Japanese Trademark FAQs
When You Apply
Q.What is required for filing a trademark application in Japan?
The necessary information or documents for filing an application are as follows:
1.Name and address of the applicant;
2.Description of goods or services; and
3.Samples of the trademark if the mark is not a simple wordmark. (The recommended size of a sample is 8cm X 8cm, but samples up to 15cm X 15cm are acceptable.)
If priority according to the Paris Convention is claimed, a certified copy of the priority document is also required within three months from the Japanese filing date.
An executed power of attorney is no longer required for filing an application.
Q.What are the typical costs for filing and prosecuting a trademark application?
The cost for filing one single class application is 106,000 yen, including attorney’s fees. The cost for each additional class in the same application is 55,000 yen, including attorney’s fees. A claim for priority pursuant to the Paris Convention is 13,000 yen. If we need to prepare drawings for filing, we charge an additional 6,000 yen. Late filing of a priority document is 12,000 yen.
The registration fee, including attorney’s fees, is 55,600 yen.
The cost to respond to an official action depends on the work required for the response. However, generally speaking, the cost of preparing and filing an amendment is about 22,000 yen and the cost of preparing and filing of an argument is about 80,000(or 85,000) yen.
Q.How should the goods be listed in a trademark application to obtain broader protection?
The Japanese Patent Office encourages identifying goods or services using official group headings provided in the GUIDELINES FOR EXAMINATION ON SIMILARITY OF GOODS AND SERVICES & ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES. These guidelines categorize goods or services by groups of similar goods or services in each International Class and list group headings and the specific goods or services covered under each heading. A so-called “similarity code” is assigned to each group. This code can be used as a cross-reference to determine similarity of goods or services in different classes.
The similarity code is a string of 5 alpha-numeric characters, for example, 03C01. The first two characters designate the class of the former Japanese Classification (except Service Classes) and the latter three characters are a JPO internal reference code.
If your goods or services are listed under a certain group, or are apparently similar to the goods or services covered under the group, you should list the group heading in an application. If your goods or services are new and are not listed in the guidelines, the goods or services should be listed specifically and a detailed explanation of the goods or services should be submitted so that the examiner will clearly understand the nature and scope of the goods or services. Ambiguous descriptions of goods or services will lead to a rejection of the application, to which a response including a detailed explanation of the goods or services must be filed within a prescribed time period.
Since, during prosecution, it is possible to delete unnecessary goods or services, but not to add any new goods or services that are beyond the scope originally specified, we recommend listing as many goods or services as possible at the time of filing the application. If the application is rejected based on a prior mark, conflicting goods or services may be deleted to avoid the citation.
Q.Is a pre-filing trademark search necessary?
It is strongly recommended that a pre-filing trademark search be carried out in order to decrease the possibility of rejection based on an identical or similar marks.
Since marks filed or registered under different classification systems coexist in Japan, it is not sufficient to conduct a search using only the International Classification. Rather, the trademark search should be carried out based on the similarity code, explained in Item 6 above. Our in-house trademark searchers conduct searches and provide a brief opinion as to the possibility of obtaining registration and availability of use for a mark. It usually takes three to five days to report the results with copies of resulting marks, if any. Of course, such searches may also be expedited.
As to similar wordmark search, our search fee increases depending on the number of similarity codes to be searched. One similarity code may cover different International Classes. Usually, at least two or three codes are searched for one mark in one International Class.
In addition, the cost of searching similar device marks depends on the number of Japanese Classes (not International Class).