What is a decision of trademark registration? What is the response to the decision of trademark registration?

What’s a decision of trademark registration?

I applied for a trademark to Japan patent office the other day! What procedures are there after that before it is registered?

After filing an application, it usually takes about 9 months to receive the examination results from the Japan Patent Office. If it is not likely to be registered, you will receive a “notice of reasons for refusal,” and if it is registered, you will receive an “decision of trademark registration.

So there are two types of examination results.
What happens if I receive an “decision of trademark registration”? I have to pay the fees for registration, right?

Yes, let me explain about the “decision of trademark registration”.

In this section, we will introduce what a registration decision is and what to do in response to a registration decision.

Apart from that, if you want to know what an decision is, including an assessment of refusal, please refer to the following article.

What is a decision of trademark registration?

In a nutshell, a decision of trademark registration is a notice to grant registration.
However, just because a registration decision has been issued does not mean that the trademark has been registered. In other words, the trademark right has not yet been created.
In order to register a trademark, procedures must be taken after the registration decision is made.

Before explaining the procedures, let us look at what the formal “decision of trademark registration” is.

Legal provisions

Article 16 of the Japan Trademark Law provides for an examiner’s decision to register a trademark.

Article 16 Where no reasons for refusal are found in connection with an application for trademark registration within the time limit provided by Cabinet Order, the examiner shall render a decision to the effect that the trademark is to be registered.

Thus, in the law, the term “the examiner shall render a decision to the effect that the trademark is to be registered” is used instead of “registration decision”.
As stated in Article 16 of the Japan Trademark Law, when there are no reasons for refusal, or when the reasons for refusal, if any, have been resolved, the examiner shall issue an examiner’s decision to register the trademark.

The term “within the time limit provided by Cabinet Order” is a requirement of the Madrid Protocol, which guarantees that the applicant will know within a certain period of time whether or not there are grounds for refusal of his/her trademark application.
This “period of time specified by Cabinet Order” is one year and six months (Article 3 of the Executive Order).

Registration under the former law

Prior to 1996, trademark applications for which no reasons for refusal were found were published prior to registration and the public was given an opportunity to file an opposition.

The application publication system is a system of disclosing the contents of the application.
The disclosed application was made available to the public, and anyone who objected to the trademark being registered could file an opposition (pre-registration opposition system).
If no opposition was filed during the opposition period, the application was cleared for registration after the expiration of the period.

As explained below, there is now an opportunity to file an opposition after the registration decision has been made.

How long does it take to receive a registration decision?

Please refer to the following article for information on how long it takes from application to registration.

What to do after the registration decision is issued

Procedures for payment of the registration fee

If you wish to have your trademark registered after the decision of trademark registration, you must pay the fee for registration within the specified period.
Failure to pay the registration fee will result in the trademark application being rejected.

There is a deadline for payment of the registration fee, and the registration fee must be submitted and paid within 30 days from the date of receipt of the written decision of registration (extensions are possible).
In addition, the number of years for payment of the registration fee can be selected from 5 or 10 years.
For trademarks for goods or services that will not be used for longer than 5 years, the 5-year payment may be a good option. If you wish to keep the trademark right alive for 10 years, you must pay the second 5 years in installments.

If you wish to pay for 10 years with a single transaction, the fee is 32,900 yen x the number of classes.
If you wish to pay for 5 years in installments, the fee is 17,200 yen x the number of classes.
As you can see, the registration fee varies depending on the number of trademark classes for which the application is filed.

Click here for information on extensions of the registration fee payment deadline and how to calculate the registration fee payment deadline.

For detailed procedures for payment of registration fees and preparation of registration fee payment forms, click here.

After payment of registration fee

Registration of establishment will be made within one week after payment of the registration fee. At this point, the trademark right will be granted.
A registration certificate (in paper form) will be mailed from the JPO about 1 to 2 months after the registration.

Publication

After the registration of establishment, the trademark gazette will be issued in about 2 to 3 weeks.
This gazette can be viewed by anyone from the JPO’s website.
https://www.j-platpat.inpit.go.jp/t0000

During the first two months after publication of the trademark gazette, anyone can request cancellation of the trademark registration (opposition to trademark registration).

Operation of the JPO

Form of “decision of trademark registration”

The actual decision of trademark registration, which you will receive in the following format.

If you filed electronically, you will receive it in data format. If you mailed the application to the JPO, you will receive it in paper form. Please be careful not to overlook it.

I have to inform the JPO when I move because I don’t want the decision of trademark registration to be sent to my old address.

Yes, you need to go through the change of address procedures. Please be aware that there are documents and fees that must be submitted.

Amazing DX solves troublesome post-registration decision procedures

Payment of the registration fee after the decision of trademark registration is often troublesome, such as preparing documents and patent stamps.
By hiring a Japan trademark attorney’s office from the application stage, you can avoid missing the registration decision and unintentionally missing the deadline for payment of the registration fee.

Amazing DX is an online trademark application service operated by a well-established trademark attorney firm in Japan.
We will handle the tedious trademark-related procedures for you inexpensively and speedily. We also offer consultation services, so please take advantage of this service.