WHAT WE DO
Nagoya International IP Firm has a division dedicated to trademark and design. This division has attorneys and practitioners specializing in trademark and design, each having abundant experience and solid achievements.
Our specialist trademark team provides the following services.
- Trademark-related Search
- Prior trademark search, Use state search (in partnership with external institution), Monitoring service, etc.
- Support for Acquisition of Trademark Rights
- Filing of trademark application, Submission of priority document, Comment or second opinion on office action, Response to office action (including extension of term), Appeal against decision of refusal, Suit against appeal decision, etc.
- Dispute-related matters
- Third party observations, Opposition, Trial for invalidation, Trial for cancellation, Suit against trial decision, Infringement lawsuit, Warning, Negotiations, Conclusion of contract, Expert opinion, Suspension of import at customs, etc.
- Drafting of trademark-related various contracts, Support for strategy planning for trademark-related matters, Educational service on trademark practice in Japan, etc.
OUR SKILL AND STRENGTH
We have an extensive record of success in trademark-related matters in Japan, such as filing applications, responding to office actions, and acting as a representative in appeal proceedings. We have also achieved a satisfactory level of performance in resolving trademark-related conflicts in Japan through negotiations and/or litigations, and in supporting conclusion of the resulting agreements.
We have been doing similar things outside Japan, and also have a wealth of experience of, for example, requesting foreign IP law firms (local agents) to file trademark applications in other countries, on behalf of our clients.
Consequently, even in simply handling, for example, filing of a trademark application in Japan, we can make proposals on the contents of the application bearing in mind potential exercise of rights after registration. Moreover, we can provide a one-stop service including negotiations for exercise of rights or licensing after registration, and drafting of a written agreement.
Track Record as Representative for Clients
The following are some of our actual achievements regarding trademarks registered in Japan, for which we acted as a representative.
We can conduct a wide range of searches and analyses. In addition to conducting a prior mark search prior to filing a trademark application, if any prior registered mark is found as a result of the search, we conduct a detailed search on whether the found prior registered mark is actually in use in the market, with the assistance of a reliable external institution in some cases. Moreover, even if the fact of actual use is found, we analyze whether such actual use would legally fall within the use of the registered mark.
Furthermore, based on such searches and analyses, we always try to present proposals for modification to the form of the trademark, and/or to propose specific measures, such as a Trial for Cancellation of a Registered Trademark and negotiations for assignment, as much as possible.
In the case where the pre-filing trademark search indicates a high probability that the distinctiveness of the trademark would be denied, we also consider and present specific proposals for modification to the form of the trademark; additionally, we propose a method for eventually acquiring rights as well, taking into account an actual use state and/or a planned use of the trademark.
Since the matters to be considered and the proposals to be made differ depending on each case, please feel free to consult us.
Filing of Trademark Applications
Classes to which goods/services belong may differ from country to country. Thus, in Japan, the goods/services to be protected may belong to classes different from those in the client’s country.
In addition, for example, there are cases in which a single goods should be designated as multiple goods depending on the interpretation thereof. Thus, in the case of filing a trademark application only with goods designated in the client’s country, full protection of rights may not be obtained.
To avoid this, we always try to “correctly” specify, without any omission, goods/services that “should be designated” in conformity with the client’s business. Thus, in filing an application, our expert staff having specialized knowledge and experience about the trademark practice in Japan carefully confirms in advance the client’s business and the goods/services for which the trademark in the application is planned to be used.
In addition, since it takes a relatively long time for examination in Japan, applicants may wish to obtain the result of the examination earlier. In such a case, we consider the applicability of accelerated examination taking into account the planned time of using the trademark in Japan, and propose requesting accelerated examination, where appropriate.
Response during Prosecution Process (including Appeal)
In Japan, if information on goods/services planned to be actually used/provided is submitted as reference materials to the Examiner prior to filing a response, the Examiner often suggests how specification of goods/services should be amended.
Thus, if the raised rejection relates to specification of goods/services, we always try to confirm with the client the details of the goods/services to be actually used/provided in Japan, and to collect materials for specifically explaining such details of the goods/services. Then, we present such information and the supporting materials to the Examiner with an elaborate explanation, with the aim of successfully obtaining the Examiner’s suggestion of appropriate specification of goods/services. In this way, we always try to overcome the rejection at as few times as possible, which would enable minimization of the number of rejections raised and cost reduction.
On the other hand, if the raised rejection is based on the existence of a prior similar mark, argument for dissimilarity could affect interpretation of the scope of rights after registration and, if argument for dissimilarity is excessively made, the scope of rights could be limited to be narrower than expected. In consideration of such risk, we always try to suggest making the minimum argument sufficient to overcome the rejection to make it possible to eventually secure as broad a scope of rights as possible.
In addition to considering the chance of success in overcoming the rejection by argument for dissimilarity, we also consider a wide-ranging measures to be taken to overcome the rejection, such as a Trial for Cancellation of a Registered Trademark, based also on the confirmation of whether the prior similar mark is actually in use, and present appropriate proposals to the client.
Acquisition of Trademark Rights
- In response to the rejection based on the existence of a prior similar mark, we made arguments for dissimilarity, as well as filed a Trial for Cancellation of a Registered Trademark Not in Use based on the result of a simple trademark search through the Internet. We eventually succeeded in overcoming the rejection, and the applicant was granted a registration.
- In responding to rejection regarding specification of goods/services, in Japan, if information on goods/services planned to be actually used/provided is submitted as reference materials to the Examiner prior to filing a response, the Examiner often suggests how specification of goods/services should be amended. Based on such experience, we confirmed with the client the details of the goods/services to be actually used/provided in Japan, and collected materials for specifically explaining such details of the goods/services. We presented such information and the supporting materials to the Examiner with an elaborate explanation, to thereby successfully obtain the Examiner’s suggestion of appropriate specification of goods/services. This enabled the client to be granted a registration while minimizing the number of rejections raised and costs.
- Prior to requesting renewal of a trademark, we confirmed a use state of the trademark in the market in Japan to find that some of the goods/services had not been covered. Thus, we proposed filing an additional application with such goods/services added, and assisted the client in acquiring appropriate and just enough trademark rights corresponding to the actual use.
In another example, as a result of confirming a use state of a trademark, we found that the form of the trademark used then had been changed from that at the time of registration. Thus, we proposed filing an additional application with the form of the trademark used then, in consideration of the use state of the trademark whose form had been changed, and assisted the client in acquiring appropriate and just enough trademark rights corresponding to the actual use.
- A trademark confusingly similar to a famous trademark of a U.S. company was registered in Japan. Opposition to registration was filed with the JPO through another Japanese IP law firm, but the opposition was dismissed. The client entrusted us with this case under such circumstances, and we successfully won a trial decision to invalidate the confusingly similar trademark through a Trial for Invalidation. Moreover, as a result of subsequent negotiations, we successfully had the owner of the invalidated trademark suspend use of the trademark.
- A Japanese company was selling a product bearing a trademark confusingly similar to a globally known trademark. We had negotiations with the Japanese company (i.e., with a Japanese attorney at law acting as its representative), and successfully had the Japanese company suspend sales of the product at issue and pay damages.
For Our Valued Clients
Lucid Explanations from Global Point of View
Since we are familiar with laws and systems in other countries, as well as those in Japan, we always try to give explanations based on the differences between them when providing various services to our clients.
Many of our staff members, including those who belong to the design and trademark division, have experience in studying abroad and/or getting on-the-job training at overseas offices. Thus, we can fluently communicate verbally via phone or Web meeting, let alone in writing via emails or letters, based not only on linguistic skills but also on the deep understanding of cultures of other countries. This results in receiving many words of appreciation from our clients who used our services.
We are flexible to meet your needs as much as possible. If you wish to consult us about any trademark-related matter, please feel free to contact us.