A trademarked brand or service can be a competitive advantage for your business. There are many companies that would like to register trademarks for the services they offer.
This article provides a comprehensive overview of trademark registration, the costs involved, how to proceed with registration smoothly, and the benefits it brings to
marketing
. Please refer to it if you are considering trademark registration.
What is trademark registration?
First, let’s start with an overview of trademark registration. Trademark registration is the process of registering a name, logo, etc. related to a service or a company’s business with the Patent Office.
Although there are many cases in which trademarks are registered primarily for items related to the business that the company is developing, there are also cases in which the company name itself is registered.
For example, here are some famous service and company names that are trademarked.
- Washlet: TOTO Co., Ltd.
- Yamato Holdings Co., Ltd.
Washlet, which is used in everyday language, is a trademark of TOTO Corporation. Additionally, LIXIL Corporation has registered a trademark for shower toilets, which shows that each product is clearly differentiated.
As in the example above, trademark registration serves as a guide for determining (distinguishing) services and products. In addition, by acquiring trademark rights, you can eliminate service names and brand names that compete with your company, and eliminate competitive forces.
In the unlikely event that a third party infringes the trademark rights of a trademarked service or brand, you will be able to request an injunction or claim compensation for damages.
Fees and expenses for trademark registration
How much does it actually cost to register? From here, we will explain the two types of costs involved in trademark registration.
- Fees paid to the patent office
- Fees paid to a patent attorney
Let’s look at each in turn.
Fees paid to the patent office
First, the cost of paying the patent office is the stamp fee. Stamp fees are always required even if you do not hire a patent attorney, and the fees vary depending on the number of classifications. The number of classifications is a classification of the field in which registration is to be made, and there are classifications from Category 1 to Category 45. Also, please be aware that there are two types of fees: one to pay at the time of application and one to pay at the time of registration.
A minimum application fee of 12,000 yen is required when applying for one category, and an additional 1,900 yen digitization fee will be charged. Please note that postage fees may apply in some cases.
In addition to this application fee, there will also be a registration fee to be paid after the trademark registration has been approved. There are two options for this fee: you can pay it all at once for 10 years, or you can pay it in installments for 5 years.
If you pay in a lump sum, it costs 28,200 yen per division, and if you pay in installments, it costs 16,200 yen per division, and the more the number of divisions, the higher the fee will be.
In summary, if you apply for only one category, including the above application fee and registration fee, you should understand that the total cost to be paid to the Japan Patent Office is 28,400 yen to 40,200 yen.
If you want to apply for a large number of categories and want to know the fees in advance, it may be a good idea to use
the procedure fee calculation system
published by the Japan Patent Office.
Fees paid to a patent attorney
Although it is possible to register a trademark on your own, most people entrust the process to a patent attorney with specialized knowledge.
If you hire a patent attorney yourself, you will be required to pay a fee for the patent attorney in addition to the fees you pay to the patent office mentioned above. The cost varies depending on the client’s patent attorney and can vary widely, from tens of thousands of yen to hundreds of thousands of yen.
Generally, the application fee is around 50,000 yen to 80,000 yen, and the registration request fee is around 40,000 yen to 60,000 yen. Therefore, it is best to keep in mind that the minimum cost for hiring a patent attorney will be around 90,000 yen.
Additionally, depending on the patent attorney you hire, there may be expense items such as success fees, administrative fees, and research fees.
If you want to keep your request costs as low as possible, we recommend that you request a patent attorney who can provide you with a fee close to the market price, such as by requesting competitive estimates from multiple patent attorneys.
How to smoothly proceed with trademark registration
So far, we have provided an overview of trademark registration and the costs associated with registration. From here, we will explain how to proceed smoothly with trademark registration. The procedure consists of the following four steps.
- Trademark search
- application
- Trademark examination
- Registration
Each item is essential for successful registration. Assuming you are hiring a patent attorney, let’s look at each one in turn.
Trademark search
The most important step in trademark registration is trademark search. There are two main reasons for conducting a trademark search:
- There is a possibility that you will fail the examination.
- You may be sued by other companies
When applying for a trademark, the Japan Patent Office examines whether the trademark can be registered. There are several criteria set for this examination, and if you fail even one of them, your application will be rejected. In that case, you may have to start the trademark application all over again, which could waste your time and money.
Next, if you apply for a trademark that is already registered, you may be sued by the company that owns the trademark. Companies that are highly concerned about reputational risks may routinely check their trademark registration.
If you are sued, not only will you not be able to register your trademark, but your company’s credibility will suffer, so it is important to conduct your trademark research carefully.
Contents of trademark search
In a trademark search, we mainly investigate the following three items.
- Trademark scope
- Is there a service with a similar name?
- Is the trademark already registered?
When registering a trademark, it is very important to determine the extent to which your company will obtain trademark rights. Specifically, if a company’s service name is in katakana, similar services in hiragana or English are not included in the rights. Furthermore, the scope of trademarks is something that is specifically checked by the Patent Office, so it is a little difficult for someone without knowledge to deal with it.
Furthermore, if there is already a registered trademark, there is no point in filing an application in the first place. To prevent these situations, it is a good idea to ask a reliable patent attorney to conduct a thorough trademark investigation in advance.
application
We will conduct a trademark search, and if we determine that there are no problems, we will file an application with the Japan Patent Office. When filing an application, submit documents according to the format specified by the Japan Patent Office. Please note that the stamp fee mentioned above is required at this time.
If you hire a patent attorney, there is a good chance that they will be able to prepare all of the documents you need when filing the application, so if you have any concerns about how the documents should be filled out, it is a good idea to hire a patent attorney.
Trademark examination
Once you submit the documents, the next step is to conduct a trademark examination at the Japan Patent Office. A trademark examiner will conduct an examination and mainly check whether there are any deficiencies in the following two points.
- Scope of trademark rights
- Contents of the document
As for the content of the documents, you can generally assume that if you request a patent attorney with a proven track record, your request will be accepted. Regarding trademark rights, it is checked whether similar services or brand names exist, and whether there are any problems with the service itself for which the trademark is being registered. Although it is difficult to say with certainty, if you carefully conduct a preliminary investigation, the chances of your application being accepted will increase.
Trademark examiners conduct a huge amount of trademark examinations every day. Therefore, please keep in mind that it will take at least 6 months.
Registration
If you pass the examination, you will finally be able to register your trademark. The Japan Patent Office will send you a “registration decision,” which will be treated as a certificate of passing, and will serve as a substitute for a registration notice. Once you receive the registration decision, you must pay the registration fee to the Japan Patent Office within 30 days to complete the registration.
Please note that you may receive a “Notice of Reasons for Refusal” from the Patent Office. This means that the trademark cannot be registered as it already exists, but it has not been rejected at this time. If you receive a notice of reasons for refusal, you can either “refute it with a written opinion” or “change the content with a written amendment.”
However, regarding the written amendment, it is not possible to change the “applied trademark name and scope of rights,” so if you wish to change it, you will need to start over from the application.
Additionally, if you are still unable to register after using the two methods above, you can refute your claim by going to trial or going to court. There is a strong possibility that this will take even longer, so it is best to consult with a lawyer or patent attorney before proceeding.
Period until trademark registration is completed
It takes an average of 6 to 12 months, and a maximum of 14 months, to complete trademark registration, but this can be shortened by applying the accelerated examination system. If you apply the accelerated examination system, the usual examination period of 8 months will be reduced to 2 months.
However, in order to apply the accelerated examination system, certain requirements must be met. Additionally, as you will be required to submit a “statement of circumstances related to accelerated examination,” patent attorney fees may also increase.
The necessity of trademark registration in marketing
So far, we have explained how to register a trademark. Finally, in marketing, there are three needs for trademark registration:
- Differentiate yourself from competitors
- Your company’s authority is guaranteed
- Increase sales through reliability
One aspect of trademark registration is that it allows you to exclude similar services and brands. Therefore, if you want to protect a service or brand that has been operating for many years, registering a trademark will increase the possibility that you can continue to protect it.
Additionally, if there are companies offering similar services in the same industry, users will want to request a more reliable service. Even in such cases, you can expect your company’s sales to improve because it is easy for people to think that you can trust your trademark because it is registered as a trademark.
summary
In this article, we have introduced an overview of trademark registration, the costs involved, and ways to proceed with registration smoothly. By registering a trademark, you can protect your brand and products, and have the advantage of being able to differentiate yourself from competitors in marketing.
Therefore, if you are currently considering trademark registration, it would be a good idea to actively consider it in order to increase your company’s authority. Why not start by looking for a patent attorney who can help you register your trademark?