< Actions taken by an Applicant >

 

Inquiry & free consultation

If you have any questions about procedures of filing of a trademark application up to trademark registration in Japan, please contact us.

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Trademark search

Before applying to register a trademark in Japan, it is highly recommended to conduct a trademark search. Your trademark search report includes our attorneys' opinions about registration probabilities in Japan.

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Drafting a trademark application

Upon receipt of all the information required to file an application including applicant's name, address and nationality, trademark and a list of goods and/or services, we draft a trademark application, which will be sent to you for your final review and approval. 

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Filing a trademark application

After obtaining your approval, a trademark application will be filed to the Japan Patent Office.

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< Actions taken by the Japan Patent Office >

 

Examination

A trademark application sent to the Japan Patent Office will be first checked to see if it fulfills procedural and formal requirements. That is called formality examination. And then substantive examination will be carried out by an examiner to see whether there are any reasons to refuse the application based on the Trademark Act.

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* Notification of reasons for refusal (Office Action)

Upon reviewing an application, an examiner may issue something called an Office Action. In the case where an examiner finds reasons to refuse the application based on the Trademark Act, a notification called a "Notification of Reasons for Refusal" will be sent to the applicant. 

 

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* Submitting written argument and /or amendment

Applicants who receive a notification of reasons for refusal issued by the Japan Patent Office will be given an opportunity to respond to it by submitting a written argument and/or amendment etc.

For example, if there seems to be a chance to overcome an examiner's objection by arguments, a written argument should be submitted. In some cases, an examiner's objections can be overcome by limiting or amending descriptions of designated goods and/or services etc. If you decide to do so, an amendment should be submitted. It is sometimes necessary to submit both a written argument and amendment.

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Decision of trademark registration

     or Decision of Refusal
(--> please see "Procedures after a decision of refusal is made" below to learn about procedures which can be taken after receiving a decision of refusal) 

If an examiner finds no reason to refuse a trademark or if reasons of refusal were found in the examination but were eliminated as a result of a written argument and/or amendment submitted by an applicant, a notification called "Decision of Registration" will be sent to the applicant.

 

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Payment of registration fee

The registration fee should be paid to the Japan Patent Office.

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Registration

With the payment of the registration fee, a trademark right will be registered in the Trademark Register maintained in the Japan Patent Office in approximately one or two weeks. The trademark right is now established in your name.

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Publication on Trademark Gazette

Any party can file an opposition against a trademark registration within two months from the date of publication.

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Certificate of trademark registration

 A certificate of trademark registration will be delivered to the holder of trademark right in approximately two weeks from the registration.

 

 

Note:

1. Applicants' procedures and actions indicated above will be performed by Trademark Wagon as a representative of and in the name of the applicants (for those clients who don't have an office in Japan, we will be appointed as a trademark administrator in Japan).
   
   We ensure that we keep our clients timely updated about any developments such as notices received from the Japan Patent Office, and obtain clients' prior approval when we proceed with any actions such as drafting or submission of documents to the Japan Patent Office in connection with a trademark application. 
2. If no reason for refusal is found in the examination and a decision of registration is rendered without any office actions, the procedures marked with * above will not occur.
3. There are cases where the procedures marked with * above will occur more than one time.
   
   For example, a notification of reasons for refusal (1st office action) was issued. In response to it, a written argument and an amendment were submitted. Despite the written argument and amendment, if reasons for refusal were not yet eliminated, 2nd notification of reasons for refusal (2nd office action) will be sent to the applicant. The applicant has to respond to the 2nd office action in order to avoid refusal decision.
   
   It could continue repeatedly until a final decision, which is either decision of registration or refusal, is rendered.

 

An examiner will make a decision to refuse a trademark application in the following circumstances:

• An applicant did not respond to an office action, or
• Although an applicant responded to an office action, the reasons for refusal were not eliminated.

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< Actions taken by the Japan Patent Office >

Decision of refusal

In spite of a written argument and/or amendment submitted by an applicant in response to a notification of reasons for refusal, if an examiner judges that the reasons for refusal are not yet eliminated, a decision to refuse a trademark application will be made.

 

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Appeal against a decision of refusal

If an applicant is not satisfied with an examiner's decision of refusal, the applicant can file an appeal against the decision of refusal to the Japan Patent Office. Appeal examination will be performed by a collegial body of 3 (or 5) appeal examiners.

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Appeal decision of refusal

     or Appeal decision to register a trademark
--> If an appeal decision of trademark registration is made, remaining procedures will be resumed from "Payment of registration fee" described above.) 

As a result of appeal examination, if it is judged that reasons for refusal remain unsolved, an appeal decision to refuse the trademark application will be rendered.

 

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Trial against an appeal decision

An appeal decision of refusal is the final judgement to be rendered by the Japan Patent Office in connection with trademark applications. If an applicant disagrees with an appeal decision of refusal, the applicant may file a lawsuit against the appeal decision to the Intellectual Property High Court.

 

 

If you have any questions or need more clarification relating to the trademark registration process in Japan, please feel free to contact us.