[Follow-up after trademark registration, at no additional fee]
(To be implemented soon)
[Responding to problems in Japan and other countries]
It is not uncommon to be sued for trademark infringement when a business expands its operations worldwide.
In Japan as well, when a trademark becomes famous through successful of business counterfeit, products bearing the famous trademark often enter the market.
RYUKA IP Law Firm has the knowledge and experiences to prevent such trademark problems, and offers advice for avoiding them. If a client does actually encounter problems, we are also experienced in resolving various issues. If you have any concerns, please don’t hesitate to contact us.
[Filing trademark applications in consideration of future expansion worldwide]
If the trademark would be used worldwide aiming to establish an international brand, it is necessary to consider the situation in each country before proceeding with the project.
First of all, the trademark should be selected that does not create a negative impression in any of the countries where goods would be sold.
It is also necessary to check if a similar trademark is already registered in the desired countries.
In addition, if the plan is to file the international registration application using the Madrid Protocol in the near future, it is necessary to determine the descriptions of goods or services in considering of the trademark system of the desired countries.
A trademark registered in Japan with "Classification 25: Clothing" as a designated good will protect "hats" as well, but in China, "hats" are not included in the category (subclass) of "clothing".
Therefore, if only "clothing" is designated in Japan and then an international registration application is tiled under the Madrid Protocol, this application does not protect "hats" in China.
The international registration application (Madrid Protocol), may designate the goods or services that have the same or narrower scope than the scope in Japan. However, the International Bureau, as well as each country makes its own determination about whether the scope is in fact narrower. Therefore, it is often very difficult to add new goods, even when the new goods are included within the scope of protection in the basic registration (Japanese registration in the above example).
Therefore, if an application plans on selling hats in China, they should have added "hats" to the designated goods in the Japanese trademark application.
At RYUKA IP Law Firm, when we are consulted on a trademark that is expected to be used worldwide, we provide appropriate advice on the matter while considering the various points described above. As a result, we support our clients in obtaining trademark rights that are also effective worldwide.