trademark registration apparel

trademark registration

Precious ip Inc

Precious ip Inc Japan World Wide
個人情報保護 守秘義務厳守

弁理士  日本弁理士会会員

trademark registration apparel

We will explain the characteristics, trends, classification, etc. of trademark registration for fashion brands such as apparel, clothes, shoes, accessories, bags, and cosmetics.

Apparel products are characterized by rapid changes, influenced by trends and seasonality.

There is also a strong tendency to buy products based on the brand name.

For example, look at brand names such as HERMES, CHANEL, LOUIS VUITTON, DIOR, apparel products, clothes, shoes, bags, bags, accessories, cosmetics, etc. I buy more and more fashion products.

Therefore, it is characteristic that trademark registration is carried out to protect the brand.

In terms of the number of trademark applications, Class 25 clothing and footwear, which is the core category of apparel, ranks third in the field of goods.

By the way, the 1st place is Class 9 various machines/equipment/software related products, and the 2nd place is Class 30 sweets/foods related products.

People in the apparel industry have filed numerous trademark applications to actively protect their brands.

This is proof that many brands are born in the fashion industry.

For apparel products, the point of view of which brand is important.

Therefore, the brand should be differentiated.

In order to achieve that differentiation, it is important to have a trademark right that prevents others from using it.

If you have a trademark right, you can tell others not to use it in the same or similar range.

Therefore, apparel brands, more than others, need to register their trademarks and obtain trademark rights.

In other words, trademark registration is the legal protection of brand names.

You don’t have to be trademarked to use your brand name.

However, it is important to be aware of the risks of continuing to use a trademark without registering it.

A brand name or logo that you have created may not be usable unless you register it as a trademark.

As a general rule, trademark registration is on a first-come, first-served basis, and the first to apply for trademark registration wins.

In other words, trademark registration is a talisman to avoid risks.

It can also enhance brand value and differentiate itself from competitors.

Furthermore, registering a trademark will serve as an advertisement and increase credibility.

Here, we will explain in detail about trademark registration for apparel brands and fashion brands.

1. Brand name matters

Apparel brands and fashion brands are industries in which brand names are important, and many companies are registering their trademarks.

In the apparel industry, looking at the types of products, for example, clothes are sweaters, trousers, etc. Basically, all companies have the same products, and it is difficult to differentiate them from other companies.

In that case, what is important for users and consumers is “What brand of clothing is it?”

For example, for a 100% cotton t-shirt made from the same material, there is a big difference in price between an unknown brand and CHANEL.

In order for many brands to retain their customers, it is only possible to have a trademark that can be differentiated from other companies.

In other words, the apparel brand is the foundation of the brand image.

Therefore, trademark registration is necessary to prevent others from using the brand name without permission.

2. Characteristics of the apparel industry

In the apparel industry, trademark registration has different characteristics from other industries.

For example, fashion is fast, there are many types of apparel-related products, and designers want to register their personal names as trademarks.

(1) Fast fashion

In the apparel industry, trends change faster than in other industries, and even products that were considered good this year are often said to be outdated next year.

Consider carefully whether this product should be registered as a trademark, as it is trending quickly.

Trademark registration takes time from application to registration, so the boom may be over when the trademark is registered.

However, if certain requirements are met and the accelerated examination system is used, the trademark can be registered in about two months after filing the application.

(2) Many types of apparel-related products

In order to file an application for apparel-related trademark registration, it is necessary to prepare an application form.
In the application form, it is necessary to describe the goods and services for which protection is sought, “by class.”

For apparel-related products, there are more classifications of the application form.

The more divisions there are, the higher the cost.

It is also possible to apply for additional trademarks and increase the classes covered later.

However, there is a risk that someone else will file before you.

Therefore, it is recommended to apply as early as possible for classes that are likely to be commercialized.

When registering a trademark, decide the order of priority for each product before registering.

Apparel-related products are classified into many categories, and trends change quickly in this industry.

Therefore, let’s set priorities, for example, registering standard products that continue to sell, or registering trademarks from products that are likely to be commercialized.

(3) Trademark registration of personal brand

As a general rule, trademark registration of a personal name brand cannot be done if there are people with the same name. Under trademark law,

To protect moral rights, another person’s name cannot be registered as a trademark without the consent of that person (Trademark Law, Article 4, Paragraph 1, Item 8). In the case of an unusual person’s name, there are cases where consent is obtained from that person. However, if there are many people with the same name, it will be difficult to obtain consent from all of them.

For example, I applied for trademark registration for a logo that includes the letters “KENKIKUCHI” used by accessory designer Ken Kikuchi, but it was rejected because it violated Article 4, Paragraph 1, Item 8. After that, we fought in the trial against the trial decision and in the lawsuit against the trial decision, but it was not overturned.

On the other hand, when I applied for the phrase “Matsumoto Kiyoshi” as a “sound trademark,” it was rejected by the Patent Office on the grounds that it “contains someone else’s name.” After that, the Intellectual Property High Court ruled in August 2021 that “the phrase is associated with Matsumoto Kiyoshi as a drug store, and it cannot be said to refer to a person’s name.” (Reiwa 2 (Gyo-ke) No. 10126 regarding the sound trademark of “Matsumoto Kiyoshi”).

As described above, Matsumotokiyoshi is a drugstore, and unless there are special circumstances such as it being judged that it cannot be said to refer to a person’s name, it is difficult.

3. Apparel-related category

There are more categories related to apparel-related trademark registration than in other fields.

In the case of fashion-related products, there are various fashion-related items, and it is characteristic that they are divided into multiple categories according to their properties, uses, and materials.

Apparel-related products, for example, are as follows.

Category Product example
Category 3 Nails, false eyelashes, perfumes, cosmetics, etc.
Class 9 glasses, sunglasses
14 types necklaces, rings, watches, key chains
Class 18 Bags, wallets, makeup pouches
Class 25 Clothing
26 Buttons, brooches, hair bands
Category 35 Store names, mail-order sites, retail store services (including Internet)

Apparel-related brands are not limited to “clothes (25 categories)” but are also being categorized into others.

I will explain each category in detail.

(1) 3 types of false nails, false eyelashes, perfumes, cosmetics, etc.

The three main products are cosmetics, soaps, and toothpaste.

Cosmetics may be included in fashion-related products.

Nails, false eyelashes, perfumes, etc. are also included in the three categories.

Recently, I’ve been wearing a mask all the time, but I think mascara, which is eye cosmetics, will become a fashion item.

Also, along with manicures, nail nails are also included in fashion items.

For example, CHANEL is also focusing on cosmetics.

(2) His glasses, sunglasses, etc. in the 9th category

The main commodities in the 9th category are cameras, televisions and other electrical communication equipment, smartphones, computer programs, and so on.

However, glasses and sunglasses are included in category 9.

Therefore, when selling eyeglasses and sunglasses as products, it is necessary to hold down Class 9 as well.

(3) 14 types of earrings, necklaces, rings, watches, etc.

There are 14 types of so-called accessory items.

Watches such as earrings, necklaces, bracelets, pendants, brooches, rings, tie clips, cufflinks, and wristwatches.

Class 14 also includes precious metals.

(4) 18 types of bags, wallets, umbrellas, etc.

There are 18 types of so-called small items.

Bags, bags, wallets, business card holders, umbrellas, etc.

(5) 25 kinds of clothes, underwear, Japanese clothes, hats, shoes, etc.

This is the main category of apparel products.

Clothes, coats, sweaters, shirts, nightwear, underwear, camisoles, tee shirts, Japanese clothes, hats, belts, shoes, special sports shoes, special sports costumes, etc. All clothing and footwear.

(6) 26 hair bands, wigs, buttons, etc.

So-called accessories other than precious metals fall into class 26.

Buttons, hooks, zippers and other buttons, false mustaches, wigs, hair bands, hairpins and other headdresses, costume brooches, etc.

(7) Type 35 store name, EC site name, etc.

Class 35 is not goods, but services.

Typical examples are store names and EC site names.

Under the trademark law, it is classified as retail or wholesale.

Apparel-related services are mainly as follows.

Provision of benefits to customers in the retail or wholesale business of textiles and bedding

Provision of benefits to customers in clothing retail or wholesale business

Provision of benefits to customers in the footwear retail or wholesale business

Provision of benefits to customers in the retail or wholesale business of bags and bags

Retail/wholesale such as provision of benefits to customers in the retail or wholesale business of personal effects

Other services include advertising and providing information on product sales.

Apparel brands often use it as store names and EC site names.

For example, Fast Retailing Co., Ltd., which is famous for UNIQLO, has registered the UNIQLO brand name in 35 categories as shown below.

Chapter 35 “Providing services to customers in the retail or wholesale business of clothing; providing services to customers in the retail or wholesale business of textiles and bedding; providing services to customers in the retail or wholesale business of footwear. provision of benefits to customers in the retail or wholesale business of bags and bags; provision of benefits to customers in the retail or wholesale business of personal effects; retail or wholesale of eyeglasses and watches provision of benefits to customers in the retail or wholesale business of cosmetics, toothpastes and soaps, provision of benefits to customers in the retail or wholesale business of drugs and medical aids, Provision of benefits to customers in the retail or wholesale business of woven toilet seat covers, woven toilet lid covers, and woven toilet paper holder covers; provision of benefits to customers in the retail or wholesale business of rugs

Trademark Registration No. 5137361 (Registration date June 6, 2008)

Furthermore, in the apparel industry, company names and store names are often different from EC site names. The company name and store name are the things that appear on the surface, and in addition to the brand name, the company name and store name must also be registered as trademarks.

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