Where to consult for trademark registration in Japan: Administrative Scrivener’s Office or Patent Attorney’s Office?

Who should we consult?

I am thinking of registering a trademark. I have done some research on the procedures involved in trademark registration in Japan, and it seems that in addition to going through the procedures myself, I can also ask an “agent” to do it for me.
Since it would be difficult to go through the procedures from scratch by myself, I would like to ask an agent to do it for me, but what kind of company should I ask?

It is true that you can do the procedures for trademark registration on your own, but there are detailed rules and regulations, and if you violate them, your trademark application may be rejected. It is still a sure thing to ask a representative who is familiar with the process.

I want to consult an agent who can handle trademark procedures as soon as possible. Since it is a legal matter, I wonder if it is a lawyer or an administrative scrivener. Who should I consult?

目次 Index
    1. Who should we consult?
  1. About so-called representative
  2. Regarding representation in trademark registration procedures
    1. Patent Attorney
    2. Lawyer
    3. Administrative Scrivener
  3. Reasons why you should ask a “patent attorney” to register your trademark
  4. To you who are considering filing a trademark application

About so-called representative

There are several types of qualifications for so-called representative, and these are sometimes referred to as the eight professions in Japan, since there are eight different types.

Specifically, they are “lawyer”, “patent(trademark) attorney”, “judicial scrivener”, “land and house investigator”, “administrative scrivener”, “marine procedure commission agent”, “tax accountant”, and “social insurance labor consultant”.

These officially certified agents are there to prepare documents to be submitted to government offices and public offices on your behalf.

Although it is possible for an individual to perform each of these procedures, there are still many things to take care of when actually doing it yourself from scratch, and there is not a small risk of mistakes being made, such as not being accepted if the documents are even slightly incomplete.

Regarding representation in trademark registration procedures

Although there is not a small amount of overlap, each profession has its own areas of expertise.

Among these professionals, “patent attorneys” and “lawyer” are qualified to act on behalf of trademark registrations.
“administrative scrivener” are not allowed to file trademark applications as a profession.

Below is a more detailed look at each of these professional fields.

Patent Attorney

Patent attorneys are often mistaken for handymen in Japan because handyman is pronounced “be-nn-ri-ya(べんりや)” and “Patent attorneys” is pronounced “be-nn-ri-shi(べんりし)” in Japan.
Many people may be unfamiliar with the term.

Their main job is to file applications with the Japan Patent Office on behalf of those who wish to obtain intellectual property rights such as patents, utility model rights, design rights, and trademarks.

When you want to make a request regarding trademarks, you should look for a patent attorney who specializes in trademarks among other intellectual property rights.

Since trademark attorneys specialize in all aspects of trademark procedures, they are expected to provide appropriate advice to those who are applying for a trademark for the first time.
They will also be able to use their professional experience to analyze and make proposals that are suited to the actual situation, including trademark searches prior to filing an application, and responses after a notice of reasons for refusal has been issued.

In particular, since each country has different systems for trademark applications to foreign countries, it is safer to ask a patent attorney specializing in trademarks to handle your trademark application.

Source Article

The Japanese Patent Attorney Law clearly states that acting as an agent for trademark registrations is the exclusive business of a patent attorney.

Article 4 of the Patent Attorney Law
Patent attorneys are in the business of undertaking, at the request of other persons, to represent other persons in procedures with the Japan Patent Office involving patents, utility models, designs, or trademarks or involving international applications, applications for the international registration of designs, or applications for the international registration of trademarks; to represent other persons in procedures with the Minister of Economy, Trade and Industry regarding requests for review under the provisions of the Administrative Complaint Review Act (Act No. 68 of 2014) and administrative decisions that involve patents, utility models, designs, or trademarks; and to provide expert opinions and handle other operations in connection with particulars involved in these procedures.

Article 75 of the Patent Attorney Law
A person that is not a patent attorney or a patent attorney corporation may not engage in the business of undertaking, at the request of other persons and for compensation, to represent other persons in procedures with the Japan Patent Office involving patents, utility models, designs, or trademarks or involving international applications, applications for the international registration of designs, or applications for the international registration of trademarks; to represent other persons in procedures with the Minister of Economy, Trade and Industry regarding requests for review under the provisions of the Administrative Complaint Review Act or administrative decisions that involve patents, utility models, designs, or trademarks (except for representing other persons in procedures for paying patent fees, applying for registration in the patent registry, and other actions specified by Cabinet Order); or to prepare expert opinions or the documents or electronic or magnetic records (meaning a record used in computerized data processing that has been created in electronic form, magnetic form, or any other form that cannot be perceived with the human senses) that are specified by Cabinet Order in connection with particulars involved in such procedures.

Lawyer

Lawyers are legal experts. Court-related matters are the specialty of attorneys at law.

(A patent attorney cannot act as a litigation attorney alone. When a patent attorney* acts as a litigation attorney, he/she must, in principle, be appointed jointly with an attorney.
*Only patent attorneys who are qualified to represent clients in specific infringement lawsuits (Article 2, Paragraph 6 of the Patent Attorney Law) are eligible to represent clients in such lawsuits.)

Although Lawyers can also perform application work related to intellectual property rights, such as filing trademark applications, it is rare to find lawyers who specialize in such work.
It is difficult to obtain professional understanding and advice without researching whether the lawyer you are requesting specializes in trademarks and whether he/she has experience in trademark applications.

Source Article

Article 3(2) of the Japanese Lawyers Act.
A lawer may, of course, perform the duties of a patent attorney or a tax attorney.

Therefore, attorneys at law may also perform the duties of patent attorneys as provided in Article 4(1) of the Patent Attorney Act. In other words, an “attorney at law” is also qualified to act as an agent for trademark registration.

Administrative Scrivener

The work of an administrative scrivener can be summarized as preparation of official documents.

Documents prepared by administrative scrivener include, for example, documents to be submitted to public agencies (called “public offices” (ministries and agencies, prefectural offices, city/ward offices, town/village offices, police stations, etc.)) and various contracts. It may be helpful to think of these documents as those for which formality is important and which are necessary to formalize procedures.

Administrative scriveners can also perform services related to intellectual property rights, but while they can register transfers of patents and trademarks, apply for registration of licenses, and draft license agreements, they cannot file trademark applications.

Source Article

Here is the article on the scope of work of administrative scriveners.

Article 1-2 of the Japanese Administrative Scrivener Law
A Certified Administrative Procedures Legal Specialist, at the request of others and for a fee, engages in the business of preparing documents to be submitted to a public agency (including electromagnetic records (records made in electronic form, magnetic form, or any other form that is impossible to perceive by the human senses, which are used in information processing by computers; the same shall apply hereinafter), if electromagnetic records are prepared in lieu of such documents; the same shall apply to this Article and the following Article) and other documents (including drawings based on on-the-spot examinations) relating to rights, duties or the certification of facts.

In accordance with Article 75 of the Patent Attorney Law, a person who is not a patent attorney or a patent attorney corporation may not, at the request of another person and for remuneration, act as an agent for procedures before the Japan Patent Office concerning an application for a trademark.

Reasons why you should ask a “patent attorney” to register your trademark

In order to register a trademark, it is necessary to file a procedure with the Japan Patent Office, the government agency with jurisdiction over intellectual property rights (also called industrial property rights).

There are two main procedures for registering a trademark. The first procedure is called “application,” which is also called “application for trademark registration” or “trademark application”. The second procedure is called “registration of establishment” and is required if the trademark registration is approved as a result of the application.

The procedure can be performed by an individual, but there are detailed rules regarding the format of documents, etc. If not followed, the procedure itself may even be rejected in the worst case scenario.

Furthermore, in the case of trademarks, if applications are filed for exactly the same or confusingly similar trademarks for exactly the same or confusingly similar goods or services, only one trademark should be allowed for registration.
The determination of the identity and similarity of trademarks is very important in the application phase of trademark registration. Therefore, while it is important to file an application early, it is in some ways even more important to conduct a thorough preliminary search before actually filing the application.
These judgments are difficult to make without a skilled specialist. If a similarity/dissimilarity decision is made incorrectly, it can have a significant impact on the business plan, including changes to the trademark.

It is no exaggeration to say that expertise is necessary for all trademark-related procedures, as applications may be rejected for various reasons, and invalidation trials may be requested even after registration.

In most cases, especially when an application for trademark registration is filed in a foreign country, it must be done through an agent in that country. Therefore, the business of representation in trademark registration applications and, by extension, in intellectual property, is a particularly specialized one.
The intellectual property industry is a very serious world, where rights can expire or registrations can be denied on a daily basis.
In addition, due to the principle of territoriality and patent independence, even if you have obtained rights in Japan, you are not free to use your trademark anywhere in the world.
(There is also a method called “Madrid protocol application,” in which an application is filed internationally in a single application to save the trouble of filing an application in each country, but we will not go into that here.)
Even if unintentional, infringement of another person’s rights may result in penalties such as injunctions and damages.

Therefore, it is safe to ask an agent with specialized knowledge and know-how, i.e., a trademark attorney in Japan.

To you who are considering filing a trademark application

I see! I guess it is best to ask an expert. I would like to keep the cost as low as possible.

Yes, filing fees vary from patent attorney firm to patent attorney firm, so it may be a good idea to request quotes from several firms.

When you ask a lawyer or a patent attorney for an estimate, the cost is often higher than you think! This is often the case.

For those people, we recommend Amazing DX. You can apply for and register your trademark at a low cost.
Furthermore, Amazing DX is managed by a patent attorney’s office, so you can easily consult with our patent attorneys via chat. Even if you receive a notice of reasons for refusal, you will not have to worry about not knowing what to do or not being able to think of a way to respond because you are working through a patent attorney’s office.

We hope you will take advantage of this service. Amazing DX Trademark Search
If you have any problems with the operation of Amazing DX, please feel free to ask questions or consult with us via chat.

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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