Should I register a trademark with characters or a logo? Points to keep in mind when using a logo trademark

If I want to register a trademark, should I apply for a standard character or a logo trademark?

I’m planning to start offering a novel service online, and I’ve created a logo in the name of the service. If I want to register it as a trademark, should I apply for it in standard characters?

This is a difficult question. Neither is advantageous, but if you have already determined the form in which you intend to use the trademark, we recommend that you file the application in that form. For more information, it is advisable to consult with a patent attorney or other specialist before filing an application, providing information such as the trademark data you plan to use.

Effect of Trademark Right

Once a trademark registration is granted, the holder of trademark right may exclusively use the registered trademark within the scope of the designated goods or services (Article 25 of the Trademark Law). This is called an exclusive right. In addition, the right to prohibit others from using not only the same trademark but also similar trademarks in the same or similar designated goods or services on the grounds of trademark infringement (Article 37 of the Trademark Law). This is called the right of prohibition.

For example, in the case of a logo combining characters and a symbol, there are three possible filing methods: (i) characters only, (ii) symbol only, or (iii) characters + symbol.

(i): Since it is clear that only characters have trademark effect, the scope of prohibition tends to be wider than (iii) for similar character trademarks. On the other hand, nothing can be claimed against third parties who use similar symbols.

(ii): Since it is clear that only the symbol mark is effective as a trademark, the scope of the prohibition right tends to be wider than (iii) for similar symbol marks. On the other hand, no claim can be made against a third party who uses a similar character trademark.

(iii): Costs can be reduced compared to filing an application for a character and a symbol mark respectively. On the other hand, the scope of prohibition rights to similar character trademarks and symbol marks tends to be narrower than ( i ) and ( ii ).

Why we recommend applying for trademark registration according to the form of use

If a registered trademark is not continuously used in Japan for more than three years, there is a possibility that the trademark registration will be cancelled by a trial (Article 50(1) of the Trademark Law). This is a system called “trial for cancellation of non-use.” Even if a trademark has been registered, it is meaningless if it is cancelled, so it is important to use the trademark appropriately.
Therefore, we recommend that applications be filed in accordance with the actual use of the trademark.

Can you claim to be using a trademark?

If an application is filed and registered for a character + symbol mark, the trademark is treated as a registered trademark including its arrangement, so if only one of the character or symbol mark is used, or even if the arrangement is changed, it may not be regarded as use of a registered trademark and may be cancelled.
The registered trademark here includes not only a trademark that is exactly the same as the trademark stated in the application, but also a trademark that is socially accepted as identical to the registered trademark, so it can be said that use of a trademark that is different in color from the registered trademark is often approved. However, if the trademark is a very simple graphic trademark and color is an important part of the trademark, and the impression of the trademark changes drastically due to differences in color, it is difficult to argue that the trademark is identical and may be revoked, so it is necessary to apply for protection for each color.

Considering the cost, it seems to me that it would be better to file a combined application for characters + symbols, but I wonder if any other inconvenience will arise other than a slight narrowing of the scope of the prohibition right.

Although the possibility is not very high, it should be noted that if you obtain a trademark registration for a character + symbol and then use only part of it, i.e., only the character or only the symbol, you may infringe on the rights of another (other) company. In order to use a trademark safely, it is still a good idea to register a trademark for each form of use.

If it gets cancelled and I have to re-file or get sued for infringement, it’s going to end up costing me a lot more. Since I intend to use only the letters or the symbol on their own in the future, I’ll just register them as separate trademarks!

See also:

For those who are planning to create and apply for a logo

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Recommended for the following
Those who want to keep costs down but also want to be particular about the design.
→We offer one-stop service from logo creation to application registration, so you can keep costs down!
I am worried about the rights of the logo created.
→The rights to the logo are transferred to the client. We do not leave you with a source of dispute over copyright issues!
We do not know how to manage intellectual property after the application.
→We will provide you with sufficient legal services even after the application has been filed!

*If you are interested in considering HARAKENZO WORLD PATENT & TRADEMARK`s logo creation services, please contact us for a free consultation.If you make a formal request to us, we can conduct an interview at your request.

For you who are going to register a trademark

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For your branding, a trademark application is very important.

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