How to assign/transfer trademark registration? Precautions and required documents explained

Can trademark rights be transferred?

I have registered trademarks in my personal and company names. What happens to those trademark rights if I die? Do I need to notify to transfer the rights to anyone else?

In the event of the death of the trademark owner (individual) or the merger or demerger of the trademark owner (company), the transfer of rights will take effect without notification (registration) to the Japan Patent Office. However, an application for registration of transfer must be filed without delay. If a trademark right is transferred to another person (third party), the transfer will not take effect without registration to the JPO.

I see. I need to file a notification with the patent office either way. I wonder if there is any difference between before and after registration of trademark applications? I’d like to know the specifics and precautions, including those points.

This article explains the procedures and precautions for transferring trademark rights.

Types of trademark right transfers

Since trademark rights are intangible property rights, their ownership can be changed. Transfer procedures concerning trademark rights can be broadly classified into the following two categories.

• General succession　＝　inheritance, corporate merger, corporate split, etc.
• Specific succession　＝　transfer to a third party, relinquishment of an interest, etc.

If the trademark is pending, “rights arising from the application for trademark registration” will be transferred. Please note that the forms of documents to be submitted are different between the pending application and the registered trademark.

Registering transfer with the Japan Patent Office

The transfer of property is usually concluded by exchanging a written agreement that outlines the details of the agreement between the parties.

However, in the case of trademark rights (as well as patent rights, utility model rights, and design rights), in addition to the agreement between the parties, an application to register the transfer of rights with the Patent Office is required. The transfer of rights becomes effective when it is recorded in the registry kept at the JPO.

In the case of general succession such as inheritance or corporate merger, the transfer of rights takes effect even without registration with the JPO, but an application for registration of transfer must be filed without delay. It should also be noted that in the case of specific succession, the transfer will not take effect without registration with the JPO.

Division of trademark right

If a trademark right has two or more designated goods (services), the owner of the trademark right may divide the trademark right into separate parts for each of the designated goods (services) and transfer the trademark right to another party (another company). It is also possible to transfer the trademark by classes, not by designated goods (services).

Necessary fees

There are two main categories depending on whether the application is pending (before registration) or after registration. In the case of post-registration, the JPO fees differ depending on whether the transfer is registered due to inheritance or merger, or due to other causes.

It should be noted that the JPO fee for the transfer procedure of pending applications is required by patent stamps, while the JPO fee for the transfer procedure after registration is required by revenue stamps.

If you are not familiar with the process, you may find it complicated and difficult to understand what documents you need to prepare for the application. By requesting the process to a patent attorney, patent firm, or other specialists, the process can be advanced smoothly.

If you have already requested a specialist to handle your trademark application or registration, he can also handle the transfer. If you are concerned about the cost, we recommend that you check in advance.

Documents required for application of transfer registration

In addition to the prescribed application form, documents evidencing succession of rights—such as inheritance, corporate merger, or assignment—must be attached and submitted.

These supporting documents must bear the registered personal seal (jitsuin) or the registered corporate representative’s seal to verify the identity of the relevant party. The required supporting documents vary depending on whether the application is pending (before registration) or already registered, as well as on the method of succession.

For pending applications (before registration), a Notification of Change of Applicant Name must be filed with the Japan Patent Office (JPO). After registration, an Application for Registration of Transfer must be filed.

Reference: Japan Patent Office (JPO) Website (*Japanese)

• Notification of Change of Applicant Name Due to a Specific Succession (e.g., Assignment, Waiver of Ownership Interest)
• Notification of Change of Applicant Name Due to a General Succession (e.g., Inheritance, Merger, Corporate Split)
• Procedures for Transfer of Rights, etc.

Precautions regarding transfer of trademarks

If the transfer of a trademark constitutes a conflict of interest as defined in Articles 356 and 365 of the Companies Act, etc., documents proving approval at a general meeting of shareholders, etc., will be required in addition to the documents shown above.

Since the required documents differ depending on the nature of the corporation, please refer to the corporation’s certificate of registered matters and the “2. Necessary Documents in “Conflict of Interest in Application for Transfer Registration” (available only in Japanese).

I understand that when trademark rights are inherited or transferred, a notification with the Patent Office is required, and the application forms, deeds, etc. and fees vary depending on the details of the inheritance or transfer. I guess I’d better consult or request a specialist such as a patent attorney or a patent firm.

How to license trademark instead of transfer?

If you are considering a license agreement of a registered trademark without transferring the trademark right, please refer to the following page for an explanation.

When name or address is changed

When a name or address of an applicant (right holder) changes, it is necessary to submit a written notification of the change to the JPO even if the trademark has not been assigned to another person.

It should be noted that the form of the document and the necessary JPO fees (stamp fee) vary depending on whether the application is pending or has been registered.

Please refer to the following article for details.

Summary

Please feel free to contact us if you have any concerns, doubts, or problems regarding procedures for the transfer of rights in connection with the assignment or inheritance of a trademark.

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