What is a Trademark?
A trademark is a mark (sign) used by a manufacturer, dealer or service provider in respect of goods or services in order to differentiate them from those offered by other parties.
"Trademark right" is an intellectual property right afforded to protect "marks" and "names" of goods and services as properties. A trademark right is effective throughout Japan (not effective in other countries).
When applications for similar or identical trademark are is filed in Japan, only the applicant who filed the application first will be entitled to register that trademark (the first-to-file system). Therefore, before filing a trademark application for goods or services, it is necessary to check (search prior trademarks) to see if identical or similar trademarks have been filed or registered by other applicants so as not violate the rights of other parties.
Types of Trademarks
Trademarks include any character(s), figure(s), sign(s) or three-dimensional shape(s), or any combination thereof. Since April of 2015, motion marks, hologram marks, color marks without delineated contours, sound marks, and position marks can also be registered as trademarks.
Trademark Application in Japan
We have handled numerous trademark cases since opening, and have grown to a richly experienced firm trusted by the clients. We are committed to offering satisfactory services including not only precise trademark searches and accurate advice as well as procedures throughout acquisition of rights, but also consultation on infringement procedures and dispute settlements. Please feel free to contact us.
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To Obtain Trademark Rights
In order to obtain a trademark right, you need to file an application with the Japan Patent Office for trademark registration.
Trademark rights are classified into Class 1 to Class 45 based on goods and services to be used. A combination of a mark and goods or service using the mark is a subject matter of a trademark right.
When a person files an application for trademark registration with the Japan Patent Office and there will be an examination. After the registration is decided to be granted, and the applicant pays registration fee within a specific period the registration is established on the trademark register and a trademark right comes into effect.
An owner of a trademark right comes to have an exclusive right to use the registered trademark in connection with the designated goods or designated services. Furthermore, an owner of a trademark right is allowed to exclude the use of a trademark similar to the registered trademark of the owner for goods or services identical to the designated goods or services and to exclude the use of a trademark similar or identical to the registered trademark of the owner for goods or services similar to the designated goods or services by third parties.
An owner of a trademark right can require a person who is infringing the right to discontinue the infringement, and demand compensation for damage.
The term of a trademark right expires in 10 years from the date of registration. The 10-year term can be renewed as many times as you like by applying for renewal of registration.
◎More Details
・Selecting Goods/Services for Filing Applications
We will have meetings and conduct interviews with our clients to discuss details of goods or services prior to application for selecting adequate goods or services for trademark registration.
Services using the Internet in particular are often services that are new, so that such services are not mentioned in the examination guidelines for goods/services issued by the Japanese Patent Office. In such a case, it is extremely important to have an accurate grasp of the service contents and clearly state them in an application in order to apply for trademark registration.
・Selecting Trademarks for Filing Applications
We receive request for more than 1000 cases of trademark searches annually from clients of a wide variety of industries, and have seen numerous registered cases and refused cases with the Japan Patent Office. As a result of search, if a trademark of a client is considered to have low registrability (a case where there is a similar registered trademark of a third party, a case where the trademark is considered to be lack of distinctiveness on the designated goods or designated services), we, as experts, are able to offer advice in changing the trademark to increase the registrability prior to filing an application upon request.
Filing Trademark Applications in Foreign Countries
In addition to providing services related to domestic trademark applications, we also offer overall services related to foreign trademark applications and maintenance of rights.
We cooperate with patent agents of more than 100 firms worldwide.
- Search・・・From a simple search for checking whether there is an identical trademark to a detailed search for investigating registrability, we offer optimal foreign trademark searches based on the business situations and needs of our clients.
- Application・・・Mainly, there are two ways for filing to Foreign Countries. One is direct application which are filed directly to Patent Offices of each country, and the other is international application which are filed to World Intellectual Property Organization (WIPO) based on the Madrid Protocol, and each of those has its advantages and disadvantages.
Through having a thorough consultation with you in regards to the needs and possible business development in the future, we will offer proposals for optimal foreign trademark applications.
We exert an effort to efficiently deal with Office Actions after filing an application so as to obtain a registration as early as possible. - Maintenance of Rights・・・You need to go through a renewal procedure every 10 years for a trademark right. Apart from a renewal procedure, there are countries where it is required to certify the use of trademarks. The formalities and time limit of such procedures vary in each country. We use patent management system which are specialized for patent law firms to check and manage the renewal time limit and special time limit for each country, which enables us to inform you beforehand.
We also handle each procedure with a plenty of time given to ourselves concerning the time limit. - Oppositions, Non-Use Cancellation, Invalidation Trials・・・We also have extensive experience in dealing with these matters. It is necessary to deal with such matters flexibly from various perspectives, so that we are committed to have a thorough consultation and work with our clients to maintain their trademarks and brands.