and services. The following is an example of not being able to register as a trademark due to lack of “discrimination”.
* However, even if any of the following requirements are applicable, the trademark can be used to become famous nationwide, and if it acquires “discriminating power”, the trademark can be registered. (Japanese Trademark Law, Article 3, Paragraph 2)

Common name

Registration is not permitted for goods and services that are recognized as general names, abbreviations, or common names and that are displayed in a manner that is generally used in the markets of the goods and services. (Japanese Trademark Law, Article 3, Paragraph 1, Item 1)

(Examples where registration is not admitted)

• The goods is “electronic computer” and the trademark is “computer”

Idiomatic expression

Registration is not permitted that have lost their “discrimination” as a result of their general use in the markets of goods and services. (Japanese Trademark Law, Article 3, Paragraph 1, Item 2)
(Examples where registration is not admitted)

• The service is “providing temporary accommodation(宿泊施設の提供)” and the trademark is “Tourist hotel(観光ホテル)”

The place of origin, place of sale, quality

Registration is not permitted that consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes,  price or method or time of provision. (Japanese Trademark Law, Article 3, Paragraph 1, Item 3)
※ It does not matter whether the production / sale is actually done in terms of production area or sales area.

 (Examples where registration is not admitted)

• The goods is “Green Tea” and the trademark is “Shizuoka”
  – “Shizuoka” is the typical place of origin and location of green tea.
• The goods is “Book” and the trademark is  ” Novel Collection “
  – ” Novel Collection ” is only represents the contents of book

Common surnames or names

Registration is not permitted that consists of Common surnames or names that have many of the same kind. Well-known geographical names and industry names are also applicable. It also includes common surnames and names combined with trade names and company names. (Japanese Trademark Law, Article 3, Paragraph 1, Item 4)
(Examples where registration is not admitted)

• Trademarks “Japan”, “Suzuki Co., Ltd.”, “SATOU Store”

Very simple and common marks

Registration is not permitted that the trademark consists solely of a very simple and common mark, includes numbers, 1-2 Roman letters, 1 Kana letter, and simple symbols such as △ and 〇. (Japanese Trademark Law, Article 3, Paragraph 1, Item 5)
 (Examples where registration is not admitted)

• Trademarks “123”, “AB2”, “ア”
  
  

Others that do not have discriminating power

In addition to the above, the registration is not permitted if it is judged that the trademark has no “discriminating power”. (Japanese Trademark Law, Article 3, Paragraph 1, Item 6)
(Examples where registration is not admitted)

• The trademark consists only for advertising
• The trademark consists only of corporate philosophy and management policy
• The trademark consists what is recognized only as a unit or an imperial era name
• The trademark consists of the ground pattern
• The trademark is often used as store name in relation to designated services

2．Trademarks that are confusing with public institution marks or other people’s trademarks

In order to register your trademark, it should not be confused with an existing prominent mark or registered trademark.

In the example below, registration of a trademark “same or similar” to it is not admitted.
※Please note that the judgment of “same or similar” varies depending on the trademark and the goods and services used.

National flag, coat of arms such as country and the Red Cross, etc.

(Japanese Trademark Law, Article 4, Paragraph 1, Item 1~5)
(Examples where registration is not admitted)

• Japanese flag
• Chrysanthemum flower emblem (Japanese imperial emblem)
• Japanese medals and rewards (Cultural Medal, Medal with Purple Ribbon, etc.)
• Foreign flag
• Foreign coat of arms and seals
• United Nations mark

Well-known marks of national and local governments

(Japanese Trademark Law, Article 4, Paragraph 1, Item 6 and 9)
(Examples where registration is not admitted)

• Marks of public interest corporations and public interest foundations
• Political party mark
• Olympic mark
• Mark of transportation business carried out by local public organizations

Name of another person, etc.

Trademarks contains the portrait of another person, or the name, famous pseudonym, professional name or pen name of another person, or famous abbreviation thereof (except those the registration of which has been approved by the person concerned) cannot be registered. “Others” includes foreigners, corporations, and non-profit organizations. However, this does not apply if the consent of another person has been obtained before the examination of the application. (Japanese Trademark Law, Article 4, Paragraph 1, Item 8)

Another person’s trademark which is well known among consumers

• Registration is not permitted that the trademark is identical with, or similar to, another person’s trademark which is well known among consumers as that indicating goods or services in connection with the person’s business, if such a trademark is used in connection with such goods or services or goods or services similar thereto. “Well-known trademarks” include not only those that are widely recognized by consumers but also those that are widely recognized by traders. In addition, this “widely recognized” scope is included not only in nationwide but also in one region. (Japanese Trademark Law, Article 4, Paragraph 1, Item 10)
  
  

Even if another person’s trademark is not registered, if it’s a well-known trademark, my trademark that’s similar to theirs may not be possible to register!

Marks that are confusing with the registered trademarks of others

• Registration is not permitted that is identical with, or similar to, another person’s registered trademark which has been filed prior to the filing date of an application. The similarity of a trademark is mainly judged by three criteria: “pronunciation, appearance, and meaning”. The similarity of trademark will be described later. (Japanese Trademark Law, Article 4, Paragraph 1, Item 11)
  
  

Registered defensive mark of another person or registered name by the Plant Variety Protection and Seed Act

• Under the Trademark Law in Japan, there is a defensive mark registration that prevents others from using famous brand names that have gained credit by using them by registering them for goods and services that are not planned to be used. Others cannot register a trademark for goods or services that are identical with the mark registered as a defensive mark. (Japanese Trademark Law, Article 4, Paragraph 1, Item 12)
  
  
• Registration is not permitted that is identical with, or similar to, the name of a variety registered in accordance with the Plant Variety Protection and Seed Act, if the trademark is used in connection with plant variety or goods or services similar thereto. (Japanese Trademark Law, Article 4, Paragraph 1, Item 14)
  
  

Likely to cause confusion in connection with the goods or services pertaining to a business of another person

• Except above listed in Items 10 through 14 inclusive, registration is not permitted that is likely to cause confusion in connection with the goods or services pertaining to a business of another person even if the goods or services is not identical with, or is not similar to. (Japanese Trademark Law, Article 4, Paragraph 1, Item 15)
  
  

Use for unfair purposes

• Registration is not permitted that trademarks that are the same as or similar to well-known trademarks of others in Japan or abroad and are used for unfair purposes. Unlike the above-mentioned Article 4, Paragraph 1, Item 10 of the Trademark Law, if your trademark is under this Item 19, registration is not possible even if it is used for dissimilar goods or services. (Japanese Trademark Law, Article 4, Paragraph 1, Item 19)
  (Examples where registration of unfair purposes is not admitted)
• Purpose to acquire a trademark that is well-known in a foreign country in advance in Japan and sell it at a high price
• purpose to prevent foreign right holders from entering the market in Japan for trademarks that are well known in foreign countries
• purpose to damage the credit and customer attraction of the well-known trademark
  
  

3．Trademarks that may harm the interests of consumers

Registration restriction requirements are in place to prevent situations that are detrimental to the interests of consumers, such as recognizing false qualities or giving an unpleasant impression.
※Registration may be permitted by changing the designated goods and services.

Mislead the quality of the goods or services

Registration is not permitted that trademark contains characters that represent quality different from that of the good or service, because there is a risk of misunderstanding. (Except when characters indicating the quality of the goods or services are included but cannot be recognized as the quality of the goods or services of the trademark as a whole.) (Japanese Trademark Law, Article 4, Paragraph 1, Item 16, Item 17)
(Examples where registration is not admitted)

• the good is “vegetables” and the trademark is “HARA potato” -vegetables include other than potatoes
• the good is “watch” and the trademark is ” SWISSTEX” -Switzerland can be recognized as the place of manufacture of the goods.
• the good is “wine” and the trademark is ” CHAMPAGNE style ” -wine includes wine produced not in the Champagne region.

Likely to negatively affect public policy

Trademarks that are immoral, obscene, discriminatory, or prohibited by other laws cannot be registered. Even if the trademark itself is not offensive to public order and morals, it is not possible to register a trademark that would be offensive to public order and morals by attaching it to the goods or service. (Japanese Trademark Law, Article 4, Paragraph 1, Item 7)
(Examples where registration is not admitted)

• Trademark is “○○ University”　- risk of misidentifying it as the name of a university, etc. based on the School Education Law
• Trademark is sound trademark that recognizes the siren sound of an ambulance

There are many trademarks that cannot be registered…Then avoiding commonly used words and existing famous names is an important part of creating a brand name or logo.

If you take these things into consideration when deciding the name of goods or services, you can avoid failing in the registration of trademark, and you will also be able to prevent legal troubles such as trademark infringement in advance.
If you are not sure if you can register the trademark under consideration, please feel free to contact us via “chat” etc.!

Once the trademark is decided, let’s check if there is a preceding trademark!

We mentioned above a trademark that is confusing with another person’s registered trademark cannot be registered.
Whether it is confusing, so-called “similar”, is based on the three main factors of pronunciation, appearance and meaning”, and the overall impression, memory, and association given to the consumer. It is judged whether or not there is a risk of confusion with the registered trademark of another person.
In Japan, when judging similarity, a pronunciation tends to be particularly important. A pronunciation is a sound that consumers naturally recognize in the markets.

Similarity judgment of the pronunciation (Yomigana )

1.Similarity of the sound quality of the pronunciation (Yomigana)　

Sound quality is the nature of sound that arises from the qualitative rules of vowels and consonants. The following is an example of sound quality approximation with similar pronunciation.
 (However, it is not the final judgment of the similarity of the trademark as a whole.)

• ” Dyramax ” and ” Dynamax ” -“Da-i-ra-ma-kku-su” and “Da-i-na-ma-kku-su” consists same number of sounds and the vowel which is just different sound,”ra” and “na” has common vowel “a”.
• ” Biscarin ” and ” Biscolin “: -“Bi-su-ka-ri-n” and “Bi-su-ko-ri-n” consists same number of sounds and one notes that is differenet,”ka” and “ko” are accompanied by a same Japanese syllabary
• “Verterax” and “Bar deluxe”: -“Ba-a-te-ra-kku-su” and “Ba-a-de-ra-kku-su” consists same number of sounds and the only different sound,“te” and “de”, is just the clear sound and the voiced sound.

2.Similarity of the sound volume of the pronunciation(Yomigana)

Volume means the length of the sound, and the following is an example of volume approximation and similar pronunciation.
(However, it is not the final judgment of the similarity of the trademark as a whole.)

• “Mogarreman” and “Mogareman” -“Mo-ga-re-e-ma-n” and “Mo-ga-re-man” have  different sound “re-e” and “re”, namely with or without long vowels.
• ” Takarahat ” and ” Takarato ” -“Ta-ka-ra-ha-to” and “Ta-ka-ra-a-to” have different sound “ha” and “a”, namely difference between long and weak sounds.

3.Similarity of the tone of the pronunciation(Yomigana)

The tone is the strength of the sound and the position of the accent.

A strong sound is a sound with a strong auditory reverberation, and a weak sound is a sound that is usually absorbed by the front sound and is difficult to hear.
The following is an example of tone approximation with similar pronunciation.
(However, it is not the final judgment of the similarity of the trademark as a whole.)

• ” Dannel ” and ” Dinell “: different sounds are weak sound
• “Parabitaomin” and “Parabitashimin” -“Pa-ra-bi-ta-o-mi-n” and

“Pa-ra-bi-ta-shi-mi-n” consist the same number of notes and both relatively long name but only one note, “o” and “shi”, is different.

• ” Aproton ” and ” Acroton ” -“A-pu-ro-to-n” and “A-ku-ro-to-n” have strong sounds with the same common sound at the beginning.
• ” RISCOAT ” and “VISCOAT ” –“Ri-su-ko-o-to” and “Bi-su-ko-o-to” of accent position is same.

4.Similarity of the syllable of the pronunciation(Yomigana)

One letter of Yomigana is one syllable, two letters of palatalized sounds (“kya”, “sha”, “pyo”, etc.) are one syllable, long vowels, assimilated sound and the syllabic nasal are one syllable, and the similarity is judged by comparing the number of syllables. The followings are examples of syllable approximation with similar pronunciation.
(However, it is not the final judgment of the similarity of the trademark as a whole.)

• “Viplex” and ” Vitaplex ” -“Bi-pu-re-kku-su“ and “Bi-ta-pu-re-kku-su” are relatively long name and only one note. Presence and absence of “ta” is different.
• ” Vercoral Jacks” and ” Vercoral Dex” -“Ba-a-ko-ra-ru-zya-kku-su” and “Ba-a-ko-ra-ru-de-kku-su” have similar to a group of syllables
  
  

If the pronunciation is similar to a prior trademark, my trademark may not be able to register. I understand I have to be careful to search, but there are so many patterns that it seems difficult for me to find and judge by myself.

We offer a useful service called ” Amazing DX “, and you can use it for free. When you use ” Amazing DX “, it will automatically judge whether there are similar to another person’s pre-registered trademarks. Since the pronunciation is important for determining the similarity with the preceding trademark, the search accuracy can be improved by entering the information not only in the trademark column but also in the Yomigana (reading pronunciation of the trademark) column. In the English version, the system automatically generates Yomigana to improve the search accuracy, assuming use by foreign users.
You can easily request a trademark registration application anytime, anywhere, so please give it a try.

Alright, let’s think about a brand name that has an cool impression using ” Amazing DX “!

Amazing DX：https://amazing.dx.harakenzo.com/en

With「Amazing DX」, you can easily select specified goods and services online. First of all, you can easily select goods and services from the list and key-word search, then you can remove only those with “×” in the search results and search again.

If you are anxious about which good or service to choose, a trademark attorney would answer your questions, so please feel free to contact us via chat.

Reference：Japan Patent Office Examination Guideline for Trademarks

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