Trademarks
At YKI Intellectual Property Attorneys, trademark services are provided by an experienced team of professionals who are experts in not only trademark filing and prosecution, but also in all services related to trademark use, protection, and licensing, including clearance searches, infringement actions, and negotiations. In all cases, we use our experience to avoid unnecessary costs and expensive pitfalls.
For your convenience, we provide below our replies to some frequently asked questions. However, we welcome contact, and hope that you will not hesitate to write or call us if you desire clarification of anything written here, or have any other questions whatsoever.
Frequently Asked Questions
１. What must we provide to register a trademark in Japan?
YKI Intellectual Property Attorneys would not require any documentation or evidence of use to file or prosecute a trademark application. To prepare and file a basic Japanese trademark application in Japan, we would require only the following information:
i) A description of the desired mark;
ii) A list of goods and services to be covered, and of classes to be designated according to the Nice Classification (tenth edition); and
iii) Complete name as incorporated and the full address of the applicant.
However, to claim convention priority, a certified copy of the basic application must be submitted, either along with the application, or, at extra cost, within three moths from the filing date of the Japanese application.
２. How long does it take before a trademark is registered?
Although it cannot be guaranteed, in the majority of cases a first office action can be expected within about six months from the filing date of the trademark application. Except in rare cases, a final disposition can be expected within about 18 months.
３. Does the JPO require actual use of the trademark in commerce for registration?
No. A trademark application can be based on intended use. However, a registered trademark not used for three consecutive years after registration can be cancelled with respect to the goods or services for which it is not used. Requests for cancellation based on non-use are initiated by a third party, not by the Japan Patent Office.
４. What are the fees for maintaining a trademark application registration?
No maintenance fees are required unless and until an application is allowed, at which time a registration fee is required. A trademark is registered or renewed for a period of ten years. At the time of registration or renewal, the official fee can be paid in either a lump sum for the full ten year term, or in an installment covering five years only. Currently the official fees, per class, are as follows;
Full ten year term: 48,500 yen
Five year installment: 28,300 yen
5. What if a payment is missed?
Late payments are accepted within a grace period of six months, but require payment of double the normal official fee. To ensure that deadlines are not missed by accident, unless specifically instructed otherwise, YKI Intellectual Property Attorneys will, as a courtesy to our clients and associates, monitor the status of all trademark registrations entrusted to us at no cost and provide a courtesy reminder as each renewal deadline approaches.
6．What are “Similar group codes”?
| Similar group code | Goods | Class |
|---|---|---|
| 31D01 | Lacteal flour for babies |
5 |
| Milk products | 29 | |
| Ice cream mixes, Sherbet mixes |
30 | |
| Whey beverages |
32 |
The Japan Patent Office system of similar group codes is a common source of questions and confusion. The JPO has its own system for grouping together goods and services which it finds are closely related, regardless of class, and assigns each of these groups a JPO “similar group code”. Generally, the JPO will presume that goods and services assigned the same code are similar when considering registrability of a new trademark over existing registrations. It is sometimes possible to successfully argue that goods or services assigned the same similar group code are in fact dissimilar, but in most cases this requires appealing a JPO decision to an appropriate Japanese court.
Please note that, in conjunction with the JPO’s adoption of the tenth edition of the Nice Classification, the JPO adopted revised similar group codes as of 1 January 2012.
