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Trademarks

For our service for trademarks, please click here.

1. From client's request to filing

2. Applications from a foreign country to Japan: After filing, examination and decision of trademark registration

(1) Applications directly filed with the JPO

(2) Madrid Protocol route

3. Others(Trademark)

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1. From client's request to filing

QWhat is necessary information when requesting to file a trademark application?
A
  1. Trademark to proceed to registration
    (In the case of character trademark, information whether or not the character consists of standard characters is also required.)
  2. The designated goods or designated services, and the class of goods and services
  3. Name and address of the applicant for trademark registration
  4. "Name of Country", "Application No." and "Application date" of the basic application if the priority right recognized under the Paris Convention is claimed.

We can make a proposal about the designated goods or services useful for improving the value of the client's trademark registration, based on the goods or services the client desires and on the results of prior trademark registrations' search.

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2. Applications from a foreign country to Japan: After filing, examination and decision of trademark registration

(1) Applications directly filed with the JPO

QWhen should the notification of reasons for refusal or the decision of refusal be responded?
AWith respect to the notification of reasons for refusal in an application from a foreign country to Japan, a written argument/amendment can be submitted within three months from the mailing date of the notification. With respect to the decision of refusal in an application from a foreign country to Japan, an amendment can be submitted together with a request for appeal against decision of refusal within three months from the mailing date of the decision. However, the summary (the scope of the trademark and the designated goods or services specified in the application form) cannot be substantially enlarged or changed by the amendment. We can offer appropriate advice on the trademark which was decided to be refused through examination, referring to the examination results concerning the trademark, even if the procedures to seek registration of the trademark was not entrusted with us. We can offer advice on what argument or procedure against the refusal is possible to the refused application, or what naming or logo (figures or signs) can be used instead of the filed trademark in order to be more likely to be registered when an application for trademark registration is filed again.
QIs there any matter to be noted when the decision of trademark registration is issued?
AUpon issuance of the decision of trademark registration, the registration fee according to the number of classes of the goods or services has to be paid within 30 days from the mailing date of the decision. (If such payment fails, the application for trademark registration is dismissed. Late payment of the registration fee is not acceptable.) Once the registration fee has been paid and the trademark has been registered, the trademark registration is announced in the trademark gazette.

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(2) Madrid Protocol route

QIs there any necessary document when requesting or consulting Nagoya International Patent Firm on how to respond to the notification of provisional refusal which has been served with respect to the International Trademark Registration designating Japan?
APlease send us a copy of the notification of provisional refusal, based on which we explain the content of the notification and presents our comment or proposal on the countermeasures together with estimated costs for responding to the notification. Then we proceed to the procedures for filing an appropriate response to the JPO in accordance with the policy the client has approved.
QIs there any matter to be noted when seeking registration of trademark right?
AUpon service of the decision of trademark registration by the JPO, the notice of the decision is sent to the applicant or the agent entrusted with the procedures to the WIPO, via the WIPO from the JPO, notifying the due date and the account to which the individual fee (the second part) specified in the Madrid Agreement Article 8(7)(a) should be paid. In accordance with the amount of the fee and the account to which the fee should be paid, which are normally stated in the notice, the applicant or the agent entrusted with the procedures to the WIPO shall pay the fee. In the case that the notice of the decision is sent to the agent entrusted with the procedures to the JPO (for example, a Japanese agent including us) from the JPO, the information regarding the due date and the account to which the fee should be paid is not stated in the notice, which is different from that sent to the applicant or the agent entrusted with the procedures to the WIPO. Therefore, in the case that we should serve as your Japanese agent, we can carry out the procedure for paying the individual fee. If you desire us to pay the fee, please let us know the account to which the fee should be paid accurately.

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3. Others(Trademark)

QWhen should a Power of Attorney be submitted?
ASubmission of a Power of Attorney is not required at the time of filing of an application. However, if it is required by the JPO, it has to be submitted. For example, if a Power of Attorney is not submitted when the agent is entrusted with the disadvantageous action (an action to which the Japanese Patent Act Article 9 apply mutatis mutandis, and which is stipulated in the Japanese Patent Act Article 9), the JPO may order to amend the procedure later. In responding to the amendment order, submission of a Power of Attorney is required. If the Power of Attorney is not submitted, the application of trademark registration may be dismissed.
QPlease explain about official fees.
APlease refer to the information described in the following link.

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