What is a change of applicant’s name of a trademark?

My company is merging, so I need to put all my company’s trademarks, both pending and registered, in the name of the new company. What procedures do I have to go through?

There are different documents to apply for and different stamp fees depending on whether the trademark is before registered or after registered. It’s a bit complicated, so please check carefully!

It is possible to change the name on the trademark rights during the procedure for trademark registration or even after the trademark has been registered.
The procedures you need to follow with the Japan Patent Office are explained in detail on this page.

What procedures are necessary for me?

You can change the information of the holder of trademark rights either before or after the trademark becomes registered.
First, check the following points to see which change procedure you need to carry out.
This divides the procedures into four broad categories.
If the situation is different for several trademarks, you will also have to go through the procedure for each of them.

1. the right holder changes to another person
   (1) Before the trademark registration
   (2) After the trademark registration
2. The entity of the right holder is the same, but its address or name changes.
   (1) Before the trademark registration
   (2) After the trademark registration

This page explains above 1.

If you would like to know the procedures for above 2., please refer to the following guide pages: ‘Notification of change of address’, ‘Notification of change of name’, and ‘Application for registration of change of indication of registered owner’.

Procedures when “1. the right holder changes to another person”.

The application documents and stamp fees differ before and after registration of a trademark.

The following applies.
*Transferring or selling the rights to a third party.
*A company merges or splits up.
*to switch a trademark in my personal name to a corporate name.
*Trademarks are inherited from the estate of a deceased person.
*A part of the right holders relinquish a jointly applied trademark.

The procedure may be carried out by either the ‘assignor’ (the party passing on the rights) or the ‘successor’ (the party receiving the rights), but in practice it is often the ‘successor’ who carries out the procedure, so the following explanation will assume that the procedure is carried out by the ‘successor’.

(1) Before the trademark registration
When a trademark is applied for, ‘the right deriving from application for trademark registration’ arise. Before the registration of a trademark, the applicant has this ‘the right deriving from application for trademark registration’ and can transfer it.

●The applicant must submit a ‘Notification of change of applicant’s name’ to the JPO.
Stamp fee: JPY 4,200 *Patent stamps
The deed of assignment is attached as a document proving the succession (assignment) of the rights.
The deed of assignment must include the address, name (in the case of a legal entity, corporate name, and name of the representative), and seal of the assignor.
In the case of inheritance, a copy of the family register is required.
In the case of procedures by a representative, a power of attorney is required.
The JPO completes the process in about one month. There is no notification from the JPO. Only if there are deficiencies in the procedure will you be notified.

(2) After the trademark registration
After the trademark registration, the ‘trademark right’ can be transferred.

●An ‘Application for registration of transfer of trademark rights’ is submitted to the JPO.
Stamp fee: JPY 30,000 per trademark *Revenue stamps
The deed of assignment is attached as proof of the succession (transfer) of the rights.
The deed of assignment must include the assignor’s address, name (in the case of a legal entity, the corporate name, and name of the representative), and seal.
In the case of inheritance, a copy of the family register is required.
In the case of procedures by a representative, a power of attorney is required.
If the notification is accepted by the JPO, the changes will be entered in the register and you will then receive a ‘Trademark Registration Notification’ by post (approx. 3-4 weeks).

＜NOTES＞
Only a case for before registration (notification of change of applicant’s name), the payment of patent stamps is required.
The “Notification of change of applicant’s name” can be filed electronically.
The “Application for registration of transfer of trademark rights” must be submitted by post or at the counter (Internet application software is not supported).

Each document must be prepared in accordance with the JPO’s regulations, so please check the JPO website for details.

★Omission of attaching a certificate of registered matters in JPO-related procedures (in Japanese)
★About change of the applicant’s name (in Japanese)

If you have a pending application, it may be advantageous to complete the change procedure as soon as possible and before registration, as the procedure after registration involves more documents and stamp fees!

Yes, the stamp fees make all the difference! It’s complicated, so even if you have to ask a patent attorney, it’s better to prepare early!

Summary

We have explained several documents, but the procedure itself is not complicated if you can determine the status of the trademark in question and which procedure you should follow.
Please check the forms at the JPO.

If you are not sure which procedure you should follow, or if you are having trouble with a large number of applications, please feel free to contact our office. Our patent attorneys specializing in trademarks will be happy to assist you.