ATTORNEYS FOR TRADEMARK APPLICATION IN JAPAN

Our actions for obtaining Japanese trademark registration are taken in the application, response, and registration stages. Of course, if no Official Action is issued, it follows that they are only taken in the application and registration stages.

■ Application stage

(1) Conducting a search for mark identical with or nearly identical with the proposed mark (excluding a similar mark search)

(2) Verifying if the proposed mark meets substantial requirements

(3) Filing an application

(4) Reporting the Official Action, if applicable

Costs:

(1) For a mark in one Class

- Attorney's fee: 40,000 Yen

- Official fee: 12,000 Yen

(2) For each additional Class in the same application

- Attorney's fee: 20,000 Yen for 2nd Class; 10,000 Yen for 3rd Class or each subsequent Class

- Official fee: 8,600 Yen per Class

Information:

(a) Full name and address of applicant

(b) Nationality of applicant

(c) Mark to be protected (A mark with figurative elements needs an image data in JPEG or BMP.)

(d) Goods/services to be covered

(e) Class(es) to which goods/services to be covered belong

If a Convention Priority under the Paris Convention is claimed, a filing date and application number of the original application, and a name of the country in which such was filed are required in addition.

Documents:

- None

If a Convention Priority under the Paris Convention is claimed, a Certified Copy of the original application is required within three months from the filing date of Japanese domestic application. 

■ Registration stage

(1) Paying the registration fee

(2) Checking a Certificate of Registration and forwarding it to the registrant by registered mail

(3) Managing the registration for ten years (e.g. If the Opposition or Trial is raised against it, we will let the registrant know immediately.)

Costs:

(1) For a mark in one Class

- Attorney's fee: 18,000 Yen

- Official fee: 28,200 Yen

(2) For each additional Class in the same application

- Attorney's fee: 6,000 Yen per Class

- Official fee: 28,200 Yen per Class

■ Response stage

If any Official Action is issued to an application, the applicant may file any one of the following responses to overcome it. The Official Action here refers to a notification of the Examiner’s negative view to application and unless it is overcome, a Decision of Rejection will be subsequently issued.

(1) Filing an Amendment

This is for clarifying the description of goods/services or limiting the scope of goods/services. An amendment of mark itself is not acceptable.

When the Official Action is issued mainly on the ground that the specified goods/services are not described clearly, or the application can conflict with another person’s prior registration, the applicant may file this response to overcome it.

Our overseas clients often use the descriptions of goods/services that the JPO has not accepted before. However, the Examiner is apt to consider such new descriptions to be unclear and occasionally even suggests descriptions unintended by them. We therefore handle this kind of amendment cases with particular care. In some cases, we exchange views with the Examiner over the descriptions of goods/services and request him/her to reconsider.

Also, in Japan, the number of groups within which the specified goods/services are similar to each other must be within 7 in each Class. If it comes to 8 or more in one Class, the Examiner will issue the Official Action calling for a Declaration of Intent to Use (with business plan) or a Proof of Use on the specified goods/services in each group since in such a case, it is doubtful whether the mark is going to be used or has been used for all the specified goods/services in the Class. If neither can be filed, the applicant will have to file an Amendment to limit the specified goods/services within 7 groups in the Class. We can then advise about which group each of them belongs to. If either can be filed, it should be filed with the response (2). We can provide the forms.

- Attorney's fee: 0 Yen to 16,000 Yen per application (included for contacting the Examiner, if applicable)

- Official fee: No charge

(2) Filing an Argument

This is for arguing that the applied-for mark meets the requirements for registration of mark.

Most of the Official Actions are issued on the ground that the application can conflict with another person’s prior registration, or it lacks distinctiveness in relation to its specified goods/services. However, we are convinced that whether we can prepare and file a strong Argument against it or not depends on how major inconsistencies between the Official Action and the previous registrations or Trial Decisions we can point out therein. We therefore have always collected and filed as much information on registration or Trial Decision helpful for registration of mark as possible.

- Attorney's fee: 40,000 Yen to 60,000 Yen per application

- Official fee: No charge

＊Filing an Appeal Trial

If the filing of an Argument is not accepted and the Decision of Rejection is eventually issued, the applicant may file an Appeal Trial against it, in which he can further appeal that the applied-for mark meets the requirements for registration of mark.

The filing of an Argument is only ruled by the same Examiner as examined the application, whereas the filing of an Appeal Trial is ruled by three Trial Examiners. Accordingly, more reasonable decision can be expected in the Appeal Trial, and when we are in doubt about the Decision of Rejection, we strongly recommend that the applicant file this response.

- Attorney's fee: 70,000 Yen to 90,000 Yen per application

- Official fee: 55,000 Yen for one Class (40,000 Yen for each additional Class)

- Original Power of Attorney simply signed by applicant

Neither notarization nor legalization is required. The late filing of POA is acceptable at extra cost. The POA form will be provided on receipt of order instructions.

(3) Filing a Cancellation Trial

This is for canceling registration of a cited prior mark due to its non-use. This Trial is to be filed against each registration.

The statistics of the JPO indicate that approximately 75% of the whole registered trademarks are not in use in Japan. Therefore it could be very effective to file this response to overcome a cited mark. Our Official Action report, which gives some information about use of a cited mark(s), will be able to suggest the possibility of success in this response.

- Attorney's fee: 60,000 Yen per registration (included for filing a Petition for keeping the application alive until the Trial Decision is issued) (Extra fee [15,000 Yen to 30,000 Yen] is applied to attendance at oral proceedings or filing of a written Refutation, if applicable.)

- Official fee: 55,000 Yen for one Class (40,000 Yen for each additional Class),

- Original Power of Attorney simply signed by applicant

(See “Filing an Appeal Trial” for further information.)

(4) Filing an Invalidation Trial

This is for invalidating (or retroactively canceling) registration of a cited prior mark due to its illegality. This Trial is to be filed against each registration.

However, the success rate in the filing of an Invalidation Trial is not so high (30% to 35%) since the invalidating of registration means overturning the administrative action of registration by the JPO and the requirements for invalidity would be very strictly applied to this Trial. However, according to our experience, in case an applied-for mark has been well known in its home country since before the filing date of a cited mark and consists only of device and/or coined word, there would be a good chance to invalidate registration of a cited mark through this Trial.

- Attorney's fee: 100,000 Yen to 150,000 Yen for one Class

(See “Filing a Cancellation Trial” for further information.)

- Official fee: 55,000 Yen for one Class (40,000 Yen for each additional Class)

- Original Power of Attorney simply signed by applicant

(See “Filing an Appeal Trial” for further information.)

(5) Filing an Opposition

A registered mark is published for opposition purpose approximately one month after registration, and therefore if a cited mark is published, the applicant may also file an Opposition to the registration due to its illegality within two months after publication.

The filing of an Opposition is less expensive than that of an Invalidation Trial and is ruled under procedures equivalent to Invalidation Trial procedures. However, the success rate in the filing of an Opposition is very low (15% to 20%) for the same reason as in an Invalidation Trial.

- Attorney's fee: 60,000 Yen to 90,000 Yen for one Class

(See “Filing a Cancellation Trial” for further information.)

- Official fee: 11,000 Yen for one Class (8,000 Yen for each additional Class)

- Original Power of Attorney simply signed by applicant

(See “Filing an Appeal Trial” for further information.)

(6) Assigning the application to an owner of the cited mark(s) and obtaining, after registration, assignment of the registration from him

This is for enabling conflicting registrations to amicably coexist with each other.

In this case, we contact an owner of the cited prior mark(s) to ask him to obtain assignment of the application and to return, after registration of the application in his name, the registration back to the assignor (or former applicant). This response can be taken as an alternative to the Letter of Consent System, which has not been adopted under the Japanese Trademark Law, and it enables the applicant to obtain registration of his mark without fail. Our Official Action report, which gives some information about use of a cited mark(s), will be able to suggest the possibility of success in this response.

- Attorney's fee: 80,000 Yen to 120,000 Yen per application (for negotiating with an owner of the cited mark[s]; for filing a Petition for keeping the application alive until the transfer of the application is completed; for filing a notification of transfer of the subject mark [before registration]; for filing an application for recordal of transfer of the subject mark [after registration])

- Official fee: 34,200 Yen per application (for filing two applications for notification and recordal of transfer of the subject mark [before and after registration])

- Consideration for owner of cited mark: 100,000 Yen to 300,000 Yen per application

- Original Deed of Assignment simply signed by applicant

- Original Power of Attorney simply signed by applicant (assignee of the registration)

The DOA and POA forms will be provided on receipt of order instructions.

If you need any other information about our services, please do not hesitate to contact us.