SaaS and App Trademarks in Japan: Why Class 42 Alone Leaves Gaps (Classes 9, 35 and More)

"We are a SaaS company — class 42 is enough in Japan, right?"
"We also have a mobile app. Do we need class 9?"
"Our investors asked whether our Japanese trademark is in order."

These are the questions we hear most often from overseas software, app and SaaS companies entering Japan. The short answer: class 42 alone leaves gaps for most SaaS and app businesses. A competitor — or a local reseller — can register the same name in a neighbouring class, and you may only find out when you launch in Japan.

This guide, written by Toru Kano, Japanese Patent Attorney at BrandAgent (Kyoto), explains how the Japan Patent Office (JPO) treats software and online services, and how to choose classes with your product roadmap in mind.

Why software classes are tricky in Japan

In Japan, the class is decided not only by what you offer but by how you deliver it:

• Class 9 — computer programs that users download or install (smartphone apps, desktop software, SDKs). They are treated as goods.
• Class 42 — providing the functions of software over the internet without handing the program to the user (SaaS, ASP, cloud platforms). This is treated as a service.

Most modern products sit on both sides: a browser version plus an iOS/Android app, or a subscription service with a downloadable client. If you file only one class, part of your product is unprotected.

Class 9: your defence line for apps

General computer programs in class 9 carry the JPO similarity group code 11C01, and programs for very different purposes share that code. Even a B2B SaaS company can therefore be blocked in Japan if someone registers the same name in class 9 — and you will need class 9 the day you release a mobile app.

Class 42: the core of SaaS — and the "cross-class similarity" trap

Class 42 "providing computer programs" covers SaaS itself. Under JPO practice, class 9 programs and class 42 "providing computer programs" are linked by a note of cross-class similarity (bikō ruiji).

So "we have class 42, class 9 is covered" is a dangerous assumption. A third party's class 9 application can still be registered, and you would then need an opposition or invalidation action — more time and cost. Filing both classes from the start is the practical solution.

Extra classes depending on what your SaaS does

Japan classifies by the business your software supports, not only by "software". Typical additions:

Example: a recruitment SaaS registered only in classes 9 and 42 may find a competitor registering the same name for "employment agency services" in class 35. Arguing "we only provide software" often does not help.

Similarity codes: the same "software" may not be protected

Within class 9, some program types carry different similarity codes from general programs — for example programs for home video-game machines. If you are a game or entertainment app publisher, a registration for "computer programs" in general may not reach every product you sell. The exact wording of your goods also changes which codes are given, so drafting matters as much as choosing the class.

A priority framework for start-ups

Filing every possible class is rarely realistic: each extra class adds JPY 8,600 in official filing fees and JPY 32,900 (10 years) or JPY 17,200 (5 years) at registration. Prioritise instead:

• Top priority — the delivery form you use today (42 for SaaS, 9 for apps).
• Priority — the class of the business your software performs (35, 36, 41, 44…).
• Medium term — forms you plan to add (an app, a consumer version).
• Case by case — defensive classes where competitors are likely to file.

Investors running due diligence on a Japan expansion usually ask two things: are the classes right, and do they cover the roadmap? A class-42-only registration rarely answers both.

Filing in Japan as an overseas company

• An applicant without an address in Japan must file through a Japanese patent attorney.
• You can file directly in Japan or designate Japan through the Madrid System. If you already filed at home, you can claim Paris Convention priority within 6 months.
• Your name and address can be given in your own language and in English; we prepare the Japanese text.
• Examination takes about 9–12 months; accelerated examination about 2–3 months.

FAQ

Q. We already have class 42 in Japan. Do we also need class 9?
A. If you have, or may launch, a mobile or desktop app, yes. Cross-class similarity is not applied at examination, so a third party could still register in class 9.

Q. We run an HR-tech platform. Which classes besides 9 and 42?
A. Class 35 (employment agency, personnel management) is often relevant. It depends on exactly what your platform does.

Q. Isn't it safest to file every class?
A. It is costly and rarely necessary. Choosing the right classes precisely, with priorities, is more effective.

Q. We might pivot. What should we file now?
A. File the classes for your current product, then add classes as the roadmap firms up — but check early whether the name is free in the classes you are likely to need.

Related articles

• Trademark Classes in Japan: How to Choose from the 45 Nice Classes and Describe Your Goods/Services
• "Intent to Use" Refusals in Japan: Too Many Goods, Class 35 Retail and How to Respond
• Should You Register Your Company Name as a Trademark in Japan? Guide for Foreign Companies
• Trademark Search in Japan: How to Check Prior Marks Before Filing (and What People Miss)