Are there any disadvantages to registering a trademark in Japan? Advantages and countermeasures are also introduced.

Are there any disadvantages to registering a trademark in Japan?

There have been all kinds of trouble lately, and registering a trademark in Japan seems important.
But I wonder if there are any disadvantages?

I cannot say that there are no disadvantages in filing and registering a trademark.
Let’s take a look together at what disadvantages there are!

The advantages of applying for and registering a trademark have been mentioned on many occasions in recent years.
But are there only advantages to applying for and registering a trademark?
In this article, we will explain the disadvantages of trademark registration in Japan and introduce countermeasures against them.

Advantages and disadvantages of trademark registration

First, let us review the advantages and disadvantages of applying for and registering a trademark.

Advantages

There are many advantages to applying for and registering a trademark, but the most common are as follows

1. exclusive use of the trademark
2. preventing others from registering their trademarks
3. reducing the risk of your trademark being stolen
4. the possibility of entering into a license agreement.

The most important advantage is the “1. exclusive use of your trademark.”
Once your trademark is registered, if someone else uses a trademark similar to yours on similar goods or services, you can stop them from using it or claim compensation for damages.

In addition, trademark registration in Japan is based on the “first come, first served” principle. Therefore, if a similar trademark for similar goods or services is applied for, the trademark applied for later will not be allowed to be registered.
In other words, by registering a trademark, you can “2. prevent others from registering their trademarks.”

Other benefits of trademark registration would be that it helps to build a unique brand and to gain social credibility.

The benefits of trademark registration are discussed in more detail in another article. See also.

Disadvantages

On the other hand, the following are possible disadvantages of applying for and registering a trademark.

1. Filing and registering a trademark is expensive

Cost is a very important issue for a business.

To apply for and register a trademark, you must pay a fee to the Japan Patent Office.
Fees to the JPO are incurred at the time of application and registration, respectively.

• Official Fees at the time of application: 3,400 yen + 8,600 yen x number of classes
• Official Fees at the time of registration: 32,900 yen x number of classes (in the case of a lump-sum payment for 10 years) (Fees as of September 2022)

For one class, the cost is approximately 50,000 yen. However, not all cases require only one class.
In our opinion, it is relatively common to designate about 2 to 3 classes. 3 classes require about 130,000 yen for filing and registration.

Furthermore, applicants outside of Japan need to go through a Japanese patent attorney to handle the application and registration procedures, as well as to deal with any refusals during the examination process. Therefore, fees for patent attorneys are incurred.
Patent attorney fees vary from firm to firm. However, at a minimum, several tens of thousands of yen will be required per procedure. It is not unusual for the entire process from application to registration to cost several hundred thousand yen.

2. Registration takes time

A trademark is not registered immediately after filing an application. Intermediate procedures such as examination and payment of registration fees are required.
The time it takes to register a trademark is greatly affected by whether or not the application passes the examination smoothly. In Japan, it takes about 9 to 12 months from application to registration.

This can be frustrating for you, as the business world is changing at a dizzying pace.

This is more of a caution than a disadvantage, but business and branding strategies regarding trademarks need to be considered and addressed in advance.

3. time-consuming to manage

Trademarks are registered through a process of application, examination at the JPO, payment of registration fees, and registration.
During this time, you must check notifications from the JPO and take necessary actions before the deadline.

In addition, trademark registration can be renewed every 10 years. If you do not pay the renewal fee, your trademark registration will not be renewed and will expire.

If your company’s name or address changes, you will also need to go through the process.

Thus, a trademark must be maintained for as long as necessary, both from application to registration and after it has been registered.
Revisions to laws and systems may change the deadlines and necessary actions. Therefore, if you are the only one in charge or if you are concurrently working on other jobs, managing a trademark can be quite a challenge.

Countermeasures against disadvantages

For these disadvantages, you can take the following measures.

1. Cost Countermeasure: Do the procedures yourself

If you or your company has an address in Japan, you can file a trademark application/registration in Japan by yourself.
If you do the procedures with the JPO yourself, you will not have to pay a patent attorney’s fee. Therefore, you will save a great deal of money.

You will inevitably incur official fees. However, considering the cost of having to change the name of your store, product, or service, and the risk of claims for damages, we believe that it is not an expensive expense.

In some cases, subsidies and grants from ministries and local governments may be available. Please consider such measures without omitting them.

For details on how to apply for and register a trademark on your own, please refer to another article that explains it in detail.

However, when applying for a trademark on your own, you need to be careful to ensure that your trademark and designated goods or services are capable of adequately protecting your business.
If the registered trademark or designated goods or services are different from the actual trademark or products or services you are using, you may not be able to make use of your trademark even if it is registered.

In addition, foreigners and foreign companies that do not have a domicile in Japan must go through the procedures through a Japanese patent attorney. In other words, they cannot perform the procedures by themselves.

2. Time Countermeasure: use the “Accelerated Examinations” or “Fast Track Examination”

Accelerated Examinations

The Accelerated Examination is a system whereby an applicant can have an examination conducted earlier than usual if certain conditions are met.
In 2021, the average waiting time for examination was 2.1 months.

The Accelerated Examination can be applied if any of the following conditions are met

• The applicant designates only the goods/services for which the applied-for trademark is being used.
• The applicant is using the applied-for trademark for some of the designated goods/services and there is an urgent need to obtain a right to the trademark.
• The applicant uses the applied trademark for some of the designated goods/services and designates only the goods/services listed in the “Examination Guidelines for Similar Goods and Services”.

It should be noted that the Accelerated Examination is not available unless the applicant is using the applied-for trademark to some extent.

Reference: JPO Outline of Accelerated Examinations and Accelerated Appeal Examinations for Trademarks

Fast Track Examination

If your trademark is not yet in use, one option is to adjust your application to be eligible for Fast Track Examination.

If your application is eligible for the Fast Track Examination, you will be notified of the first examination results within approximately 6 months of filing.
The average time for a normal case is about 9 months. By comparison, you will receive your examination results about three months sooner (*Timescales are approximate as of March 2022).

Moreover, if your application meets both of the following conditions, it is eligible for fast-track examination without a special application

1. the designated goods/services are ONLY those listed in “Examination Guidelines for Similar Goods and Services,” “Regulation for Enforcement of the Trademark Act,” or “International Classification of Goods and Services (Nice Classification)”
2. the applicant has not made any amendment to the designated goods/services by the time the examination is initiated.

Reference: JPO Fast Track Examination

3. Countermeasure against hassle: ask a patent attorney’s office

A patent firm to which patent attorneys belong is a group of professionals in the field of intellectual property including patents and trademarks.

Patent attorneys are familiar with the procedures and practices of trademark application and registration, and you will receive the advice and support you need to protect your trademark from application to registration.
If you hire a patent attorney, he or she can prepare the application documents, respond to notices of reasons for refusal, and handle the payment of registration fees in accordance with your wishes.
They can also search before filing an application to check whether your trademark will be registered.
They will also manage your trademark after it is registered, so you will not forget to renew it. If you receive a request for cancellation of non-use or invalidation during the registration period, you can also take appropriate action.

However, the drawback is that you will have to pay a patent attorney’s fee.

If I want to keep costs down and do the procedures myself, I will have to go through the hassle of administration.
On the other hand, if I hire a patent attorney to save me the hassle, it will cost my money……
Do I have to give up either the cost or the hassle?
I’m not familiar with trademark applications in the first place, so I’m not sure if I’ll be able to properly process the application……

Want to save money, save time and effort in management, and get professional advice?
“Amazing DX” is for you!

Overcome the disadvantages with Amazing DX!

Amazing DX is a service operated by a major international patent attorney firm in Japan that allows you to request a patent attorney to file a trademark application and registration with the Japan Patent Office online.
Through collaboration between AI and patent attorneys, we have achieved both “peace of mind in requesting an experienced patent attorney” and “reasonable fees” by thoroughly eliminating waste.

All you need to do is enter your trademark and select the designated goods and services.
Moreover, since all goods/service options are those listed in the “Examination Guidelines for Similar Goods and Services,” they are automatically subject to Fast Track Examination.

You communicate with the patent attorney in charge via online chat and e-mail. The process proceeds speedily from the request to the completion of the procedure.

The cost is a mere 584 USD* to have a professional handle everything from filing the application to the payment of registration fees and post-application management!
(*1 mark in 1 class for foreign clients, JPO fees included)

I see I can minimize the disadvantages of cost, time, and hassle!!!

If you want to keep costs down, but are worried about going through the process yourself, or if you are a foreigner who wants to register a trademark in Japan cheaply and easily, please consider Amazing DX.

Summary

There are three main disadvantages to applying for and registering a trademark: it is expensive, time-consuming, and labor-intensive.

However, compared to the advantages such as “exclusive use of the trademark,” we would say that the costs are well worth it.
In fact, the disadvantages of not registering a trademark are more serious.

Please consider using various systems and services to protect your valuable trademarks.