< 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.
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.
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.
Filing a trademark application
After obtaining your approval, a trademark application will be filed to the Japan Patent Office.
< Actions taken by the Japan Patent Office >
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.
* 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.
* 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.
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.
Payment of registration fee
The registration fee should be paid to the Japan Patent Office.
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.
Publication on Trademark Gazette
Any party can file an opposition against a trademark registration within two months from the date of publication.
Certificate of trademark registration
A certificate of trademark registration will be mailed to the holder of trademark right in approximately two weeks from the registration.
An examiner will make a decision to refuse a trademark application in the following circumstances:
< 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.
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.
Appeal decision of refusal
or Appeal decision to register a
--> 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.
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.