Foreign clients frequently ask whether they should file a single trademark application covering multiple classes of goods and services (multi-class application) or file separate applications for each individual class (multiple single-class applications).

In this guide, we explain what a multi-class application is beforethe Japan Patent Office (JPO), how to calculate the associated fees, and which approach is best for your needs. We will cover both direct filings to the JPO and applications filed via the Madrid Protocol.

Overview

In Japan, multi-class applications are permitted, allowing multiple classes to be included in a single application. The overview of the multi-class applications is as follows:

Official filing fee payable to the Japan Patent Office (JPO)

JPY 3,400 + JPY 8,600 × (number of classes)

Advantages of Multi-Class Applications

Since only a single application form is required and the timing of filing and registration is unified, both filing and management costs can be reduced. Furthermore, renewal deadlines are consolidated into a single date, simplifying the long-term maintenance of your trademark portfolio.

Disadvantages of Multi-Class Applications

If a refusal is issued for even one class, the other classes (even those without issues) may be delayed or may not proceed to registration. To proceed with registration in such case, it may be necessary to take actions such as deletion or division of the application.

How to Decide Whether to File a Multi-Class Application

It is advisable to conduct a thorough assessment in advance, including clearance searches. Classes with a low risk of refusal can be grouped into a single application, while classes with a higher risk of refusal are better filed separately.

Multi-class Trademark Applications in Japan

When filing a trademark application in Japan, you must specify the trademark itself along with the goods and services for which the mark will be used. These goods and services must be categorized and listed according to their respective classes (Article 6 of the Trademark Act).

In Japan, while only one trademark can be included per application (the "One Trademark per Application" principle), you are permitted to include multiple classes within that single application. Conversely, you may also choose to file separate applications for each individual class. Both methods are acceptable, and applicants can choose the one that best suits their strategy.

The official filing fees payable to the Japan Patent Office (JPO) increase based on the number of classes and are calculated as follows:

3,400 JPY + 8,600 JPY x (number of classes)

(Note: Registration and renewal fees also increase proportionally according to the number of classes.)

Multi-Class and Multiple Single-Class Applications

Benefits of Multi-Class Applications
1. Cost Savings

In general, a multi-class application is more cost-effective than filing separate applications for each class. Since the total fee is a combination of a base filing fee and an additional fee per class, the official costs - including intake, application preparation, electronic filing, and reporting - are streamlined. Consequently, the combined total of the official JPO fees and the patent attorney's professional fees is typically lower than the cost of filing individual applications for each class.

Example of Filing Fees;
Case 1: Filing two classes in a single application
3,400 JPY + (8,600 JPY x 2 classes) = 20,600 JPY
Case 2: Filing two classes separately in two individual applications
(3,400 JPY + 8,600 JPY) x 2 applications = 24,000 JPY

Please note that the comparison above covers only the official JPO fees (government fees). Patent attorney fees will be charged separately.

2. Simplified Management

Multi-class applications also offer the benefit of centralized management. Since the filing date, application number, examination progress, registration number, renewal cycle, and changes of ownership are all managed under a single case, administrative workload is significantly reduced.

This is particularly advantageous for trademarks that need protection across multiple classes covering both goods and services.

For example, when selling apparel online, it is necessary to secure rights in Class 25 (clothing), Class 35 (retail services), and Class 42 (online software and services). Being able to manage these under one single registration provides high practical convenience.

Risks and Disadvantages of Multi-Class Applications

The primary drawback of a multi-class application is that a problem arising in one class can affect other classes that are otherwise trouble-free.

For example, if you file an application covering Class 25 and Class 35, and the JPO issues an Office Action (such as a conflict with a cited trademark or descriptive usage) specifically for Class 35, the examination for the Class 25 goods may be put on hold until the issue is resolved.

In such cases, the following three countermeasures are generally considered:

a) Amendment of Designated Goods/Services:
Narrow down or clarify the description of the designated goods or services to overcome the grounds for rejection. While this incurs attorney fees for the amendment, no additional official fees are required.

b) Deletion of Designed Goods/Services or Classes:
Delete the specific goods/services or the entire class that is subject to the rejection from the application. While this incurs attorney fees for the deletion, no additional official fees are required.

c) Divisional Application:
Separate the problematic portion of goods/services into a new, independent application, allowing the examination of the remaining portion to proceed ahead. However, this will incur additional official fees and attorney fees for the divisional application.

Which to choose, multi-class or separate application?

1. Cases Where Multi-Class Applications Are Suitable

In the following scenarios, a multi-class application may be more advantageous than filing multiple single-class applications:

  • When the risk of rejection for each class is low (e.g., a coined brand with low risk of similarity to cited trademarks, where a pre-filing search has shown no issues).
  • When a delay in registration is acceptable and cost reduction is the priority.
  • When you wish to minimize the administrative burden of trademark management (especially when using the same trademark for closely related classes).
2. Cases Where Individual Applications Are Suitable

Conversely, in the following scenarios, filing multiple single-class applications may be more beneficial than a multi-class application:

  • When there is a high risk in one or more classes (e.g., highly competitive fields, concerns regarding descriptiveness, or the potential for cited trademarks).
  • When early registration is required for a specific class (e.g., due to a product launch deadline) and you want to avoid delays for the entire portfolio caused by an Office Action in a single class.
  • When an appeal or complex legal arguments are expected for only some of the classes.

Madrid Protocol: Multi-class Applications via WIPO

When filing an international trademark application under the Madrid Protocol, you simply designate Japan at the time of filing. In this case, you do not need to choose between different filing methods in Japan.

While not limited to multi-class applications, it is crucial to optimize the description of designated goods and services for Japan at the time of filing to reduce the risk of rejection. By using clear terminology that complies with JPO standards and avoiding overly broad or vague descriptions, you can prevent unnecessary Office Actions based on descriptiveness or lack of clarity. (For example, narrowing down a vague term like "retail services" to the specific retail or online retail services actually being provided.)

Summary

In this guide, we have explored the concept of multi-class trademark applications in Japan and identified the scenarios where this filing strategy is most beneficial.

We hope this information serves as a valuable resource for international applicants planning to register their trademarks in Japan.

Our Support at APEX Patent Solutions

As an international patent office based in Japan, APEX Patent Solutions provides comprehensive support to foreign applicants through our registered patent attorneys (Benrishi). We assist in developing optimal trademark filing strategies, drafting descriptions of designated goods and services that comply with JPO standards, and managing amendments, divisions, and renewals.

As your local Japanese representative, we can handle all procedures before the JPO on your behalf. Regarding multi-class applications, we offer the following specialized services:

  • Consulting to determine whether to file a multi-class application or separate individual applications.
  • Drafting designated goods and services in accordance with JPO standards to reduce the risk of rejection due to vague descriptions.
  • Responding to Office Actions received for multi-class applications (amendments, divisional applications, and arguments).

We offer free cost estimates and can propose a classification strategy tailored to your portfolio.

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