At Takaoka IP, our trademark and design prosecution services are led by experienced legal professionals with deep knowledge of Japanese IP law and practice. We assist clients—both domestic and international—in filing and securing protection for their trademarks and designs before the Japan Patent Office (JPO), offering careful guidance throughout the entire prosecution process.
Our trademark practice involves advising clients on the proper identification of goods and services under Japan’s unique adaptation of the international classification system. While based on the Nice Classification, the JPO requires precise and formal expressions, often involving linguistic nuances specific to Japanese. We work closely with clients to understand the nature of their business and propose descriptions that avoid unnecessary refusals while preserving the scope of protection.
We also support clients through Japan’s distinctive approach to determining trademark similarity. Because the JPO’s decisions often reflect Japanese linguistic and cultural perceptions, foreign applicants may find them counterintuitive. Our attorneys provide clear explanations of refusal grounds and propose practical strategies to overcome them.
We are especially experienced in handling provisional refusals issued under the Madrid Protocol. Our attorneys have successfully resolved hundreds of such cases, and we offer efficient and cost-effective responses that aim to maximize the likelihood of allowance while minimizing client costs.
On the design side, we assist clients in complying with Japan’s highly formal requirements, including the mandatory submission of six orthographic views (front, rear, left, right, top, bottom). When clients are missing views or require adjustments, our team proactively follows up to ensure complete and compliant submissions. We can even assist in preparing the required drawings when necessary.
As with trademarks, design similarity in Japan can be subjectively determined. Drawing from our extensive experience with both successful and refused design applications, we offer targeted advice and develop effective arguments to overcome refusals and secure rights.
Strategic Advice and Client-Centered Solutions
At Takaoka IP, we go beyond formal prosecution by providing strategic and practical guidance tailored to each client’s needs. For trademarks, we analyze prior registrations and advise clients on how to avoid potential refusals based on the JPO’s standards of similarity. When objections arise, we offer clear explanations—particularly where cultural or linguistic differences might cause confusion—and propose effective options for overcoming the refusal.
For design filings, we advise clients on how best to prepare or revise drawings to comply with JPO requirements and to maximize the strength of their design rights. Our team’s technical and procedural expertise enables us to recommend persuasive and cost-effective solutions.
Whether navigating complex refusals, adjusting application strategies, or coordinating with international teams, we ensure that our clients receive well-informed, responsive, and actionable recommendations at every stage of the process.
