Trademark Application

Registering a trademark for the first time

吾迷路さん

I want to develop my trademark as my company’s brand…

Then, I recommend you to register your trademark with the Japan Patent Office.

解決ロボ DXくん

吾迷路さん

I’m not sure if I can do it myself. Can you advise me?

Trademark is a mark used by a business to distinguish its own goods and services from those of others, and trademark right is registered as a set of “mark” and “goods and services to be used for”.

The two main advantages of acquiring trademark right are as follows:

(i) By obtaining trademark right, you can continue to use the mark as your own trademark.
(ii) You can say “Don’t use!” to those who use your registered trademark or a trademark similar thereto. In other words, you can exclusively use your mark for the designated goods and services.

In addition to the above, there can be seen the following advantages:

・Trademark right generated by trademark registration can be recorded as an intangible fixed asset.

・The reputation and brand value of the products or services for which the registered trademark is used can be expected to increase.

・By displaying the registered trademark on product packaging, company website, etc., it is expected to deter potential imitators and newcomers to the market.

Provided below is an explanation of the trademark registration process.

Trademark Registration Process

Determining the trademark

The first step is to decide on the trademark for which you wish to apply and obtain a trademark registration.

Registrable marks include characters, figures, symbols, 3D shapes and combinations thereof. Since April 2015, new types of trademarks such as motion, hologram, color only, sound, and position marks have also been available for registration.

Designation of the goods or services for which the trademark is to be used

The next step is to designate the goods or services for which the trademark will be used.

As mentioned above, a trademark is registered together with goods and services, so goods and services must always be designated (these are called “designated goods” and “designated services”).

The designation of goods and services also involves classification consisting of 45 classes of goods and services for which a trademark is used.

From among the 45 classifications, you must designate necessary classes according to the intended use of the trademark.

For example, “computer programs” is classified in Class 9, while “providing computer programs” is classified in Class 42.

You can use J-PlatPat’s “Goods/Services Name Search” to find a list of goods and services that the JPO finds definite.

Designating goods/services and selecting classes are often difficult, but with Amazing DX, you can easily select them from the list.

If you have any questions in selecting from the list, you can also ask a patent attorney specializing in trademarks via chat.

https://amazing.dx.harakenzo.com/guide/trademark-look-through/

Trademark Search

Trademark law is based on the first-to-file principle, which means that the trademark is registered to the person who filed the application first, not to the person who used the trademark first.

If there already exists a trademark registered by someone else for the trademark for which you are applying, you will not be able to register the trademark.

Whether or not a filed trademark can be registered depends on preliminary trademark searches prior to filing the application.

Even if there exist registrations of the same or similar trademarks, if the designated goods and services are different, the registration will often be approved.

Amazing DX allows you to search for similar registered trademarks.

Search Page

Preparing and filing your application

Once you have prepared the above, you proceed to prepare your application document.

In addition to the applicant’s information and other bibliographical details, the application document should state the trademark for which the trademark is to be registered, the designated goods or services for which the trademark is to be used, and the classes of the designated goods or services.

The trademark should be described as it is actually used. If a trademark is registered in katakana when it is actually used in English, the rights may not be fully effective.

Also, if there is any omission in the designated goods or designated services, the right will not be effective for those goods or services, so be careful not to omit anything.
It is advisable to include in the designated goods or designated 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.

The final image of an application document to be submitted to the JPO will be as follows:

Amazing DX

　[Class 5]  

[Designated Goods (Designated Services)]　Drugs; dietary supplements  

　[Address or Residence] Tenjinbashi, Kita-ku, Osaka City, Osaka

[Name] Kenji HARADA

　　[Amount of payment] 12,000 (yen)

For details, please refer to the JPO website “How to Prepare an Application Form and Application“.

You can also download the application form for trademark registration.

Once the application document has been prepared, it is time to file the application with the JPO.

There are two ways to file an application: by document or via the Internet.

If you file an application by document, you must purchase patent stamps at a post office, etc., affix the same to the designated area, and submit the application to the JPO (either at the JPO’s reception counter or by mail). If the application is submitted by document, an electronic filing fee must be paid at a later date.

On the other hand, in the case of an Internet application, it is necessary to build the environment by installing specific electronic application software, purchasing an electronic certificate, etc.

Examination by the Examiner

Once the application is accepted, an examiner at the JPO will examine whether or not the trademark can be registered.

According to the JPO’s announcement, as of April 2021, it takes about 8 to 14 months until the examination starts.

If the examination by the JPO results in success, the JPO will send a document titled “Notice of Allowance”.

On the other hand, if the JPO decides that registration is not granted, a document titled “Notice of Reasons for Refusal” will be sent to the applicant, stating the reasons for refusal.

The applicant is given an opportunity to respond to the Notice of Reasons for Refusal, and the reasons for refusal may be resolved by stating arguments (submission of an Argument) or by making an amendment to the designated goods or designated services (submission of an Amendment).

Payment of Registration Fee

Upon receipt of Notice of Allowance from the JPO, the registration fee must be paid within 30 days, either in a lump sum for 10 years or in installments of 5 years.

After paying the registration fee, the trademark is officially registered, and the JPO will send you a certificate of registration in due course.

You are now the owner of the trademark.

Duration and Renewal of Trademark Right

The duration of trademark right expires after 10 years from the date of registration of establishment.
By repeating the application for registration of renewal, the right can be made semi-permanent.

Have you cleared up your confusion a little?

解決ロボ DXくん

吾迷路さん

Yes. I feel much better now. Thank you!

If you find it difficult to prepare the document on your own, feel free to use Amazing DX!

Our patent attorneys specializing in trademarks will answer your questions about selecting designated goods and services, whether you should apply for a logo or characters, and so on. Please feel free to contact us via chat.