Explain Rough Procedures of Trademark Registration

First Trademark Registration

We have developed our own original products and want to sell them under a unique naming?

Great. Then you should register your trademark so that other companies or other people will not imitate the naming.

Register my trademark …. What’s that? Can you tell me in plain words?

A trademark is a mark used by a business to distinguish its own goods and services from those of others, and a trademark right is established with a set of “mark” and “goods and services used”.

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

(1) By obtaining trademark right, you can continue to use the trademark as your own.
(2) You can eliminate other persons’ use of your registered trademark or similar trademarks. In other words, you can exclusively use your trademark in connection with the designated goods and services.

In addition to the above, there are following advantages:

▪ The trademark right generated by trademark registration can be recorded as an intangible fixed asset.
▪ It is expected that the credibility, brand value, etc. of the goods or services under the registered trademark can be increased.
▪ By affixing indications of trademark registration on product packaging, company website, etc., it is expected to inhibit potential imitations, newcomers’ entry, etc.

Provided below is a detailed explanation of the rough procedures (flow) of trademark registration, taking into account points to be noted.

目次 Index
    1. First Trademark Registration
  1. Trademark Registration Procedures
    1. Identification of Trademark and Goods/Services
    2. Trademark Search
    3. Preparation of Application Document
    4. Filing Application Document with the Japan Patent Office
    5. Examination by the JPO
    6. Payment of Registration Fee
    7. Afterward: Renewal Procedures
  2. Finally – Do you register your trademark by yourself or ask a professional?

Trademark Registration Procedures

Identification of Trademark and Goods/Services

First, you determine the trademark which you wish to file an application for and register.
Registrable trademarks include characters, figures, signs, three-dimensional shapes, and combinations thereof. As of April 2015, new trademarks such as motion trademarks, hologram trademarks, color only trademarks, sound trademarks and position trademarks can also be registered.

Next, you determine the goods and/or services for which the trademark will be used.
Since a trademark is registered in combination with goods and/or services, the goods or services must be definitely designated (“Designated Goods/Services”).
Further, classification is related to the designation of goods and services, which consists of 45 classes of goods and services for which a trademark is used.
You designate necessary classes from 45 classes according to the use etc. of your trademark.

Trademark Search

Under the Japanese Trademark law, a trademark shall be registered to the first to file an application, not to the first to use the trademark. This is called “first-to-file” principle.
If there exists another person’s registered trademark for the trademark for which you are filing an application, you will not be able to obtain a trademark registration.
Whether or not a trademark for which you filed an application can be registered depends on preliminary trademark searches prior to filing the application.
Even if there may be registrations of identical or similar trademarks, if the designated goods and services are different, the registrations will be granted in many cases.
J-PlatPat, a search tool provided by the National Institute of Industrial Property Information and Training (INPIT), an affiliated organization of the JPO, is a convenient for trademark searches.
Conduct trademark searches properly!

Preparation of Application Document

Based on the results of trademark searches, you prepare an application document.

In addition to bibliographic information such as applicant information, an application document should contain a trademark for which registration is sought, designated goods and/or services for which the trademark is to be used, and the classification of the designated goods and/or services.

The trademark should be as it is actually used. If the trademark is registered in katakana while it is actually used in English, the right may be insufficient.

Further, if there is any omission in the designated goods or services, the trademark right has no effect on those goods or services, so be careful about omission.
It is advisable to include in the designated goods and services not only those currently in use but those that may be in use in the future.

Filing Application Document with the Japan Patent Office

Application documents shall be filed with the JPO. The filing procedure is generally carried out through a representative such as patent attorney and lawyer, but it is also possible to do it yourself without a representative.

There are two ways to file an application: electronic application and written application.
In the case of electronic application, it is necessary to build a certain environment such as installing specific electronic application software, purchasing an electronic certificate, etc.
On the other hand, in the case of written application, patent stamps equivalent to an application fee shall be attached to the application document and filed with the JPO (at the counter or by mail). In the case of written application, an electronic application fee will be charged separately.

Examination by the JPO

Once an application is received by the JPO, a JPO examiner will examine whether or not the trademark can be registered.
According to the JPO’s announcement, as of April 2021, it takes 8 to 14 months to initiate the examination process.

If it is determined that the trademark may be registered as a result of the examination, the JPO will issue a notice of allowance.

On the other hand, if it is determined that the trademark may not be registered, the JPO will issue a notification of reasons for rejection.
The applicant is given an opportunity to respond to the notification of reasons for rejection and can state his/her opinions or amend the content of the application document (“Amendment”).
However, please note that there is a time limit for filing such a response.

Payment of Registration Fee

Upon receipt of a notice of allowance from the JPO, a registration fee must be paid within 30 days.
The registration fee can be paid in a lump sum for 10 years or in installments for 5 years.
Once the registration fee is paid, the trademark is officially registered, and the JPO will send you later a registration certificate.
You are now a trademark owner.

Afterward: Renewal Procedures

Registering a trademark is not your final goal.
You need to renew the trademark registration when the expiration date approaches.
If you registered the trademark by yourself, you must manage the renewal deadline by yourself.

I learned a lot. Thanks!

If you have any other questions, please feel free to contact me again anytime.

Finally – Do you register your trademark by yourself or ask a professional?

 The key point when considering whether you should register a trademark by yourself or ask a professional (patent firm, patent attorney, lawyer, etc.) is the cost.

 If you do by yourself, you only need to pay official fees to the Japan Patent Office, but if you ask a professional, you will also need to pay additional service fees.

 In terms of the cost, it is better to do it yourself. However, you have to communicate with the Japan Patent Office and manage any deadlines by yourself. 

Further, when a notification of reasons for rejection is issued in the course of examination by the Japan Patent Office, it is necessary to file a response by submitting an Argument and/or an Amendment, and in many cases, specialized knowledge is required for such a response.

 It is advisable to seek professional advice if you wish to use the knowledge and experience of the professional to ensure the registration of your trademark in a variety of situations, including the issuance of a notification of reasons for rejection.

 When you aks a professional, you should accurately share with the relevant information such as a trademark and designated goods/services subject to the trademark registration as well as your business information where the trademark is used so that you can obtain effective trademark registration in line with your business.

Amazing DX allows you to easily select your designated goods and services online.
You can easily conduct a search by first selecting more goods and/or services from the list and then re-search by removing only those that are marked with an X after the search.

If you are not sure which goods or services to select, our trademark attorneys will be happy to answer your questions. Please feel free to contact 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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