[Patent attorney direct report] Is that name really okay? Serious reasons why you should immediately determine whether or not you can register with a free survey

Release of new products, launch of new services, or renewal of company logo.

The moment a new business name is decided is filled with excitement.

"We're going to revolutionize the industry with this name."
"We're going to grow our brand with this logo."

But did you know that behind that passion, there are legal risks that you cannot ignore?
That is the risk of “trademark infringement” and “refusal of registration”.

In order to achieve both safety and speed in business, what is needed now is not an uncertain self-judgment, but a "free investigation" and "immediate registration determination" by a patent attorney.

In this article, we will thoroughly explain why investigating on your own is insufficient, what benefits there are by outsourcing to a professional, and how "instant judgment" can accelerate your business.

1. Why is it dangerous to "investigate yourself with J-PlatPat"?

Currently, anyone can search for registered trademarks for free using the "Patent Information Platform (J-PlatPat)" provided by the Japan Patent Office.

However, this tool is only a "database" and not a "judgment machine". Just because it doesn't appear in the search results, there's no guarantee that you'll be able to register.

There are three major pitfalls that only professionals can spot.

Pitfall 1: Criteria for determining "similarity" are too complex

The most important rule in examining trademark registration is that ``Anything that is ``identical'' or ``similar'' to a previous trademark cannot be registered.''

If it's "identical" (exactly the same), it's easy to find by searching. However, the biggest problem is the scope of "similarity".
The Japan Patent Office comprehensively considers the following three factors to determine similarity.

• Shouko: Reading and pronunciation. Do they sound similar when heard, like "lion" and "la ion"? This tends to be the most important.
• Appearance: Appearance. Are the visual designs and letter arrangement similar, such as "SONY" and "SQNY"?
• Notion: Meaning. Whether the meanings associated with the words are the same, such as ``King'' and ``KING'' or ``Myojo'' and ``Vice.''

When searching on your own, you tend to make judgments based only on "appearance" or "text irregularities." However, professional patent attorneys identify similarities from the perspective of ``how the examiner would judge'' based on a vast amount of past trial decisions (like court precedents) and examination standards.

There is no end to the cases in which people apply with the idea that ``it's okay because it's just one letter different,'' only to be rejected because ``the pronunciations are similar.''

Pitfall ②: Invisible wall "similar group code"

One of the factors that makes trademark searches difficult is the Japan Patent Office's unique classification code called "similar group code".
This is a code for grouping products and services.

For example, "stationery" and "printed materials" are different products, but they may be assigned the same similar group code. In this case, when you try to obtain a trademark for stationery, if a similar name has already been registered in the field of printed matter, there is a possibility that the trademark will be rejected.

On the other hand, even products that look similar may be able to be registered if they have different codes.

With J-PlatPat's simple search, it is difficult to accurately perform a cross search that makes full use of this similarity group code. Patent attorneys are familiar with this code and can spot``landmines lurking in seemingly unrelated fields.''

If you apply without conducting a search and the application is rejected as a result, you will not get any of the application fees paid back. You will end up throwing away tens of thousands of yen to tens of thousands of yen.

If you find out in the free preliminary survey that the possibility of registration is low (grade C), you can refrain from applying. Alternatively, you can change the name and try again.
Preventing unsuccessful applications is the greatest economic benefit of free searches.

Advantage 2: "Immediate judgment" that does not stop business

Speed is the key to business.
"I want to print a brochure by next month's exhibition"
"I want to publish a website by next week"
In such a situation, if the survey results take a week or two, you will miss an opportunity.

Our office has a system in place to notify you of the initial determination of whether or not you can register within 24 hours (business days) of your inquiry.

As soon as an experienced patent attorney sees a name, he or she will be able to make a ``hit'' on the name, such as ``This may not be very distinctive,'' or ``This may overlap with that famous trademark.'' We then corroborate it with our database and respond instantly.
If you have this sense of speed, even if your plan is rejected, you can immediately switch to the next plan. Please take advantage of a patent attorney's instant judgment to speed up your business's PDCA cycle.

Advantage 3: You can get an "alternative" for registration

This is the biggest difference between automatic judgment services using AI and real patent attorneys.
The AI ​​concludes with a judgment of "× (unregistration possible)," but the patent attorney then thinks, "Then how can I register?"

• "By slightly changing the end of the name, you can avoid conflicts with similar trademarks"
• "If it's just text, it's too general and difficult, but if you combine it with a distinctive logo mark, there's a possibility of registration."
• "If the scope of the designated product is slightly limited, it can coexist with the prior trademark"

The best part of hiring a patent attorney is being able to receive consulting to turn a "NO" into a "YES" like this.

Japan's trademark system adopts the "first-to-file" system.
This is a very strict rule in which the right holder is determined not by ``who thought of the name first'' or ``who started using it first'', but by ``who submitted the document to the patent office first''.

One day late can be fatal

In extreme terms, even if you have a great brand name that you spent a year thinking about, if another company (or a malicious third party) applies for it due to a misunderstanding, the rights will belong to the other party.
It is extremely difficult to take back the damage later, and it takes a huge amount of court fees and time.

“Let's wait until the investigation results come out.”
While we are taking it easy, there is a non-zero risk that someone will file an application.
That's why it's important to have a sense of speed: ``Research as soon as you think of it'' and ``Apply as soon as you know whether it's possible to register.''

Existence of trademark trolls

In this world, there are people called "trademark trolls" who register trademarks in advance of words and buzzwords that other companies are likely to use, and later sell them at high prices or charge licensing fees.

They are always looking for new keywords. Immediately after you press release a new product, there are cases where someone takes advantage of the opportunity to file an application that has not yet been filed.
The only way to protect yourself from these risks is to secure appropriate rights before anyone else.

The first step to that end is a free investigation by a patent attorney.

4. Specific flow from free search to application

Many people think that ``requesting a patent attorney is difficult'' or ``the procedure seems troublesome,'' but our office's free investigation is very simple.

5. Clear up common misconceptions! Q&A

We will answer frequently asked questions from our customers.

6. Summary: Successful businesses have solid foundations

If you compare a business to a building, trademark rights are the "land" andthe "foundation".

No matter how splendid a building (product or service) you build, if you build it on someone else's land, one day you will suddenly be told to ``get out'' (use injunction) and have to demolish it.
Also, if your foundation is shaky, you won't be able to build a big business on top of it.

It's your responsibility as a business owner to check this, and it's the first investment you should make (even though it's free).

A free investigation by a patent attorney is like a "passport" that protects your business from legal risks and allows you to move forward with peace of mind.
Don't settle for making a self-judgment with J-PlatPat, please experience the "instant judgment" from a professional's eyes.

This "peace of mind" should be the foundation for your business to grow stronger and faster.

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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