1. Filing Trademark Application

What must be indicated in an application form?

1) Name and address of Applicant

2) Mark (wordmark, device mark, 3D mark)

3) List of Goods and/or Services, and Classification

4) Priority Claim, if desired

5) Official Fee

It is possible to cover more than one class of goods or services in an application. The official fee is 12,000 yen for the first class and 8,600 for each additional class. You cannot include more than one mark in an application. However, you can add Japanese characters to your foreign-word trademark and file it in a single application.

Japan has adopted the International Classification System. Priority must be claimed at the time of filing. A certified copy of the original foreign application must be submitted within three months from the Japanese filing date.

As to three-dimensional marks, it is necessary to submit photographs or drawings showing the mark in different perspectives, such as front, rear and perspective.

Each application is transmitted to the Japanese Patent Office via computer terminal.

Once an application is filed, an application number will be assigned. The date of submission of the application before the Japanese Patent Office is the filing date.

 

2. Examination

Once an application is filed, the examiner at the Japanese Patent Office will examine it. If the examiner finds that the trademark cannot be registered, he/she will issue a Notification of Reasons of Refusal and grants the applicant an opportunity to respond to the examiner’s findings. Normally, a response must be submitted within three months from the mailing date of the Notification of Reasons of Refusal. If necessary, a one-month extension of time to respond can be requested. Although the descriptions of goods and/or services may be amended, it is not possible to amend the mark itself.

If the examiner is not persuaded by the response, he/she will issue a final rejection. In order to challenge the examiner’s decision, it is possible to file an appeal against the final rejection. Since an appeal is examined by a group of three or five examiners, a more objective decision can be expected.

3. Notification of Registration

4. Payment of Registration Fee

If the examiner cannot find any reasons to reject your application or if the examiner’s rejection is successfully overcome by a response, a notification of registration will be issued. Then, a registration fee must be paid within 30 days from the mailing date of the Notification. If the registration fee is not paid, the application will be irrevocably dismissed. Registration fees increase according to the number of classes in the application. The registration fee can be paid in two-installments. Usually, the trademark rights are effective for ten years from the date of registration.

 

5. Establishment of a Trademark Right

Once the registration fee is paid, trademark rights will be established and recorded in a trademark register. The trademark rights are effective for ten years from the date of registration. If a registered mark is not used for more than three years in Japan, the registration can be canceled by a third party’s request based on non-use. If such a request is filed, the registrant must produce proof of use of the registered mark within a prescribed time.

 

6. Publication

After registration is established, the registration will be published for opposition. Anyone can file an opposition within two months from the date of publication.

 

7. Opposition

Within two months from the date of publication of trademark registration, anyone can file an opposition. If the opposition board decides to cancel the registration, the opposition board issues a Notice of Reasons for Cancellation to the registrant. Then, the registrant can file an argument within three months from the mailing date of the notice.

 

8. Renewal

The term of a trademark right is ten years from the date of registration. Its term can be renewed for subsequent ten year periods, but a request for renewal must be filed within six months before the current term expires. Even after expiration, the request for renewal may be accepted by paying an extra fee if the request is filed within six months after expiration. The renewal fee may be paid in a lump sum at the time of the renewal request. Alternatively, the payment may be made in two installments. Proof of use is not required upon renewal.
It is possible to reduce class(es) at the renewal request. The JPO does not issue renewal certificates. Only postcards showing acceptance of renewal are issued.