Explaining how to renew a registered trademark yourself

How to renew?

I can now renew the duration of my trademark. I would like to start preparing for the procedure, but where do I start?

To renew the duration of a trademark right, you need to submit an application to the JPO and pay a renewal fee (registration fee).
There are forms to fill out and prepare the necessary information.

I see. Then, let’s get started with the preparations. Where do we start?

Renewal of trademark right

The details required to apply for registration of renewal of the duration of trademark right are specified in Article 20(1) of the Trademark Law and Article 23 of the Trademark Law.
It makes a big difference whether you know how to fill in the required documents, fees, etc., or not.

Here we will explain in detail the information required for renewal

目次 Index
  1.  Application Form for registration or renewal of trademark duration
  2.  Form and method of entry
    1. Document name (required)
    2. Date of submission (optional)
    3. Address (required)
    4. Trademark registration number (required)
    5. Classification of goods and services (optional)
    6. An applicant for registration of renewal (required)
    7. Indication of payment (changes depending on the payment pattern)
    8. Indication of the registration fee
    9. In case of later installment payment
  3. Leave the renewal procedure to us!

 Application Form for registration or renewal of trademark duration

Article 20(1) of the Trademark Law specifies the information that must be included in the application for registration or renewal of the duration of trademark right (hereinafter referred to as “application”).

 Form and method of entry

The application form differs for “lump-sum payment” and “payment in installments.
Prepare the application form according to the payment of the renewal fee.
Here, we will provide notes for each item.
Please also see the sample form below.
*This time, we will assume that the trademark owner himself/herself, not a representative, will apply for renewal registration.

Sample Form

Document name (required)

The name of the document should be 「商標権存続期間更新登録申請書」(“Application for Registration of Renewal of Trademark Duration).

Date of submission (optional)

The date of submission is optional, but please try to include the date of submission as much as possible, e.g., 令和 (Japanese era name)〇年〇月〇日.

Address (required)

Please address the application to 「特許庁長官殿」(the Commissioner of the Japan Patent Office).

Trademark registration number (required)


Please enter the trademark registration number, e.g., 商標登録第〇〇〇〇〇〇〇号 (Trademark Registration No. 00000).

If a division or transfer of the trademark right has been registered, enter the symbol assigned to the registration number followed by “1” for each digit, e.g. 「商標登録第〇〇〇〇〇〇〇号の1の1」(“1-1 of Trademark Registration No. 00000-1”).

Classification of goods and services (optional)

When applying for renewal of a trademark right that has been registered in multiple classes in a single application, and the number of classes is to be reduced, please add this field after 【商標登録番号】(trademark registration number) field and enter the classes of goods and services for which the renewal registration is sought. (e.g., 第1類 (“Class 1”) etc.)

When renewing all classes of the registered trademark, it is not necessary to set this column.

An applicant for registration of renewal (required)

Enter the holder of trademark right who is applying for registration of renewal of duration.
If an identification number has been assigned, please try to enter it.

When an identification number is provided, 【住所又は居所】(address or residence) may be omitted.

* When the applicant is applying online, the identification number must be provided.
* Either or both 【識別番号】 (identification number) or【住所又は居所】 (address or residence) must be indicated.

If there are two or more applicants (e.g., for a joint application for trademark registration), the 【更新登録申請人】(Applicant for renewal registration) field should be repeated.

Please provide 【電話番号】 (telephone number) or 【ファクシミリ番号】(facsimile number) field next to 【氏名又は名称】 (Name or Designation) field and try to include as much information as possible.
If the applicant is a juridical person, please provide the column of 【代表者】(Representative) following the column of 【氏名又は名称】 (Name or Designation).

Indication of payment (changes depending on the payment pattern)

* This section is for those who pay the registration fee (renewal fee) by patent revenue stamps and apply for renewal registration.

If the registration fee (renewal fee) is to be paid in installments, please indicate 「分割納付」(payment in installments) in the 【納付の表示】 (Indication of Payment) column.
Patent revenue stamps should be affixed in the upper left frame.
* Please note that revenue stamps will not be accepted.

When renewing by a lump-sum payment, the 【納付の表示】 (Indication of Payment) field is not required.

Indication of the registration fee

* This section is for those who pay the registration fee (renewal fee) by methods other than patent revenue stamps and apply for renewal registration.

In addition to patent revenue stamps, five types of payment are available: (1) prepayment, (2) direct debit, (3) credit card payment, (4) electronic cash payment, and (5) cash payment.

・When paying by prepayment, enter the number in the 【予納台帳番号】(prepayment ledger number) box, followed by the amount of the registration fee in 【納付金額】 (amount to be paid) box, using only Arabic numerals.
*”Yen” and “,” are not used.

・In the case of credit card payment, change 【予納台帳番号】(prepayment ledger number) to 【振替番号】(transfer number), enter the transfer number, and then enter the amount of the registration fee in 【納付金額】(payment amount) box, using only Arabic numerals.

・In the case of electronic cash payment (PayGee, etc.), 【予納台帳番号】(prepayment ledger number) should be changed to 【指定立替納付】(payment number) and the payment number should be written. In this case, the payment amount should not be entered in the 【納付金額】(payment amount) box.

・In the case of cash payment, 【予納台帳番号】(prepayment ledger number) should be changed to 【納付書番号】(payment slip number) and the payment slip number indicated on 「納付済証(特許庁提出用)」(Certificate of Payment (for submission to the JPO)) should be entered.
「納付済証(特許庁提出用)」(Certificate of Payment (for submission to the JPO)) must be attached to a separate sheet of paper within 3 days of the date of submission of the application and must be submitted with 「手続補足書」(Supplementary Procedures) for the submission of certificates and other documents.

In case of later installment payment

Please note that if you make installment payments at the time of trademark registration or renewal, the form for later payment is different.
A sample form is below.

Sample of later installment form

The differences are as follows

・The name of the document will be 商標登録料納付書 (Trademark Registration Fee Payment Form).
・Please enter 【商標登録番号】(trademark registration number) followed by 【商品及び役務の区分の数】(number of classes of goods and services).
・【更新登録申請人】(Applicant for renewal registration) box should be changed to 【商標権者】(Trademark owner), fill in the form with【納付者】(Payer) box.

Leave the renewal procedure to us!

There are a lot of rules and regulations for renewal, and it’s hard to prepare for them. While doing it yourself has the advantage of being less expensive, it also has the disadvantage of requiring time to research how to fill out the form.

Many people ask patent firms to manage not only trademarks but also other intellectual property rights after registration.
I think it is reasonable to ask a patent firm that understands the detailed rules and regulations to make the process smoother.
Amazing DX can provide consultation not only for trademark applications but also for registration and beyond, so please do not hesitate to contact us.

So there are advantages to hiring a patent firm for renewal of rights as well. I will consult with them when I renew my rights.

supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
大阪法務戦略部長 八谷 晃典
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