The trademark application and registration may seem like a rather complicated procedure that requires a lot of paperwork at first sight. However, despite the assumed difficulties, it is a rather simple process once you peel off all the nuances and get to know the core principles. Below you will find the general provisions of and a step-by-step guide to the trademark registration.
Getting through the trademark application and registration procedures
Why do I need to register my trademark?
Just like any other type of property that needs to be legally titled for absolute ownership, trademarks in Japan must also be registered in order to gain sole control and proprietorship over them. In our introductory guide we discussed in more details why it is important to register your trademark specifically in Japan as soon as possible, and what are the consequences of not giving your trademark an official recognition by the authorities of Japan.
To put it short, as soon as you register your trademark:
- Any other parties that are using your officially recognized mark will be accountable for legally infringing your rights and prosecuted in accordance with the Japanese trademark-related laws.
- Your mark will become eligible for protection under the Japanese trademark-related laws.
A trademark is not considered to be your property unless it is officially recognized by authorities. The mare use of a trademark is not considered to be a way of officially stating your ownership and being recognized as the lawful owner.
What kinds of trademarks can be registered?
You can easily register the so-called standard trademarks. They include the traditional options that we are all used to. For example:
- Holograms, etc.
However, the newer options that are known as “new-type trademarks” are still rather rare. Still, it does not mean that they cannot be registered. The world practice have seen that some of the following items were accepted as trademarks that fill the definition and fulfill the requirements. For example:
- Moving marks
- Position marks
- Three-dimensional objects
- Smells, etc.
It is a good practice to avoid common names, very simple marks including two initials represented in a simple common design, descriptive marks, etc. More information on the trademark types and examples of some rare cases can be seen in our guide about the trademark system in Japan.
Duration of trademark registration validity
Registration is valid for 10 years starting from the day of registration (not the application date for a registration).
Duration of validity can be prolonged by renewing the registration within 6 months before the expiration date.
Where to apply?
All the applications, registrations, and renewals, as well as any issues regarding the trademark application, are handled by the Japan Patent Office.
You can apply to the JPO directly if you have a permanent residence address or an office in Japan. Otherwise, you need to appoint a person who will handle your application and registration documents. Usually, one can hire a patent attorney.
Another option is to apply under Paris Convention or Madrid Agreement which allows to acquire trademark and patent rights in the signatory countries. You can find more information about it in our Trademark Legislation Guide.
What documents do I need?
In order to submit your application for registration you will need the following:
- Request form to register a trademark in Japan (in Japanese or with a Japanese translation)
- A description, claims, drawings (if necessary), and an abstract of a trademark in Japanese (in Japanese or with a Japanese translation)
- Representation of a trademark
- List of goods and services associated with it
Application and registration process
Provided that your design fulfills the uniqueness criteria and there were no reasons to refuse it or rework it, the process of obtaining the trademark right is very simple.
- Fill in and submit the application form to the JPO. JPO will check the formalities and forward the documents for registration.
- Wait for further instructions and notifications while your application is being examined. You might get an inquiry to submit additional papers or make corrections to your application form.
- Receive the notification about the JPO decision (or acceptance or refusal*).
- Pay the registration fees when your trademark is approved and officially recognized.
* All the additional steps resulting from the refusal of the application at any given moment during the application process are shown in a flowchart by the JPO here. You can find out more about what you can do if your application was declined in the FAQ section.
Since 1992, Japanese Trademark Law has been under the same international classification system as other countries, with 45 classes of goods and services. Trademark applications can be filed for individual classes or multiple classes at once. The fees for these procedures are shown below.
- One trademark in one class: 12 000 yen.
- One trademark in multiple classes:
- 12 000 yen for the first class,
- an extra 8,600 yen for each additional class.
This is a fixed fee of 28 200 yen per trademark per class regardless of the type of application.
You need to pay 38,800 yen per class when renewing your trademark registration.
In order to register your trademark, first of all, you need to make sure that its design and specification comply with the set rules. Once your design is approved you can make an application for registration. As soon as authorities approve that your documents are fine, you may submit an application for registration.
The right to use certain a trademark is granted for 10 years and can be renewed within the 6 months before the expiration date of the trademark registration. All applications and procedures are handled by the Japan Patent Office. Failing to get your trademark officially recognized leaves you vulnerable before potential infringements of your trademark right.
Trademark Registration in Japan FAQ
Can someone help me with the application and registration?
It is advised that you seek out consultation with a patent attorney, or benrishi, when applying to register a trademark. An attorney will help you both with the paperwork and with the language-related issues.
Can I submit my applications in English?
You can attach the description of your trademark, any claims, drawings, etc. in any language. However, this is allowed only as the first step. You will still have to provide Japanese translations for all the submitted documents within 16 months from either the filing date or the priority date (whichever was earlier.)
How long does the registration process lasts?
The average period from filing in your application to receiving the first response from the examiner is about 7 months. However, if there was a problem with your application and you have got a refusal, the registration might take an additional one to two months.
Can I appeal a decision about the refusal?
It might happen that the application is declined due to such formal issues as incorrectly filled documents or problems with your trademark design. However, it does not mean that your registration ends here. At each step of the registration process, you can appeal the decisions and agree on cooperation to clarify your circumstances.
Even if JPO makes a final decision to refuse your application despite all clarifications and additional work, it is still possible to appeal to the Intellectual Property High Court.
How many times can I renew my registration?
As many times as needed. The validity of trademark registration is 10 years. During the last 6 months of this 10-year period, you are eligible to apply for renewal of your registration.
Why do I pay two different fees for my trademark?
It is important to remember that unlike, for example, business license fees, payments associated with the trademark are divided into several sections. Namely application fees and registration fees that are handled separately.
It means that if you have applied for a trademark registration you need to pay for processing. That includes comparing your trademark to the database of available marks and finding out if it complies with the uniqueness requirements. Whether or not your trademark is eligible for registration will not influence the payments for the applications.
If your trademark was confirmed to be unique and eligible for registration, you need to pay for the registration process separately. This is a different procedure that implies entering your trademark into the register and handling the associated paperwork.
Can I pay my registration fees in parts (installments)?
Yes, the registration fee can be paid in two installments, one for the first five years and the next for the last five years. When paid over installments, however, the amount of the registration fee for 10 years ends up being higher than if it were paid all at once.
The registration fee for the first five years must be paid within 30 days from the date on which a certified copy of an examiner’s decision (or a trial decision) stating that the trademark can be registered has been sent. The registration fee for the last five years must be paid within five years from the day on which the trademark was registered.
Is it possible to prevent others from using marks identical to or similar with a trademark in a pending application?
No. In Japan, trademark rights become effective once the applied-for mark is registered. Unlike in the U.S., the mere use of the mark will not provide any enforceable rights against third party use. In the case of unregistered well-known marks, it may be possible to take legal action against a third party’s use based on Unfair Competition Law. Otherwise, you can apply for an accelerated examination in order to obtain registration earlier.
Getting through the trademark application and registration procedures