Trademarks are a great way to boost your business!
Fashion industry professionals should aim to acquire strategic trademarks

"When I tried to register a trademark for my brand because it was starting to get on track, I was told that someone with the same name had already registered and that I had to change the brand name!"

"I received a warning letter from a brand with a similar name claiming to be infringing on their trademark. I've never heard of it before, so do I have to respond?"

Trademark disputes are one of the most common inquiries we receive from people in the fashion industry.
Since you can start a business without trademark registration, it is often put off.Delaying trademark registration may result in a decline in brand value and the need to change important brand names and logos..

How can you avoid getting into trouble like this and use the power of trademarks to accelerate the growth of your business?

In this article, Attorney Yasuhiro Nakauchi, who has experience being seconded to the Trademark System Planning Office of the Trademark Division of the Japan Patent Office, will provide an easy-to-understand explanation of the basics of trademarks and the importance of strategic trademark registration for those involved in the fashion industry.

Trademark applications are first come, first served! Risks and disadvantages of delayed registration

There is no set deadline for when a trademark must be registered.
When you first start a business, you're busy and you need money, so you might be tempted to think, "I can register a trademark once my business is on track." However, the best time to register a trademark is actually before or immediately after you start your business.
This is because there is a possibility that someone else may register your trademark first.

Trademark registration is based on the "first to file" principle, which means that the person who first files the trademark registration procedure with the Japan Patent Office will be allowed to register the same or similar trademarks.
It doesn't matter whether you started using the trademark first (except for the exception of prior use rights). If you receive a warning of trademark infringement or a claim for damages from someone who has already registered the trademark, you may not only have to change the brand name or service name that you have nurtured with love, but you may also have to pay a large amount of compensation.

It is also important to accept that trademark registration is a necessary expense in order to expand your brand or service.

The cost depends on the number of categories of application, but if you do it yourself, it will generally cost around 3 to 8 yen.
However, since this is a procedure that requires a fair amount of time and effort, it may be a good idea to ask a professional such as a lawyer or patent attorney to handle it for you. In some cases, our firm can handle the process for a total cost of around 10 to 20 yen.

How to check for registered trademarks

When considering a brand name or logo, check to see if the same name or a similar trademark has already been registered.Patent information platformBe sure to conduct thorough preliminary research using sites such as J-PlatPat.

Using a registered trademark without permission may constitute trademark infringement, even if you are unaware of it.
Also, if someone else has already registered a trademark with the same name or a similar name, your application to the Patent Office will not be registered.

It is extremely difficult to determine whether something is similar or not, so we recommend that you ask a specialist such as a patent attorney or lawyer to conduct at least a preliminary investigation.

Trademark registration pitfalls to watch out for

There are a few things to keep in mind when registering a trademark.

Some trademarks cannot be registered

Even if you think a name is catchy, if it is too simple or generic, it cannot be registered as a trademark.
The Japan Patent Office's website contains specific examples of trademarks that cannot be registered, so we recommend that you read it when deciding on a brand name or logo.

Japan Patent Office: "Trademarks that are not registered even if applied for"

The scope of rights is divided into fine details

When filing a trademark application, you will need to specifically specify the trademark you want to register and the category to which your goods and/or services belong, and submit the applications together.
Trademarks are classified into classes 1 to 45, and trademark rights only arise within the scope of the registered class. 
Registering in a broader category will allow you to protect your rights more comprehensively, but the acquisition costs will also be higher.

In the fashion industry, it is common to designate 25 basic classes for clothing and footwear, 18 classes for bags, 14 classes for jewelry, XNUMX classes for glasses and sunglasses, and XNUMX classes for perfumes.

As the classification can be complicated, it may be a good idea to have a professional such as a patent attorney or lawyer check whether it properly covers your entire business.

Trademark rights can be revoked

The term of a trademark right is set at 10 years from the time of registration, and the trademark right will expire after this period has elapsed. However, you can keep the right alive by paying the renewal registration fee to the Japan Patent Office within the period, so if you want to keep your trademark right for a long time, don't forget to renew it.

In addition, for classifications that have been registered as trademarks but have never been used, the procedure for cancellation of non-use may be taken.
A trial for cancellation of non-use is a system in which, even if a trademark right is granted, if the trademark is not used, the registration is cancelled. It is not cancelled automatically; the procedure is carried out only after a request is made by someone who wants to use the trademark.

Anyone can file a trial for cancellation of non-use if three years have passed since the date of trademark registration. If a trial for cancellation of non-use is filed, the Japan Patent Office will revoke the trademark right if the registered trademark has not been used "continuously for three years or more" and "within Japan."

Trademark registration is required in each country

Since trademark systems are different for each country, trademark rights acquired in Japan cannot be protected overseas. It is necessary to acquire trademark rights for each country in which you want to develop your brand.

We receive many enquiries from clients who have registered a trademark in Japan but are unable to register the word in the country they are expanding into, or who have already been trademarked with the same name.
When expanding overseas, contracts concluded with local select shops or collaboration partners often include a clause confirming whether the trademark has been registered in that country. However, there have been cases where the trademark had not been registered overseas, and upon investigation it was discovered that a similar trademark already existed, meaning registration and sales were not possible, and the contract itself was scrapped.

If you are considering expanding overseas, we recommend that you take these factors into consideration and choose a brand name that can be used globally.

Trademark Strategy from Mimura and Komatsu Law Firm

Depending on how you use it, trademarks can be a great boost to your business.

In addition to myself, who was seconded to the Trademark Division of the Japan Patent Office and was involved in the revision of the Trademark Act, our firm has several other lawyers who specialize in fashion, and we also focus on obtaining trademarks from a branding perspective, and we begin brainstorming with clients as early as possible.

We make suggestions to each client based on their circumstances regarding the type of trademark to apply for, the timing of application, and the scope of the aforementioned categories.

In particular, for those who are even slightly considering expanding overseas, it would take a great deal of time and effort to research the regulations of each country and carry out the trademark application procedures on your own, so we encourage you to contact us, as we have ample experience in overseas trademark registrations.
In particular, in China, the trademark business is rampant, with malicious third parties registering new trademarks one after another and negotiating with them, saying things like, "If you want to use this trademark, please buy it from us for millions of yen." Therefore, if you are considering filing an application, you need to be especially careful.

The cost of filing an application in Japan at our firm depends on the number of classes, but the total cost can be as low as 10 to 20 yen.
Depending on the country, filing an application overseas can sometimes cover what is needed for a fashion brand for around 15 to 30 yen more than the cost in Japan.
If only preliminary research is required, it may be possible to handle the matter for just a few tens of thousands of yen.

If you have any concerns about trademark registration, please feel free to contact Mimura Komatsu Law Office.