Explaining the process of renewing a registered trademark

How to proceed a trademark renewal?

I would like to proceed with the renewal procedure for a trademark, but I don’t understand the system and detailed flow from application to completion. After all, if there are any deficiencies in the documents or procedures, I wonder if something like a notice of reasons for refusal will also be issued.

As you may have guessed. Even in the renewal procedure, if there are any deficiencies, the procedure will be stopped. Therefore, you should be aware of the flow of the process, and check the fees and deadlines as you go along.

I see. Then, let’s check the renewal procedure flow and make preparations so that there are no incomplete procedures.

Renewal procedures (after trademark registration)

To maintain not only trademark rights, but also other intellectual property rights such as patents, utility models, and designs must prepare a registration (patent) fee payment form and submit it to the Japan Patent Office without fail.
This section explains the process from the payment of the registration (patent) fee to the completion of the renewal procedure.
It would be a shame if you forgot to renew your trademark registration and the term expired, or if your rights expire because you were unaware of the procedural flow and could not resolve deficiencies in the form of documents or fees.
Before you start preparing, here is some detailed information to keep in mind.
We also have a guide article that outlines the fees and how to fill out the application form (documents), so please refer to that guide as well for a better understanding.

目次 Index
  1. Submission of registration fee payment
    1. Payment after the due date
    2. Exemption from surcharge of registration fee
    3. How to submit payment forms
    4. Requested time period
  2. In case a renewal application is registered
  3. In case a supplemental directive is received (in the case of a trademark)
  4. In case a notice of reasons for refusal is received (in the case of a trademark)
  5. Leave the renewal procedure to our patent firm

Submission of registration fee payment

Trademark rights can be renewed for the duration of the trademark right as many times as necessary. To renew, an application for registration of renewal of the duration of trademark right must be submitted.
The renewal application may be filed from six months before the expiration of the duration of the trademark right to the date of expiration of the duration (exceptions apply). The registration fee can be paid in a lump sum or installments.
Please refer to this guide article for information on how to fill out the application form and fees.

Payment after the due date

A registration fee payment form can be submitted within 6 months after the due date. Please note, however, that a surcharge (double the normal fee) must be paid.
To avoid incurring the surcharge, it is advisable to pay the surcharge within the due date (from 6 months before the expiration date until the expiration date of the duration).

Exemption from surcharge of registration fee

The payment of the surcharge is exempted in cases where it is recognized that the right holder was unable to pay the registration fee within the payment period or the period after the extension of the payment period due to reasons not attributable to the right holder (hereinafter referred to as “reasons for non-responsibility”). (Effective October 1, 2021) *A natural disaster (typhoon, earthquake, etc.) is an example of a reason for non-responsibility.
Please refer to the following JPO website for information on reasons for non-repudiation in cases affected by COVID-19.

About relief

The exemption applies to cases for which the payment period (regular payment period) elapsed on or after October 1, 2021. Please note that cases for which the last day of the payment period is September 30, 2021, are not eligible.

How to submit payment forms

Those who wish to submit the payment in writing may do so either in person at the JPO office or by mail. If you submit the form by mail, the date of payment will be the date the form is submitted to the post office. *When submitting by mail, “registered mail” or “simplified registered mail” is recommended.

If you are submitting online, please refer to the following link.

Electronic Filing Software Support

Requested time period

In the case of online procedures, if there are no deficiencies, the application will be registered within 3 days from the submission date. However, if the application is submitted to the JPO office or by mail, it will take approximately 3 weeks for the JPO to digitize the document.
We recommend you to use the online procedure, which will complete the process faster.

How long does it take to register

In case a renewal application is registered

Upon payment of the registration fee and acceptance of the application, the application will be recorded in the registry. A notification postcard will be sent to the payer (applicant) or his/her agent. However, the postcard will not indicate the next payment due date. Therefore, right holders who plan to continue to use the trademark in the registered goods or services should remember to keep track of the due date.

In case a supplemental directive is received (in the case of a trademark)

If there are minor deficiencies in the registration fee payment form, you will receive a “Directive to Supplement Application for Registration of Renewal of Trademark” from the JPO. Submit the registration fee payment (replenishment) within the time frame specified in the directive. If you do not apply within the time limit, the registration fee payment form will be rejected and you will be required to submit it again, so be sure to take action.

In case a notice of reasons for refusal is received (in the case of a trademark)

If the registration fee payment form is seriously incomplete, you will receive a “Notice of Reason for Dismissal” from the JPO. If the applicant does not submit a written statement of defense within 30 days of service of the Notice of Reason for Dismissal and resolve the reason for dismissal, the proceedings will be dismissed.

Leave the renewal procedure to our patent firm

I see that the online procedure is much faster than the written procedure. But the use of online procedure software is not very relevant to the general public, is it?

The JPO is promoting the online processing of business. Therefore, an increasing number of patent firms are taking advantage of this trend and promoting the use of online procedures for the Office. Our firm offers renewal procedure services, so please contact us if you have any questions.

Thank you! There’s a big difference in time between 3 days and 3 weeks, and I’ll try to consult 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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