Chapter 3: Trademark Search and Risk Assessment

3.1 Searching on J-PlatPat

J-PlatPat is the primary search tool for Japanese trademarks. Its trademark search supports searches by mark text (including Japanese characters in hiragana, katakana, and kanji), classification (Nice Class), application/registration number, applicant name, and application date. Search results show the current legal status, designated goods/services, and examination history.

3.2 Similarity Assessment

Japanese examiners assess similarity in two dimensions: the similarity of the marks themselves (appearance, sound, and meaning) and the similarity of the designated goods/services. Goods/services are judged against the Similar Group Codes (shouhin-betsu gyoumu-betsu ichiranhyo) published by the JPO, which group similar goods and services for examination purposes. Marks with identical Similar Group Codes are presumptively similar, though examiners retain discretion.

3.3 Risk Assessment Factors

Key risk factors include: prior identical or similar registrations in the same or related classes; famous marks that may enjoy broader protection; defensive marks held by well-known brand owners; and pending applications with earlier priority dates. A comprehensive clearance search should cover registered marks, pending applications, and unregistered but widely used marks.

3.4 Search Volume Context

In 2024, the JPO received 158,792 trademark applications, a 3.2% decrease from 2023. Of these, 142,540 were direct applications filed with the JPO and 16,252 were international registrations designating Japan under the Madrid Protocol. This dense filing environment makes pre-filing searches essential.

Once the search confirms reasonable clearance, the applicant must prepare the filing itself. Chapter 4 details the application requirements and filing standards that must be met.

Chapter 4: Application Requirements and Filing Standards

4.1 Application Form and Required Information

A trademark application must include: (1) the applicant's name and address; (2) the trademark itself (a clear representation of the mark); (3) the designated goods or services and their Nice Classification class(es); and (4) the application fee. Applications are filed electronically through the e-Tokkyo system or, for foreign applicants, through the Madrid Protocol.

4.2 Trademark Specimen and Representation

The trademark must be represented clearly enough to determine its scope. For standard marks, a JPG image or text description is required. For the new non-traditional mark types, specific representation rules apply: sound marks require musical notation or audio files, motion marks require a sequence of still images showing the movement, hologram marks require images showing the holographic effect, and color-only marks require a clear statement of the color(s) and their application.

4.3 Nice Classification

Japan follows the Nice Classification, with 45 classes in total: Classes 1-34 cover goods and Classes 35-45 cover services. Since April 2020, Japan has adopted the version of the Nice Classification incorporating Japanese-language similar group codes. Applicants should describe goods/services using the JPO's standard terms where possible, as idiosyncratic descriptions may trigger clarification requests.

4.4 Multi-Class Applications

Japan allows multi-class applications, in which a single application designates goods/services in multiple classes. The application fee is calculated per class. While multi-class filing is cost-efficient at the application stage, note that the registration fee and subsequent renewal fees are also assessed per class, and a refusal in one class does not affect other classes in the same application.

Even a well-prepared application may face objections. Chapter 5 explains how to respond when the examiner raises grounds for refusal.