How to register a trademark in Japan without using an agency (as a foreign company)

By | 2018/05/05

 

Digitizing fee for paper document

In the procedure of trademark application in Japan, specific documents are need to be digitized and saved in the database according to the rules.

The fee of digitizing is calculated based on the number of documents and the number of pages.

One document costs 12oo Yen and 1 page costs 700 Yen.

 

 

If you submit one modification document that is 1 page, the fee for digitizing is 1900 Yen. The bill will be sent to the representative later.

Therefore, how you can submit fewer modification documents and submit fewer pages will save you more money.

 

 

The specific documents need to be digitized are listed up here. (Japanese only)

https://www.jpo.go.jp/uketuke/denshika.htm

 

 

Notification of rejection and correspondent reaction

After the modification process for the application document is done (more than half year has passed), notification of rejection was sent to my representative in about a month.

 

 

I thought there were some similar trademarks existing and my application was rejected due to the similar trademarks, but fortunately it wasn’t.

There are 2 points described in the notification and if I don’t do any correspondent reactions in 3 month, my application will be fully rejected.

 

 

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The first point is about the designated range of my trademark application.

 

I planned to apply for a trademark that covers detail service, so I designated the range of my trademark as “General retail”.

However, in Japan Patent Office’s opinion, “General retail” means department store or shopping mall, and as a small online shop, I can not designate “General retail” for my trademark.

 

 

For the second point, it’s also about that the range I designated was too board, so I designated several specific products as my correspondent reaction.

Practically, what I did is to modify my application by submitting a modification document to delete what I designated in the application and add the specific products I want to designate, including about 10s kinds of products.

 

※”General retail” was deleted and specific products were designated.

 

After I submitted the modification document and about 1 month passed, here came again a document of notification.

It was saying that the first point was done but the second wasn’t done.

What!? I thought both points are similar and I have done correspondent reactions to both already?

 

 

So I checked both previous notification of rejection and the latest notification again and I also googled the contents of the notification on the internet. Then I realized that the second point was about the “amount” of products I designated.

If it’s fewer than 9 products, then it’s fine. If it’s 9 or more than 9 products then you have to submit extra document, including  (1) List of document submission (物件提出書), (2) Willing to use the trademark (商標を使用する意志書類), (3) Business plan (事業予定書) and (4) Catalog or advertisement paper.

 

According the the information on the internet, this process is to make people can’t easily take trademarks that covers a huge range, so that other people can also have chances to use similar trademarks for other products.

I see……now understood.

 

Since I don’t want to delete the product I designated to be fewer than 9, I decided to prepare all necessary documents.

 

(1) List of document submission (物件提出書), (2) Willing to use the trademark (商標を使用する意志書類), (3) Business plan (事業予定書) are all produced easily by taking the templates on the website of Japan Patent Office as reference and the List of document submission was also confirmed by the format examination staff in Japan Patent Office in advance. (2) and (3) don’t need format examination.

For (4) Catalog or advertisement paper, I simply printed the product line-up on my website as catalog.

Then I printed and submitted all 4 documents together.

 

 

※List of document submission

 

 

Registration approval

After a month after I submitted the 4 documents, finally registration approval came!!

 

Finally, my trademark “Kiitos Shop” will be registered in Japan!

 

I produced payment document for trademark registration (商標登録料納付書), did format confirmation in advance, bought 28200 Yen Tokkyo Inshi (特許印紙) and pasted them on the document as 10-year registration fee and submitted the document.

 

※Payment document for trademark registration (商標登録納付書). The payer written on the document is my representative.

 

Then if this part goes well, the certificate of trademark registration will be sent to my representative.

The whole trademark registration application procedure will be completed then.

 

 

The fee for shortest route in trademark registration application is as following:

  • Application fee:12000 Yen(1 classification)
  • Digitizing fee: 1900 Yen(1 page)
  • Registration fee:28200 Yen(valid for 10 years)

Total 42100 Yen

(Because I submitted 3 modification documents, I spent some extra 500 Yen. Even though, it’s still cheaper than asking an agency to do it for me)

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