Have you registered your trade name as a trademark?

I’m about to start a business and start a store, but I wonder if I need to register my trade name or business name as a trademark?
What is the difference between trademark registration and business name registration?
Business name registration and trademark registration are two completely different systems. In order to avoid the risk of trademark infringement and proceed with your business with peace of mind, you need to register your trademark.

What is trademark registration?

A trademark is a mark used to distinguish your products or services from those of other companies.
The trademark registration system is a system that protects this trademark.
In principle, anyone can apply for registration, but a trademark that is identical or similar to an earlier application cannot be registered. (There are other conditions for registration as well.)

On the other hand, business name registration, as you know, is a procedure for registering the name of a corporation with the Legal Affairs Bureau when establishing a company or otherwise opening a business.

A trade name is a name that can be given to each store or place of business separately from the business name, and it is not mandatory to have a trade name.

Trademark registration and business name registration are completely different procedures, with different jurisdictions and different conditions for registration.
Therefore, it is necessary to consider whether a trademark registration is required for a trade name or a business name as well.

目次 Index
    1. What is trademark registration?
  1. Why is it necessary to register a trademark?
  2. Can I use my trade name or business name without trademark registration?
  3. Examples of business name and trade name registrations
  4. How to register a specific trademark
    1. Decide on a trademark
    2. Decide on the designated goods/services.
    3. Preparing an Application form
    4. Submission to the JPO
  5. Do your research before you file!
  6. AmazingDX is your one-stop shop from search to application!

Why is it necessary to register a trademark?

f you use a trademark without registering it, you risk having your rights exercised by other companies who have registered the same or similar trademark.
Exercise of rights means to stop the use of the trademark or to claim compensation for damages.

If you have registered your trademark, you can use your trademark with peace of mind that others will not exercise their rights against you.
You can also enforce your rights against others who infringe your rights.

Is it necessary to register a trademark for a trade name or a business name?

Can I use my trade name or business name without trademark registration?

The Trademark Law provides that trademark rights do not extend (i.e., there is no trademark infringement) when one’s name (including business name) is indicated in a commonly used manner.

Article 26 of the Trademark Law: Trademark rights shall not be effective against the following trademarks.
(i) one’s own likeness or one’s own name or appellation (hereinafter abbreviated).

Therefore, the ordinary use of a business name, such as the name of a company or corporation, such as “XX Corporation,” does not constitute trademark infringement.

However, since the method of use must be “in a manner commonly used,” for example, if a logo is used or only a part of the name other than “Corporation” is used, the trademark right may be covered (i.e., trademark right infringement).
It may be difficult in practice to always use a business name in a “commonly used manner.

In addition, except in cases where the trade name is the same as the business name, the trade name is not one’s own name, but the name of a so-called store, etc., so it does not fall under the above exceptions and, in principle, the trademark right will be extended.

By registering your business name or trade name as a trademark, you can avoid the risk of unknowingly infringing on your trademark rights and conduct your business with peace of mind.
In addition, if you register your business name or trade name as a trademark, you will have the advantage of being able to stop others from using your business name or trade name without your permission.

Examples of business name and trade name registrations

Many business names and trade names have been registered as trademarks.

-Some examples of registered business names
(Trademark registration No. 225559)
(Trademark registration No. 4997126)
(Trademark registration No. 5137370)

-Example of a trade name
(Trademark registration No. 4770886)
(Trademark registration No. 4997128)
(Trademark registration No. 5137359)

How to register a specific trademark

To register a trademark, the trademark and designated goods or services must be described in an application for trademark registration (application form) and submitted to the Japan Patent Office.

Decide on a trademark

To register a trademark, the trademark and designated goods or services must be described in an application for trademark registration (application form) and submitted to the Japan Patent Office.

Decide on a trademark
Decide on the specific trademark for which you want to apply.
As in the previous registration example, it is common for a company such as “XX Corporation” to file an application for just the “XX” part.
This is because the Trademark Law stipulates that another person’s name (including business name) trademark cannot be registered.
In other words, if there is another company with the business name “XX Corporation,” the trademark application for “XX Corporation” will not be approved for registration.
If only the “XX” part of the trademark is used, it will not fall under this provision. (If “XX” is another person’s name, etc., the registration will not be granted.)

(If “XX” is another person’s name, etc., the registration will not be granted. Please refer to the preliminary search below.

Decide on the designated goods/services.

In trademark registration, the trademark and the designated goods or services are always registered as a set.
The designated goods/services are a specific description of the goods or services in the business field in which the trademark is to be used. The designated goods and services are also divided into certain categories.

Even if the trademarks are the same or similar, if the designated goods or services are different, they are treated as completely different trademarks.
Since rights do not extend to completely different trademarks, there can be no claim of infringement.

Therefore, it is necessary to consider the designated goods and services as carefully as the trademark.

<Examples of the same trademark but different designated goods and services
(Trademark registration No. 4460251)

(Trademark registration No. 6342797)

The upper trademark designates “cosmetics, soaps,” etc., while the lower trademark designates “fertilizers.
The trademark itself is almost the same, but the designated products are different, so both are registered as completely different trademarks.

lease refer to the following article for details on what goods and services are specifically included in which classifications.

Classification Guide

Preparing an Application form

Once you have decided on the trademark and the goods/services to be applied for, you must fill out the application form.
The application form can be downloaded from

Intellectual Property Consultation and Support Portal Site

If you are submitting your application on paper, you will need to obtain the prescribed amount of patent revenue stamps from a post office, etc., and affix them to the application form.

Submission to the JPO

Once the application form is completed, it must be submitted to the JPO.
There are two ways to submit your application: by bringing it to the JPO office or by mail.

There is also an online submission method, but you will need to install special software for online application.
Therefore, online filing is more of a service for companies or patent firms that file multiple applications.

Do your research before you file!

Filing a trademark application does not guarantee registration.
If the same or similar trademark has already been registered, the later filed trademark will not be granted registration.
There are many other conditions for registration.

In addition, the examination result will not be known until about one year after the application is filed.
It would be a problem if you cannot use your trademark with peace of mind until you receive the examination results.

For this reason, before filing an application, it is important to check whether the same or similar trademark has already been registered.

So I’d better do research and register my business name or trade name as a trademark before I start doing business with peace of mind!

AmazingDX is your one-stop shop from search to application!

With Amazing DX, you can easily search online to see if your business name or trade name is registered as a trademark. Once you have searched, you can request an application online, so you can proceed with your trademark application even when you are busy setting up your company and do not have much time to spare.
Even if you don’t know how to operate the system in detail! Our patent attorneys specializing in trademarks at a major patent firm 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
, , ,

Let's start,
an easy trademark application in Japan!

For those who are worried about registering a trademark for the first time, we offer free advice tailored to your situation.