TRADEMARK

Our Services

TRADEMARK

Japanese Trademark Law (which includes service marks) is characterized by three main elements:

Registration PrincipleUnder the Registration Principle as opposed to Use Principle, trademarks are protected upon registration. Submission of proof of use prior to registration is not required.

First-To-File RuleContrary to First To Use, the first person to apply for registration will be given the rights to a trademark under this rule, not the one who used it first.

Substantive Examination PrincipleIn a Substantive Examination, both absolute and relative reasons for rejection (prior application, prior registration etc.) are rigorously examined. The advantage of the Substantive Examination Principle is that it renders trademark rights stable, while the disadvantage is that it requires considerable time to obtain registration and the higher cost.

Other characteristicsRegistrable trademarks are restricted to; characters, figures, signs, three-dimensional shapes or any combinations thereof, or any combination thereof with colors. No sound, scent or single color can be registered as a trademark.

There is no burden of proof of use to maintain trademark rights. Trademark holders can renew their trademarks by paying a fee.

Drafting & FilingClients are provided with our best advice on the inherently unregistrable trademarks.
Designated goods/services are an important element that defines the scope of rights because Japan has its own sub-classification system of goods/services. Our effort is focused on successfully registering a trademark at an early stage by identifying the scope of the designated goods/services at the filing of an application.

ProsecutionSome examiners are equivocal in their reason for rejection or invitation for amendment. We practice diligence to grasp what they really mean and advise clients the best course of action.
We provide strategic assistance in dealing with the cited registered trademarks to the maximum advantage of our clients including submitting an argument, negotiating with the rights holder, filing a written opposition, filing for an invalidation trial or a trial for cancellation of a registered trademark not in use and other effective measures.

Applicant can demand an appeal trial against the examiner's decision of rejection. In appeal trials, sometimes the actual condition of the business is taken into consideration. In contrast, examiners can only examine applications under the uniform examination standard.

Post grant proceedingsWe are experienced in post grant proceedings which are available for any trademark within a fixed period after its grant, including opposition, trial for cancellation, trial for invalidation, renewal, reclassification of designated goods to the International Classification of Goods and Services.

SearchingOur highly-qualified staff conduct and provide trademark searches, which have been proven to be invaluable to our clients on a global level.

CounselingWe counsel clients on all aspects of issues and queries, both general and specific. Our strategic trademark counseling involves trademark procurement, portfolio management, trademark licensing and transaction strategies and trademark defense. K & P 's well-informed advice is instrumental in formulating strategic decisions on dispute resolution by negotiation, other alternative forms of resolution and litigation.