[Sports Gym/Personal Gym] Is trademark registration necessary? A patent attorney thoroughly explains the risks that managers should know about and how to choose "categories"

In recent years, the fitness industry has experienced an unprecedented boom in opening gyms, such as 24-hour gyms, private personal training rooms, Pilates, and specialized studios specializing in specific body parts. It's not uncommon to see signs for new gyms as you walk around town.

However, as competition intensifies, there are serious risks that many business owners tend to overlook. That is the issue of rights to trademarks (brand names and logos).

"It doesn't matter because we are a small, privately run gym."
"We were able to register the company name (trade name) at the Legal Affairs Bureau, so it's okay."

If you think that way, your business is at great risk. One day, you suddenly receive a warning letter from an unknown company for ``trademark infringement'' and you have to redo all of your gym's signs, flyers, and website - such a nightmare situation actually happens.

In this article, a patent attorney who is an intellectual property expert will explain in detail the importance of "trademark registration" in sports gyms and fitness businesses, the risks of not registering, and how to choose a complex "classification."

Chapter 1: Why does a gym need "trademark registration"?

1. The only legal means to protect "signboards"

For a sports gym, the gym's name (trade name) and logo are the "face" that members use to identify your gym. The reputations such as ``You can lose weight by going to ____ gym'' and ``〇〇 Fitness has good facilities'' are all built up in the name.

Trademark registration is a system in which the country (patent office) grants the right to use this "credit" exclusively. By registering, you can legally prohibit or exclude other companies from using the same or confusing name.

2. First come, first served (first to apply) rule

Japan's trademark system adopts the "first-to-file" system. This is a rule that gives rights to the person who submits the document to the patent office first, rather than the person who thought of the name first or the person who started using it first.

Even if you have been using that gym name for five years and it is loved in the area, if a rival store that opened yesterday registers the trademark first, the rights will belong to the other party. In the worst case scenario, you might be forced to change the name you've been using for years (this is called "trademark infringement").

3. "Trade name registration" and "trademark registration" are different things

What many business owners misunderstand is that their name is protected because they have registered their company establishment (trade name registration) at the Legal Affairs Bureau.

• Business name registration (Legal Affairs Bureau): Registering the name of a company. The same name can be registered as long as it is not the same address.
• Trademark registration (Patent Office): Registering the brand name of a product or service. It is valid throughout Japan and can exclude the use of the same or similar names.

In other words, even if the name is registered as a company name, if it infringes on trademark rights, the name cannot be used on signboards or advertisements.

Chapter 2: "Three damages" that will occur if you do not register a trademark

What are the risks if I continue to run a gym without registering a trademark? Let's take a look at three damage simulations in detail.

Risk 1: You will receive a warning letter and be charged for damages

One day, you suddenly receive a certified mail from the trademark right holder (another company that owns the rights). ``Your gym's name infringes on our trademark rights. Please stop using it immediately and pay ¥0,000,000 in past usage fees.''
Trademark infringement is recognized as negligence even if it is not intentional, and is subject to a claim for damages.

Risk 2: Cost of forced rebranding

If you accept the warning and change the name, the cost is significant.

• Store sign removal/installation costs (several hundred thousand ~)
• Reprinting of brochures, business cards, and membership cards
• Modification of website and SNS account
• Redesign of staff uniforms
• Change of interior logo decoration

Even for a small gym, it will cost hundreds of thousands to millions of yen to do all of this. Furthermore, there is a risk that members may become concerned about whether a change in name means management has gone awry, leading to them withdrawing from membership.

Risk 3: Imitation by other companies, reducing brand value

On the other hand, imagine if your gym becomes very successful. Let's say a gym opens in your neighborhood with a name similar to yours, and its services are copied.

If you do not own trademark rights, there is no legal basis to ask the other party to change your name. Even if a member mistakenly joins another store or gets a bad reputation saying, ``I thought that store was affiliated with ____ gym, but the quality was poor,'' we have no choice but to hold our fingers in our mouths.

Chapter 3: What "categories" should gyms register?

When registering a trademark, the most specialized knowledge is selection of "designated goods/designated services" and determination of "category (Class 1 to Class 45)".
If you do not correctly choose which category your business falls into, the rights you register will be meaningless.

We will explain the classifications that are essential for sports gym management and the classifications that should be considered depending on business development.

[Required] Category 41: Education/Sports/Entertainment

If you run a sports gym, fitness club, yoga studio, etc., thisCategory 41 is absolutely essential.

Specifically, specify the following items (designated services).

• “Providing sports facilities”
• "Sports teaching" (personal training, lesson guidance, etc.)
• "Knowledge teaching" (health management, diet guidance, etc.)
• "Planning and management of seminars"

If you do not keep this in mind, your rights as a gym name will not be protected.

[Consideration based on business content] Other categories

Nowadays, gyms are diversifying beyond simply renting out space, including selling products and online distribution. Depending on your business model, you should also consider the following categories.

1. When selling original wear and goods

→ Category 25 (Clothing, shoes, etc.)
Required when selling T-shirts, caps, training wear, etc. with the gym logo (including distribution to members). Even if you think it will only be worn by staff, you should get one if there is a possibility that you will be selling them at an event.

2. When selling proteins and supplements

→ Class 5, Class 29, Class 30, Class 32
This is a very complicated point. Even though we say "protein" in one word, there are different classifications depending on the ingredients and shape.

• Category 5 (drugs, etc.): Those in supplement form (tablets/capsules) and those that claim medicinal efficacy.
• Class 29 (Animal Foods): Dairy products (whey/casein)-based protein powders, etc.
• Class 30 (Plant-based foods): Soy-based proteins, protein bars, etc.
• Class 32 (Soft Drinks): Ready-to-drink protein and sports drinks.

There are many cases of failure in cases where people apply for a product thinking that it is a protein, so it must be class 32 (beverage), but what they actually sell is a powder (class 29), so it falls outside the scope of the rights.

3. When conducting an online salon or video distribution

→ Category 9 (downloadable video data, etc.)
→ Category 38 (telecommunications, etc.)
“Online training” and “sales of video teaching materials” have increased since the coronavirus pandemic. Since these services are provided via the Internet, they may need to be covered not only by Category 41, but also by Category 9 (apps and video data) in some cases.

4. When selling towels and sporting goods

→ Category 24 (textiles, towels, etc.)
→ Category 28 (toys, sports equipment, etc.)
If you want to sell yoga mats, dumbbells, training tubes, etc. under your own brand, you will need Category 28.

Chapter 4: What kinds of names can be registered?

Even if you think you've come up with a great name, not all words can be trademarked. It must pass examination by the Patent Office.

Case where registration is difficult

1. General name/descriptive name

Names that simply describe the content of the service will be rejected as ``lacking distinctiveness (characteristics)''.

• דShibuya Sports Gym”
• דDiet Personal Studio”
• ד24 hour fitness”

These are words that everyone wants to use, and they should not be monopolized by one company.

2. Similar to an existing trademark

If the trademark is similar in appearance, pronunciation, or meaning to a trademark already registered by another company, it cannot be registered.
For example, "RAIZAP" and "RIZUP", which are similar to the famous "RIZAP", cannot of course be registered, and even if the spelling is completely different, if the pronunciation is similar, there is a high possibility that it will be rejected.

Tips to increase your chances of registration

• Create words: Combine completely new words. (Example: NIKE, Reebok, etc. are strong brands)
• Pair it with a logo: Even if it is difficult to register with just the letters because it is common, it may be possible to register it by combining it with a distinctive logo mark (logo trademark). However, in this case, it is important to note that the rights to the "logo design" will be vested, and the exclusive rights to the text itself will be weakened.

Chapter 5: What are the benefits of hiring a patent attorney?

Recently, the number of simple trademark registration sites using AI is increasing, but in industries with a lot of competition, such as gyms, we strongly recommend that you hire a patent attorney. The reason is as follows.

1. "Investigation" accuracy is different

The most important thing in trademark registration is a "prior trademark search" before filing.
We don't just search for the same name, but use our expert knowledge to determine whether there is a risk of being judged as similar. In particular, the gym industry has many coined words in English and katakana, making it extremely difficult to judge similarities.
A patent attorney will provide specific advice based on past precedents and examination standards, such as, ``This name has a 0% registration rate'' or ``This part should be changed.''

2. Compatible with "notification of reasons for refusal"

After filing an application, you may receive a notice from the Patent Office stating that your application cannot be registered as is (notice of reasons for refusal).
In the case of individuals, many people give up at this point, but if you have a patent attorney, you can often overturn the result and get the patent registered by submitting a "written opinion" or "written amendment" and arguing with the examiner.

3. "Strategic advice" to protect your business

We don't just handle registration procedures on your behalf.

• “If you are thinking about franchising in the future, you should keep this category in mind.”
• "Is the right valid even if I change the color of the logo?"

The strength of patent attorneys is that they can provide intellectual property consulting tailored to management strategies.

Chapter 6: Trademark registration process and costs

Procedure for registration

1. Hearing/Investigation: We will listen to your business details and investigate whether there are any similar trademarks.
2. Application (Application): Submit an application to the Patent Office. From here, we recommend adding a mark such as "Trademark in Use (TM)".
3. Examination: Checked by the patent office examiner. (Currently, it takes about 6 months to 1 year)
   *If you use a system called "Early Examination", it may be possible to shorten the process to about 2 to 3 months if the conditions are met. Please contact us if you have a set opening date.
4. Registration assessment/setting registration: If the examination passes, the registration fee will be paid and trademark rights will be granted.

About costs

The cost is the total of "stamp fee paid to the patent office" and "fees to the patent attorney." It also varies depending on the number of divisions.

• At the time of application: From tens of thousands of yen (stamp fee + handling fee)
• At the time of registration: From tens of thousands of yen (registration fee + success fee, etc.)

You may think it's expensive, but once you register, you can protect your rights for 10 years (perpetually if renewed), so if you convert it into a monthly insurance premium, it's about a few hundred yen to a thousand yen. It's an extremely cheap investment compared to the amount of damages and rebranding costs when something goes wrong.

Conclusion: Muscles never betray you. However, if you do not protect your trademark, you will be betrayed.

The phrase "muscles never betray you" is familiar to all training enthusiasts. Your daily efforts are always reflected in your body.

However, a "brand" in the business world cannot be maintained through effort alone. If you don't go through the legal process, the asset you've cultivated, the name of your gym, could suddenly become someone else's property one day.

For those who are about to open a gym, or those who already operate one but have not yet registered their trademark.
In order to focus your efforts on training your members without worrying about signboards, please consult with an expert patent attorney first.

Free trademark consultation for gym openings and managers

At our firm, our patent attorneys who are familiar with trends in the fitness industry will propose the optimal trademark strategy for your gym. Please feel free to contact us for a free consultation.

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).

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