Q. Who may register a trademark?

A: Any person or legal entity that intends to use a trademark in Japan may file for registration. Current use in Japan is not required for the applicant to file an application or to register a trademark. Further, it is not necessary for the applicant to prove intent-to-use.

Q. What is registrable as a trademark in Japan?

A: A trademark may consist of characters, letters, figures, or signs. A combination of these may also be a trademark. Assuming that it can be represented graphically, a trademark may be any combination of characters, figures, or signs with colors. Three-dimensional trademarks can also be registered. Sounds and smells cannot be registered.

Q. What is required for filing a trademark application in Japan?

A: Providing the necessary information by completing the Ryuka Trademark Application Form (which can be found here).

Q. What is the difference between a trademark application and a preliminary search?

A: A trademark application is a direct application to the JPO for registration of a trademark. A preliminary search involves searching the JPO database before applying to the JPO.

Q. Is a preliminary trademark search necessary?

A: We strongly recommend that a preliminary trademark search be undertaken prior to filing a trademark application in order to decrease the possibility of rejection and infringement based on identical or similar marks. Trademarks in Japan have historically been filed under numerous classification systems, therefore it is important that an accurate and professional search be executed.

Q. What is a goods and services advice request?

A: We recommend to only use a pre-approved explanation of Goods and Services as published by the Japan Patent Office (JPO). When Goods and Services advice is requested we will select similar approved Goods and Services as published by the JPO.

Q. Can an application be filed electronically with the JPO?

A: Yes, we always file electronically with the JPO. An advantage of filing electronically is that the application number is immediately allocated.

Q. Is a Power of Attorney necessary?

A: It is not necessary to file a Power of Attorney form in Japan unless the case is appealed or opposed, in which case, the Power of Attorney can be filed later.

Q. How long does it take to get a trademark registered?

A: A preliminary trademark application typically takes approximately one (1) week to complete. If the applicant wishes to proceed, a trademark application can then be filed with the JPO. Examination typically occurs about 1 year after filing. If no opposition is filed during the period of publication, or the examiner dismisses any opposition, the applicant has 30 days to pay the registration fee, following which the trademark would be registered. If an office action is issued, it may take an additional 6 months.

Q. Is there a way to expedite examination?

A: A request for expedited examination is permissible in special circumstances, such as possible infringement of the trademark or a pending application in a foreign country, however reasons for the expedited examination along with any related documentation and trademark searches must be submitted to the JPO.

Q. What is the term of registration and how can the mark be renewed?

A: The term of a trademark right is 10 years from the date of registration and is renewable indefinitely. Renewing the term for registration of a trademark is as simple as filing a request and paying the renewal fee. Our electronic database notifies us when these due dates are approaching in order to consult with our clients if the trademark is to be renewed.

Q. How should the goods and / or services be listed in a trademark application to obtain broader protection?

A: Japan follows the International Classification system of goods and services. We can advise clients on classification issues in order to maximize protection and create strong enforcement rights.

Q. Can priority be claimed from a foreign application?

A: Yes. An applicant in Japan may claim priority based upon a trademark application filed in any country that is a signatory of the Paris Convention.

Q. How does the JPO examine the trademark?

All trademark applications are subject to a substantive examination to determine whether the trademark satisfies the requirements for registration. The trademark is examined for distinctiveness and registrability.

The examination of distinctiveness determines whether or not the trademark indicates the common name of goods or services, the quality of goods or services, or the shape of goods or their packaging.

The examination of registrability determines:

• (1)    whether or not a trademark is identical or similar to national flags or state coat of
•         arms.
• (2)    whether an identical or similar trademark is registered for identical or similar
•         goods/services.
• (3)    whether a well-known or famous trademark (in Japan and abroad) exists.
• (4)    whether or not the trademark contains the stage name of another person or a famous
•         abbreviation thereof.
• (5)    other registrability considerations as outlined in the relevant Japanese trademark law.