Trademarks | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

Trademarks | ONDA TECHNO Intl. Patent Attys.[Japan Patent Firm] | Gifu City

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Trademarks

We offer a wide range of services, such as applications, registrability searches, trademark-related consulting, preparation of expert opinions, oppositions, appeals, renewals, and mediation of transfers. We have contributed in obtaining a number of trademark registrations for foreign clients, and those achievements are highly valued and have resulted in trust from well known corporations. Additionally, due to deregulation, our Japanese patent attorneys can now be of service in unfair competition matters, consulting regarding copyrights, mediation contract, etc.

We file about 500 trademark applications with the Japanese Patent Office annually
Our experienced in-house searchers conduct registrability searches for proposed trademarks to assess the marks prior to filing
We can offer assistance to our clients with respect to Chinese IP matters in a better way through ONDA TECHNO Shanghai Trademark Agency Co., Ltd.

Our Services

Filing and prosecution of trademark application
Recordation of changes in the trademark register
Renewal/reclassification
Opposition/appeal/litigation
Miscellaneous

We can conduct various types of trademark searches to meet your specific needs. We can handle both simple word marks and device (figure) marks. Our reports are prepared in English and furnished with legal comments in order to assist your decision-making.

We strongly recommend that a trademark search be conducted before adopting marks for use or applying for registration. Since, in Japan, three kinds of characters (Kanji, Hiragana and Katakana) in addition to Roman characters are used, marks that are similar to the subject mark can exist in any of these character sets. Further, due to the co-existence of several classifications of goods/services under the current trademark law, it is very difficult to determine the scope of similarity of goods without knowledge of the Japanese similarity codes. Our searches are conducted with attention to these issues. Our goal is to provide you with search reports that are thorough and complete.

Identical mark search

Using this search, we provide a list of marks that are identical in appearance or sound or include elements that are identical in appearance or sound. This search is useful at the screening stage to determine whether your marks are available for adoption for use and registration.

Similar mark search

This search reveals marks that are confusingly similar considering similarity in sound, appearance and meaning. This search is suitable for pre-filing stage.

Watching service

We search for identical or confusingly similar marks being filed or published and provide a report on a regular basis. Our report will include brief comments regarding similarity of marks and recommendations for possible actions. This service can be used to determine whether an opposition to registration should be filed or whether material information should be submitted to the examiner regarding a pending trademark application.

Status Search

We will report the current status of a particular application or registration including bibliographical data. If instructed, we can obtain a copy of the file history.

What you should know about trademark searches in Japan.

Similarity Code

Wordmark searches in Japan are usually conducted using a commercial trademark database called BRANDY, which contains not only identical marks, but also marks having identical or confusingly similar sounds based on the Japanese readings of the searched mark.

In Japan, the trademark search fee is based on the number of groups of similar goods/services under which the goods to be searched fall, and not on the number of International Classes to be searched.

A similarity code is a searching code assigned by the Japanese Patent Office for each group of similar goods/services as determined by the JPO’s examination standards. The similarity code concept was introduced to facilitate judgment of similarity of goods/services due to the concurrent existence of trademarks filed or registered under the International Classification system and those filed or registered under the old Japanese Classification system. A similarity code consists of a two-digit number, one alphabetic character and a second two digit number (e.g., 17A01, 22A01). The first two-digit number refers to the class using the Japanese Classification, and the remaining part is a JPO internal reference code. The same similarity code can be found in different international classes, and such goods will be considered similar notwithstanding that they are in different classes. Lists of similarity codes are available in a book titled “Guidelines For Examination on Similarity of Goods and Services.”

For example, International Class 25 consists of 12 groups of similar goods and a similarity code is assigned to each group. If you wish to have a Japanese searcher conduct a trademark search, you should carefully consider under which group your goods fall and inform the Japanese searcher of the most relevant groups or similarity codes, if possible. Alternatively, you can provide the Japanese searcher with a list of the specific goods and let the searcher decide the most appropriate similarity codes.

Similarity of marks

In trademark searches, analysis of similarity of marks is another important factor. This should be handled by an expert because various elements must be considered, such as the way ordinary Japanese people pronounce the marks and the extent of knowledge of ordinary Japanese people in connection with certain English words. There are many cases in which native English speakers would not understand why the marks are considered similar in Japan. For example, the following marks were determined similar by the JPO:

HOUGH = HAWK
ABSON = AVISUN
KALBAR = Calobar
OLSSON = ORSO
Car boy = Cowboy

Although review and comment on the search results entails additional cost, you can save money if you understand the concept of similarity codes and restrict the search area within the group that the most important goods fall under. A similarity code is also an identifier in the searchable trademark databases provided in the JPO’s WebPages, which can be used for preliminary searches.

 

Trademark Searches Using the JPO’s WebPages

Currently, on the JPO’s WebPages, namely the Industrial Property Digital Library, or IPDL, the following English searches are available: “Searching Japanese Trademark Database”, “Searching Japanese Figure Trademarks”, and “Searching Japanese Well-Known Trademarks” (see attachment #3). However, it is risky to depend totally upon the search results revealed by these English databases because no Japanese language entry is allowed and because the data itself and the retrieving system are not yet perfected. As to the “Searching Japanese Trademark Database,” it is worth using this system when you wish to locate English identical marks or when you wish to retrieve a specific case using a certain number or date. In the English version, it is not yet possible to obtain information relating to the name and address of the applicant or proprietor of the application/registration and the list of goods or services due probably to the difficulty and time required for translation. Since such information is available in the Japanese version of IPDL, you may instruct your Japanese agent to translate relevant information for you.

Further, in the Japanese version, it is possible to conduct trademark searches based on sound. If the purpose of the search is to screen phonetically identical marks or if you require rough search results, you should consider having your Japanese searcher conduct trademark searches using the JPO’s database instead of the commercial BRANDY database, in order to save cost.

ABOUT OUR TRADEMARK SERVICES

Proper proposal

We offer you proper proposals, including appropriate searches and description of designated goods and services, to obtain strong and extensive trademark rights depending on your trademark and business.

Reply to the Notification of provisional refusal against Japanese designation of International trademark registration

We provide you with comments on the basis of the reasons for refusal, suggestions and options for overcoming the refusal, and respond appropriately.

Prompt attention

We send cost estimates, copies of filed documents, invoices and answers to inquiries promptly.

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