Licensing a Trademark in Japan: Exclusive vs Non-Exclusive Licenses, Recording and Agreement Checklist

"We are appointing a Japanese distributor. Do they need a license to use our trademark?" "Our contract says 'exclusive license' — is that enough in Japan?" "Our OEM partner in Japan puts our brand on the products. Who should own the Japanese registration?"

Overseas brand owners entering Japan rarely do everything themselves. They work with importers, distributors, franchisees, OEM manufacturers or a Japanese subsidiary — and all of them use the brand. Japanese trademark law has its own two types of license, and one of them only exists once it is registered at the Japan Patent Office (JPO). A contract that works well under US, EU or Chinese practice can leave gaps in Japan.

In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains how to license a Japanese trademark: exclusive vs non-exclusive licenses, recording, what to put in the agreement, and why ownership of the Japanese mark should be decided before anyone starts selling.

Start with a Japanese registration

A license is permission to use a registered trademark. Licenses are recorded against a registered trademark right, so the first step is to obtain the registration in Japan — in the name of the party who should control the brand. A company or individual without a domicile or business office in Japan files and handles all procedures through a Japanese patent attorney (Benrishi). Normal examination usually takes around 9–12 months, so file well before the distributor launches.

Two types of license in Japan

Exclusive right to use (senyo shiyoken)

This is the strongest form of license. Within the licensed goods, territory and period, the licensee has the exclusive right to use the mark. The JPO's Formality Examination Handbook states that registration of the establishment of an exclusive right is a requirement for it to take effect. Without registration, there is no senyo shiyoken, whatever the contract calls it.

The JPO also warns that once an exclusive right is established, the trademark owner itself cannot use the mark within that scope. Brand owners who still sell directly in Japan — for example on their own Amazon.co.jp store — must define the scope carefully, or choose a non-exclusive license instead.

Non-exclusive right to use (tsujo shiyoken)

A non-exclusive license arises from the agreement and can be granted to several licensees. Registration is not needed for the license to be valid between the parties. However, Japan kept a "registration for effect against third parties" system for trademark non-exclusive licenses. While patent non-exclusive licenses became effective against a later owner automatically, this was not adopted for trademarks. If you want the license to survive a sale of the trademark to a new owner, it must be registered.

"Exclusive" in the contract is not the same thing

Many international distribution agreements grant an "exclusive license for Japan". If this is not registered as a senyo shiyoken, it is in effect a non-exclusive license with a contractual promise not to license anyone else. That promise binds the brand owner, but it is not a registered right. Decide consciously which type you want, and say so in the agreement.

Recording a license at the JPO

According to the JPO procedure pages for exclusive and non-exclusive licenses (exclusive / non-exclusive, Japanese):

• The application states the scope: territory (limited to Japan), period (cannot extend beyond the term of the trademark right) and content (e.g. the goods covered).
• A document showing the license — a license agreement or license certificate — is filed. Both parties' intention must be confirmed in writing.
• Documents in a foreign language must be filed with a Japanese translation in addition to the original.
• If the trademark is co-owned, the consent of the other co-owners is needed.

The registration license tax is JPY 30,000 per case for establishing either an exclusive or a non-exclusive right (JPO registration tax table). Many brand owners prefer to file a short license certificate covering only the registrable items, rather than the full commercial agreement with royalty terms.

Checklist for the license agreement

• Mark and registration number: list each Japanese registration, including katakana or logo versions.
• Type of license: senyo shiyoken (registered) or non-exclusive; whether sublicensing is allowed.
• Scope: goods/services, territory (Japan or part of it), sales channels (e.g. online marketplaces), period.
• Quality control: product standards, approval of packaging and advertising, the right to inspect.
• How the mark is used: the exact registered form, ® or TM marking, prohibition of modified logos.
• Use reports: periodic reports with photos, invoices and listings — useful evidence of use.
• No filings by the licensee: the licensee must not file the mark, similar marks or domain names in Japan in its own name, and must assign anything it files.
• Enforcement: who monitors marketplaces and acts against counterfeits, and who pays.
• Recording: who files the recording, who pays the tax, and the obligation to cancel the recording when the license ends.
• Termination: sell-off period, stop of use, return of materials, removal of listings.
• Governing law and language: and, if the contract is in English or Chinese, who prepares the Japanese translation for the JPO.

Royalty, tax and competition-law aspects of the agreement should be reviewed by your lawyers or tax advisers; this article focuses on the trademark side.

Licensee use protects your registration

A Japanese registration that has not been used in Japan for 3 consecutive years can be cancelled at anyone's request (Article 50). According to the JPO, the use that counts is use by the owner, an exclusive licensee or a non-exclusive licensee; use outside Japan does not count, and the owner bears the burden of proving use.

For an overseas brand owner that sells in Japan only through a distributor or OEM partner, this is important. The JPO explains that where use by a licensee is relied on, the existence of the license must also be proven, and recommends obtaining regular use reports from licensees. A written license — even a simple one — and an archive of the licensee's invoices, packaging photos and listings will make a non-use cancellation much easier to defend.

Quality control is not optional

Under Article 53, if an exclusive or non-exclusive licensee uses the mark in a way that misleads consumers about quality or causes confusion with another's goods, the registration itself can be cancelled. The JPO Appeals Handbook notes that the licensee's intent is not required. Regular checks of how the licensee actually uses the mark protect not only the brand image but the registration.

Who should own the Japanese mark?

It is common for a Japanese distributor or importer to offer to file the trademark "to save you trouble". If the distributor owns the registration and the relationship ends, you may be unable to sell under your own brand in Japan without its cooperation.

Japanese law has a remedy: under Article 53-2, if an agent or representative registers the mark of a person holding rights in another Paris Convention country without a justifiable reason, that person can request cancellation. But according to the JPO Appeals Handbook, this request cannot be made after 5 years from the registration date, and it requires a trial. Prevention is far cheaper:

• Brand owner files in its own name and licenses the distributor or OEM partner.
• Japanese subsidiary as owner can make sense if it runs the Japanese business long term — but agree the group's policy in writing.
• If a distributor has already filed, negotiate an assignment to the brand owner now, while relations are good, rather than at termination.

Costs

Official JPO fees for the registration itself: 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. License recording is quoted individually — ask for a free quote; the official registration license tax is JPY 30,000 per case.

FAQ

• Q. Do we have to register a non-exclusive license?
  A. No, it is valid by contract. Registration is needed if you want it to be effective against someone who later acquires the trademark.
• Q. Can our distributor's sales protect our mark from non-use cancellation?
  A. Use by a licensee counts. Keep a written license and the licensee's use evidence so that you can prove both the license and the use.
• Q. Can we record our English-language agreement?
  A. Foreign-language documents must be filed with a Japanese translation. A short license certificate is often easier.
• Q. Can you work with us in English or Chinese?
  A. Yes. We have handled more than 4,000 trademark applications, and every case is handled personally by the patent attorney. We accept PayPal (in JPY) or bank transfer.