Can a Foreign Company File a Japanese Trademark Itself? Japan's Representative Rule Explained

"We registered our trademark ourselves in the US and the EU. Can we just file in Japan online too?" "We already have a Japanese subsidiary — does the application have to be in its name?" "I am a foreigner living in Tokyo. Do I need an attorney?"

We hear these questions every week from overseas brand owners, cross-border sellers and foreign entrepreneurs. Many offices around the world let applicants file on their own. Japan is different: whether you can file yourself depends not on your nationality, but on whether you have an address — or, for a company, a business office — in Japan.

In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains who can file a Japanese trademark without a representative, what happens if an overseas applicant tries anyway, and how to decide whether the parent company or the Japanese subsidiary should own the mark.

The short answer: it depends on where you are based, not your nationality

Japanese law calls a person who has no domicile or residence in Japan — or, for a corporation, no business office in Japan — an "overseas resident" (zaigaisha). The Patent Act (Article 8), which also applies to trademarks, says that an overseas resident must carry out procedures before the Japan Patent Office (JPO) through a representative who has a domicile or residence in Japan. In practice, this representative is a Japanese patent attorney (Benrishi).

The JPO's guidance on filing procedures is explicit. An overseas resident may now file a patent application directly, but this relaxation does not extend to trademarks: for trademark applications (and also design and utility model applications), an overseas resident cannot file without a representative in Japan. All later procedures — responding to a refusal, amendments, paying registration fees and so on — must also go through the representative.

Note that nationality is irrelevant. A Japanese citizen living in Singapore is an overseas resident; a Chinese or American national living in Osaka is not.

What happens if an overseas company files directly?

According to the JPO's formality examination manual, an application filed by an overseas resident without a representative in Japan is treated as an unlawful procedure that cannot be corrected. The JPO notifies the applicant of the reasons, gives an opportunity to submit an explanation, and then dismisses the application. A dismissed application does not secure a filing date.

This is a real risk in a first-to-file country like Japan. If your own filing is dismissed and someone else files the same brand in the meantime, the other party's application comes first. The time you "saved" by filing yourself can cost you the brand.

You may also wonder whether a business trip to Japan helps. The manual's exception for overseas residents staying in Japan applies only to a person who already has a patent administrator (representative) in Japan. Flying to Tokyo to file in person does not turn an overseas company into a domestic applicant.

Companies with a Japanese subsidiary or branch

A Japanese subsidiary — for example a kabushiki kaisha (KK) or godo kaisha (GK) — is a Japanese company. It can file a trademark in its own name without a representative, just like any domestic company.

But the subsidiary is a separate legal person. Having a subsidiary in Japan does not allow the overseas parent to file in its own name without a representative. If the parent is to be the owner, the parent is still an overseas resident and needs a Japanese representative.

A foreign company that has its own business office in Japan (for example, a registered Japanese branch) is generally not an overseas resident, because the test for a corporation is whether it has a business office in Japan. In such cases we check the details — the address to be entered in the application must correspond to that office.

Foreigners living in Japan

If you live in Japan, you have a domicile or residence here and can file a Japanese trademark yourself, whatever your nationality. Online filing requires the JPO's filing software and an electronic certificate. Paper filing is possible, but the JPO charges an electronic-conversion fee for paper filings that could have been made online: JPY 2,400 per procedure plus JPY 800 per page.

Two points to watch:

• All documents are in Japanese. The application, the list of goods and services, and any notice of refusal and your response must be in Japanese, following JPO formats.
• If you move abroad, the rule changes. If you leave Japan while the application is pending, or later want to renew the registration from abroad, you will need a Japanese representative for those procedures.

The Madrid route: no representative at filing — but not always

If you already have a trademark application or registration at home, you can designate Japan in an international application under the Madrid Protocol, filed through your home office. In that case you do not need a Japanese representative to designate Japan.

However, the JPO's trademark examination manual says that when an international applicant wants to file procedures in Japan — such as a written opinion or an amendment in response to a provisional refusal — the applicant must appoint a representative resident in Japan. In other words, Madrid lets you start without a Japanese attorney, but if the JPO raises an objection, you will need one anyway, usually under time pressure.

Also note that under the JPO guidelines, the division of applications (Trademark Act Article 10) does not apply to international trademark applications. A national Japanese application gives you more flexibility if only some goods are refused.

Deadlines are counted in Japan

Once your representative is appointed, JPO notices go to the representative, and deadlines run from the JPO's dispatch date — not from the date your team in another time zone reads the email. Some useful numbers:

• Response to a notice of reasons for refusal: the period is stated in the notice. According to the JPO's formality manual, it is generally 3 months for overseas residents and 40 days for applicants in Japan.
• Extensions: one request within the period extends it by 1 month (official fee JPY 2,100); a request after the period has expired can extend it by 2 months (JPY 4,200), unless you already filed your response within the period.
• Registration fee: must be paid within 30 days after the decision of registration. The trademark right arises only when the registration fee is paid and the mark is registered.

Parent company or Japanese subsidiary: whose name should you file in?

This decision matters more than the filing itself. Changing the owner later requires a transfer (assignment) recording at the JPO, with its own documents and fees.

For most overseas brand owners, we recommend that the parent company owns the Japanese trademark and licenses the Japanese subsidiary or distributor to use it. Use by a licensee counts as use of the mark: in a non-use cancellation trial, use by the owner, an exclusive licensee or a non-exclusive licensee in Japan is taken into account (the owner must be able to show the license exists — put it in writing).

Marketplaces may also care who the owner is. For example, Amazon.co.jp's Brand Registry page states that the trademark owner must enroll the brand, and an authorised agent is added as a user. If your Japanese subsidiary runs the store but the parent owns the mark, plan the account set-up accordingly — and check the latest marketplace guidelines, as these rules change.

What you need to prepare as an overseas applicant

• Applicant's name and address in the original language (we prepare the Japanese version and can also record the original-language name and address)
• The mark: the word, or the logo image exactly as you will use it
• Goods and services you sell or plan to sell in Japan (we draft the Japanese descriptions and classes)
• A power of attorney (we provide the form)
• Priority details, if you filed at home within the last 6 months and want to claim Paris Convention priority

Cost guide

Official JPO fees: filing JPY 3,400 + JPY 8,600 per class; registration (10 years) JPY 32,900 per class. BrandAgent's fees: JPY 25,000 per class at filing and JPY 25,000 per class at registration (excluding Japanese consumption tax). The prior search is free when you instruct us to file, and consultations and quotes are free. For one class, the total is JPY 94,900 (official fees 44,900 + our fees 50,000). We communicate in English and Chinese and accept payment by PayPal (in JPY) or bank transfer.

FAQ

• Q. Can we file ourselves and appoint an attorney only if there is a problem?
  A. Not for a national Japanese application. An overseas resident needs a representative from the filing itself; a direct filing is dismissed. The Madrid route lets you designate Japan without a representative, but you need one to respond to a provisional refusal.
• Q. Our Japanese subsidiary is filing. Does it need an attorney?
  A. Legally no — it is a Japanese company. In practice, many subsidiaries still use one, because the goods descriptions, classes and responses to refusals require experience.
• Q. I live in Japan on a work visa. Can I file in my own name?
  A. Yes. If you have a residence in Japan, you can file yourself. If you move abroad later, you will need a representative for later procedures.
• Q. Can the owner be changed from the subsidiary to the parent later?
  A. Yes, by recording a transfer at the JPO, but it takes extra documents and fees. It is easier to decide the owner before filing. Ask us for a free quote if you need a transfer.
• Q. Who will handle our case?
  A. Every case is handled personally by the licensed patent attorney. BrandAgent has handled more than 4,000 trademark applications, many for overseas applicants.