Trademark

What is a trademark?

Trademarks are used by businesses to distinguish their products and services from those of others. For example, company name, product name, service name, these marks, etc.

 

Standard character trademark and logo trademark

Trademarks include standard character trademarks and logo trademarks. A standard character trademark is a trademark consisting only of standard characters specified by the Japan Patent Office. The following are Starbucks standard character trademarks and logo trademarks.

Types of logo trademarks

Logo trademarks include logo character trademarks, symbol trademarks, and combined trademarks. The following are the logo character trademark, symbol trademark, and combined trademark of Honda Motor Co., Ltd.

Benefits of acquiring a trademark right

Benefits of acquiring a trademark right

If you have a trademark right, you can use the trademark exclusively.

That is, no one else can use the trademark.

If the product name or service name of the acquired trademark becomes famous, even if another person tries to use the product name or service name, it cannot be used.

If you have not applied for trademark registration, you may not be able to prevent this use if another person uses the product name or service name you are using.

 

 

 

Although it is possible to protect well-known product labeling (trademarks, etc.) under the Unfair Competition Prevention Law, it must be proved in a proceeding that the product labeling is well-known and misunderstandings have occurred.

 

If you have a trademark right, you will be protected to the same extent as or similar to the registered trademark without such proof.

 

It is important to apply for trademark registration in order to prevent the trademark right from being taken by another person or the product name or service name used by the customer in the future.

 

By renewing the trademark right, you can retain your trademark permanently.

 

 

 

The use of another person's trademark can be prohibited to the extent similar to the trademark (prohibition right)

 

The trademark owner has not only the exclusive right to use the same trademark as the registered trademark, but also the prohibition right to prohibit the use of the trademark of others.

 

The prohibited right extends not only to the same trademark as the registered trademark but also to the trademark similar to the registered trademark.

If another person uses the same or similar trademark as the registered trademark, it is a trademark infringement.

"Similarity" here includes both the similarity of "trademark" and the similarity of "designated goods / designated services".

In other words, (1) use of the same "trademark" as the registered trademark for similar "designated goods / designated services", and (2) use of the same "trademark" as the registered trademark for the same "designated goods / designated services". Both use and use for "designated goods / designated services" similar to "trademarks" similar to registered trademarks are within the scope of the prohibited right.

In this way, once you have acquired a trademark right, you can tell those who are using it not only within the scope of the exclusive right but also within the scope of the prohibited right to stop using the trademark.

This prohibition can prevent the trademark of the trademark owner from being confused with the trademark of another person and from damaging the value such as being diluted.

 

 

You can register your brand on Amazon.com

By registering your brand on Amazon.com, you will be able to use your own text and image product search function and automatic prediction based on data of past allegations of intellectual property rights infringement.

To brand on Amazon.com, you need a valid trademark (pending or registered) of text or graphics.

Here, pending registration means that the application for trademark registration is published on the Japan Platform for Patent Information (J-PiatPat).

It will be published on the Japan Platform for Patent Information (J-PiatPat) approximately one month after the application for trademark registration is filed. The

In order to register a brand on Amazon.com, a trademark registration application is a mandatory requirement, and it will be possible approximately one month after the trademark registration application is filed. The

Keep this in mind as Amazon.com brand registration does not allow registered trademarks with only illustrations that do not contain text. The

If the name of the trademark owner and the name of the applicant for Amazon brand registration are different, the Amazon brand registration will be rejected. The

For example, if the representative director of a corporation is a trademark owner and the applicant for brand registration is a corporation, or vice versa. The

An application for trademark transfer registration is required to match the name of the trademark owner with the name of the applicant for Amazon brand registration.

 

 

Trademark registration requirements

The main requirements for trademark registration are (1) having discriminating power and (2) dissimilarity to the registered trademark of the prior applicant.

① Have discriminating power

The trademark must have distinctiveness in relation to the designated goods and services.

Discrimination is the ability to distinguish between your company's products and services and the products and services of other companies.

Trademarks with only common names and descriptive trademarks are considered to have no discriminating power.

 

A descriptive trademark is a trademark that indicates the place of origin, selling price, quality, raw materials, efficacy, use, quantity, shape, etc. of a product in the usual way (Trademark Law, Article 3, Paragraph 1, Item 3).

 

However, if the descriptive trademark gains distinctiveness as a trademark representing the applicant through the use of the applicant, the descriptive trademark will be registered (Trademark Law, Article 3, Paragraph 2). .

 

 

(2) Dissimilarity to the registered trademark of the prior applicant

A prior registered trademark is a trademark that has been filed and already registered.

Of course, the same trademark as the registered trademark of the prior applicant is not registered, but the trademark similar to the registered trademark of the prior applicant is not registered either.

"Similarity" here includes both (1) similarity of "trademark" and (2) similarity of "designated goods / designated services".

 

Even if there is a registered trademark that is the same as or similar to your "trademark", if the designated goods and designated services are dissimilar, your "trademark" will be registered.

The dissimilarity of designated goods and designated services is, for example, when the designated goods of the customer are stationery and the designated services of the registered trademark of the prior applicant are the transportation business.

 

(1) Similarity of trademarks

In principle, the similarity of a trademark is judged to be similar if any one of the trademark name, appearance, and idea is confusing.

 

Example of similar names

① When both have the same number of sounds and one different sound has a common vowel.

② Whether the consonants of different sounds are common or the consonants are similar

 

• If characters that do not have discriminating power are included in the composition of the trademark, the similarity of the trademark will be judged except for the characters that do not have discriminating power.

 

(2) Similarity of designated goods and designated services

(* Quoted from trademark examination standards)

 

(ⅰ) About the similarity of products

For example, the following criteria are comprehensively considered when determining the similarity of products.

① Whether the production departments match

② Whether the sales departments match

③ Whether the raw materials and quality match

④ Whether the usage matches

⑤ Whether the range of consumers matches

⑥ Whether there is a relationship between the finished product and the parts

 

(ⅱ) About the similarity of services

For example, the following criteria are comprehensively considered when determining the similarity of services.

① Whether the means, purpose or place of provision match

② Whether the items related to the offer match

③ Whether the range of consumers matches

④ Whether the industry is the same

⑤ Whether the laws that regulate the business and businesses related to the service are the same

⑥ Whether it is provided by the same business

 

(ⅲ) Similarity between products and services

For example, the following criteria are comprehensively considered when determining the similarity between goods and services.

(1) It is common for the same company to manufacture and sell products and provide services, and whether he is there or not.

② Whether the purpose of the product and the service match

③ Whether the place where the product is sold and the place where the service is provided match

④ Whether the range of consumers matches

 

Flow from trademark registration application to trademark right acquisition

It usually takes 8-14 months from the time you apply for trademark registration to the start of examination.

At the time of filing, only the products and services listed in the "Similar Goods and Services Examination Standards", "Trademark Law Enforcement Regulations" or "International Classification of Goods and Services (Nice Classification)" are specified, and no amendments are made until the examination is started. In some cases, it will be subject to fast track examination and the first notification of examination results will be given approximately 6 months after the application.

If you request accelerated examination at the same time as applying for trademark registration, examination will start in an average of 1.7 months.
Please see the following items for the accelerated examination.

 

Accelerated examination of trademark registration application

It usually takes 8-14 months from the time you apply for trademark registration to the start of examination.

If you request accelerated examination at the same time as applying for trademark registration, examination will start in an average of 1.7 months.

However, the condition that the trademark has already been used is required for the accelerated examination.

The conditions for accelerated examination are when any of the following conditions (1) to (3) are met.

(1) A case in which the applicant (or licensee) has already used the applied trademark as part of the designated goods / designated services (or has made considerable preparations for use), and there is an urgent need for the acquisition of rights.

* "Urgent" means any of the following.

a) A third party is using (preparing for use) the applied trademark without permission.
b) Received a warning from a third party regarding the use (preparation for use) of the applied trademark.
c) A third party has requested a license for the applied trademark.
d) Regarding the applied trademark, it is pending outside Japan.
e) The application for the request for accelerated examination will be the basic application for the Madpro application.

(2) A case in which the applicant (or licensee) has designated "only" for goods / services (or goods / services that are being prepared for use to a considerable extent) that have already used the applied trademark.

(3) The applicant (or licensee) has already used the applied trademark as part of the designated goods / designated services (or has made considerable preparations for use), and has "similar goods / services examination standards", etc. Items that specify "only" for products and services listed in

 

Benefits of applying for trademark registration at Shin-Nagoya Patent and Trademark Office

① Setting appropriate designated products and designated services

Shin-Nagoya Patent and Trademark Office does not apply for trademark registration mechanically, but sets appropriate designated products and designated services by conducting sufficient hearings from customers.

In addition, we will explain the trademark system in detail.

There is a trademark application service in which the application is completed simply by entering the trademark, designated goods and designated services, but such services may cause omissions in the designated goods and designated services that the customer wants.

In addition, at a patent office with a super-discount rate, the time available for each application is limited due to low profit and high sales, and there may be cases where the designated products and designated services that the customer wants are leaked.

 

 

(2) The basic charge is reasonable, and office costs do not increase significantly even if the number of categories increases.

The basic fee is reasonable, and even if one trademark category is added, the cost of our office at the time of filing will only increase by 10,000 yen (excluding tax).

In addition, the cost of our office at the time of registration will only increase by 5,000 yen (excluding tax) even if the number of categories increases.

Therefore, even if you apply for trademark registration by designating multiple categories, the cost will not be high.

（3）Free consultation

For customers who have filed a trademark registration application at the Shin-Nagoya Patent and Trademark Office, in principle, consultation regarding trademark rights will be free of charge even after the trademark rights have been acquired.

This allows customers to feel free to consult with us if they suspect that they have infringed their trademark rights.

 

 

④ Describe the instruction manual for the designated product (designated service)

If you list a product or service that has never existed before in the designated product or designated service, you may receive a reason for refusal that the designated product or designated service is unclear.

In order to suppress this, when describing unprecedented products and services in designated products and designated services, we will thoroughly listen to the contents of new products and new services from customers, and then designated products (designated services). ) Sufficiently describe the designated products and designated services.

Even if the designated goods or designated services are unclear and the reason for refusal is received, the examiner may give an amendment instruction based on the description of the designated goods (designated services) manual. There is.

In addition, even if there is no amendment instruction, the amendment may be rejected as a gist change amendment by amending the designated goods or designated services based on the description in the instruction manual for the designated goods (designated services). It can be expected to be suppressed.