Trademarking in Japan can protect your LOGO, Name of business from Imitation
In this page, I would to explain how to protect your LOGO, business name from other persons’ imitation.
In the case, you use a logo or assembly of letters to identify your merchandise ( shohin ) , service in Japan, you may want to protect Exclusive right to use your logo or assembly of letters.
In this page, “logo” means a picture, drawing that may include image and/or letters.
And “assembly of letters’ means Only letters, words.
On thee other hand, in the case you are operating a business with using a logo or assembly of letters, you may receive disclaimer from a person (Assumed that her name is “Ms.Nancy”).
Because, Nancy is also using similar a logo or assembly of letters for similar kind of business, and she has already registered it as trademarking.
And she claims that you imitate her Logo and operate same kind of business. So, your activity is infringement of trademark right ( Shohyo ken ).
In that case, you can not use the logo or assembly of letters and need to change it.
And You may lose some clients owing to that.
Trademarking in Japan and its Registration
In the case of copy right (Chosaku ken), when you produce something, your copy right is generated automatically.
However in the case of trademark right, you need to register it in order to protect your exclusive right to use it.
Let’s assumed that you have invented a software and sell it to customers.
And your clients can download the software in your website and you use this logo in your website and name of your software is “Japan”.
At the same time, your company is operating recruiting business and you use this logo for your business, too.
Now, fortunately your logo or / and assembly of letters have become very famous and obtained trust from your clients.
When people see this logo or assembly of letters, they think seller of the software or operator of the business is you.
In that case, other company may use this logo or assembly of letters with their software and utilize your trust.
Or other company who operate recruiting business may use this logo or assembly of letters for their business.
In order to avoid this kind of situation, you can register this logo and letters of “Japan” as trademarking ( shohyo toroku = 商標登録 ) .
You can apply for registration of trademarking with authority in Japan.
Two types of trademarking in Japan
At first, you need to decide the trademark you hope to register.
Some Trademarks are made with assembly of letters.
Some Trademarks are made with diagram.
Some Trademarks are made with assembly of letters and diagram.
Once you have registered your trademark, you can not change it.
If you want to change it after registration, you need to newly make an application for registration of trademarking.
Even if you use letters for your trademark, it is not words, but mark.
If you hope to register letters as trademark, there are 2 types of registration.
1 You register it as letters.
2 You register it as diagram.
For example, ” SKYPE ” has registered it as letters of ” SKYPE ” and logo as below.
If SKYPE company does not register this logo, other person may be able to use logo below.
(Basically, the patent office consider 2 logo as same logo even if there is a difference in its color).
So, you can register your logo with black and white.
If you use trademarking made with alphabet, you can register both alphabet and pronunciation of the words.
For example you register SKYPE, if you think there is a possibility that ordinary people pronounce it sukaipu or su ki i pu.
In that case, you can register both SKYPE in alphabet and sukaipu in katakana letters.
In the case you register both alphabet and katakana letters, government fee is doubled.
If you wish to save this cost, you will register ” SKYPE sukaipu “.
However, your registered trademark is not SKYPE nor sukaipu.
You will not use SKYPE sukaipu.
In that case, there is a possibility that your trademark will be repeal because you do not use it.
If you want to protect logo of Japan (Drawing, Diagram) and letters of ” Japan “, you can register the logo mentioned above and letters of ” Japan “, both of them.
However, if you want to save government fee, you can register one of them.
Trademarking in Japan and its business category
Trademark should be attached with your business.
If you use LOGO, “Japan” to operate International school and software development business, these businesses are classified into different category.
So when you try to register your LOGO, you can determine the content of your merchandise and / or service to be registered.
There are some classes, categories in Trademarking registration process.
This classes is named ” Kubun = 区分 “.
Even if a class is not same, there are some cases that kind of merchandise is similar.
For example, class of beer is No, 32 and class of foreign liquor ( 洋酒 = yoshu）is No, 33.
So, you need to confirm similar group code ( Ruiji gun code = 類似群コード ).
Similar group code of beer and foreign liquor is 28A02.
When similar group code is same, it is presumed that type of merchandise is same.
If your merchandise is software, you need to register in class 9, 38, 42.
( It differs depending on situation. )
If you operate recruiting business with this logo, class will be No, 35.
It is not easy to determine these classes.
When the number of class increase, the amount of government fee increases.
Trademarking in Japan and similarity
When you apply for registration of trademark, you need to confirm if other person has not register similar trademark.
You can not register a trademark if consists solely of a mark indicating, in a common manner, the common name of the goods or services or is customarily used in connection with the goods or services.
So, if you are operating worker dispatching business, you may not be able to register trade name of ” WORKER DISPATCHING BUSINESS “.
If you could register such trademark, it is not convenient for other persons to operate worker dispatching business.
In the case you sell watch, you can not register trademark of ” great watch “.
However, if you are operating bakery shop, you may be able to register ” great watch ” as trademark.
Patent office think assembly of letters of ” CHERRYBLOSSOMBOY ” and ” CHERRYBLOSSOM ” are similar.
Because, when general consumers call these letters, they may omit BOY .
If you have found similar trademark with your logo or letters, you need to confirm the content of his merchandise and service.
Even if other person register SKYPE for software, you can register SKYPE for name of bread.
Trademarking in Japan and the application
Now, I will instruct how to make an application for trademarking.
Though you have understood overall process of trademarking, practical process is not easy one.
You may hope to focus on your main job.
So in that case you can contact me to look for assistance.
Though you can make application via internet, you need to prepare some software.
So, you will submit it by post.
（1） You need to fill in application form for trademark.
The size of paper should be A4. （21ｃｍ × 29.7ｃｍ）.
（2）Margin of top of paper should be 6ｃｍ（ From 2 page,, it should be 2ｃｍ）.
Right and left and bottom, you need to keep margin of 2ｃｍ.
（3） Each line should be ３６ letters and space of each line should be more than 4 ｍｍ.
The number of line in one page should be within ２９.
（4） Size of letters should be １０ ~ １２ points.
You can not use nor 【, 】, ▲, ▼.
（5） In the case of application paper is more than one, you need to write page number.
（6） You can not modify, delete any letters in application paper.
（7） You need to bind papers with stapler.
As for date of submission, you need to write Heisei year, not 2016 etc.
This means ” designated merchandise or service and class of merchandise and service “.
In this field, you can write content of merchandise and service and range.
If you need to write explanation to specify merchandise and service, you can add explanation paper.
If you want to designate more than one merchandise ( for example, software and vehicle ), or service ( recruitment business and real estate maintenance business ), you need to use （ , ）.
For example, ｓｏｆｔｗａｒｅ， ｖｅｈｉｃｌｅ
If you register more than one merchandise or service at the same time, you can write like this.
【 Class No, 9】
【Designated merchandise（ designated service）】
【 Class No, 12 】
【Designated merchandise（ designated service）】
In this application form, address of applicant should coincide with certificate of residence of commercial register.
In the case applicant is legal entity, address of legal entity, trade name, title of representative person, name of representative person should be required.
( Even if applicant is legal entity, it does not need to submit certified copy of commercial register nor seal certificate ).
Foreign company can become applicant.
If it is not easy to pronounce the name of applicant, you need to fill in Katakana letters.
You need to affix your seal on application form.
When you are foreign national, you need to fill in you nationality.
However, if your address clarifies your nationality, you do not need to fill in nationality.
You need to fill in your telephone number or fax number.
You need to paste stamp ( patent stamp = Tokkyo inshi ) on application form.
You can not use revenue stamp.
The amount of patent stamp is 3400 yen + 8600 yen × the number of class. ( As of 2016. )
On application form, you need to indicate trademark you want to register.
The size should be less than 8 × 8 ｃｍ.
But, if there is reasonable reason, it should be less than 15 × 15 ｃｍ.
When you have pasted stamp on application form, you take scanned copy of application form.
And you prepare self addressed envelope that indicates address of applicant.
( You need to paste necessary postal stamp )
When you have prepared documents below, you can send them by post to the Patent office.
1 Application form
2 Scanned copy of application form
3 Self addressed envelope.
When patent office has received application form, they will affix their seal on scanned copy of application form and sent it by envelope.
This is a kind of certificate that the patent office has received your application for registration of trademark right.
Then, one or two weeks later from your application, the patent office will send you payment slip.
This is fee for computerizing your application form.
You can pay this fee at convenience store etc.
In case of one application, it cost 1200 yen + ( 700 yen × the amount of paper ).
After that officer of patent office examines your application for registration of trademark.
It will take about 6 months.
If they have approved your application, they will send you notification.
However 40% of all applicant receive refusal notice from patent office.
For example, similar logo or assembly of letters are already registered as trademark already.
Or the patent office may claim that your service should be classified in other classification you thought.
Then, you can change, modify the content of application and send it to the patent office.
Or you can renounce your application.
Even if they have rejected your application, they do not return your patent stamp.
If your application is granted, you need to pay registration fee within 30 days.
You can pay registration fee for another 10 years or 5 years.
If you pay registration fee for 5 years, it means installment plan.
In the case of 10 years, 28,200 yen × the number of class.
In the case of 5 years, 16,400 yen × the number of class. ( as of 2016, April )
When you have paid registration fee, you will receive certificate of trademark right by post.
In the case you have paid registration fee for 10 years, you can renew it by paying fee 10 years later.
However, at the end of 10 years, patent office do not notice you of payment of renewal fee.
In the case you have paid registration fee for 5 years, the same as above.
So, you need to fill in your calendar of 5 years or 10 years later.
Trademarking in Japan and Copy right ( = chosaku ken = 著作権 )
If you produce some logo ( diagram ) and hope to protect your right independent of merchandise or service, it is irrelevant from trademark right.
If you produce some ” work = chosaku butsu “, copyright (Chosaku ken ) shall be relevant.
In this copyright act, ” work ” is a production that you express thoughts or sentiments in a creative way and that should be related to the literary, scientific, artistic or musical matters.
So, in the light of this standard, logo is not protected in copyright.
However, if the logo, website of a company, magazine, advertisement have artistic aspect, value, there is a possibility those are protected by copyright.
In the case of copyright, the copyright continue to exist by 50 years from the death of the author.
Copy right is generated automatically once you have invented something.
This is difference from patent right, trademark right.
There is a registration process in copy right, too.
This is process for the case you transfer your copy right to other person.
Even if you have copy right and transfer it to other person, without registration of copy right, transfer of copy right is still valid.
However in order to publicize matters related to transfer of copy right or for the sake of safe of transaction, you can register it.
Moreover, other than programming software, you can not register copy right of production, works ( chosaku butsu = 著作物 ) only because you have invented it.
You need to publicize it or transfer copy right to register copy right.