Trademark registration in Japan - The ultimate guide

Doing business in Japan is a major growth opportunity, as it offers access to one of the largest markets in Asia and the world. Small and medium-sized enterprises and venture companies are one of the main sources of Japan's industrial competitiveness, and therefore the country strongly prioritizes and encourages their activities from the aspect of intellectual property.

Given Japan's 'First-to-File' system, obtaining trademark protection is highly recommended, even if branded products are not yet sold or services are not yet provided in the country. Any business wishing to ensure that its brand is well-protected before expanding internationally should have Japan as a priority country on its trademark list.

The Japan Patent Office (JPO) is responsible for examining, granting and administering intellectual property rights (patents, trademarks and designs) in Japan.

Japan is a so-called 'First-to-File' country, meaning the JPO grants trademark rights to the first entity that files an application for a trademark. This also means that you may not have a chance to seek legal protection in Japan if a similar trademark has already been registered in the country. Therefore it is essential for business owners to register a trademark in Japan before entering or operating in the market so as to diminish the risk of the trademark being registered by someone else first.

Based on our data, registering a trademark in Japan takes an average of 14 months after filing the application, provided it has not been objected to or opposed by other trademark owners. We delve deeper into the opposition process in one of the sections below.

In some cases, it is possible to reduce the examination period by applying for accelerated examination, which reduces the time of the procedure by up to 2 months. In addition to the accelerated examination, some applications are automatically eligible for fast-track examination, which can reduce the time by up to 4 months.

The fees for trademark registration in Japan are:

Notice: The JPO does not accept direct payments by any means from applicants/persons residing outside Japan, such as payments by bank transfers, credit cards, or checks. The payment has to be made by an appointed representative, either residing or domiciled in Japan, such as a trademark attorney.

Applicants that have a permanent address or residence (office, if the applicant is a legal entity) in Japan can submit their application directly to the JPO. However, it is strongly recommended to appoint a trademark attorney as your representative because a good command of Japanese and deep knowledge of the relevant laws and procedures are necessary to file an application and complete the process successfully. 

Foreign applicants that do not have a permanent address or residence in Japan are required to appoint a legal representative (trademark attorney) with a permanent address or residence in Japan in order to conduct all necessary procedures.

For a trademark to be eligible for registration, it has to meet specific criteria, one of them being distinctiveness. As the purpose of a trademark is to distinguish a recognisable source of goods or services to the consumer, only a sign with at least a minimum level of a distinctive character can achieve this purpose without consumer confusion. The more descriptive or customary a name, logo, or any other brand elements are, the less likely they will be registered by the JPO. You can learn more about registration requirements and the distinctiveness of trademarks by visiting our Trademark Academy.

Another important step in applying for a trademark is ensuring that it is not confusingly similar to already registered marks. Many starting businesses that tried to register their trademarks without prior research have either suffered rejection directly from JPO or received opposition from their competitors who registered their identical of similar marks prior to them. In trademark law, those owners who filed their trademarks earlier have way stronger positions over all the similar marks applied for later (as the owners of prior rights can, for example, attack the new applications in the opposition proceedings), even if the registration process was not yet completed. As a result, the JPO, in general, recommends searching their trademark database before submitting an application.

In order to obtain a trademark right, an applicant must fill out the forms prescribed in the relevant ordinances and submit them to the JPO. The application form itself can be submitted in English, but the applicant must provide Japanese translations for all the submitted documents within 16 months from the filing date.

After filing your application with the JPO, it will go through several stages:

An application document submitted to the JPO will be checked to see whether it fulfils all the necessary requirements. The examiner will check whether the application fulfils all the formal and substantive requirements. An invitation to correct the data will be made where necessary documents are missing or required sections have not been filled in. If the applicant does not reply to the JPO's notice, or if its written arguments or amendments fail to overturn the reasons for objection, the JPO will issue a refusal decision.

The accelerated examination system for trademarks at the JPO is a system under which the JPO, based on certain requirements and requests from applicants, conducts accelerated examinations on trademark applications for applicants who have certain needs to acquire rights sooner than normal. The JPO recommends such applicants using this system, which is provided at no additional cost. Applicants can check their eligibility for an accelerated examination.

Fast-track examination is an examination where applications that meet certain conditions will be examined within 6 months from the filing date. If all of the designated goods or services in a trademark application are selected from the goods or services published in the Examination Guidelines for Similar Goods and Services, the Regulation for Enforcement of the Trademark Act or the Nice Classification, the application will be automatically eligible for fast-track examination. Applicants are recommended to check their eligibility for a fast-track examination.

If the examiner has accepted the application, the JPO will publish the content of an application in the Official Gazette after filing. Publication of such an application is done so that within the 2 months period, any third party can see it, and if they want, they can file an opposition against this new application.

If the examiner determines that there are no reasons to reject the application, or if such reasons are defeated, they will issue a registration decision. After issuing the decision of registration, a certificate of trademark registration will be issued upon payment of registration fees in approximately one month. A trademark registration formally comes into effect upon registration by the JPO.

Any person may raise opposition against a trademark registration within two months from the date on which the Gazette containing the trademark was published. If the JPO intends to accept the opposition and initiate opposition proceedings against the new application, it must provide notice of the reasons and give the trademark applicant an opportunity to contest the notice. The applicant can file a response within three months from the mailing date of the notice.

Time: Opposition proceedings can take as long as two to four years or even longer.

Cost: The fee for application for a notice of opposition: ¥3,000 + ¥8,000 (approx. $85) 

Additional fee in case one of the parties would like to appeal is ¥15,000 + ¥40,000 (approx. $424) 

You may be liable for additional legal fees if you have an attorney acting on your behalf. If your opposition is unsuccessful, you may also be liable for a part of the other party's costs, depending on the circumstances of the case, which can drive the final cost of the opposition procedure to tens of thousands of dollars. 

Trademarks are valid and enforceable in Japan for 10 years from the date of filing of the application. Trademark rights can be renewed every 10 years. You can renew your trademark right by filing a request for renewal six months before the trademark right expires. You need to pay the renewal fee at the same time you request to renew your trademark right. Renewal fees are ¥43,600 (approx. $335) per classification.