TRADEMARK RIGHTS

1. What are trademark rights?

A trademark is an identification sign used by a business to distinguish its products or services from those of other businesses. Trademarks include letters, figures, symbols, three-dimensional shapes and colors, as well as combinations of these. Sounds can also be marked, etc. For example, both the green logo with siren of a Starbucks store and the product name Frappuccino are trademarks. The logo represents the Starbucks store and the name "Frappuccino" represents a certain product at Starbucks. The brands allow you to know from which business or store they provide the products or services, and also allow you to feel safe in their quality for customers. From a business point of view, the trademark has an advertising effect for consumers.

Trademark rights are the exclusive right to use the trademark. Only businesses that have trademark rights can use the trademark. It is called "Shohyoken" (商標権) in Japanese.

2. Effects of trademark rights

The effect of trademark law is that you can use the trademark exclusively. The effectiveness of trademark rights extends not only to the same brand, but also to similar ones. The duration of the right is 10 years, but the duration can be renewed by application again. If another business uses the same or similar brand, it may claim a lawsuit against its use or claim compensation for damages due to the use of the trademark. Criminal sanctions of fine or prison for the illegal use of a registered trademark can also be given.

The effects of trademark registration extend to the whole of Japan, but not abroad. If you have a product or service that also operates abroad and you need trademark rights abroad, you must also register your trademark in that country.

You can sell the brands to another business when you no longer use them. You can also contract so that other businesses can use the brand while you follow this mark in your possession. It is what is known as a "license agreement (ライセンス契約)". It is an agreement by which, in exchange for allowing the use of a trademark, the fee is paid.

3. How to obtain trademark rights

Trademark rights are not automatically granted for using a trademark. Trademark rights can be claimed by submitting an application to the Patent Office (Tokkyocho特許庁）, fulfilling the procedures and obtaining registration.

Applying for a brand in Tokkyocho takes time and would be expensive. Therefore, the first step is to do what you can do in advance by yourself. You can check beforehand if an identical or similar trademark has already been registered, using the internet. There are websites on the Internet where you can search whether or not there are the same or similar trademark registered for free.

When registering a trademark, you must choose categories from the 45 scope categories of the products or services. The 45 categories are classified, for example, into "musical instruments", "furniture", "food, beverage and accommodation supply", etc. You can choose several categories, but the rate would increase. It is necessary to choose the appropriate categories of products or services for your trademark rights application objects.

The decision to grant trademark rights is not easy, since there are several points of denial and it takes time to examine them, so the result of a trademark registration application can take six months or more.

Trademark registration procedures can also be done by a lawyer. If you have concerns about the request, you can consult with a lawyer. A patent agent "Benrishi" can also do this procedure.

4. How to decide to grant registration of trademark rights.

Of course, trademark rights cannot be acquired if an identical or similar trademark has already been registered by another business. Trademark rights can be obtained in order of arrival of application. However, registration is not only denied when the same or similar trademark has already been registered. If there is another trademark that is not registered, but that is already known by people and is the same or similar brand, the brand cannot be registered either. Nor can a trademark that is indistinguishable from other products or services be registered. For example, if you run a convenience store and name your store only "Conbini" and want to register this name as a trademark, registration will not be accepted. This is because they refer to convenience stores as "conbini" in general.

There are many other detailed regulations on denial of registration. A name that is limited to indicating the place of production (for example, the product name "Tokyo"), one that is too simple with a single letter (e.g. the product name "A"), or one that is confusing and harmful to the public (e.g., "Banana Taro" for the product name of an apple) cannot be registered. However, if the name is already well known to people as the name of the product, it can be registered as a trademark, although the brand is very short, simple, or just the name of the place etc.

How is the brand similarity determined? In general, the decision is based on both the similarity of the brand itself and the similarity of the products or services themselves. For example, if there is a drink called "aabb" as a registered trademark and you request a meal called "aabbb" as a registered trademark, it will not be accepted. This is because both the brand itself and the scope of products are similar. But, it may be that the "aabbb" brand application for a toy product is accepted because it is not the same area, although the brand is very similar.

5. Cases of loss of trademark rights

On rare occasions, when the trademark has become generally recognized by the public as representative of the same type of products or services in general, there would be a risk of losing the trademark rights. For example, "Escaletor" (エスカレーター) (which means escalator) was a registered trademark, but now the trademark rights have been lost.

By the way, did you know that the Japanese word "Takkyubin宅急便" is a registered trademark of Yamato Transporte S.A.? This company registered the term "Takkyubin" as a trademark in 1979. However, many people think that "takkyubin" is a term for delivery services in general. But, the term "Takkyubin" has not yet lost trademark rights to this day. Therefore, other delivery businesses cannot use the name "Takkyubin" for their service.

6. Legal problems on trademark rights

Brands require a certain level of knowledge from the time of application in the first place. After that, there are still legal issues if the trademark is infringed or violated. There are also legal issues such as trademark licensing agreements or selling brand. If you have any questions about trademark rights, you should consult a lawyer or a patent agent.