Business Benefits of Taking a Registered Trademark in Japan

【ArticleNo. 02_0002】

What means has a trademark in Japan?

Thank you for visiting this site and this article.  The following shows the explanation of the functions of trademarks in Japan, the advantages of trademark right, and the disadvantages of not having trademark right.  In the basis of this explanation, we believe you will understand that the registration of trademark right in Japan is a prerequisite for developing your business.  Please consider acquiring a trademark right in order to make your business successful.

Trademark function in Japan

Trademarks are preferably used in Japan to show the following basic functions:

(1) Self-other goods or services identification function

Self-other goods or services identification function that shows the difference between the goods or services (hereinafter also referred to as “goods and the like”) in which the trademark is used, and goods and the like of another person.

(2) Source designator function

Source designator function indicates who owns goods and the like in which the trademark is used.

(3) Quality assurance function

Quality assurance function indicates that goods and the like in which the trademark is used have a consistency quality.

(4) Advertising function

Advertising function arouses consumers to purchase.

In addition, the use of the trademark builds up business credit (trust by consumers), which arouses the purchasing motivation of consumers and has a customer attraction function.  If goods and the like is provided to a consumer without using a trademark, who manufactures and/or provides goods and the like is unknown to consumers, and the trust of the consumer is not generated, so that manufacturer and/or provider of the existence in the market cannot be shown.  Therefore, trademarks are essential to make a business.

What are the benefits of having a trademark right in Japan?

In Japan, trademark right have, for example, the following merits (1) to (6).

The term "exclusive right" means the scope of right to use a registered trademark related to a trademark right for designated goods and/or designated services (hereinafter, also referred to as “designated goods and the like”) related to the trademark right, Article 25 of the Japanese Trademark Law).  In addition, the term "prohibited right" means to use a registered trademark related to a trademark right for goods similar to a designated goods related to the trademark right, or to use a trademark similar to a registered trademark related to a trademark right for designated goods related to trademark right.  Table 1 below shows the relationship between registered trademarks (same, similar, and dissimilar) and designated goods and the like (same, similar, and dissimilar).
[Table 1] Scope of right of trademark owners

(1) Merit 1: Exclusive effect based on the scope of exclusive right

The trademark owner has exclusive effect based on the scope of the exclusive right (Article 25 of the Japanese Trademark Law, etc.).  This exclusive effect of trademark right is particularly strong among intellectual property law, such as patent law, utility model law, and design law. The patent right stipulated in the Patent Law has exclusive effect (Article 68 of the Japanese Patent Law), but that is a principle, there is a possibility of receiving an injunction based on another patent right owned by a third party (Articles 72, 100, etc. of the Japanese Patent Law).  On the other hand, within the scope of the above-mentioned exclusive right of trademark right you have, you will not receive an injunction, etc., based on the trademark right of a third party (Articles 25 and 29 of the Japanese Trademark Law, etc.).  For this reason, the exclusive effect of trademark right (especially their exclusive right) is very strong.

(2) Merit 2: Exclusive effect based on the scope of exclusive and prohibited right

Trademark owners have exclusive effect based on the scope of exclusive and prohibited right (Articles 25 and 37 of the Japanese Trademark Law).  Due to the exclusive effect of this trademark right, you can enforce your registered trademark right to a third party (Article 36 of the Japanese Trademark Law, etc.), and then damage such as "free ride", "dilution", and "pollution" described later can be suppressed.

(3) Merit 3: Branding effect

By acquiring a trademark right and displaying it as the “Registration Mark” on designated goods and the like, an evidence in which the trademark right of other companies are not infringed is provided, and then it can be easy to gain the trust of consumers and conclude alliances with other companies.

(4) Merit 4: Effect of Search Engine Optimization (SEO)

By acquiring the trademark right, you can request the deletion of the META tag which informs the site introduction on a third-party site.  This makes it possible to create an environment in which sites other than yourself do not hit when searching for words included in trademark right.

(5) Merit 5: Requirements for Amazon brand registration service

"Amazon brand registration" is one of the services of Amazon which is a huge EC site.  The service provides a set of tools to help you build up and protect your brand on Amazon, and then can improve your customer experience.  Acquisition of trademark right is listed as one of the requirements to use this service and may enable you to use the "Amazon Brand Registration" service.

(6) Merit 6: Domain name protection

The domain name you are trying to acquire may be a domain name that infringes the trademark right of others.  Therefore, by acquiring the trademark right with respect to the domain name you are trying to acquire, you can use the domain name exclusively.

What are the disadvantages of not having a trademark right in Japan?

If you do not acquire a trademark right in Japan, for example, there is the possibility that you have the following disadvantages (1) to (7).  The disadvantages listed below can be an obstacle or even fatal to our business.  Please consider acquiring a trademark right before starting a business in Japan.

(1) Disadvantages 1: Free Ride

If your company does not acquire a trademark right, it means that a third party is free to use your trademark.  As a result, there is the possibility that a third party extends their market share, and then you will lose the share of your products and/or services that your company could have sold or provided now or in the future.

(2) Disadvantages 2: Dilution

If a third party freely uses your trademark, the trademark can be used by a third party for low-quality products and services, and the connection between the trademark and you can be weakened.

(3) Disadvantages 3: Pollution

If a third party freely uses your trademark for products and/or services that are different from the brand image, or if your trademark is modified and used by them, the brand image on your consumers may be altered or polluted.

(4) Disadvantage 4: Warning and injunction request, etc.

If a third party acquires a trademark right for your trademark, there is a risk of receiving a warning based on the trademark right (Article 13-2 of the Japanese Trademark Law, etc.).  If you do not take measures against the warning, you may be subject to a business injunction request (Article 36 of the same law) or a claim for damages (Article 709 of the Japanese Civil Law).

(5) Disadvantage 5: First-to-file principle

First-to-file principle is adopted in Japanese trademark law.  Therefore, if you plan to acquire a trademark right after making the business take off, there is the possibility that a third party has filed and registered your trademark with JPO, prior to you.  If the trademark right is acquired by a third party first, there is a risk that you will stop or change the use of the trademark, or that you will need to recall your products which your trademark is displayed on.

(6) Disadvantage 6: Difficulty in claiming right of prior use

Even if your trademark is registered first by a third party, if you have used the trademark before the date of trademark application related to the trademark registration,  It is possible to consider claiming a right of prior use to the effect that your trademark has been used (Article 32, Paragraph 1 of the Japanese Trademark Law).  However, there are high hurdles to establishing the right of prior use, and then that is not realistic.  Even if it is possible to claim the right of prior use, there is the possibility that a third-party trademark owner may request you to display to prevent confusion of the source (Article 32, Paragraph 2 of the same law), and then there are risks in terms of time and cost.

(7) Disadvantage 7: Generic name

In Japan, when a trademark right is acquired, the Registration Mark indicating that the trademark is registered can be displayed on your products and/or services together with the trademark.  On the other hand, when a trademark right is not acquired, you cannot display the Registration Mark thereon.  The Registration Mark is not displayed thereon, and in the case where a third party has used your trademark freely, the source and the like of products and/or services may be unclear, and then that can adversely affect the market share and the building of your brand image.

Conclusion

We believe that, when you consider the function of the trademark in Japan, the advantages of the trademark right, and the disadvantages of not having the trademark right, you would understand that the registration of the trademark right in Japan is a prerequisite for conducting business.  When conducting a business in Japan, it is necessary to display a trademark indicating that the source of your products and/or services is from you, and by legally protecting your trademark by trademark registration in Japan, the business can be safely carried out and your brand image can be protected.  Please consider acquiring a trademark right in order to make your business successful.

Brand Shogun

Brand Shogun Services enables you to file your trademark application with Japan Patent Office (JPO) at minimum cost and to register it because omitting a similar trademark search service and personnel costs.  For example, you can file a lot of trademark applications at a reasonable price.  Furthermore, Brand Shogun has Japan patent attorneys who are familiar with Japan Patent Article and Prosecution against JPO.  Therefore, Brand Shogun is the most recommendable service of a trademark application and please consider that.

【ArticleNo. 02_0002】