Should You Register Your Company Name as a Trademark in Japan? Guide for Foreign Companies

"Our company is already registered in China. Do we also need to register our company name as a trademark in Japan?"
"We are about to open a Japanese subsidiary — is the company registration enough?"

These are common questions from overseas businesses entering Japan. This article, written by Toru Kano, Japanese Patent Attorney at BrandAgent (Kyoto), explains why your company name deserves trademark protection in Japan, when to file, and how to do it as a foreign applicant.

Company registration and trademark registration are different systems

Registering a company with the Chinese authorities, or setting up a Japanese subsidiary (KK or GK) with the Japanese Legal Affairs Bureau, only records your trade name as a company. It does not stop another business from using — or registering — the same or a similar name as a trademark for goods or services in Japan.

Japan follows a first-to-file system. Whoever files first at the Japan Patent Office (JPO) generally gets the right, even if you have used the name for years in your home country. A Chinese trademark registration also has no effect in Japan.

Benefits of registering your company name in Japan

• You can stop others from using a confusingly similar name for the same or similar goods/services in Japan.
• Trust with Japanese partners: distributors, retailers and marketplaces often check whether the brand is registered.
• Protection for your investment: if someone else registers your name first, you may have to change your website, packaging, store name and advertising in Japan.
• Marketplace tools: Amazon Brand Registry and similar programs in Japan require a Japanese trademark (or a pending application).
• A transferable asset: a trademark right can be assigned, which helps in group restructuring, M&A or licensing.

When should you file?

If you filed the same mark in China (or another Paris Convention country) within the last 6 months, you can claim Paris priority in Japan.

How to register: word mark or logo?

For a company name, we usually recommend filing the name first in standard characters (a word mark). Logos are often redesigned, while the name tends to stay the same for many years. A word mark protects the name regardless of font or design. If your logo is also important, it can be filed separately.

Think about how the name will be used in Japan. If you plan to use a Japanese katakana version or a Chinese-character version of your name, consider which forms need protection.

The process for foreign applicants

1. Prior search: check for identical or similar marks already filed in Japan.
2. Decide classes and goods/services: cover what you sell now and plan to sell soon.
3. File at the JPO through a Japanese patent attorney: an applicant without a domicile or office in Japan must use a representative in Japan.
4. Examination: normally about 9–12 months; accelerated examination about 2–3 months if the requirements are met. Respond to any Office Action.
5. Pay the registration fee and the right is registered.
6. Renew every 10 years (or pay the second installment if you chose 5 years).

Official fees (JPO)

BrandAgent's attorney fees are JPY 25,000 per class at filing and JPY 25,000 per class at registration (plus Japanese consumption tax where applicable). The prior search is free when you instruct us to file.

Tips for a successful registration

• Distinctiveness: a name that only describes the goods (e.g. "Best Tea Co.") may be refused. Coined or unusual names register more easily.
• Not too broad, not too narrow: listing everything increases cost and can trigger a refusal for lack of intent to use; listing too little leaves gaps.
• Search first, then file: it is much cheaper than dealing with a refusal later.
• Choose the right owner: decide whether the parent company or the Japanese subsidiary should own the mark before filing. Changing the owner later costs extra.

If someone uses a similar name in Japan

The right response depends on how the name is used and on which goods/services are covered, so it is best to sort out the facts with a Japanese patent attorney before taking action.

FAQ

Q. We registered our company in China. Is our name protected in Japan?
A. No. Company registration and trademark rights are separate, and trademarks are territorial. You need a Japanese trademark registration.

Q. Should we file the name or the logo first?
A. In most cases the name in standard characters first. A logo can be filed separately if it is important for your brand.

Q. Who should be the applicant — the parent company or the Japanese subsidiary?
A. Either is possible. Many groups have the parent company own the mark and license it to the subsidiary. Decide before filing to avoid a later change of owner.

Q. Can we file the name in English, Chinese characters and katakana?
A. Yes. Each different form is usually filed as a separate application, so choose the forms you will actually use in Japan.

Related articles

• Registering a Logo Trademark in Japan: Word, Symbol or Combined Mark?
• OEM Manufacturing and Japanese Trademarks: Who Should Own Your Brand in Japan?
• Do You Need a Trademark in Japan? Risks of Not Registering for Overseas Brands
• Trademark Classes in Japan: How to Choose from the 45 Nice Classes and Describe Your Goods/Services