TM Q&A

Q. How long does it take to register the trademark from filing an application?

A. It usually takes 6 to 9 months from filing an application to the first action to be taken.

If it is decided to grant trademark registration, it takes another 1 to 2 months until trademark registration.

Q. Why does it take so long?

A. It takes such a long time until your turn comes to be judged by the examiner at the JPO. More than 110,000 trademark applications are filed to the Patent Office annually, and multiple examiners work on the applications for examination so hard, but your turn does not come soon. When we receive a notice “Reason for refusal” (described later) by the examiner, the period until judgment for grant to be given will be longer.

Q. What is the trademark examination?

A. The examiners of the Patent Office consider whether to grant registration of applied trademarks. Since those applications are examined before trademark rights become effective, you can use your trademark without any concerns after registration. On the other hand, copyrights tend to cause troubles because they are given without being examined at all.

Q. What are the requirements for trademark registration?

A. There are two major requirements.

One is that the trademark has to be “distinguishable” in relation to the goods or services designated in the application, and the other is that the trademark is not “Unregistrable trademark”.

Q. What exactly is meant by “distinguishable”?

A. “Trademark” is a landmark to distinguish the handled products or the provided services from others.

In order to be a landmark, needless to say, it must have special features to be effective as the landmark.

Q. What are the non-distinguishable trademarks like?

A. The following trademarks are judged non-distinguishable, although there are some exceptions.

Marks solely indicating common names of goods or services.
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-3.pdf

Marks customarily used in connection with goods or services.
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-4.pdf

Marks of goods solely indicating the places of origin, places of sale, quality, raw materials, efficacy, intended purpose, shapes (including shapes of packages, the method of production or use, time or other characteristics, quantity or price.
   Marks of services solely indicating locations of provision, articles used in such provision, efficacy, intended purpose, modes, time or other characteristics, quantity or price or method of provision.
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302for-002/1-5.pdf

Marks solely indicating common surnames or names of ordinary people.
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-6.pdf

Marks which are solely simple and common.
(https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-7.pdf)

Marks by which consumers are not able to recognize that the goods or services are those pertaining to a business of a particular person.
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/tt1302-002/1-8.pdf

Q. What are “Unregistrable trademark”?

A. The following trademarks are judged as “Unregistrable trademark”.

The trademark same as or similar to another person’s trademark which has been already registered, and applied for the same goods or services designated in the precedent registration,

National Flags,

Mark or Title of the Red Cross,

Famous marks indicating the prefectures or local public entities in Japan,

Discriminative or unpleasant letters or figures. Specific historical persons’ names,

Names of living people,

The sound mark indicating services of “medical treatment”, which Japanese people recognize as the siren of the ambulance,

National anthems of Japan and other countries.sound mark,

Names of varieties registered under the Agricultural Seed and Seedlings Law,

etc.

Q. If the application doesn’t satisfy these requirements, what happens to the application?

A. Notification of Reasons for Refusal is issued.

Q. What is Notification of Reasons for Refusal?

A. When the trademarks are refused to be registered, it is submitted to the applicant indicating the reasons for refusal and asking whether any opinions against it. If you have some opinions against the refusal, you must respond within 40 days from the date of the notification.

Q. What are the possible solutions for the refusal?

A.

[1] In case that it is impossible to change the specified goods / services

To refute it by submitting written opinion if it is deemed to be similar to a trademark registered by another person.

To purchase the trademark right from the present owner.

To cancel the trademark registration by the non-use cancellation trial,

To transfer the right deriving from the application to the present owner, and take it back after the decision of registration granted.

If the present owner of the trademark right is a company, to purchase the company itself.

etc.

In Japan, there are many trademarks which are registered but not in use. Cancellation trial by non-use is an effective way for refuting the decision of refusal.

[2] In case that it is possible to change the specified goods / services

Having filed an application specifying more than one goods / service and the reasons for refusal existing in a part of the goods or services, if you think that the reasons for refusal can not be refuted by submitting written opinion, it is possible to cut off the part of the goods / services (Submission of procedure amendment).

Or, if it is considered that it takes time to register the trademark by filing the written opinion, you may split the application for the part of the goods / services and file a new application only for the separated goods/ services, then refute the reason for refusal in the new application.

Q. If I can not resolve the reasons for refusal or do not respond to the reasons for refusal, what happens to the application?

A. Decision of refusal to the application is determined.

Q. What is the examiner’s decision of refusal?

A. It is a judgment that the examiners do not allow trademark registration at the stage of examination. The document named “Decision of refusal” is issued. In case that the reason for refusal is an existence of the same or similar registered trademark and decision of refusal is determined, continuing to use the applied trademark may cause infringement of the trademark right.

Q. What is infringement of trademark right?

A. To use a trademark within the trademark right which belongs to another person.

Using not only the same trademark as the registered trademark but also similar trademarks is regarded as trademark infringement.

It is critical to judge whether it is “similar” or not.

If the trademark right is infringed intentionally, the infringer of the trademark right is punished by imposing a fine for up to 300 million yen to corporations and a fine for up to 10 million yen or/and  imprisonment for up to 10 years to representative persons of such corporations.

Q. What if I am dissatisfied with the decision of refusal?

A. You can fight at the 2nd stage. It is called the appeal against the examiner’s decision of refusal. The request of this appeal must be made within about three months from the decision.

Q. What is the appeal against the examiner’s decision of refusal?

A. Unlike the 1st stage, multiple judges make a judgement by consultation. The judgement in the appeal is made more carefully than at the 1st stage.

Additional fee is charged for this appeal.

It may take 1 to 2 years for the judgement to come to a conclusion.

Q. What if the reasons for refusal are resolved?

A. The examiner makes a decision that the mark should be registered.

The document named “Decision to grant the trademark registration” is issued.

If the reason for refusal is resolved at the 2nd stage (appeal stage), same document is issued by the chief judges.

Q. What is the procedure after the decision?

A. Registration fee for registering trademarks must be paid separately from expenses at the application stage.

After payment, the trademark is registered with the Patent Office, and the trademark right becomes effective at this moment.

The registration fee must be paid within 30 days after the examiner’s or trial decision to grant the trademark registration is sent to the applicant or the attorney.

Q. How long is the trademark right effective?

A. It is effective for ten years from the date of registration. This period is called Duration of the trademark right and can be renewed. By renewing it, it is possible to keep the trademark right effective forever.

If you continue to use the trademark after the trademark right are expired and not renewed, and if another person registers the same or the similar trademark, you may be sued for infringement of the trademark right.

Q. What procedures are required to renew trademark rights?

A. The renewal procedure is the submission of renewal application form to the Patent Office and payment of the renewal fee. The renewal fee is 38,800 yen per class for 10 years.

The period for applying for renewal is from six months before the expiration of the trademark right to the expiration date.

Proving if you have used the trademark is unnecessary when applying for renewal.

Q. Can I reduce the number of classes when applying for renewal?

A. It is possible.

Q. Can I pay the trademark registration fee in installments?

A. It is possible to pay for 5 years as the first half of 10 years. If the trademark lifecycle is short, the payment for the first 5 years may be appropriate.

However, the fee divided to year is more expensive.

Even if the trademark right becomes unnecessary after paying for all the 10 years, the registration fee is not refunded at all.

Q. Can I file multiple trademarks in one application form?

A. It is not possible.

Q.Is it possible to change a part of the trademark in the trademark application after filing?

A. The content of the trademark is determined at the time of filing the application.

In principle, it is prohibited to change the trademark after filing.

This is because if the trademarks could be changed with maintaining the filing date, it would be disadvantage to those who are filing the same or similar trademark afterword.

Q. Can I change the goods and services designated in the application after filing?

A. It’s possible to reduce the number of designated goods and services, or narrow the range of goods and services.

However, it’s impossible to increase the number of designated goods and services, expand the range of goods and services, or change it to similar expressions.

The scope of these products and services is confirmed upon filing. It is restricted so that its scope is not expanded after filing.

Therefore, proper expression must be adopted at the stage of filing. It is necessary to carefully consider whether the description of designated goods and services in the application is appropriate in relation to the present and future business.

Q. Can I use the trademark with “®” or “TM” attached while the trademark application is being examined?

A. Attaching “®” and “TM” is not prohibited by the Japanese trademark law.

In order to protect the registered trademarks from being used by unauthorized people, it is effective attaching “®” or “TM”.

Q. What is the accelerated examination system?

A. The accelerated examination system is the system enabling an examination to be conducted more quickly than under the regular examination upon the applicants’ request.

The average FA pendency under the accelerated system is about 2 months after the request.

We recommend this system in case you have started to use the trademark before or after the application, or the situation until the start of use is specifically obvious.

Although there is no expenses to be paid to the Patent Office in using the system, the documentation fee to the patent attorney is usually charged.

Q. How can I use the accelerated examination system?

A. In order to use it, it is necessary to submit “Written explanation of the needs of the accelerated examination”.

Q. What is Identification Number of Applicant?

A. This number identifies the applicant in order to make the office work at JPO more efficient.

Since it is a number specified based on the applicant’s address (residence) and name, it is necessary to submit a change notification if there are changes in the address or other registered information.

As soon as a notification such as change of address is submitted, as long as the number is identical, the change will be applied even for other pending applications.

Q. I changed my address after having registered a trademark. Are there any problems if I keep the previous address registered?

A. There is a system to request cancellation of registered trademarks in Trademark Law (trial for cancellation of non-use).

Documents requesting cancellation will be sent to the address when you registered the trademark.

Therefore, there is a risk that you are unable to attend the request and the trademark registration might be canceled without knowing it.

Changing the address is recommended.

Q. Can you be an attorney for the trademark application which has been filed by myself or by another attorney?

A. It is possible. Please contact us at any time if there is any problem in response to notice of the reason for refusal, discrepancy between the contents of the trademark applied and the ones of the trademark currently used.