Renewal of Trademark Rights after Trademark Registration (Summary)

This section explains renewal of trademark rights.

Summary

Payment of renewal registration fee in installments

★It is recommended that you leave the renewal procedures and deadline management to a representative who is familiar with the procedures and systems for a smooth and secure process.
Amazing DX offers inexpensive renewal procedures and deadline management.

Duration of trademark right and payment period of renewal registration fee after trademark registration

After trademark registration, the duration of trademark right is 10 years from the trademark registration date.
It is possible to renew the trademark right as many times as you like every 10 years by paying the renewal registration fee for 10 years to the JPO.
The renewal registration fee is due between six months prior to the expiration date and the expiration date of the duration of the trademark right.
For details on renewal procedures, please refer to the following page.

https://amazing.dx.harakenzo.com/guide/renewal-procedure/

For details on renewal deadlines, please refer to the following page.

https://amazing.dx.harakenzo.com/guide/renewal-period/
[Reference] Cancellation of trademark registration
Trademark rights can basically be renewed any number of times every 10 years. However, please note that if a trademark has not been used in Japan for more than three years, the trademark registration may be cancelled in whole or in part by a request for a trial for cancellation of non-use (Article 50 of the Trademark Law) from another party.
In addition to non-use cancellation trials, there is also a system of unfair use cancellation trials. For example, if a trademark proprietor intentionally uses a trademark similar to a registered trademark, causing misidentification of the quality of goods or services or confusion with goods or services pertaining to the business of another person, a request for a trial for cancellation of unfair use (Trademark Law, Article 51) by another person may result in the cancellation of the entire trademark registration.
For details on trademark cancellation trials, please refer to the following page.

https://amazing.dx.harakenzo.com/guide/syouhyou-torikesisinpan/

What are the fees for renewal?

The renewal registration fee to be paid to the JPO varies depending on the number of classes.
In addition, if you request an agent to perform the renewal procedure, there is generally a separate agent fee.
Please refer to the following page for details on renewal fees.

https://amazing.dx.harakenzo.com/guide/renewal-fees/

The renewal registration fee can be reduced by reducing the number of classes at the time of renewal, so if there are unnecessary classes at the time of renewal, the renewal registration fee can be reduced by reducing the number of classes.
Please note that you cannot add a new class at the time of renewal, so if you wish to add a new class, you must file a new application for the class and the designated goods or services you wish to add.

Can I file a renewal by myself?

It is possible for an applicant to manage the renewal deadline and perform the renewal procedures on his/her own without an agent.
Please refer to the following page for information on how to renew by yourself.

https://amazing.dx.harakenzo.com/guide/renewal-own/

While there is an advantage in saving money by doing the renewal procedure yourself, there is a disadvantage in that it is more time-consuming, and it may be safer to ask a representative to do it for you.
In fact, many people ask their representatives to manage and process their trademarks after registration.
It is easier to leave the renewal procedures to a representative who is familiar with the procedures and systems.

The expiration date has passed! Can I no longer renew?

In principle, an application for renewal of a trademark right must be filed between six months prior to the expiration of the duration of the trademark right and the expiration date (Article 20(2) of the Trademark Law). If an application for renewal cannot be filed within this period, it is still possible to file a renewal application within six months after the expiration of such period (Article 20(3) of the Trademark Law), but in this case, a surcharge of the same amount as the registration fee must be paid in addition to the regular registration fee (Article 43(1)).
If a renewal application is not filed within the time limit available, the trademark right shall be deemed to have expired retroactively from the time of expiration of the duration (Article 20(4) of the Trademark Law).
For details, please refer to the following page.

https://amazing.dx.harakenzo.com/guide/registration-non-validity/

Therefore, it is important to manage the time limit so that the renewal procedure can be done before the expiration date of the duration.
It is best to leave the deadline management to a representative who is familiar with the procedures and systems.

What is the payment of renewal registration fee in installments?

Basically, the term of a trademark right is 10 years (renewal is possible), and the renewal registration fee is usually paid in a lump sum for 10 years, but you may choose to pay it in two installments of 5 years each if you wish (Article 41-2(7) of the Trademark Law).
In this case, the first-installment registration fee is paid at the time of application for renewal.
The second-installment registration fee must be paid within five years prior to the expiration of the duration of the trademark right. If the second-installment registration fee cannot be paid within this period, the second-installment registration fee may be paid within six months after the expiration of the said period (Article 41-2(5) of the Trademark Law), but in this case, a surcharge of the same amount as the registration fee must be paid in addition to the regular registration fee (Article 43(3)).
If the second-installment registration fee is not paid within the time limit available for payment, the trademark right shall be deemed to have expired on the date five years prior to the expiration of the duration (Article 41-2(6) of the Trademark Law).
Therefore, it is important to manage the second-installment registration fee so that it can be paid by 5 years prior to the expiration of the duration.
It is recommended that you entrust the management of deadlines to a representative who is familiar with the procedures and systems.

supervisor
この記事の監修者:
HARAKENZO WORLD PATENT & TRADEMARK
大阪法務戦略部長 八谷 晃典
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