Trademarks

For internet services, many people want to create an attractive mark and obtain the exclusive trademark rights to use that mark.

For business venturists, the services intended to be offered are typically unconventional ones. As such, it is difficult to find appropriate descriptions included in the Japan Patent Office’s list of descriptions and “similar group codes” for goods and services.

The advantage of conducting a trademark search is that before you use such a trademark you can check whether your mark is already a registered trademark owned by someone else offering similar goods or services, in which case your use would infringe upon their rights. If you continue such infringement, the trademark owner might be able to stop you from offering your services or you might be subject to a penalty. Your expert adviser will be able to help you find appropriate goods or services descriptions in order to search for trademarks offering similar goods or services to you.

As internet services contain many aspects, you may sometimes need to consider applying for trademark protection in more than one class of goods and services. However, as applying in additional classes incurs additional costs, you would be wise to find the most efficient class(es) to cover your mark. Although, of course there is some risk if you choose not to apply in every applicable class.

I might suggest that you need to be aware of the risks, but that it is also not reckless to simply understand the risks, and make a judgment call to avoid the worst case scenarios. It is important to know which category of good and service is your core business, and how to deal with litigation if any problems arise.

Similarly, if you proceed with a trademark application without undertaking a prior search and become aware later, due to a provisional refusal, that there are similar trademarks, you face a dilemma. If you want to keep your mark, you might only be able to obtain protection in a smaller number of categories, and might have to miss out on ones important for your business due to the similar trademark already being used in those categories.

Trademark protection is an important matter for Ventures – arguably even more so than establishing the company – because trademark infringement can cause tangible damage to your business prospects and even result in penalties. As such we suggest that specialist advice should be sought.

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