How do you register a trademark in Japan? Official fees, the first-to-file rule and what overseas companies need to know

Question

阿部国際法律事務所 · Accepted Answer

A trademark right in Japan arises on registration with the JPO, and the first applicant prevails (Trademark Act, Arts. 8(1) and 18(1)). Official fees are JPY 3,400 plus JPY 8,600 per class on filing and JPY 32,900 per class on registration for ten years. Overseas applicants file through a representative in Japan.

In Japan a trademark right arises when the mark is registered by the Japan Patent Office (JPO) (Trademark Act, Art. 18(1)). Where applications for the same or similar marks overlap, the first applicant prevails (Art. 8(1)). Overseas companies planning to do business in Japan, and Japanese companies launching a new brand, should therefore file before they start using the mark. The official fees are JPY 3,400 per application plus JPY 8,600 per class on filing, and JPY 32,900 per class on registration for ten years.

Typical situations

- You plan to enter Japan under a brand you use overseas, and find that a third party has already registered the same name in Japan.
- After choosing a product name and printing the packaging, you discover a similar registered mark.
- Another company is using your product name without permission in online stores.
- Your Japanese distributor has filed your brand in Japan in its own name.

1. What registration gives you

A trademark is anything perceptible, such as words, figures, symbols, three-dimensional shapes, colours or sounds, that a business uses on its goods or services (Art. 2(1)). Once registered, the owner has the exclusive right to use the registered mark for the designated goods or services (Art. 25).

Using the same or a similar mark on the same or similar goods or services infringes the trademark right (Arts. 25 and 37(i)). The owner can demand that the infringement stop or be prevented (Art. 36), and can rely on statutory presumptions of the amount of loss when claiming damages (Art. 38).

2. The first-to-file rule

Where two or more applications for the same or similar marks for the same or similar goods or services are filed on different dates, only the earliest applicant can obtain registration (Art. 8(1)). A later applicant can also be registered if the earlier applicant consents and there is no likelihood of confusion between the goods or services (proviso to Art. 8(1)). As a rule, the question is who filed first in Japan, not who used the mark first.

Even a brand used overseas for many years can be filed and registered in Japan by someone else if you have not filed there. Consider filing as soon as you decide to enter the Japanese market.

3. Marks that cannot be registered

The following cannot be registered:

- Marks consisting only of the generic name of the goods or services, marks in customary use, marks that merely describe origin, quality, use and similar features in an ordinary way, common surnames or names, and very simple and common marks (Art. 3(1)). A mark may still be registrable if, through use, consumers have come to recognise whose goods or services it identifies (Art. 3(2)).
- Marks identical or similar to another person's earlier-filed registered mark, for the same or similar goods or services (Art. 4(1)(xi)).

Searching for earlier registered marks on J-PlatPat, Japan's patent information platform, before filing helps you gauge the risk of refusal.

4. Classes and official fees

An application designates the goods or services on which the mark will be used, in accordance with the classes set by Cabinet Order (Art. 6(1) and (2)). The classes do not define the scope of similarity between goods or services (Art. 6(3)).

The main official fees payable to the JPO are:

- Application fee: JPY 3,400 per application plus JPY 8,600 per class (Order on Fees under the Patent Act etc., Art. 4(2))
- Registration fee (ten years): JPY 32,900 per class (Trademark Act, Art. 40(1); Trademark Act Enforcement Order, Art. 4(1))
- Registration fee paid in two instalments: JPY 17,200 per class on registration and again by five years before expiry (Trademark Act, Art. 41-2(1); Enforcement Order, Art. 5(1))
- Renewal registration fee: JPY 43,600 per class (Trademark Act, Art. 40(2); Enforcement Order, Art. 4(2))

Costs rise with each extra class, so designate only the goods and services you will actually use.

5. Term, renewal and cancellation for non-use

A trademark right lasts ten years from the date of registration (Art. 19(1)). It can be renewed by applying for renewal registration (Art. 19(2)), between six months before expiry and the expiry date (Art. 20(2)).

If a registered mark has not been used in Japan by anyone for three consecutive years or more, any person can request a trial to cancel the registration (Art. 50(1)). After registration, keep evidence that the mark is actually in use.

6. Filing from overseas

A person with no domicile or residence (or, for a company, no business office) in Japan must, as a rule, act through a representative with a domicile or residence in Japan (Trademark Act, Art. 77(2), applying Patent Act, Art. 8(1) mutatis mutandis).

An overseas company can also designate Japan in an international registration under the Madrid Protocol. A territorial extension designating Japan is deemed to be a Japanese trademark application filed on the date of the international registration (Art. 68-9(1)). If you filed first in another country, you may be able to claim Paris Convention priority (Trademark Act, Art. 13(1), applying Patent Act, Art. 43).

7. When a distributor or former partner registers your mark first

A Japanese distributor or reseller sometimes files the overseas head office's brand in its own name. Two mechanisms can help.

The first applies at the application stage. A mark identical or similar to a mark that is widely recognised among consumers in Japan or abroad as indicating another person's goods or services cannot be registered if it is used for an unfair purpose (Art. 4(1)(xix)).

The second applies after registration. Where a person holds a right equivalent to a trademark right in a Paris Convention country, a WTO member or a Trademark Law Treaty party, and that person's agent or representative (including one who was an agent or representative within one year before the filing date) files and registers the mark without consent and without a legitimate reason, the right holder can request a trial to cancel the registration (Art. 53-2). This trial cannot be requested once five years have passed from the date of registration (Art. 53-3).

Both routes take time and money after the fact. When signing a distribution agreement, providing that trademarks will be filed and registered in the head office's name, and that any rights or applications will be transferred when the agreement ends, makes disputes easier to avoid.

8. Criminal penalties

A person who directly infringes a trademark right, for example by using the registered mark on the designated goods or services, faces imprisonment (kokin-kei) of up to 10 years, a fine of up to JPY 10 million, or both (Art. 78). A person who commits an act deemed to be infringement under Article 37, such as using a similar mark, faces imprisonment of up to 5 years, a fine of up to JPY 5 million, or both (Art. 78-2). Where the infringement is committed in the course of a company's business, the company can also be fined up to JPY 300 million (Art. 82(1)(i)).

What you can do now

- List the product names, service names and logos you use or plan to use.
- Search J-PlatPat for identical or similar registered marks.
- Map the goods and services you will actually offer to the relevant classes.
- For brands used overseas, check whether they have been filed in Japan.
- For marks already registered, note the renewal dates and keep evidence of use (packaging, advertising, transaction documents).

When to consult a lawyer

- You have received a warning letter alleging trademark infringement.
- A third party or your distributor has filed or registered your brand, or a similar mark, in Japan.
- Counterfeits bearing your mark are being sold online or elsewhere.
- Entering the Japanese market requires contracts on brand use or licensing.

Responses to warning letters and procedures against another party's registration can have deadlines, so please get in touch as soon as the issue arises.

Frequently asked questions

Q. How long does it take from filing to registration?
Examination time depends on the application and the JPO's workload. If the examiner issues a notice of reasons for refusal, you will also need time to respond with arguments or amendments. If your launch date in Japan is fixed, file well before it.

Q. If our company name is registered in the commercial register, do we still need a trademark?
Registering a trade name and registering a trademark are separate systems. If you use your company name as the name of a product or service and have not registered it as a trademark, someone else could file first and obtain registration (Art. 8(1)).

Q. Is a trademark registered overseas protected in Japan?
Trademark rights arise country by country, so an overseas registration alone does not give you rights in Japan. You need to file in Japan or designate Japan in an international registration (Art. 68-9(1)).

Q. What can we do if someone has already registered a similar mark?
If their registration has not been used for three years or more, you can request a cancellation trial (Art. 50(1)). Other options include obtaining a licence, negotiating an assignment, or changing your own mark. The right approach depends on the circumstances, so start by checking the details of their registration.

Q. Can a word mark and a logo be covered by a single application?
A trademark application must be filed for each mark (Art. 6(1)). A word mark and a logo combining words with a design are different marks, so each needs its own application. Deciding in what form you will actually use the brand before filing helps keep costs down.

Q. Can a Japanese company file on its own?
A company with a business office in Japan can file without appointing a representative. An overseas company with no domicile or business office in Japan must, as a rule, act through a representative in Japan (Trademark Act, Art. 77(2), applying Patent Act, Art. 8(1)).

Q. Is the registration fee a one-off payment?
Paying the ten-year fee gives a term of ten years from registration (Art. 19(1)). To keep using the mark after that, you must apply for renewal and pay the renewal fee (Arts. 20(2) and 40(2)).

Q.How do you register a trademark in Japan? Official fees, the first-to-file rule and what overseas companies need to know

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