What information is required to register a trademark consisting of figures?

I want to file a trademark application for a figurative mark! This trademark does not contain any text, what should I be careful about when applying for this kind of trademark?
You intend to apply for a “device marks.” The points to keep in mind when filing an application are basically the same as for word marks. Let’s review the application process and points to note regarding device marks as well.
目次 Index
  1. What is a device mark?
  2. Process from application to registration of device marks
  3. After registration
  4. After registration Renewal
  5. Scope of rights for device marks
  6. Advantages gained from trademark rights
  7. For consultation regarding the filing of a device mark application or a device mark search, please contact us!

What is a device mark?

A device mark is “a trademark consisting solely of figures, such as a graphic representation of a realistic object or a geometric pattern.

In other words, unlike the type of a logo, a device mark includes a trademark that contains no text and consists only of figures.

Process from application to registration of device marks

・Search
Once you have decided on the content of your application (device marks, designated goods and classes), you should first check to see if there are any registered trademarks that are similar to the trademark you wish to apply for. This can be done by conducting a graphic trademark search. The search can be conducted using the service “J-platpat” operated by the independent conducting corporation INPIT, which is under the jurisdiction of the Ministry of Economy, Trade and Industry. J-platpat” requires some getting used to. Please repeat the search process to get the hang of it.

・Preparation and Submission of Application Documents
If no problems are identified as a result of the search, it is time to prepare the necessary application documents for trademark registration. The procedure for preparing the application is almost the same as that for a logo trademark.

In the “Trademark for which registration is sought f(【商標登録を受けようとする商標】)field of the application form, paste only the image of the device mark. Be careful not to fill in [standard characters](【標準文字】), etc., as you would in an application for a character trademark.

In addition, if there is any omission in the designated goods or services, the right will not be effective for those goods or services. Please be careful not to omit anything.
It is advisable to include in the designated goods or services not only those that are currently being used or will be used in the near future, but also those that may be used in the future. After completing the documents, submit them to the Patent Office.

・Submission of application documents to the JPO
The application is filed with the Patent Office. The application process is generally handled by an agent such as a patent attorney, but can also be done by yourself without an agent.
There are two ways to file an application: electronically and by writing.
In the case of a digital application, it is necessary to prepare the environment by installing specialized digital application software and purchasing a digital certificate.
If the application is filed in writing, a patent stamp equivalent to the filing fee must be affixed to the application and submitted to the JPO (by mail or at the counter). For applications filed in writing, an electronic filing fee will be charged separately.

・Examination by the JPO
Once the application is received, an examiner at the JPO will examine whether or not the trademark can be registered. Trademarks that are found to be confusingly similar to other people’s trademarks will not be registered. Whether or not a trademark is similar to a prior trademark application is examined based on three main factors: appearance , pronunciation and concept. From the above three perspectives, the examiner will determine whether the applicant’s trademark is likely to be confused with another person’s registered trademark by comprehensively observing the impression, memory, associations, etc. given to consumers.
However, in the case of a device mark, since it does not contain letters, the similarity will be judged based on “appearance” and “conception”.

If, as a result of the examination, it is determined that registration is not granted, a Notice of Reasons for Refusal is sent to the applicant stating the reasons for the refusal.
You will be given an opportunity to respond to the Notice of Reasons for Refusal, stating your opinion and amending the application (“amendment”). However, please note that there is a time limit for making a counter opinion.

Once the registration is granted and you receive the decision from the JPO, you must pay the registration fee within 30 days. Once the payment is completed, the trademark is granted.

*For a rough outline of the process from application to registration and renewal, please refer to the article below!

After registration

Please add a “Ⓡ” mark to your registered device mark! The “Ⓡ” mark means “registered trademark” in English. By displaying the Ⓡ mark on your trademark, other companies can recognize at a glance that your trademark is a registered trademark, thereby preventing problems such as unauthorized use of your registered trademark by others. The Ⓡ mark cannot be used for a trademark that has not yet been registered.
If you wish to use a mark for a trademark that has not yet been registered, use the “TM” mark. For more information on how to display the mark, please see the following page.

After registration Renewal

The registration of a trademark is not the end of the process.
It must be renewed when the expiration date approaches.
If you filed the trademark application yourself, you are responsible for managing the expiration date. Renewal of registration is not notified by the JPO and must be done every 10 years. Care must be taken not to lose track of the renewal. The registration fee is subject to change. The JPO website will inform you of any changes to the registration fee as they occur. The amount of the registration fee should be checked from time to time.

Scope of rights for device marks

A registered device mark may be used in a different color than the trademark for which it was registered without any problem. Article 70(1) of the Trademark Law provides as follows .

The term “registered trademark” as used in Article 25, Article 29, Article 30, paragraph (2), Article 31, paragraph (2), Article 31-2, paragraph (1), Article 34, paragraph (1), Article 38, paragraph (3), Article 50, Article 52-2, paragraph (1), Article 59,item (i), Article 64, Article 73 or 74 includes trademarks similar to the registered trademark that would be regarded as being identical with the registered trademark if they were in the same colors as the registered trademark.

In other words, a trademark that differs from a registered trademark only in color is a “similar trademark differing in color” and is included in the scope of rights of the registered trademark. Therefore, when using a registered trademark, there is no problem even if the color of the trademark differs slightly from that of the registered trademark.

However, we recommend that you apply for a trademark in the colors that you actually use the most. This is because it is better to continue to use a trademark in the same colors as the registered trademark for a long time, as this will help to establish the brand image.

I see, so even a trademark that is not exactly identical to a registered trademark is included in the scope of trademark rights.
It does not mean that the trademark must be exactly the same as the registered trademark in order to be used. However, a trademark that has been altered too much from the registered trademark will no longer be within the scope of rights. Please keep this in mind.

Advantages gained from trademark rights

If your trademark is infringed, you can file a claim for damages against the other party.
On the other hand, if you use your own trademark without registering it, and another company registers their trademark first, you will be infringing on the trademark rights of the other company. As a result, you may receive a claim for damages from the other company. Do not forget to file an application for the trademark that your company uses.

I know that I should also apply for a device mark. But it seems difficult to determine by myself whether my trademark and the prior trademark are the same or not…
It is difficult to determine whether your device mark is similar or dissimilar to a prior trademark. Without a proper search, your trademark will not be registered. Why not leave the search and application to the experts?
Yes, I know. Certainly, I would feel more comfortable if I were to apply after hearing from an expert!

For consultation regarding the filing of a device mark application or a device mark search, please contact us!

When applying for a device mark, the first step is to conduct a search. If, as a result of your own search, you find a device mark A that is confusingly similar to the device mark you wish to apply for, and that device mark A designates the same goods or services (services) as your trademark, you may be wondering whether you should apply or not. It is quite difficult to judge whether a device mark is similar or not, unless you have practical experience.

Even if the search concludes that there is no problem, the existence of a prior trademark may be revealed later in the examination process. In this case, you may be wondering what to do in the future.

So, why not hire an expert to research and file your mark? Our elite staff will research your device mark using our fee-based database and guide you through the application process going forward!

supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
大阪法務戦略部長 八谷 晃典
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