Is your trademark expired?

Oops! I’ve been managing my registered trademarks and found one that hasn’t been renewed by the expiration date. What should I do? Will I have to file the application all over again?

Please don’t worry. It is true that trademark rights expire after 10 years if you fail to renew them. However, even after the expiration of the duration, it is possible to keep the trademark right alive if you apply for renewal within a certain period.
First, let’s sort out the situation and proceed with the renewal procedure according to the current situation.

Good, so there is a way to do something about it. What exactly should we do?

After the expiration of the trademark right

Trademark rights expire after 10 years, but a renewal application can be filed 6 months before the expiration of the duration (Article 20(2) of the Trademark Law).
On the other hand, even after the expiration of the duration, a renewal application may be filed within the period provided by the Ordinance of the Ministry of Economy, Trade and Industry (Article 20(3) of the Trademark Law).

Even in the unlikely event that the trademark owner fails to renew within the duration, the trademark owner still has the opportunity to renew. If your service or business is still ongoing and you wish to continue using the registered trademark, do not forget to file for renewal.

What is the period provided by the Ordinance of the Ministry of Economy, Trade and Industry?

Laws and regulations concerning trademarks include the Trademark Law and the Trademark Law Enforcement Regulations. The period specified in Article 20(3) of the Trademark Law is specified in Article 10(2) of the Trademark Law Enforcement Regulations as “six months after the expiration of the period specified in paragraph (2) of the said Article. (Hereafter, “six months after the expiration of the period,” is used.)

However, please note that when renewing during the six months after the expiration of the period, in addition to the registration fee to be paid, a surcharge of the same amount as the registration fee, i.e., twice the registration fee, must be paid to the JPO (Trademark Law Article 43(1)).

How long does the trademark right continue to exist?

Article 20(4) of the Trademark Law clearly states that “Where the holder of trademark right fails to file an application for registration of renewal within the period during which he/she may file an application for registration of renewal under the preceding paragraph, his/her trademark right shall be deemed to have expired retroactively at the expiration of the duration.
The explanation of article by article states when “within the period during which an application for registration of renewal may be filed” means. According to the explanation of article by the article, the period is “six months after the expiration of the period.
Therefore, the trademark right of a registered trademark continues to exist until the expiration six months after the expiration of the said period.

Restoration of trademark rights

If the renewal application cannot be filed.

If the holder of a trademark right fails to file an application for renewal of trademark registration within the stipulated time limit, he/she may file an application for renewal if he/she has a justifiable reason for failing to file the application (Article 21(1) of the Trademark Law).
Please note, however, that the examiner will determine the appropriateness of “justifiable reasons,” so it does not mean that a renewal application can be filed by simply explaining the reasons.

“Justifiable reasons” must be submitted in the form of a statement of reasons for recovery, and the deadline for submission is two months from the date on which the justifiable reasons ceased to exist (Trademark Law Enforcement Regulations, Article 10(3)).

If the justifiable reasons are not accepted

If the trademark right cannot be restored, the trademark right of the registered trademark will be extinguished. If you wish to re-establish rights to the same trademark, you must file an application for trademark registration from the beginning.

Points to note if trademark rights can be restored

If “Justifiable reasons” is found by the examiner and an application for renewal of trademark right can be filed, the duration of the trademark right is deemed to have been renewed retroactively to the time of expiration (Article 21(2) of the Trademark Law).
However, please note that the situation is different from when the trademark right is renewed within the term, and the effect of the trademark right is partially limited.

Limitation of the effect of a restored trademark right

Article 22 of the Trademark Law specifies the periods and acts for which the trademark right is not effective when the trademark is renewed in accordance with Article 21(1) of the Trademark Law, as follows.

• Periods: from six months after the expiration of the period to “Justifiable reasons” is found and the renewal of the trademark is registered

• Acts: (1) use of the registered trademark in connection with the designated goods and/or service,

(2) Each item of Article 37 (Acts deeming infringement) of the Trademark Law

The Trademark Law specifies eight acts that are deemed to constitute infringement.

For an article on trademark infringement,

Leave deadline management to us!

So deadline management is important. It’s tough to do it alone…

We provide deadline management services not only for trademarks but also for other types of intellectual property rights.
Some applicants request us to manage their intellectual property rights that have already been filed or registered in the middle of the process.
If you have any problems with renewal management or deadline management, please feel free to contact our office first.

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