What is the pronunciation (= reading) of trademarks in Japan?

How are trademark “readings” handled in Japan?

I’ve decided on a trademark to use for the name of my new product.
It’s a coined word based on a French word, so at a quick glance Japanese people may not be able to read it.
In the Japanese trademark registration examination, the way it is read is taken into consideration, right?

Yes, one of the key points in the examination of trademark registration in Japan is the pronunciation of the trademark (i.e., how it is read).
If a trademark that reads the same way has been registered earlier, it is highly likely that a trademark applied for later will be refused registration.

Conversely, if the examiner reads the trademark differently than I think it should be read, it means that someone else can register the trademark later.
I would not like it if someone else registered a trademark that reads the same way even if the words are different.
Is there anything I can do to prevent this?

Most trademarks are represented by letters or graphics. However, each applicant has his or her own feelings about how the trademark should be read.

“This trademark reads like this!”
“But really, will people in Japan read it that way?”
“What if they don’t read it right…?”

This article will answer such questions about how to “read” a trademark.

Reading is one of the three main points of a trademark

The Japanese trademark registration system has a rule that “if a similar trademark has been registered earlier, a trademark applied for later cannot be registered” (Trademark Law, Article 4, Paragraph 1, Item 11).
And the following three criteria are used to determine whether two trademarks are similar.

1. appearance (= the way it looks)
2. concept (= meaning)
3. sound (= pronunciation, reading)

If the examiner at the Japan Patent Office comprehensively examines these three factors and determines that they are confusingly similar to each other, then the two trademarks are similar.
The registration of the trademark applied for later will then be refused.
Especially in the examination in Japan, the examiner tends to focus on whether or not the pronunciation is similar.

So how your trademark is read is an important issue.

How is the reading determined in examinations?

The examiner at the JPO decides how to read the applied-for trademark.
If the trademark consists only of hiragana or katakana, it will be read as it appears. It is unlikely to be read in any other way.

What about a trademark made up of Chinese characters or letters of the alphabet?
Especially in the case of coined words, there are many possible readings.

When multiple readings are possible, all naturally recognized readings are considered to be the pronunciation of the trademark.
In other words, in Japan, there is not necessarily only one way to read a trademark.

What is a “naturally recognized reading”?

The JPO’s examination criteria for determining whether a trademark is similar or dissimilar are as follows.

Sound means the pronunciation naturally recognized in the course of trade by the consumers who look at the trademark.
For example, the sound is identified as follows.
(Example)
(i) The trademark “竜田川” only produces the natural sound “Tatsutagawa” but not unnatural sounds such as “Ryudensen.”
(ii) A trademark “紅梅” combined with the phonetic kana “BENIUME” also produces a natural sound [KOBAI].
(iii) A trademark composed of Chinese characters such as, for example, trademark “白梅” which produce two or more natural sounds like [HAKUBAI] and [SHIRAUME] produces, if it is combined with only one of their sounds, the other natural sounds in addition.
(iv) A trademark composed of a colored part may produce a sound or concept from that part (for example, a figure of a “white” horse or “red” flag).

Examination Guidelines for Trademarks [Revised 15th Edition], effective April 1, 2020

The key points are (ii) and (iii) above.
In Japanese, “紅梅” is usually read as “ko-ba-i (ko-u-ba-i, koh-ba-i)”. The reading “be-ni-u-me” is a little peculiar, but when furigana* are used, it is usually understood that this is how it is read.
On the other hand, “白梅” can be read in two different ways: “ha-ku-ba-i” and “shi-ra-u-me.” Both are the normal readings given in the dictionary.
In other words, if two (or more) ways of reading a trademark are both natural readings, such as “紅梅” and “白梅”, then all natural readings are recognized as the pronunciations of the trademark, even if they have furigana attached to them.

*furigana: hiragana or katakana over or beside kanji to indicate pronunciation

Pronunciation of a coined trademark

If a word contained in a trademark is made up of “coined words” that are not found in common Japanese dictionaries, the reading of the trademark is certified in terms of “this is how a person living in Japan would read it if he/she tried to read it in a normal way.”

How to read a coined word of Kanji (Chinese characters)

In the case of a trademark for a coined word made of Kanji, both the on-yomi* and kun-yomi* readings are often recognized as the designation.
However, depending on the combination of Kanji, only the on-yomi or kun-yomi reading may be recognized as the designation.

*On-yomi: reading of a kanji by its Chinese-derived pronunciations
*Kun-yomi: reading of a kanji by the native Japanese equivalent

How to read a coined word of the alphabet

In principle, a trademark made up of alphabetic words is recognized as follows;

• Romaji reading of the coined words
• English-like reading of the coined words

Japanese words written in the alphabet are called “romaji”.
For example, “あ-い-う-え-お” is written as “a-i-u-e-o” and “か-き-く-け-こ” is written as “ka-ki ku-ke-ko.”
Since this is a familiar writing system found in Japan on a daily basis, native speakers of Japanese often read alphabetic words in the romaji style.

The “English-like reading” is based on the reading of English words that actually exist.

For example, suppose the word “audio” is a coined word (it is a real English word, but for the sake of the example, let’s say it is a coined word).
The word would be “a-u-ji-o” in the romaji reading.
The English-like reading, on the other hand, is “au-di-o (oh-di-o).
Therefore, the coined word “audio” has two pronunciations: “a-u-ji-o” and “au-di-o (oh-di-o)”.

There is basically only one way to read in the romaji style.
However, if there may be more than one possible English reading, or a combination of romaji and English-like readings, more pronunciations may be possible.

My trademark is derived from a French word, so the reading is also French-style.
Will it still be given the romaji and English-like readings?
Does this mean that the JPO will not read it in the French style?

Unfortunately, you are correct.
In Japan today, it is generally believed that the level of understanding of languages other than English is not that high.
Therefore, even for words in French, German, etc., the pronunciation is basically determined by romaji and English-like reading.
If the word is well-known and everyone knows how to read it, or if there are specific circumstances such as “French is often used as a product name in that industry,” a reading other than the romaji or English-like reading may be approved as the designation.
However, this is an exception.

Oh no!
But I wouldn’t want someone else to register a trademark with the same reading.
If someone else registers it, we might not be able to use that reading anymore!
What shall we do?

How to trademark a pronunciation

#1 Registering a trademark “only the way it reads”

If the trademark is in hiragana and katakana, the pronunciation is recognized as the characters.
If you apply for and register a trademark with the reading in hiragana or katakana, you may be able to exclude other people’s trademarks with the same reading that were applied for later.

However, a trademark is “one trademark, one application.”
Therefore, in order to register a separate trademark for the way it reads, two trademark registrations are required, one for the original trademark and one for the way it reads.
Two trademark registrations will require the cost of two trademark registrations.

The typeface should be in “standard characters”

When applying for a trademark for the purpose of protecting the reading, it is recommended that the trademark have as little design (external features) as possible.
If you use only hiragana and katakana, you can use the “standard character system.”

*Check here for more information on “standard characters”!
[Amazing DX Trademark Guide] How to register a “Word Mark” in Japan

#2 Registering a trademark with “furigana”

One method is to register the entire trademark with “furigana” added to the original trademark as one trademark.
This will cost you only one trademark registration.

In the case of a trademark with furigana, two or more pronunciations are usually recognized: (1) the reading as furigana, and (2) the reading that is thought to arise naturally from the kanji, alphabet, or other part of the trademark that is the source of the furigana.

Points to keep in mind when registering a reading as a trademark

Beware of non-use cancellation!

In Japan, if a trademark is not used for the designated goods or services for at least three years after registration, the registration will be cancelled upon request from others.
If this “non-use cancellation” is requested, the registered right holder must prove that the trademark is being used.

In addition, if you think you are using the trademark, but you are not using it in the same form as the registered trademark, you may not be deemed to be using the trademark, and the request for cancellation of non-use may result in the cancellation of the trademark.

If you have registered a trademark in the way of above #1 or #2, make sure that you use these trademarks in some form as well.
It is also important to keep proper evidence of use.

Beware of trademarks that have the same pronunciation but different appearance and concept!

We mentioned that the Japanese trademark registration system tends to focus on the similarity of the pronunciation of a trademark in comparison with a previously applied for or registered trademark.
However, whether an applied-for trademark is similar to a previously applied-for/registered trademark is ultimately determined by a comprehensive comparison of the pronunciation, appearance, and conception of the trademark.
In other words, even if the pronunciation is the same, if the appearance and concept are completely different, the trademark may ultimately be judged “dissimilar”.

Therefore, even if a trademark in the way of above #1 or #2 is registered for the purpose of preventing others from registering a trademark with the same reading, if the appearance and the concept arising from the trademark are completely different, a trademark with the same reading may be registered.

Please note that the measures described above do not completely prevent the registration of other trademarks that read the same way.

However, there is a good chance that the trademark will be refused (i.e., the applicant will receive a notice of reasons for refusal) once in the examination process if the pronunciation are exactly the same.
Some people give up once the application is refused. There are also those who change their trademark after realizing that a similar trademark has been applied for or registered during the preliminary search stage.
So, even if it cannot completely stop them, it will be a deterrent to some extent.

We need to consider the cost-effectiveness and how important the reading of the trademark is to the business.

How to find out what a trademark is read

Using Japan Platform for Patent Information “J-Plat Pat”, you can check the pronunciations of trademarks that have been applied for and registered as reference information.

For example, the above trademark “Amazing DX” (Registration No. 6497115) could be called “AME-JINGUDEIEKKUSU (a-me-e-ji-n-gu-dei-e-kku-su)”, “AME-JINGU (a-me-e-ji-n-gu)” etc.

However, the pronunciations available on J-Plat Pat are for “reference only”.
Unfortunately, the database does not disclose the actual pronunciations of the trademarks that have been recognized when determining whether they are similar to the prior trademarks or not.
It is possible that pronunciations other than those listed here will be identified, or conversely, that a pronunciation listed here will not actually be identified.

This is because the reading of a trademark depends on the circumstances of each class and each designated goods or service in Japan, as well as the circumstances of each era, in accordance with the above principles.
The above principles may change, for example, in the future, if it becomes commonplace for people living in Japan to be able to read languages other than Japanese and English.
Various circumstances have to be taken into account in order to keep up with the times, which is why the pronunciations are listed in the database only as a reference.

Protecting the reading of a trademark requires ingenuity

In Japan, the reading of a registered trademark is determined by examination at the JPO, so special reading of a trademark requires some ingenuity.
Please note that it is sometimes better to file a new trademark application if you want to protect the reading of your trademark.

Do you want to increase the number of applications, but still want to protect your trademark even for the way it reads? But you can’t spend much money, can you?
If so, we recommend our online trademark application and registration service, Amazing DX!

With Amazing DX, you can apply for and register your trademark at a lower cost than with a typical trademark firm.
So, even if the number of applications increases, you can keep your costs down.

What’s more, our trademark-specialized patent attorneys will answer any questions you may have, so you don’t have to worry about anything you don’t understand!
Even those who are new to trademark applications can use this service with confidence.
If you have any questions, please feel free to contact us via chat.

First, please click on “Trademark Search” on the menu above bar. You can search to see if your trademark is eligible for registration.
To search for a trademark on Amazing DX, all you have to do is enter the Japanese reading of your trademark and then select the designated goods or services. Easy, isn’t it?
You can search for trademarks as many times as you like for free.