Where can I register trademark? Brief explanation of process from application to registration

Where do I register my trademark?

I’m planning to start my own business next. I have already decided on a trade name, submitted the business registration form and registered the trade name, but I heard from an acquaintance that I should register a trademark! Where do I go to register my trademark?

The Japan Patent Office has jurisdiction over trademark registration. Trademarks, along with patents, designs, etc., are called industrial property rights, and the JPO handles the registration and other affairs of these industrial property rights.

What is the Japan Patent Office?

The Japan Patent Office is a national agency for the proper protection of inventions (patents and utility models) and designs as well as trademarks. The JPO examines whether or not requirements stipulated by law are met, and decides whether or not to grant rights.

Please refer to the following article for more inforatmion on the JPO.

Difference between trademark registration and trade name registration

In principle, anybody can file an application for a trademark registration. Trademarks that are identical or similar to a previously filed and registered trademark will not be registered. In addition, there are other conditions for registration. The JPO will examine the application to determine whether or not it can be registered.

Trade names are registered at the Legal Affairs Bureau. The same trade name can be registered and used even within the same prefecture or municipality, as long as the addresses are not the same. Even the trade name of a sole proprietorship can be registered in the same way as a company registration at the time of incorporation.

Please refer to the following article for information on trademark registration of trade names.

Steps to trademark registration

Once you have prepared and filed an application for trademark registration with a trademark (name or mark) and goods and/or services to be designated, the JPO will examine your application to determine whether or not it can be registered.

If registration is not granted due to a deficiency or legal provision, the JPO will issue a notice of non-registration (notice of reasons for refusal). Even in such a case, the applicant can still obtain registration by making amendments or counter-arguments. If there are no reasons that registration is not granted, the applicant will be notified that registration is possible, and upon payment of the registration fee, the establishment of the trademark right will be registered.

Before filing an application with the JPO, it is possible to search for trademarks that have been filed and registered, and to confirm the possibility of registration based on the results of the search. Since there are cases where determination based on specialized knowledge is required, we recommend that you request specialists such as a patent attorney or patent firm to conduct a search, if necessary.

It takes approximately 3 to 9 months from the date of filing an application to know the examination result at the Patent Office (as of October 2022). Considering the subsequent registration process, the time until the trademark is registered can be 4 months at the earliest, or even a year or more in case of amendments or counter-arguments.

Please refer to the following article for more specific information on the method and process of trademark registration.

Where can the procedure be done?

The Japan Patent Office is located in Kasumigaseki, Chiyoda-ku, Tokyo. You can bring your documents in person to the JPO office, or you can submit them by mail or online.

If you submit your documents by mail, you must submit them by “correspondence delivery”. Specifically, registered mail, simplified registered mail, specified recording, Letter Pack, etc. fall under this category. On the other hand, Yu-Pack, Yu-Mail, Yu-Packet, and Click Post (provided by the Japan Post) do not fall under the category of “correspondence delivery”

If the document is submitted by “correspondence delivery”, the date of receipt or arrival at the post office (date stamp on the correspondence) is the date of submission of the document. However, if the date stamp is unclear and cannot be read, the date of arrival at the Patent Office will be the date of submission of the document, so you should make sure that the date stamp is clearly stamped.

If the document does not fall under the category of correspondence delivery, the date of submission will be the date of arrival at the JPO.

Since a one-day delay in the document submission date could result in loss of registration, we recommend that you submit your documents by “correspondence deilivery”.

Online procedure

Procedures with the JPO can also be done online. However, it takes some time and effort to prepare the environment for the procedure, so if you do not intend to file the procedure repeatedly, we recommend that you prepare and submit the paper document yourself, request a patent attorney or patent firm, or use an online service such as Amazing DX®.

The environment required for online procedures includes a PC (OS: Windows), an Internet connection, obtaining and installing an electronic certificate (a card reader is also required for IC cards) and Internet application software, and registering as an applicant user.

How much does it cost to register trademark?

The total fees for trademark registration are generally as shown in the table below.
The fees are divided into “Patent Office fees (patent stamp fee)” and “Patent Attorney’s fee. If you perform the procedures up to registration by yourself, only the JPO fee will be charged.

Online service is operated by patent attorneys (patent firms) and allows for speedy procedures on the website while guaranteeing a certain level of service and keeping prices low.

Costs related to trademark searches

Fees for requesting a trademark search to a patent firm, etc., is as follows, with costs varying depending on the number of classes and designated goods.

• 1Class ⇒JPY30,000
• 2Classes⇒JPY40,000
• 3Classes⇒JPY50,000

If you conduct your own research using a free database (e.g., J-PlatPat), no fee will be charged. If you wish to conduct your own search, please refer to the following article.

Advantages and disadvantages of trademark registration

One of the advantages of trademark registration is that ‘the trademark can be used exclusively within the scope of the trademark right’. In the case of a trade name, in principle, the same trade name can be used as long as the address is not the same. Meanwhile, in the case of a trademark, it can be used exclusively within the scope of its designated goods (services) and can exclude others from using it.

On the other hand, the disadvantage of trademark registration is that it takes a long time. In the case of a trade name, registration is completed within two weeks to one month after application, but in the case of a trademark registration, it takes six to eight months from the date of application.

Although it is preferable to use a trademark after it has been registered, a trademark search may be conducted in advance, and if there is a high possibility of registration, use may be started after considering the risks involved.

The following article introduces the process of trademark registration in more detail.

I’m well aware that a “trademark” is not the same as a “trade name”. It takes time, but the benefits of exclusivity are very appealing.

Summary

In order to obtain a trademark registration, it is necessary to file an application for trademark registration with the Japan Patent Office. If you are considering registering a trademark, please consider using “Amazing DX”.

Amazing DX” allows you to easily conduct a trademark search. After the search, you can submit your request for trademark application online, so you can proceed with your trademark application quickly and easily.