Japan is a key overseas market for Korean businesses, including those working in food, beauty, content and IT services.
However, using a brand first does not automatically mean that the rights are recognized in Japan. Since Japan adopts a first-to-file system, the person who files first secures the rights in principle.
Even if you are already using a brand in Korea, there may be restrictions on trademark use if a third party files an application in Japan first, so if you are planning to enter Japan, it is advisable to prepare to secure a trademark together.
In this article, we will focus on frequently asked questions in practice, including how to apply for a Japanese trademark, procedures, and precautions during examination.
How can I apply for a Japanese trademark?
There are two main ways to secure a Japanese trademark.
1. Madrid international application
Through the Madrid System, an applicant can designate Japan in an international application based on a qualifying Korean application or registration. This can simplify filing and subsequent management across multiple jurisdictions. During the five-year dependency period, however, loss or restriction of the basic mark can affect the international registration, a risk often described as central attack.
2. Application for individual countries in Japan
This is a method of applying directly to the Japan Patent Office (JPO). If only Japan is considered a major market or product designation needs to be structured in more detail, filing in individual countries is often appropriate. In addition, if reasons for rejection are notified during the examination process, it has the advantage of being able to respond more flexibly in accordance with Japanese practice.
How does the Japanese trademark registration process work?
The general procedure is as follows:
① Application
File an application with the Japan Patent Office by listing the trademark and designated goods or designated services.
② Formalities and substantive examination
The examiner will consider the following:
- Is the trademark distinctive?
- Is the mark more than merely descriptive?
- Does it conflict with an existing registered trademark?
- Does it not violate public order?
The review usually takes about 6 to 8 months.
③ Notification of reasons for rejection
If registration is deemed difficult, an opinion submission notice will be sent.
Applicants may be given the opportunity to resolve the reasons for rejection by submitting a written opinion or amendment.
④ Registration decision
If there are no reasons for refusal or are properly resolved, a decision to register will be made.
⑤ Payment of registration fee and registration
Once the registration fee is paid, trademark rights are granted, and the trademark is then published in the registration gazette.
Generally, it takes about 10 to 14 months from application to registration, but this may vary depending on the difficulty of the case or whether reasons for rejection occur.
Materials required when applying for a Japanese trademark
Typically, we prepare the following materials:
- Applicant's name and address
- Trademark design or word trademark
- List of designated goods and services
- Priority claim documentation (if required)
- Power of attorney (when proceeding through an agent, etc.)
Depending on the application method (Madrid or individual country), some of the documents you need to prepare may vary.
Features you must check in Japanese trademark examination
1. Post-registration opposition system
Japan operates somewhat differently from Korea.
Japan operates a post-registration opposition system that allows third parties to object to registration within a certain period of time after a trademark is registered. The opposition period is 2 months from the date of registration announcement.
In other words, it is important to note that even if a registration decision is made, all procedures are not completely completed.
2. Japanese pronunciation is also reviewed.
In Japan, even when applying for an English or Korean brand, the actual pronunciation in Japan is often taken into consideration as well.
For example, if an English brand is recognized as similar to the katakana or hiragana notation of an existing registered trademark when read in Japanese, it is likely to be rejected.
Therefore, when preparing a Japanese application,
- English notation
- Japanese pronunciation
- Katakana notation
These elements should be reviewed together.
3. Class 35 retail designation is also important.
In Japan, like Korea, Class 35 allows the designation of specific retail services for products handled.
For example, it can be specified as ‘Cosmetics Retail’ or ‘Clothing Retail’.
However, since the expression method must meet Japanese screening standards, it is recommended that the product name be reviewed by an expert.
What is the protection period for Japanese trademarks?
The duration of Japanese trademark rights is 10 years from the date of registration.
If you renew your registration before expiration, you can continue to extend it in 10-year increments, so you can actually maintain your rights for a long period of time.
Typical reasons why trademark registration is rejected in Japan
The Japan Patent Office may refuse registration based on a variety of reasons. Representative examples include:
① In case of lack of distinctiveness
- Common name of the product
- An expression that only describes quality or properties
- A common name or simple emblem
- Expressions that make it difficult to distinguish whose product it is
② In case of conflict with existing trademarks
Registration may be difficult if the trademark is identical or similar to an already registered trademark.
In particular, you must be careful as Japanese pronunciation may also be considered in some cases.
③ When it is against public interest or social order
Marks that are likely to be confused with national flags, emblems of public institutions, names of international organizations, etc. are not subject to registration.
How do I respond when I receive reasons for rejection?
Even if you are notified of the reason for rejection, it does not necessarily mean that registration is impossible.
Depending on the case, the possibility of registration may be reexamined through procedures such as submission of opinion, filing an amendment, and appeal against decision of rejection.
In addition, if it is confirmed that the prior trademark is not actually used, a trial for cancellation of non-use may be considered, and if there is a significant defect in the registration itself, a trial for invalidation of registration may be a response.
Which strategy is appropriate depends on the reason for rejection and the status of the prior trademark, so individual review is required.
Japan is a market where brand value and consumer trust are very important.
It is important to promote your brand first, but it is even more important to secure the rights to use that brand stably.
In particular, Japan strictly applies the first-to-file principle and has practical standards that are different from ours, such as pronunciation similarity and product designation method, so it is necessary to take a strategic approach from the application stage.
If you are preparing to enter the Japanese market or are considering protecting your overseas brand, please establish a trademark strategy in advance along with your business plan.
This article reflects the information available when it was published. Contact us to discuss your circumstances.