When can a registered trademark be renewed?

When can a registered trademark be renewed?

The unique wording of the law is difficult to understand regarding the deadline for renewal of trademark rights.
I would like to see a clearer explanation of the renewal period.

Yes, I think so. I think the wording of the law is very difficult to understand.
However, if you intend to continue to use your trademark for the same goods or services in the future, you may lose your trademark rights at your own risk if you do not understand the renewal period.
Each of these patterns is explained here.

Okay, it is a hassle to start the trademark application all over again. So I’ll study it properly.

目次 Index
  1. Trademark Renewal Deadlines
  2. Normal renewal period (Article 20(2) of the Trademark Law)
  3. If the normal time limit has passed (Article 20(3) and (4) of the Trademark Law)
  4. Restoration of trademark rights (Article 21(1) of the Trademark Act)
  5. Let Amazing DX take care of you!

Trademark Renewal Deadlines

The duration of a trademark right expires after 10 years from the date of registration of establishment (Article 19(1) of the Trademark Law), but it is possible to extend the duration for 10 years by paying a registration fee to the Patent Office within the designated period.

Patents, utility models, and designs do not have a renewal system like trademarks, and the right expires after a certain period of time.

・Reference

Patent: 20 years from application date
Utility model: 10 years from the filing date
Designs: 25 years from the filing date
Trademarks: 10 years from the registration date

This section will focus on the “term” during which the holder of trademark right (or an agent such as a patent firm) may file for renewal.

Normal renewal period (Article 20(2) of the Trademark Law)

Article 20(2) of the Trademark Law clearly states that “an application for registration of renewal shall be filed from six months prior to the expiration of the duration of the trademark right to the date of expiration.

Most holder of trademark rights apply for renewal and pay the registration fee to the JPO during this six-month period (hereinafter referred to as “normal term”).

For example, if the duration of a certain registered trademark is July 31, 2022, it is possible to apply for renewal starting January 31, 2021.
※This is just an example. Please check the expiration date of the duration of the trademark right of the registered trademark with J-Plat Pat, etc.

Six months is hard to visualize, but the specific date examples make it seem surprisingly long.

Do not let your guard down. Six months can quickly pass if you fail to manage your deadlines.
However, you can still apply for renewal registration after this normal deadline.

I see. Let’s see what happens if we miss the normal deadline.

If the normal time limit has passed (Article 20(3) and (4) of the Trademark Law)

Article 20(3) of the Trademark Act clearly states that “where the holder of trademark right is unable to file an application for renewal of registration within the time limit provided in the preceding paragraph, he/she may file such application even after the expiration of such time limit but within the time limit provided by Ordinance of the Ministry of Economy, Trade and Industry.

The term “within the period prescribed in the preceding paragraph” shall mean an ordinary period. In this case, “within the period specified by an Ordinance of the Ministry of Economy, Trade and Industry” shall mean six months. (Hereinafter referred to as “Six-month period after the expiration of the normal due date(Period A)”.

For example, if the normal expiration date is July 31, 2022, and the applicant fails to apply for renewal by this date, the application may be filed until January 31, 2023.

In addition, Article 20(4) of the Trademark Law clearly states that “(omitted) If no such application is filed within the time limit, the trademark right shall be deemed to have been extinguished retroactively from the time of expiration of its duration.

Following the aforementioned example, if no renewal application is filed by January 31, 2023, the trademark is deemed to have expired as of July 30, 2022.

This explanation reads to me that you can effectively go through the renewal process for a year.
Seems to me there are only advantages…

Of course, there is a difference between a renewal filed within the normal time limit and a renewal filed within 6 months of the expiration date.
In the latter case, a surcharged registration fee is required. You must pay a registration fee equal to the initial registration fee, i.e., twice as much.
Since the registration fee increases with the number of registered trademark classes, we feel that doubling the registration fee is a significant penalty.

I see, so the fee is going up. I should probably go through the renewal process during the normal period.

Can trademark rights be reinstated?

I understand that if we do not renew during the “Six-month period after the expiration of the normal due date”, the trademark right will expire. However, there are people out there who cannot renew their trademark right even if they want to due to various reasons.
What should these people do?

Such people can also renew by restoring their trademark rights.

Restoration of trademark rights (Article 21(1) of the Trademark Act)

Article 21(1) of the Trademark Act clearly states that “where the original holder of trademark right of a trademark right deemed to have lapsed pursuant to paragraph (4) of the preceding Article has justifiable grounds for failing to file an application for registration of renewal within the time limit for filing such application pursuant to paragraph (3) of the said Article, he/she may file such application within the time limit provided by Ordinance of the Ministry of Economy, Trade and Industry.

For each term, Industrial Property Law Article-by-Article Commentary provides the following explanations.

The period during which an application for renewal of registration may be filed pursuant to paragraph (3) of said Article: Period A


Within the period specified by an Ordinance of the Ministry of Economy, Trade and Industry: Period A to 6 months.

Following the example in the previous section, the following would be used.

Normal expiration date (best before date): July 31, 2022
Period A : January 31, 2023
Expiration date for restoration claims: July 31, 2023

Note, however, that if the “justifiable reason for failure to file” is resolved within Period A , the trademark right cannot be restored through the application of this Article.

Let Amazing DX take care of you!

I have studied the procedures around “term” and it is still difficult.
If your patent attorney’s office or patent attorney will not manage your trademark application, you will have to manage it yourself.
It is impossible to manage it by yourself.

With Amazing DX, the terminal allows you to centrally manage expiration dates after you have registered.
With an administrator, you will never forget an expiration date, so please consider this for new applications.

Thank you. If I have a trademark I want to apply for, I’ll discuss it with you.

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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