Business Strategy of Goods and Services Trademarks in Japan


Business Strategy of Goods and Services Trademarks in Japan

ArticleNo. 02_0003

Business strategy of goods and services trademarks in Japan

Thank you for visiting this site and referring to this article.  The following shows the business strategy of goods trademarks in Japan.  From this, you can understand that the registration of trademark rights in Japan is a prerequisite for doing business.  Please consider acquiring a trademark right in Japan for making your business successful.

Type of trademark

Generally, the type of trademarks includes house marks (corporate trademark), family names (category trademark), pet marks (goods and services trademark), and technology brand trademark.  We will disclose the business strategy of pet marks (trademark of goods and services) in Japan, hereinafter.

Pet mark (trademark of goods and services)

Most of the trademarks used in Japan are typically pet marks.  Therefore, how to use the pet mark is very important for developing business in Japan.  Typically, it is preferable to develop business in Japan by using the pet mark in the order of (1) to (8) below:

(1). Considering problems for consumers
(2). Considering slogan, concept, and story of your company or goods
(3). Considering trademark (pet mark) naming
 - (3-1). Function suggesting naming
 - (3-2). Impact suggesting naming
 - (3-3). High quality suggesting naming
 - (3-4). Brand concept suggesting naming
(4). Market research of a drafted naming
(5). Considering sales channels
(6). Improvement of recognition and brand power
 - (6-1). Breaking away from price competition
 - (6-2). Collaboration request
 - (6-3). Development of series goods and use of trademarks for other goods
(7). Monitoring of infringement by a third party trademark
 - (7-1). Monitoring of trademark infringement
 - (7-2). Monitoring of becoming the generic name of your trademark
(8). Warning to a third party infringing trademark rights
 - (8-1) Request for injunction (Article 36 of the Trademark Law of Japan)
 - (8-2) Request for license fee

(1). Considering problems for consumers

In order to develop products (goods) and/or services (hereinafter also referred to as “goods and the like”), it is necessary to consider problems faced by the consumer regarding the goods and the like.

(2). Considering slogan, concept, and story of your company or goods

Then, it is preferable to consider the slogan, concept, and story of the goods and the like.  This is to show the value (quality, trust, experience, etc.) that the goods and the like can provide to the target consumers by using trademark.  Goods and the like which do not have the above concept or story cannot show their uniqueness in the value they can provide to consumers, and cannot prevent the emergence of similar goods and the like from a third party as a competitor in the future.  As a result, you might be involved in price competition.  From this point of view, it is very important to consider the above concept, etc.  For example, Toyota's trademark “LEXUS” shows "EXPERIENCE AMAZING" as a concept and "FOR YOUR LUXURY LIFESTYLE" as its story.  By showing this concept, etc. under the trademark "LEXUS" for a long time, someone who has seen this "LEXUS" would believe to experience a story in which Toyota's car has high-quality, luxury, and the like that a third party’s car does not have.  Someone who has a good impression of this concept will become fans of “LEXUS”, and the concept of “LEXUS” will arouse purchasing motivation.

(3). Considering trademark (pet mark) naming

As for the naming of the pet mark, it is preferable to decide the naming based on the concept, etc. of goods and the like so that the consumers of the goods and the like can recognize and imagine the slogan, concept, and story of the goods and the like.  In addition, if goods and the like would be a new one in a market, the target consumers would not know the details of it, so it is preferable to decide the naming so that the contents of the goods and the like can be easily imagined by the consumers.  Furthermore, for goods and the like related to a mature market, it is preferable to decide the naming so that a part of the consumers have the impression that it would solve problems which they have because the target consumers understand the details of the goods and the like.
For your information, the following discloses examples of type of the naming:

(3-1). Function suggesting naming

Function suggesting naming is the naming that implies the features and functions of the goods.  In particular, the term implying "function" is not a technical term, but a term that can be intuitively and instantaneously understood by the consumer of the goods and the like is preferable.  When the function suggestive naming is adopted as a trademark, it has the effect of making the consumer indirectly imagine the function of the goods and the like, and giving a good impression to the consumer.  However, please be careful not to adopt the function "explicit" based naming as the naming.  For example, regarding a glove goods that maintains temperature, the name "constant temperature glove" may not be registered as a trademark that merely indicates its function (Article 3, Paragraph 1, Item 3 and Article 15 of the Japanese Trademark Law).

Example: Goods "Wristwatch", Trademark "G-SHOCK"
The trademark gives consumers an implicit image of the robustness (function) of the goods.

(3-2). Impact suggesting naming

Impact naming is one idea.  When adopting impact suggesting naming as a trademark, this trademark has the effects of making it easier for consumers, retailers, etc. to recognize it, making it easier for them to remember, preventing it from becoming generic naming, and taking measures against counterfeit goods.  In addition, generic naming means that functions of trademark, such as the source display function is lost.  The reason why impact-based naming is a countermeasure against counterfeit goods is that, when a third party uses a trademark that is the same as or similar to the naming, there is no room for claiming that the naming is dissimilar because the naming is too unique.

Example: Goods "Beef", Trademark "Kita-usiri"
Regarding trademark "Kita-usiri", "Kita" means "north", and "usiri" means "earth" in Ainu language in which Ainu is race in Japan, but this "Kita-usiri" is a coined word that is generally unfamiliar to consumers.  Therefore, it gives the consumer an impression of novelty and is recognized as an impactful naming.

(3-3). High quality suggesting naming

High quality naming is one idea.  When high-quality naming is adopted as a trademark, it can give consumers a good impression that the goods are of high quality and give them an experience that other companies' goods do not have.

Example: Goods "Automobile", Trademark "LEXUS"
Consumers who see this trademark "LEXUS" recognize that it relates to Toyota's high-quality luxury automobiles and would give them a story and an experience that other automobile companies cannot provide.

(3-4). Brand concept suggesting naming

Brand concept suggesting naming is one idea.  When a brand concept suggesting naming is adopted as a trademark, it can give a good impression to consumers that they can imagine a story based on the brand concept and give them an experience that other companies' goods do not have.

Example: Goods "Tissue", trademark "Ellemoi"
Consumers who see this trademark "Ellemoi" imagine the brand concept from the impression of good pronunciation and accent, and have a good impression of the trademark.  In addition, "Elle" means "she" in French, and "moi" means "me" in French.

(4). Market research of a drafted naming

We recommend investigating that consumers have what kind of impression of a drafted naming regarding goods and the like.

(5). Considering sales channels

It is preferable to limit and specify the sales channel based on the concept of your trademark and goods and the like.  This is because selling at any location, from high-end retail to low-end retail, would lead to price differences and alter the brand image of consumers.
For example, when you want to give your trademark and goods and the like thereof an image of luxury and high quality, we recommend you to sale it in luxury goods retailer, only.

(6). Improving recognition and brand power

The following effects can be expected when the recognition and brand power of your trademark and goods and the like are improved:

(6-1). Breaking away from price competition

By improving the recognition and brand power of your trademark and goods and the like, functions of the trademark will be shown as a self-other goods or services identification function, a quality assurance function, a customer attraction function, etc., and motivates consumers of the goods and the like to purchase.  Consumers cannot completely know the details of the attributes of goods and the like, such as quality, function, and mechanism, and therefore unconsciously feel that there is ambiguity (anxiety) in the attributes of goods and the like.  Your trademark will complement that ambiguity.  This trademark allows consumers to trust and purchase goods and the like, and their attributes prevent your goods and the like from being involved in price competition with competing goods and the like.

(6-2). Collaboration request

If the recognition and brand power of your trademark and a goods and the like improves, there is a possibility that a business operator (famous business operator) in another field may request you to make collaboration.  For example, if you are developing strawberries as goods by using your famous trademark, you may receive a request from a well-known business operator who is famous about sweets to sell cakes using the strawberries.  The following effects can be expected by having a well-known business operator use and sell your goods:

 - (6-2-1). Acquisition of consumers (i.e., customers of goods of the famous business operator) other than your consumers

 - (6-2-2). Further improvement of the brand power of your trademark (win-win relationship)

 - (6-2-3). Media coverage request

 - (6-2-4). License fee income from trademark license (Articles 30 and 31 of the Japanese Trademark Law)

(6-3). Development of series goods and use of trademarks for other goods

If the recognition and brand power of your trademark is improved, it is desirable to develop series goods. This is because the use of trademarks in the series goods can be expected to further improve sales.  Series goods include higher quality goods and goods that meet the detailed needs of consumers.  It is also preferable to apply the trademark to your another goods, which you are selling, from the viewpoint of maximizing the customer attraction function of your trademark.

(7). Monitoring of infringement by a third party trademark

Trademark infringement and becoming the generic name of your trademark should be monitored.  This is because, If you left the use of your trademark by a third party, you would have disadvantages such as free ride to your trademark, dilution, and pollution, as well as becoming the generic name of your trademark.
For details, please also refer to our article "Business benefits of taking a registered trademark in Japan".

(7-1). Monitoring Trademark Infringement

Infringement of trademark rights means the use of a registered trademark or a similar trademark thereof by a third party not having justifiable reason or authority, for designated goods or designated services or goods or services similar to these (Article 2, Paragraph 3, Article 25, Article 37 and the like of the Japanese Trademark Law).  In particular, trademark infringement is likely to occur after your trademark becomes famous.  To monitor the infringement of trademark rights, you have measures such as patrolling the point of sale of the goods and the like, reporting from the sales department, etc., of finding a trademark similar to your trademark, communicating and delete requesting to EC site with respect to counterfeit goods, and requesting an import suspension to customs.

(7-2). Monitoring of becoming the generic name of your trademark

We recommend monitoring whether the naming of registered trademarks is used as a generic name in a media and magazines without displaying the Registration Mark, and communicating to them.  This is because that can prevent the registered trademark from becoming a generic name.

(8). Warning to a third party infringing trademark rights

We suggest you to respond to a third party who infringe trademark rights by sending warning letter.  Regardless of the size of the business of the third party, it is important to show an attitude of eliminating counterfeit goods completely.  However, if the third party infringing the trademark right is a trading partner, we believe it is preferable to consider applying for consultation before sending the warning letter.
The contents of the warning letter may include, for example:

(8-1) Request for injunction (Article 36 of the Japanese Trademark Law)

We suggest Request for injunction of current and future business, or request for prevention so as not to infringe trademark rights for future sales.

(8-2) Request for license fee

We suggest that, for sales from the past to the present, the license fee will be charged under the exclusive license (Article 30 of the Japanese Trademark Law) or the normal license (Article 31 of the same law).

Conclusion

According to the business strategy of goods trademarks in Japan, we believe you can understand that the registration of trademark rights in Japan is a prerequisite for conducting business.  When conducting your business, it is necessary to display a trademark indicating that the source of goods and the like is from you, and by legally protecting your trademark using trademark registration, your business can be safely carried out.  Please consider acquiring a trademark right in order to make your business successful.

Brand Shogun

Brand Shogun Services enables you to file your trademark application with Japan Patent Office (JPO) at minimum cost and to register it because omitting a similar trademark search service and personnel costs.  For example, you can file a lot of trademark applications at a reasonable price.  Furthermore, Brand Shogun has Japan patent attorneys who are familiar with Japan Patent Article and Prosecution against JPO.  Therefore, Brand Shogun is the most recommendable service of a trademark application and please consider that.

ArticleNo. 02_0003

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