Trademark Registration in Japan

1.Trademark search report
Why is a trademark search important?
The search for trademarks highlights current avoidable risks and can reveal how collisions can be avoided. The trademark search is important, in order to avoid collisions with prior trademarks. Such collisions can lead to rejection of the trademark application for registration, appeals, warnings, and further damage claims.

What ensues after the placement of your order?
As soon as we receive the search order, we check on the basis of the information available the classes in respect of which the search must be conducted. To that extent, classes refer to an international classification of goods and services, in respect of which trademarks are protected. As the case may be, our trademark attorney will call you to determine with you the scope of search.

What features include the scope of the search and report?
We conduct the following search:

- Search for identical and similar trademarks in the desired classes among national protection rights in respective countries.

- Search for identical and similar trademarks in the desired classes under Community and IR trademarks, as far as it is relevant.

The determined trademarks will be analysed and selected through an experienced lawyer specialised in trademark law. Quality assurance is carried out through counter-check by a second lawyer.

We prepare a search report with a clear and plain conclusion, about whether or not the mark, basically, is suitable of being registered and whether or not any prior marks have been discovered that might conflict with the sought-after trademark. All relevant marks will be listed along with detailed information.

How do I receive the report?
You will receive the report within a few workdays by e-mail. The e-mail will contain a link by which you can place the order of application for registration of the trademark, if so desired.

What happens if conflicting trademarks are found or the trademark cannot be registered at all?
If we arrive at the appraisal that, basically, the trademark cannot be registered, for example, because it is descriptive or is not distinctive and is therefore not suitable for registration, we will so advise you quite clearly and give details about how to design the trademark differently.

If conflicting trademarks are found, we can only refer to an existing risk of conflict. In that case, you can modify the trademark and/or cancel the goods and services in respect of which protection is claimed by the registered trademarks as discovered.

2.Trademark Registration
Assignment Specifications
With this assignment you can hire us to register your trademark. We will take care of everything that is necessary for the professional preparation of the trademark registration, submission of the application for registration of the trademark and sending the trademark certificate to you.

The price includes all costs including official fees, our lawyer’s fees, incidentals for the registration and implementation of the trademark without opposition and receipt of a trademark certificate for the client. There are no hidden or unexpected costs for the client.

Trademark Registration Procedure
The trademark registration order comprises the following tasks:

Checking Whether there are absolute grounds of refusal
First, we check whether the mark being registered is entitled to protection (absolute grounds of refusal). Not all marks may be registered as trademarks. For instance, merely descriptive information for the respective goods and services may not be registered as a trademark. These marks are to be freely useable for everyone.

If you also want to check if there are already trademarks that are registered or pending registration which could be in opposition to the registration of the trademark, you may hire us  on a separate assignment for trademark search.

Elaboration of a list of goods and services
We will get an overview of your range of services, enquire how you intend to use the trademark. On this basis and with the aid of phrasing admissible at the Trademark Office we are able to elaborate a professional list of goods and services for your trademark registration. We classify the specified goods and services according to the formalities prescribed by the Trademark Office and in line with the Nice-classification, the official categorization for goods or services.

The art of trademark registration lies in the elaboration of the goods and services list. The goods and services list may no longer be expanded after the trademark registration, but only restricted. On the one hand it should be so broad as to cover any goods or services used, but it should not be too general. This will help to keep conflicts with longer-standing trademarks at a minimum and prevent objections by the Trademark Office. This will save time, costs and lead to quicker registration.

Submission of the Documents Prepared for Trademark Registration for Approval
We will e-mail you the registration documents prepared (power of attorney and form for confirmation of the data on the trademark registration, in particular draft of the list of goods) for your review and approval.

If during our review of entitlement to protection in intellectual property law we determine that there is a possibility that the trademark registration will be denied, we will inform you explicitly of the problem. In such a case, we will give you specific recommendations on how to handle the issue in order to get the mark registered notwithstanding. For example, this could be adding on a non-descriptive word element or logo.

You can also check if everything for which the trademark is to be protected has been specified in the list of the goods and services.

Should there be an additional class due to the proposed classification, thereby increasing costs, we will inform you explicitly. You then have the option of accepting the recommendation or cancelling the additional class in order to save costs.

Filing of the Trademark Registration
As soon as we have received the signed power of attorney and confirmation of the data for the trademark registration we will submit the trademark application to the Trademark Office.

Sending of Application Confirmation and Invoice
We will review the application confirmation by the Trademark Office and send it to  you immediately, together with our note of fees. The filing confirmation will be your proof that the trademark was filed.

Payment of Fees to the Trademark Office
We will pay the fees to the Trademark Office in order for the application to be handled properly.

Standard Correspondence with the Trademark Office
We will continue to maintain standard correspondence with the Trademark Office. This includes any minor objections regarding the information on the trademark application. Should the Trademark Office however order a refusal the registration, we would need a separate assignment in order to do this work. In such a case we will pass on the order to you together with our assignment form; we will inform you regarding the necessary steps and any costs incurred. You then have the option of deciding how to proceed.

Status of the Application
We will continuously monitor the status of the official proceedings and will inform you at our own initiative if there is any news. Where necessary, we will contact the Trademark Office in order to expedite the application.

Note Regarding the Possibility of Extension of Trademark Protection
Before the lapse of six months after trademark registration it is possible to register the same trademark in a different country and to use the registration date of the earlier trademark registration for the new registration (“priority”). We will contact you in writing early on in order to inform you of this possibility.

Monitoring Deadline for Opposition Proceedings
We monitor the deadline for the opposition proceedings and will inform you where opposition proceedings were filed against the trademark registration. In the case of opposition proceedings we will send you the documents and an assignment form. This will include our cost estimate for representing you in opposition proceedings. You then can decide if you wish to hire us to represent you.

Inspection and Sending of the Trademark Certificate
After receiving the trademark certificate from the Trademark Office  we will check if all information is accurate and have any corrections made where necessary. We will send you the original certificate together with important notices as to how you are to use the trademark, whether the (R)-symbol may be attached, which deadlines need to be complied with and we offer you trademark monitoring.

Trademark Monitoring
In order for you to be informed in good time when identical or similar trademarks are registered by third parties, trademark monitoring is indispensable. We will inform you accordingly upon sending you the certificate and will make you an offer.

Monitoring of Extension Deadline
The trademark must be extended in good time before expiration of the period of protection under intellectual property law. We will monitor this deadline, inform you of it in good time and make you an offer for extension of the trademark registration.

Representation in Cases of Trademark Infringements
Should you discover that someone is using your trademark without your permission, we are there to help you out. We will advise you and represent you in the defense of your trademark rights.

What happens if the trademark registration is discontinued before the application has been submitted?
If you wish to discontinue the trademark registration prior to submission of the application we will only charge our legal fees and will refund and costs that were not incurred to us.

Please let us know if you have any question, do not hesitate to contact our professional consultants will reply to you as soon as possible, 
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