Necessary documents for filing a trademark application
●Trademark Application
・Name and address of the applicant
*An applicant should be qualified as an applicant.
*A foreign national not domiciled or resident in Japan can also be qualified as an
applicant, if he/she is a national of a Paris Convention or WTO member.
If an applicant is a foreign cooperation, it is determined by the country with Jurisdiction
over Incorporation.
・List of the designated goods and/or services and the International Classification
*The Nice International Classification 10th edition is applied.(taken effect in 2012)
* A trademark application may include multiple classes.
・Samples of the trademark (Please provide us with the image data if you have. We recommend
JPEG data or GIF data of which resolution is more than 400 dpi)
*Registerable marks include any characters, figures, signs or three-dimensional shapes, color or any combination thereof, sound, motion, hologram, and position. (Smell cannot be registered as trademarks under the existing law.)
*A trademark consisting of letters designated by the Commissioner of the Japan Patent
Office, such as English alphabet, Arabic numerals, and Japanese characters, can be
designated as a “Standard character ”.
●Power of Attorney
At the time of filing a trademark application, there is no need to file a Power of Attorney.
However, we recommend the submission of the Power of Attorney in advance for the subsequent
procedures after filing the trademark application.
When you file a trademark application in which the applicant’s name and address is described in
Chinese characters, you should submit the Power of Attorney in which the applicant’s name and
address is described in Chinese characters. For your convenience, we shall prepare and send
the Power of Attorney.
●Priority certificate（For application claiming priority）
Japan is affiliated with the Union to the Paris Convention and WTO. For an application claiming priority, please provide information about the country, the filing number, and the filing date of a first trademark application so as to specify the basic application. The priority certificate must be filed within 3 months from the filing date with the JPO. Therefore, we recommend that you prepare a priority certificate as soon as possible.
Substantial Examination
After a formality examination, a substantial examination is made on all the registration requirements.
●The first to file principle is applied in Japanese Trademark system.
When two of more trademark applications for an identical or a similar mark on an identical or a
similar goods and/or services have been filed on different dates, only the prior applicant shall be
entitled
to registration of a trademark.
●When any reason for refusal is found in the application, an Official Action (OA) is notified. It takes about 6 or 7 months until the first Office Action is issued.
●Accelerated examination can be requested. However, there are some requirements that the applicant or licensee can demonstrate an urgent need for a decision, or the only goods and/or services designated in the trademark application are the actual goods and/or services which are already used or prepared to some extent.
Trademarks not to be registered
Followings are trademarks which cannot be registered.
●Trademarks which do not enable consumers to differentiate the applicant’s goods and/or services from those belonging to other parties
●Trademarks which are likely to cause damage to public policy
●Trademarks which are identical with, or similar to, a famous mark indicating the State, a local government, an agency thereof, a non-profit organization undertaking a business for public interest, or a non-profit enterprise undertaking a business for public interest.
●Trademarks which are identical with, or similar to another party’s trademark which is well known among consumers.
*For more information, please do not hesitate to contact us.
Office Action（Notification of Reason of Refusal）
When there is a reason for refusal in the application, the Examiner issues an Office Action. The applicant may file an argument and/or an amendment to overcome the reason for refusal within the response term allowed by the Office Action. Normally, the response should be filed within 40 days from the mailing date. When the applicant is an overseas resident, the initial deadline to respond to the notification is 3 months from the mailing date. It is possible to request a one-month extension of time to respond to the notification by paying an extra fee.
●It is substantially difficult to amend the trademark itself.
● An amendment can be made within the scope which does not change the gist of the designated goods and/or services, and the trademark, such as the correction of erroneous descriptions and restriction of the designated goods and/or services.
●There is no system regarding the disclaimer and the consent.
●When the reason for refusal cannot be overcome, a decision of refusal is issued. In order to change the examiner’s decision, it is possible to file an appeal against the final refusal within 3 months from the mailing date.
Registration
When no reason for refusal is found in the application, a decision of registration is issued. After payment of the registration fee within 30 days from the mailing date, the trademark right is registered in the trademark register. From the registration date, the trademark right is established.
*A registration fee may be paid either in one lump sum or in two installments.
For trademark’s holder, a Certificate of Trademark Registration including a trademark registration number and a registration date is forwarded. After about 1 month from the trademark registration date, the content is published on the trademark gazette.
Within 2 months from the publication date, any person may file with the Commissioner of the Patent Office an opposition to registration.
Duration of Trademark Right
●The duration of a trademark right shall expire after ten years from the date of registration.
●The duration of a trademark right may be renewed every 10 years by filing an application for registration of renewal.
●An application for renewal of the registration should be filed at any time within six months before the expiration date. An application for renewal may be filed within 6 months even after the expiration date by paying an additional fee. *A renewal fee may be paid either in one
*A renewal fee may be paid either in one lump sum or in two installments.
Obligation to use a Trademark
In principle, obligation to use a trademark is not required at the time of filing an trademark application. However, if an applicant designates more goods and/or services than the fixed numbers, an applicant should submit a document for explaining that the trademark in the application is used for the applicant’ s business or will be used in near future. Additionally, when any one of the holder of trademark right, the holder of an exclusive right to use, and the holder of a non-exclusive right has not used the trademark in connection with any of the designated goods and/or services for 3 consecutive years, any person may file a request for a non-use cancellation trial.