How toregister a trademark

in Japan:

5 Steps for Trademark Applications

INDEX

1

3 Key Points!

P.02

Pre-ﬁling Checklist

P.03

5 Steps for Trademark Applications

P.04

Step 1 Appointment of a Representative

P.05

Step 2 Verification of the Logo and Naming ( Trademarks )P.06

Step 3 Designation of Goods / Services

P.07

Step 4 Searching for Similar Registered Trademarks

P.12

Step 5 Payment of Fees

P.15

Flow after Filing an Application

P.17

References

P.18

3 Key Points!
If you are thinking of ﬁling a trademark application in Japan, we hope this

explanation will help enhance your understanding of the Japanese trademark system!

Point

1

Point

2

Registration Principle
Trademark rights are acquired after you have completed theregistration of your trademark with the Japan Patent Office (JPO).
Under this trademark right, you can secure the exclusive use of the
trademark, file an injunction or claim for damages against
infringers.

First-to-ﬁle Principle
In Japan, trademarks may be registered only by the first applicant.
If someone else has registered a trademark similar* to your own,
you may not be able to register it in Japan, even if you were using
it first.
* JPO normally uses the words “identical” and “similar” in different ways; but in this booklet wehave included the meaning of “identical” within the word “similar” in order to avoid redundant
expressions.

Point

3

Examination Principle

Every trademark application is examined by a JPO examiner.
The filed trademark will be examined with regard to both thefollowing aspects:
1

Absolute grounds for refusal arising from the trademark
itself, such as whether it is distinguishable

2

Relative grounds for refusal, which relate to questionsof applicability in relation to the rights of others2Pre-ﬁling Checklist
Before ﬁling a trademark application,
let's check the list below:
YES

Do you have a representative?

NO
If you wish to file an application, you need to appoint
a representative.
Let's check Step 1:

Appointment of a Representative.

Does the trademark have“distinctiveness”?

Trademarks that are not distinctive cannot beregistered.
Let's check Step 2:

Verification of the Logo and Naming ( Trademarks ).

Is the indication of the goods /services to be designatedconcise and clear?

Do you currently conduct thebusiness connected to thedesignated goods / services, orplan to do ?

Have you checked whether
similar trademarks have beenregistered?

3

Some indications, that can be accepted in othercountries, may not be accepted in Japan.
Let's check Step 3:

Designation of Goods / Services.
When a broad range of goods / services aredescribed, verification of actual or planned use of the
trademark may be required.
Let's check Step 3:

Designation of Goods / Services.
If you find a trademark similar to the one you want toregister, your trademark may not be registered.
Let's check Step 4:

Searching for Similar Registered Trademarks.

5 Steps for Trademark Applications
Step

1

Appointment of a Representative

If you wish to file an application directly in Japan, you must appoint a representative
who is domiciled in Japan. You can find a patent attorney in Japan by using the“Patent Attorney Navi” .
Click!

Patent Attorney Navi (Japan Patent Attorneys Association)

P.05

Step

2

Step

3

Veriﬁcation of the Logo and Naming ( Trademarks )Characters that merely represent the content or characteristics of goods /services cannot be registered as trademarks. If you are unsure, consult yourrepresentative.

P.06

Designation of Goods / Services
When you apply for a trademark, you must designate not only the trademark itself,
but also the goods / services for which you will use it. Once a trademark is
registered, you are the only one who can use it; and it must be used exclusively to
do business within the scope of the designated goods / services. This designation isimportant, because it determines the scope of your trademark rights.

P.07

Step

4

Searching for Similar Registered Trademarks

You will not be able to register a trademark if someone else has registereda similar trademark in the range of similar goods / services before you. Searching forsuch other people's registered trademarks before filing an application, therefore,
will reduce the risks of not being able to register the trademark, or unknowingly
infringing the rights of others.
P.12

Step

5

Payment of Fees

Having decided on the details of your application, it is time to apply!
Make sure to first pay the application fee.
Once an application is filed, it will be examined. If the examiner determines that thetrademark can be registered, you will receive the “Decision for Registration” .
If you pay the registration fee within 30 days after the decision is sent out,
your trademark registration is complete!

P.15
4Step1

Step2

Step3

Step4

Step5

Step 1

Appointment of a Representative
Overseas residents may not submit documents
directly to JPO by themselves!

CAUTION!

I want to apply to Japan! Can I apply directlyfrom overseas in English?

Q

When applying directly to Japan, all procedures must be conducted inJapanese through a representative.

A

In addition, there is another method of filing an application in English: filing aninternational trademark application using the Madrid system. You can choose
the method that best suits your situation and brand strategy.
For more information on the Madrid system, please refer to the WIPO website.

Click!

Madrid System – The International Trademark System ( WIPO )Pros and Cons of ﬁling methods

DirectApplication

Pros

Cons

Basic application or registration is not
required

Impossible to file a batch application
to multiple countries

No risk of cancelation due to central
attack*International
TrademarkApplication

Possible to file a batch application tomultiple countries

Basic application or registration isrequiredApplication documents can beprepared in English

There is a risk of cancellation due tocentral attack*Easy management after registration* Cancelation of international registration due to revocation of basic application or registration.
If the international registration is canceled, the protection in the designated country will also be canceled.

Check

1

5

Selecting the appropriate ﬁling method and representative.

Step1

Step2

Step3

Step4

Step5

Step 2

Veriﬁcation of the Logo and Naming ( Trademarks )Q

Any tips when coming up with trademarks?

A

When including characteristics of goods / services in a trademark, the key is to make it
full of originality (i.e., distinctiveness), while also conveying its characteristics clearly.

Learn more...

What is “Distinctiveness”?

Distinctiveness is the power to have one's goods / services recognized as distinct from those of others with respect to acertain logo or naming ( trademark). The existence of distinctiveness is judged in relation to the goods / services forwhich the trademark is used.

N

DistinO T
ctive

Goods

Trademark“Fruits”“BANANA”

DistinGoods

Trademark“Personal Computer”“BANANA”

ctive

Ex. The following trademarks do not have “distinctiveness”
TrademarkAn indication of the quality of goods :Designated goods : Alcoholic beverages

The term “ORGANIC” merely indicates the quality of the goods: “made fromorganic agricultural products”.
Tokyo High Court, 1999 ( Gyo-ke ) No.82

TrademarkAn indication consisting only of a very simple and common mark :Designated services : Providing ﬁnancial information, etc.

It is very simple and consists only of a common mark.
Intellectual Property High Court, 2015 ( Gyo-ke ) No. 10019

Learn more...

Can the mark be registered if it is combined with a distinguishing letter or logo?

Even non-distinctive characters can be registered as long as they are combinedwith distinctive characters or logos (figures, etc.). However, this does not meanthat the non-distinctive character part can be monopolized.

Q

Organic
Foods

Can I change my trademark after ﬁling?
No. You need to apply for a new trademark.

A

Check

2

Making the trademark “distinctive”.

6Step1

Step2

Step3

Step4

Step5

Step 3

Designation of Goods / Services“Unclear description of goods / services” isthe most common reason for refusal.

CAUTION!

Be sure to designate goods / services by referring a list of goods / services on J-PlatPat.

Click!

Goods / Service Name Search (J-PlatPat)

Ex. Examples of goods / services
Be sure to designate the goods / services that you currently conduct or plan to conduct,
the business connected to in the future.

For “Apparel manufacturers” …?

Class 25
ClothingA“Clothing” includes a wide range of items, suchas “coats”, “sweaters”, “underwear”, “socks”,“hats”, etc.
By describing such a term that encompasses avariety of goods, a right can be granted toinclude goods of that sub-concept as well.

For “App production companies” …?

Class 42
Computer software
design7A
Be sure to also consider Class 9“Application Software”, for example, if you sell
apps that can be downloaded on the web.

Step1

Step2

Step3

Step4

Step5

For “Esthetic salons” …?

A

Class 44
Beauty salon services

Be sure to also consider Class 3 “Cosmetics”,
for example, if you are manufacturing andselling original cosmetics.

For “Cafes” …?

Class 43
Providingfood and drinkA
Be sure to also consider Class 30 “Sandwiches”,
for example, if you are considering take-out.

* “Class XX” refers to a category of goods / services.
The application fee and registration fee vary depending on the number of classes designated.
* Since the procedural language is Japanese, the English translations of the goods / services are for reference only.

Q

Are there any other things to keep in mind?
Be sure to avoid overly detailed descriptions of goods / services.
Concise expressions are recommended to avoid rejection.
In addition, if you list goods / services for which you do not plan to
conduct related business, you may not be able to register them.
Or, even if they have been registered, these may be canceled.

Check

3

A

It is recommended that the indications of goods / services be those listed on
J-PlatPat.
8

Step1

Step2

Step3

Learn more...

Step4

Step5

Can the trademark be accepted in Japan by choosing the indicationon the Nice Classification (NCL)?

Some indications in the NCL are judged to be unclear in Japan.
For example, the class headings in the NCL cannot be accepted in Japan because the wording is ambiguous.
The following are some examples.

Class

Unacceptable indications of the class headings of NCL12-2023

7

Machines, machine tools, power-operated tools;

9

Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual,
optical, weighing, measuring, signaling, detecting, testing, inspecting, life-saving andteaching apparatus and instruments;

12

Vehicles;12

Apparatus for locomotion by land, air or water;

17

Packing, stopping and insulating materials;

31

Raw and unprocessed agricultural, aquacultural, horticultural and forestry products;

33

Alcoholic preparations for making beverages;

36

Financial, monetary and banking services;

37

Installation and repair services;40

Treatment of materials;

41

Sporting and cultural activities;

42

Scientific and technological services and research and design relating thereto;

42

Quality control and authentication services;

45

Funerary services;If you change these indications to others, they could be accepted.
For more information, please visit our website.

Click!

9

Indications of goods / services appearing in the classheadings of LIST OF CLASSES OF GOODS ANDSERVICES WITH EXPLANATORY NOTES under the
NICE Agreement (JPO)A

Step1

Step2

Step3

Learn more...

Q

Step4

Step5

How should retail services be designated?

Our main service is retailing goods.
What type of service indications are eligible for registration?
Since the JPO organizes retail services according to the goods which aredealt with, it is necessary to clarify this information. Please consult yourYES
representative for details.

Case

1

A

General Retailing
When the retail service includes a variety of goods such as clothing, foods,
beverages, daily necessities, etc. in department stores or supermarkets, etc.

“Retail services or wholesale services for a variety of goods in eachfield of clothing, foods and beverages, and livingware, carrying all
goods together”
Case2

Speciﬁed Retailing
When the retail service is for specific products“Retail services or wholesale services for [XX(specified goods )]”* If you are mainly planning to provide goods online,
be sure to consider indicating “Online retail services or wholesale services for [XX (specified goods ) ]” .

However, please note that even in [Case 1] and [Case 2], if the range ofgoods dealt with YES
in the retail services is extensive, the examiner may
check the actual or planned use of the trademark.

A

P.11

Learn more...

Can't a trademark be registered if a wide range of goods / services aredesignated for it?

In principle, trademarks that can be registered are limited to goods / services for which an applicant actually conducts
business, or plans to conduct business in the future.
Therefore, in the following cases, the examiner sends the applicant a “Notice of Reasons for Refusal” to confirm
whether the applicant really plans to conduct business connected to the goods / sevices.
1 The applicant selects a wide range of goods / services within 1 class
2 The applicant selects multiple retail services in Class 35

The number of Similar Group Codes (SGC ) is used to determine whether a wide range of goods / services have been
selected.
Details of SGC

P.14
10

Step1

1

Step2

Step3

Step4

Step5

When a wide range of goods / services are selected( 23 or more Similar Group Codes ( SGC ) within 1 class )If there are 23 or more SGC in 1 class, the examiner will consider that a wide range of goods / services have been
selected and will issue a “Notice of Reasons for Refusal”.

ExampleClass 29

goods

SGC

accumulated numberof codes counted

Baked apple

30A01

1

Sesame oil

31C01

2

Milk products

31D01

3

Milk

31D01

Since they are in the same SGC,
counted as ”1”.

Meat

32A01

4

”4” SGC within a class
No “Notice of Reasons for Refusal”

2

When multiple retail services are selected

SGC for retail services are indicated as “35 K XX.” A single selection of the code for retail services can cover a wide
range of goods / services as shown in Example 1 below. Therefore, if there are 2 or more types of “35 K XX”
designated as shown in Example 2 below, the examiner will consider that a wide range of services is designated andwill notify the reason for refusal.

Example1

Class 35

services

SGC

accumulated numberof codes counted

Retail services forconfectionery,bread and buns

35K03

1

Retail services fortea and coffee

35K03

services

SGC

accumulated numberof codes counted

Retail services forconfectionery,bread and buns

35K03

1

Retail services forcosmetics

35K10

2

Since they are in the same SGC,
counted as ”1”.
No “Notice of Reasons for Refusal”

Example2

Class 35

Check

4

11

There are 2 or more types of“35 K XX” designated.
“Notice of Reasons for Refusal”

If you do not plan to use the trademark for all the range designated,
be sure to narrow down the range of goods / services.

Step1

Step2

Step3

Step4

Step5

Step 4

Searching for Similar Registered Trademarks
Once a trademark and goods / services have been determined, it is important to check whether there havebeen similar registered trademarks in the past before filing an application. In addition to asking yourrepresentative to search, you can also conduct a Trademark Search via J-PlatPat.

Click!

Q

Trademark Search ( J-PlatPat )How can I determine whether trademarks are similar?
Examination involves a comprehensive evaluation of the trademark's
appearance, sound (pronunciation), and concept (meaning) in order todetermine whether the trademarks are similar.

A

Ex. Examples of trademarks found to be similar

trademark as applied

another person's
registered trademark

Intellectual Property High Court, 2008 (Gyo-ke) No. 10285

They are similar in appearance and sharethe same sound of “CIS” .

Q

trademark as applied

another person's
registered trademark

Intellectual Property High Court, 2013 (Gyo-ke) No. 10008

The composition that combines a skull andtwo bone fragments is common. Differences
remain within a fine range.

Are there cases where trademarks that do not appear similar
at ﬁrst glance have been found to be similar?
Yes. A trademark that combines multiple characters or contains a figure
is called a “composite trademark,” and in this case, the examiner may
separate the important part of the entire trademark (called the “primarypart” ) to determine whether the trademarks are similar.

A

12Step1

Step2

Step3

Learn more...

Step4

Step5

Examples of Composite Trademarks

Comparing the primary parts “EMPIRE”, the appearances are confusing, and the sound (pronunciation) “Empire” andthe concept of “Empire” are identical.
Intellectual Property High Court, 2019 ( Gyo-ke ) No. 10104

trademark as applied

another person's registered trademark

The court found that in the industry that provides the service designated by the trademark applied for,“Providing food and drink in restaurants”, the names and signboards of shops generally include a figure of acow or the letters “STEAK HOUSE”, and therefore these are weak parts to distinguish the applicant’s
services from those of others.
Then, by excluding what was determined to be the “weak parts” of the entire applied-for trademark, thecourt considered the word “EMPIRE” as the “primary part” of the applied-for trademark, and determinedthat the primary part was similar to that of another person's registered trademark “EMPIRE”.

Check

5

13

Checking whether similar trademarks have been registered.

Step1

Step2

Step3

Step4

Step5

I found a similar trademark. In that case, do I have to give up
registering my trademark?

Q

Even if the trademarks are similar, they can be registered if the goods /services are not similar. The following is a good way to think about this:

Are thetrademarks similar?

Yes

Are thegoods / services
similar?

No

No

Registrable

Registrable

Not registrable*

Yes* A consent system will be introduced
in Japan in April 2024.

In the example below, both can be registered because the trademarks
are similar, but the goods are not.

≠TrademarkDesignated goods:

Automobiles

Q

A

TrademarkDesignated goods:

Personal Computers

How do I determine whether goods / services are similar?
The JPO assigns a five-digit alphanumeric code to goods / services
called a “Similar Group Code” (SGC). Similar goods / services have thesame SGC, so please check this.

Learn more...

A

A

What is SGC ?

SGC is a grouping of goods / services that have commonalities in terms of the companies dealing them, as well as theircontent and other matters.

Similar

SimilarNot similar

Desktop Computers
SGC: 11C01

Notebook Computers
SGC: 11C01

Click!

≠Cakes
SGC: 30A01

Ice cream
SGC: 30A01

Similar Group Code (JPO )14

Step1

Step2

Step3

Step4

Step5

Step 5

Payment of Fees

As of April 2023

Once you have decided on the trademark and the designated goods / services, let ‘s apply to the JPO
for trademark registration. You must pay fees at the time of filing and registration.
The information on this page is current as of April 2023. Please be sure to check the JPO and WIPO
websites for the latest fee information before filing an application.

Direct Application
Schedule of fees
(JPO )

Click !

Q

International Trademark Application
Click!

Fees and Payments – Madrid System(WIPO)How much does it cost to get a trademark in Japan?
For example, if you file an online application designating 2 classes,
you must pay the following fees.

A

Application Fee : ¥20,600
Registration Fee (Lump sum payment for 10 years ) : ¥65,800
In addition, if the application is filed from abroad, payment of fees for arepresentative is also required.

Direct Application
Application Fee
Digitization Fee( for paper procedures only )*JPY 3,400 + ( number of classes x JPY 8,600)
JPY 2,400 + ( 1 sheet x JPY 800)
Lump sum payment for 10 years

number of classes x JPY 32,900

Payment in installments for 5 years

number of classes x JPY 17,200

Lump sum payment for 10 years

number of classes x JPY 43,600

Payment in installments for 5 years

number of classes x JPY 22,800

Registration Fee

Renewal Fee* Digitization fees will be charged not only for the application form, but also for arguments, amendments, renewal registration applications andso on.

15

Step1

Step2

Q

Step3

Step4

Step5

Is the fee the same for obtaining trademark rights in Japan
using an international trademark application?

A

No. For international trademark applications, a basic fee and individual
fees must be paid.

International Trademark Applications
Below are the amounts when only Japan is designated. For details on fees related to the MadridProtocol, please check the website of the International Bureau ( WIPO).

Application
Basic Fee

Individual Fee( amount to be determinedby each Contracting Party )If the mark is not coloredCHF 653

If the mark is coloredCHF 903

Amount equivalent to the Registration Fee in Direct Application(number of classes x JPY 32,900)** Please check the website of the International Bureau (WIPO) for specific amounts.

Renewal

Basic Fee

Individual Fee( amount to be determinedby each Contracting Party )If renewal procedures are performed before
the expiration of the duration
If the payment is processed during thegrace period of 6 months

CHF 653
CHF 326.5 ( Surcharge)

Amount equivalent to the Renewal Fee in Direct Application(number of classes x JPY 43,600)** Please check the website of the International Bureau (WIPO) for specific amounts.

16

Flow after Filing an Application
Understanding the application process is very importantin order to proceed smoothly with your application.
Application for
TrademarkRegistration

Application

Publication of Applications
The contents of the application will be publishedin the Internet Bulletin.

Examination

Notice of
Reasons for
RefusalArgument

This is the document to be notified by
JPO if there are reasons for not being
able to register as a result of examination.

Decision ofRegistration

Amendment

Examination anew of Amended /Argued Application

Decision of
RefusalDecision ofRegistration

Appeal and Trial

Registration
Fee Payment
Slip

Payment of Registration Fee

Certiﬁcate of Registration
The term of trademark rights can be
renewed every 10 years.

Click!

17

Madrid System – The Process (WIPO)

References
Trademark
Trademark Search ( J-PlatPat )Goods / Services
Goods / Service Name Search( J-PlatPat )Similar Group Code ( JPO )Examination
Examination Guidelines for
Trademarks ( JPO )The Trademark Examination Manual( JPO )

International Trademark Applications
Madrid System ( WIPO )Process of Filing International
Trademark Applications ( WIPO )Fee ( WIPO )Information for users designating
Japan under the Madrid Protocol( JPO )

Patent Attorney Navi
( Japan Patent Attorneys Association )Direct Application Fee ( JPO )OthersJPO Initiatives and Information ( JPO )18

This booklet is an FSC® certified product that guarantees the responsible use of forest resources.
September 2023 First Edition