Skip to content
English
お問い合わせ

Is it really a good deal to have a trademark written in two columns? Advantages of writing both English and Katakana and three pitfalls warned by patent attorneys

Picture of 弁理士 杉浦健文

unnamed (42)

When thinking about registering their company name or the brand name of a new product as a trademark, there is a ``concern'' that many managers and managers first face.
The question is "Which should I register, the English (alphabetic) notation or the katakana notation?"

"I created the logo mark in English, but I have to communicate it in katakana over the phone..."
"I would like to expand overseas in the future, so English would be better, but katakana is more friendly to domestic customers..."
"I would like to register the logo mark (the shape) and company name together."

It would be best if both could be registered, but trademark registration is not cheap. For startups that have just been established or small and medium-sized businesses with limited budgets, it is not so easy to decide to ``file both applications just in case.''

So, if you search on the Internet, you will find an application technique called ``two-column writing (two-column writing)''.

“This is a great deal because you can protect both English and Katakana for the cost of one application!”
Are you thinking like this and trying to proceed with the application in two columns?

⚠️ Note

Please wait a moment. That “savings” may turn into“higher tuition fees” that put your brand at risk in the future.

This time, from the perspective of a patent attorney who is a trademark expert, we will thoroughly explain the "two-column writing" of trademarks, from its mechanism to its benefits, as well as serious disadvantages and risks that are not often talked about. Please read to the end so you don't regret making a decision based solely on immediate costs.

 

1. First of all, what does "two-column writing (two-column writing)" mean in a trademark?

First, let's organize the basic definitions.
“Two-column writing” or “two-column writing” of a trademark refers to combining two different characters or figures (components) in two columns (upper and lower (or left and right)) and filing as one trademark.

The most common patterns are the following combinations:

Top: English (EXAMPLE)
Bottom: Katakana (Example)

As shown above, in most cases, a set of European characters and their pronunciation, katakana, is used, but there are other patterns as well, such as the following.

  • "Kanji" and "furigana (romaji)"
  • "Logo mark (shape)" and "company name (letters)"
  • "Company name" and "trade name/brand name"

In the examination practice of the Patent Office, these are treated as "combined trademarks".
Since one trademark image is pasted and submitted on the application form, it is formally just "one trademark."

Originally, the Trademark Law has a rule of "one trademark, one application" rule, but if an applicant files an application claiming that "this upper and lower combination is one trademark", the Japan Patent Office will accept it as one trademark and conduct an examination.

2. Why is "two-column writing" chosen? The single biggest advantage

The biggest reason why many companies choose two-column writing is cost performance. It is no exaggeration to say that there are almost no other reasons.

To register a trademark, there is a "stamp fee (application fee/registration fee)" paid to the Patent Office and a "fee" if you hire a patent attorney. In principle, these occur for each "1 trademark (1 application/1 classification)".
Let's visualize it with specific numbers (*The cost is a general guideline).

unnamed (43)

If you try to register the alphabet "ABC" and the katakana "ABC" separately, it will naturally cost you two. If the total cost from application to registration is 150,000 yen per application, it will be 300,000 yen for two applications.

On the other hand, if you apply for these trademarks one above the other as "ABC", the cost for one application (approximately 150,000 yen) will be reduced.

Having the cost of trademark registration halved is a huge attraction for companies in their early stages. This strong economic advantage is behind the choice of two-column writing in situations such as ``I want to secure the rights for now'' or ``My budget is limited, but I want to avoid being left defenseless.''

Also, the management cost after registration will be halved. Trademark rights need to be renewed every 10 years, but you only have to pay one renewal registration fee, and the hassle of procedures such as changing your address will be reduced.

However, It is dangerous to choose two-column writing simply because it is ``low cost.'' You need to properly understand the disadvantages and risks explained below, and carefully assess whether they are within an acceptable range for your business.

3. Three legal risks of "two-column writing" that patent attorneys are concerned about

From a professional perspective, two-column writing has three main legal risks. It is dangerous to choose something just because it's cheap without understanding these points.

Disadvantage 1: Risk of ambiguity in scope of rights (effect)

unnamed (44)

The greatest power of trademark rights is that if someone else uses a similar trademark (similar trademark), you have the right to seek an injunction to be told not to use it, and the ability to claim compensation for damages.
However, if it is registered in two columns, the scope of rights is basically determined based on the whole of the two columns.

For example, suppose you have registered "ABC" and "ABC" in two columns.
What would happen if a malicious other company started using only the letters "ABC" (no katakana) or only the katakana "ABC"?

The Japan Patent Office and courts use the methods of ``overview'' and ``separate observation'' when determining the similarity of trademarks (described later). If it is determined that your trademark is ``ABC and ABC are inseparable,'' there is a risk that your trademark will be judged to be ``not similar (dissimilar) because it looks different (appearance)'' from the ``ABC standalone'' trademark used by the other party.

If counterfeit products had been registered separately, they could have definitely been excluded based on the "ABC" rights, but because they were written in two columns, they are treated as a "gray area" and cannot be excluded. This can be a fatal weakness from a brand defense perspective.

Disadvantage ②: Risk of losing rights due to "non-use revocation judgment"

unnamed (45)

This may be the most terrifying risk. The Trademark Law has a system called ``Revocation trial for non-use''.
If a registered trademark has not been used continuously for three years or more, it can be canceled at the request of a third party.

"Huh? It's okay because the logo is properly used on the product, right?"
You may think so, but "double-column writing" can be your enemy here as well.
The issue here is ``Are you using the registered trademark as is?''

For example, suppose you have registered in two columns as "EXAMPLE". However, let's say that the actual product package design only displays the word "EXAMPLE" in English to make it look stylish.

In this case, there is a risk that it will be determined that the registered trademark (the entire two-column text) is not used.

According to past court precedents and trial decisions, there have been cases where trademark registrations have been canceled if only one of them is used even though the trademark is registered in two columns, as it is said that ``according to social conventions, the use of the same trademark is not recognized.''

Of course, according to the Trademark Law, use is permitted as long as it is considered to be "same as a registered trademark in terms of social convention," but whether the use of only one side of a two-column line falls under this is a case-by-case matter, and is often a point of contention.
``In order to prevent a situation where you have registered, but in an emergency, it is determined that you are not using it and your rights are revoked, the golden rule is to register it in a way that you will actually use it.

Disadvantage ③: The probability of rejection during examination is doubled

unnamed (46)

During trademark registration examination, it is checked whether the trademark is similar to existing trademarks of others.
If any of the constituent elements of a two-column trademark are similar to someone else's trademark, the entire trademark will be rejected.

For example, if the "ABC" part at the top is unique and unique, but the "ABC" part at the bottom is similar to another company's existing trademark, the application itself will be rejected.
If I had filed separately, I would have been able to register just with "ABC", but because I wrote it in two columns, it became "along with me" and was wiped out.

In this case, in order to resolve the reason for refusal, you would like to make an amendment to delete the katakana part, but amendments that change the gist of the trademark are often not approved, and you may end up re-filing the application (paying double fees).
We sometimes call this ``collateral refusal'', and it is a very common failure pattern in two-column applications that do not conduct a thorough trademark search in advance.

Is it okay to have my company's trademark written in two columns?
We will provide you with a risk diagnosis and an optimal application plan free of charge.

\ Individual support from professional patent attorneys /

4. Explanation from a professional! What is the Patent Office's examination standard "separate observation"?

Here, we will delve into the slightly more specialized "Judgment of similarity of trademarks (examination criteria)". This is the most important point that determines the fate of a two-column trademark.

The examination standards of the Japan Patent Office and court precedents allow a method called ``separate observation'', in which a part of the characters or figures that make up the trademark are extracted and observed, for combined trademarks (such as double-column trademarks).

Case where separate observation is accepted (certification as essential part)

If each component part of a trademark independently gives a strong impression to the viewer, they are observed separately as "essential parts."
For example, a case like a combination of "English spelling" and "its common pronunciation" (e.g. LION).

In this case, since the title (pronunciation) and concept (meaning) of "lion" are the same in both English and katakana, separate observation is likely to be recognized relatively smoothly, and the scope of rights tends to extend to each element.

Cases judged as indivisible

On the other hand, in the following cases, separate observations tend to be denied and the whole thing tends to be considered as one.

  • When text and figures are fused in design
  • If it is a series of words or sentences
  • When a unique (uncommon) pronunciation is used for a coined English word

If they are closely related, they will be recognized as a single trademark. What this means is that``If only the English part is imitated, there is a higher possibility that there will be no infringement of rights.''

In particular, if we look at recent trends in Intellectual Property High Court decisions, there is a tendency to caution against easy separate observation and to emphasize the "unity (combined state)" of trademarks. If you assume that your rights can be exercised only in English, you run the risk of losing your case in the event of a lawsuit being judged as ``dissimilar.''
This judgment of whether or not to observe separately is highly specialized and fluid, and amateur judgment is extremely dangerous.

5. Should it be written in two columns? Should they be separated? Judgment flowchart

So, what should you do with your company's trademark? We have summarized the recommended standards for a patent attorney. Consider your strategy using the criteria below.

START
↓

Q1. Is your budget extremely limited?
(In the early stages of startup, etc., you can only pay for one case)

YES
↓
NO (I have a budget)
↘
If YES

Conclusion: First, register in "two-column writing"

It's better than being defenseless. Once you have the funds, split it up and start again.

↓ If NO

Q2. Is the trademark a "main brand" or a "company name"?

YES
↓
NO
↘
Recommended

Conclusion: You should apply for 2 applications separately

Protect your core rights to the best of your ability.

↓ If NO

Q3. Will you change the logo in the future or use English and kana differently in different situations?

(Example: Overseas sites are only in English, domestic flyers are only in Kana)

↓

YES

Filing separately

↓

NO

Two-column writing is also OK

A. Cases that should be registered separately (recommended)

In the following cases, we strongly recommend Applying for "English" and "Katakana" separately even if it costs more.

  • If it's your main brand or company name
    Trademarks that are at the core of your business should be protected at their best. By registering them separately, you can reliably exercise your rights no matter how they are used, and you can avoid the risk of cancellation due to non-use.
  • If the design of the logo has not been finalized or may change in the future
    If the logo is written in two columns, it is suitable for design changes as it is a trademark including the placement and balance. If you keep only the characters (standard characters) separately, the rights will be maintained even if the logo design changes.
  • If you plan to use English and katakana in different situations
    If you plan to use English only for overseas sites and katakana only for domestic flyers, you will need to register separately.
  • In industries where there is a high risk of imitation by other companies
    In industries where counterfeit products are likely to occur, such as apparel and food, it is important to avoid creating gaps in rights.

B. Cases in which double-column writing is acceptable

In the following cases, one strategy is to choose two-column writing, even if you are aware of the risks.

  • When the budget is extremely limited (such as in the early stages of a startup)
    It is much better to register even if it is in two columns than to not register at all because there is no budget (defenseless). It is also effective to first take the minimum level of defense by writing in two paragraphs, and then reapply separately (submit an additional application) when you have sufficient funds.
  • When always using two-column writing
    If there is a strict regulation that English and katakana should always be displayed as a set on packages or signboards, there is no problem with two-column writing.
  • If you want to fix the "reading" of a coined word that is difficult to read
    In the case of a coined word in English that no one can read, adding katakana can be expected to have the effect of declaring to the Patent Office and the public that "this is how it is read," and clarifying the scope of the rights to the appellation (pronunciation).

6. Which should be given priority: "English" or "Katakana"?

If I want to register "only one" instead of writing in two columns due to budget constraints, which should I prioritize?
This depends on “How do customers call your brand? How do they search for it?”

For BtoC (general consumer) products

Japanese consumers tend to memorize and search for ``katakana'' which is easy to read at a glance. If katakana is the mainstream for web searches and hashtags on social media, you should give priority to katakana. Katakana is especially important in the food, daily necessities, and service industries.

BtoB (business-to-business transactions), IT services, apparel, etc.

If the brand image is important and the logo is mainly written in English, English should be given priority. However, in the case of coined words that are difficult to read, it becomes more important to know katakana to prevent the wrong reading from spreading, or to monopolize the reading.

7. Summary: When in doubt, do a trademark search by an expert

Although writing a trademark in two columns has the great advantage of reducing costs, it can also be said to incur hidden costs in terms of ``strength of rights'' and ``restrictions on use.''

There are many cases where people simply choose to write in two paragraphs, saying, ``I just need to register it,'' and as a result, when a counterfeit product becomes available, the other party's lawyer refutes, saying, ``The way it is used cannot be considered an infringement of rights.''
In addition, when rebranding in the future, the two-column trademark registered in the past may become a hindrance, preventing a smooth transition.

In order to protect your important brand, in your current business phase and future development, ``Can I survive with two columns?'' Or ``Should I do it separately, even if it costs more?'' This judgment requires advanced legal knowledge and experience.

If you are unsure about how to apply, please consult with a patent attorney before applying on your own.

At our office, we not only simply handle application procedures on your behalf, but we also propose the ``most cost-effective and highly defensive application variations'' that match your business strategy and budget.
For your business model, start by reducing costs by writing in two columns, then divide and redo only the major brands in three years.

Registering a trademark is not the end. It is the foundation that will support your business for 10 or 20 years. Please utilize the knowledge of professionals to avoid pressing the wrong button the first time.

We will suggest the best trademark application plan for your business

The first consultation is free. Nationwide support via web conference (Zoom) is also possible.

" rel="noopener"> Free consultation with a patent attorney
Takefumi SUGIURA, Patent Attorney

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).