When to File a Trademark Application: Pre-Launch Searches and Choosing Designated Goods and Services

Hello, I'm Noriaki Asato, Representative Attorney at LegalAgent.

Once a new service name is decided, logo production, domain acquisition, sales materials and more all start moving at once. If at this stage someone finds "a registered trademark with a similar name," even just changing the name costs money and time in revising materials and explaining to business partners. If the service launch date is already fixed, the people handling the search and filing also come under pressure to make decisions in a hurry.

The right time to start working on trademarks is not after the name is finalized but while you are comparing candidates. The flow is to proceed with searches at that stage, and once the name to adopt and the target business are decided, to build the schedule around filing before public announcement as the default. However, completing a filing and acquiring a trademark right are different things. In this column, keeping this difference in mind, I explain the matters you will want to decide as part of launch preparations.

Why File First, and the Rights a Filing Alone Does Not Give You

Article 8 of the Trademark Act (Japanese) provides that where identical or similar trademarks are filed on different dates for identical or similar goods or services, the person who filed first is, as a rule, entitled to registration. This is the "first-to-file principle." The system is not designed so that the mere fact of having launched the service first gives priority over someone who files later.

That said, registration involves requirements other than the order of filing dates. Some names do not meet the registration requirements, such as indications that merely describe the content of goods or services. The relationship with earlier-filed trademarks and other companies' well-known trademarks is also examined. There is also a system under which, in certain cases, a later application may be registered on conditions such as the consent of the earlier applicant or trademark owner and the absence of a likelihood of confusion. In my view, it is not accurate to understand that the conclusion is determined solely by the order of filing dates.

A trademark right arises not on the filing date but when the establishment of the right is registered (Article 18 of the Trademark Act). Obtaining an application number does not by itself mean you hold a trademark right allowing you to seek an injunction against another company's use. Note also that it is no guarantee that your own use does not infringe another company's rights.

As for use before registration, there is a system that allows certain monetary claims where statutory conditions are met, such as a written warning after filing. However, that claim can only be exercised after registration of establishment (Article 13-2 of the same Act). You should avoid explaining that you can exercise the same rights as a registered trademark from the day of filing.

The significance of filing early lies in securing the filing date used to determine priority, after having completed the search and considered the content of the application. I think you need to build both into launch preparations: the search that confirms the name is safe, and the filing that secures the date.

Conditions for Arguing "We Were Using It First"

If you start using a service name without filing, the question arises whether you can continue your use when another company later files and obtains registration. One system to consider in this case is the right of prior use under Article 32 of the Trademark Act. A user meeting certain conditions may be able to continue its use even after another company obtains trademark registration.

However, simply having an earlier start date is not enough. It is necessary, among other things, that you had been using the mark in Japan without an unfair competitive purpose since before the other company's filing, and that, at the time of the other company's filing, the mark was widely recognized among consumers as indicating your goods or services. Further, continued use thereafter is required.

The scope of consumers and recognition here is examined in light of the nature of the goods or services and actual trade conditions. It is not judged uniformly that "it is never recognized unless it is famous nationwide." On the other hand, it may be difficult to prove wide recognition solely from the fact that a website was published just after the service launched.

When actually asserting a right of prior use, you will review advertising from the time, sales and transaction records, user numbers, published articles and so on. Even if the name is well known now, you need to separately confirm whether the conditions were met as of the relevant filing date. At launch, I think securing the search and filing schedule first reduces the uncertainty of the judgment more than relying on asserting a right of prior use later.

How to Proceed From Searching Candidate Names to Filing

In the preliminary search, check not only registered trademarks but also applications under examination. The free J-PlatPat is the starting point. It is important to search not only the candidate name's spelling but also its reading, combinations of similar words and related goods and services.

For example, even if searching for the name of a new SaaS in the Latin alphabet yields no matching results, a katakana trademark pronounced the same way may have been filed. Even with zero search results, searches under other conditions and an analysis of similarity remain. INPIT's guidance (Japanese) also states that similarity of trademarks is judged from appearance, pronunciation, concept and so on, and that a conclusion cannot be reached by searching alone. Also bear in mind that there is a time lag in reflecting data.

If you conduct the search all at once just before production begins, you lose the leeway to choose an alternative when a problem is found. I think the sequence that is easier to handle in practice is to conduct a simple search when there are two or three name candidates, examine the leading candidates in detail, and decide before spending significant production costs.

If the memo shared internally makes the following items clear, it becomes easier to align the understanding of the business unit and the people handling the procedures.

• Name candidates, their readings, and the goods and services actually to be provided
• Search conditions, date checked, any applications or registrations of concern and the results of their review
• The name to be adopted, the applicant, and the designated goods and services
• Planned filing date, date materials are finalized and date of external announcement

Decide the applicant in advance as well. If a name to be used by a company after its incorporation is filed in the founder's personal name, you will need to separately consider matters such as transfer of the right to the company and cost allocation. You will want to confirm the entity that holds the brand and the company that actually uses it, and avoid ownership unintentionally remaining split.

Note that the content of an application is subject to publication of the application under Article 12-2 of the Trademark Act. It is not necessarily the case that "if you file before announcing the service, the name will stay secret until the announcement date." For new businesses where confidentiality is particularly necessary, you need to consider the schedule including the relationship between publication of the application and the press announcement.

The Content of Designated Goods and Services Matters More Than the Class Numbers

In a trademark application, you designate the goods and services for which the trademark will be used. In Japanese practice, services are referred to by a specific term, but they are simply services. Goods and services are divided into classes, but goods and services with different class numbers may still be judged similar. Article 6(3) of the Trademark Act also states expressly that the classes do not define the scope of similarity of goods and services.

For this reason, do not end the meeting at "which class to file in"; you need to confirm specifically what will be written in the application. Because the same class contains different goods and services, the scope of protection is examined based on the goods and services specifically designated.

For a SaaS business, there are situations where you consider designating software downloaded by users separately from the provision of software used online. If you also provide related consulting, you check its content. The work involves matching your business to the wording of the application, in light of your contracts and how the service is provided.

While referring to sources such as the Japan Patent Office's guidance on classes of goods and services (Japanese), identify your current business and the business you actually plan. Even where there are plans for additional development or overseas expansion, the first step is to make concrete which entity will use the name for which goods and services.

Anticipating future plans has meaning, but it is not the case that you should simply list unrelated goods and services broadly. Article 3 of the Trademark Act makes registrable trademarks used for goods and services relating to one's own business. Decide in light of confirming the intention to use and the cost of adding classes.

After registration, a registered trademark that has not been used in Japan continuously for three years or more may become subject to a request for a trial for cancellation due to non-use (Article 50 of the same Act). Since actual use and legitimate reasons for non-use become issues, managing the status of use is necessary even after obtaining a registration with broad designations.

Examination Timeline and Post-Registration Management

When planning the launch schedule, also factor in that there is an examination period between filing and registration. In the Japan Patent Office's examination commencement status (Japanese) updated on August 3, 2026, the outlook for ordinary domestic applications on which examination commences between August and November of that year was shown as 5–9 months from filing, depending on the field. This is a guide to when examination begins and is not a figure guaranteeing the period from filing to registration.

If a notice of reasons for refusal is issued, it also takes time to review its content and respond with a written opinion, an amendment and so on. If registration will not be completed by the service launch, business decisions become necessary, such as whether to launch while the application is pending or whether to leave room to change the name. Do not take comfort merely from having filed; confirm the relationship with prior trademarks and the cost if a change becomes necessary after launch.

There is also an accelerated examination (Japanese) system, but it has eligibility conditions such as the status of use or preparation for use. Do not treat it as a system automatically available just because the launch date is near; you need to confirm eligibility before factoring it into the schedule.

The duration of a registration is 10 years from the date of registration of establishment, and it can be continued through renewal registration (Article 19 of the Trademark Act). The ordinary period for filing a renewal application is from six months before the expiration of the term until the expiration date (Article 20 of the same Act). Rather than relying on procedures available after the deadline has passed, it is important to record the registration date, expiration date and the person responsible for renewal at the time of registration.

In the event of a change of company name or a business transfer, review the holder and the entity using the mark as well. Rather than ending with filing away the registration certificate, I think an appropriate practice is to check, whenever the business changes, whether the designated goods and services still match the current business.