Check out the deadlines involved in trademark registration and how they’re calculated!
I received a notice of reasons for refusal, but when do I have to file the proceedings with the Japan Patent Office?
Since your domicile is in Japan, within 40 days from the date the Notice of Reason for Refusal was sent.
I know that because it is written in the notice! No, it doesn’t. The date the notice was sent out is Tuesday, April 5, and I’m wondering if April 5 should count as one day or not, or if the last day of the due date is a holiday or if they can extend the due date or what! It’s so hard to look it up, I have no idea.
Oh, I see, that’s a serious problem!
In this article, we would like to introduce three deadlines that we are sure everyone who is going through the trademark process will come across.
Also, the way trademark deadlines are calculated is unique in Japan. It can be difficult if you are not familiar with it, so we will explain it here.
In addition, if you came to this page to learn more about the expiration date of a registered trademark, please refer to this article.
- Due Date
- How to calculate the expiration date
- Deadlines for responding to reasons for refusal
- Extension of Time Limit for Response
- Deadline for payment of registration fee
- What to do if you forget to pay the registration fee
- Renewal Deadlines
- What to do if you forget to renew before the expiration date
- For those of you who want me to keep track of deadlines
How to calculate the expiration date
There are various deadlines for filing procedures with the Japan Patent Office.
For example, when the trademark registration date was July 1, the deadline will be different if it says within one month from the registration date or within 30 days.
The deadline may also change when the last day of the deadline was a Saturday, Sunday, or holiday.
The article describes the method of calculating the deadline as follows.
Japanese Patent Law
Article 3 (1) The calculation of time period under this Act or under an order that is based on this Act is as under the following provisions:
(i) the first day of the period is not included in the calculation; provided, however, that this does not apply if the period of time commences at twelve midnight;
(ii) if the period is indicated by months or years, the months or years refer to calendar months or calendar years, and if the period is not calculated from the beginning of a month or a year, the period expires on the day preceding the day corresponding to the first day of the calculation in the final month or year; provided, however, that if there is no corresponding day in the final month, the period expires on the last day of the final month.
(2) If the last day of the prescribed period for filing a patent application and a request or demand, or for other procedures relating to a patent (hereinafter referred to as “procedures”) is any of the days provided for in Article 1, paragraph (1) of the Act on Holidays of Administrative Organs (Act No. 91 of 1988), the day following that day is the last day of the period.
In the case of the previous example, where it says within one month from the registration date (July 1), the procedure must be completed between July 1 and August 1. However, if August 1 falls on a Saturday or Sunday, the due date will usually be the following Monday, depending on what the due date is.
In the case of the previous example, where it says within 30 days from the registration date (July 1), the procedure must be completed between July 1 and July 31.
If July 31 falls on a Saturday or Sunday, the due date will be the following Monday.
It is difficult to calculate the period, thinking that the first day of the period is not counted, and that the period expires on the day before the day responding to the starting date, and so on.
In fact, the calculation of time limits for procedures is so difficult that it even appears in the short-answer exam of the patent attorney exam in Japan.
But don’t worry. Here, we will introduce you to a very special website.
[Calculation of due dates on IP Force, an IP portal site](https://ipforce.jp/ Kigen)
This page has nothing to do with the writers of this article, but we think it is useful for those who are not familiar with deadline calculations.
Please note that it does not calculate even when the last day of the deadline falls on a Saturday, Sunday, or holiday.
Deadlines for responding to reasons for refusal
After filing a trademark application, if there is any reason for refusal, you will receive a notice of reasons for refusal as follows.
If the applicant’s domicile or residence is in Japan
The following reasons are given for not being able to register the trademark, and the applicant is notified of the reasons in accordance with Article 15-2 of the Trademark Law (or Article 15-3(1) of the Trademark Law). Therefore, in accordance with Article 15-2 of the Trademark Law (or Article 15-3(1) of the Trademark Law), we notify you of the reasons.
If you have any opinion on this matter, please submit your written opinion within 40 days from the date of dispatch of this letter.
If the applicant submits a written opinion, the application will be re-examined as to whether or not the trademark can be registered.
Where the applicant’s domicile or residence is outside of Japan (in the case of an overseas resident)
The application for trademark registration is not registrable for the following reasons, and a notice of reasons shall be issued in accordance with Article 15-2 (or Article 15-3(1)) of the Trademark Law. Therefore, in accordance with Article 15-2 of the Trademark Law (or Article 15-3(1) of the Trademark Law), we notify you of the reasons.
If you have any opinion on this matter, please submit a written opinion within three months from the date of dispatch of this letter.
If a written opinion is submitted, the applicant will be re-examined as to whether or not the trademark can be registered.
The date of dispatch is written in the upper left corner, so Japanese applicants must respond to the JPO within 40 days from that date, and foreign applicants must respond within 3 months from that date.
Depending on the reason for the refusal and the content of your response, you may need to submit a written argument, an amendment, or other documents, and the time required for preparation will differ. If the preparation is going to be extensive, you may request an extension of the deadline.
Extension of Time Limit for Response
The time limit for responding to a Notice of Reason for Refusal may be extended by filing a request for extension of time.
If an extension is requested within the time limit for response, one month extension is possible.
If the extension is requested after the deadline, it is possible to extend the time limit by 2 months.
So, a maximum extension of three months is possible.
Please note that even if the last day of the response period falls on a day when the office is closed (Saturday, Sunday, or holiday), the extension will be for one or two months counting from the day after the last day of the response period, so please be careful when calculating the deadline.
A fee is charged for extensions. Please refer to the JPO website for details.
Changes to the operation of extending the time limit after the expiration of the response period for a notice of reasons for refusal in an application for trademark registration and a provisional notification of refusal in an international application for trademark registration (effective January 1, 2022)
If the notice of refusal was sent on Tuesday, April 5, you should respond to the JPO by Monday, May 16.
You don’t count April 5 as a day, but count 40 days from April 6, right? That would make Sunday, May 15, the 40th day, but since it’s a Sunday, the due date would be the following Monday!
You are correct, please send it by registered mail on Monday, May 16th.
If you make a mistake in the shipping method and post the application just before the deadline, it will be calculated based on the arrival date, not the shipping date, and it may be treated as if it was filed outside the deadline.
For the shipping method, please refer to When are the reception hours of Japanese trademark applications? Explanation of the different methods of submitting applications may be helpful.
Deadline for payment of registration fee
If there are no reasons for refusal of the trademark application, the registration will be granted.
The registration decision will state the following.
We hereby grant registration of this trademark application in accordance with the provisions of Article 16 of the Trademark Law.
Note: The registration fee must be paid within 30 days from the date of receipt of this letter.
This deadline is the same 30 days regardless of whether the applicant’s domicile or residence is in Japan or abroad.
Please note that it is 30 days, not one month.
You can choose to pay the registration fee for 10 years or in installments of 5 years.
For more information on how to pay the registration fee and how to prepare the registration fee payment form, please click here.
What to do if you forget to pay the registration fee
Even if the payment cannot be made within the first 30 days, the registration fee can be postponed for up to 30 days upon request of the person who should pay the registration fee.
In other words, there is a 60-day grace period, consisting of the original 30 days plus the extended 30 days.
Even if the payment cannot be made within the first 30 days, the extension can be made within 2 months after the expiration of that period.
This means that there is a grace period of 30 days plus 2 months.
In addition, it is possible to create a grace period for payment of the registration fee of 30 days after the original due date + 30 days upon request of the person who is to pay the registration fee + 2 months after the expiration of the period.
For these extensions, a request for extension of time must be submitted and the fee for the extension paid.
If these periods are exceeded, the registration fee cannot be paid in principle unless there is a natural disaster or other reason.
After registration, the trademark right is valid for 10 years. Thereafter, the term can be extended to 20 or 30 years by renewal in Japan.
Renewal of a trademark right requires the payment of a renewal fee within the term of the renewal registration application. Like the registration fee, the renewal fee can be paid for 10 years or in installments of 5 years.
The period during which an application for registration of renewal may be filed is determined by law (Article 20.2 of the Trademark Law) from six months prior to the expiration of the duration until the date of expiration.
For example, if the registration date is March 1, 2020, the expiration date is March 1, 2030.
In this case, the application period for renewal registration is from September 2, 2029 to March 1, 2030.
What to do if you forget to renew before the expiration date
What should we do if we fail to apply for registration renewal within the above period?
It is a common case that you inadvertently forgot to renew your registration.
In such a case, the right can be renewed only within 6 months from the expiration date by paying double the renewal registration fee.
In other words, if your trademark expires on March 1, 2020, you can renew it from March 2 to September 2 by paying double the fee.
If that period has passed, renewal will not be possible in principle unless there is a natural disaster or other reason.
In such a case, the right will cease to exist and a new application will be filed. Of course, just because a trademark has been registered before does not mean that it will be registered again.
Considering the risk of losing the rights to the trademark you have been using, you need to manage your trademark properly so that you do not forget the renewal period.
(The current legal system is as of May 2022, but it is scheduled to be amended within the next few years. After the revision of the law, there is a possibility of relief for forgetting to pay unless the failure to pay was intentional.)
I see. Does this mean that I will receive a notice from the JPO when it is time to apply for renewal registration?
No, you will not receive any notice from the JPO regarding the renewal deadline. Make sure to manage your application properly and do not miss the renewal period.
Heh, I should calculate and manage the correct expiration date properly.
For those of you who want me to keep track of deadlines
The trademark application filed with Amazing DX will be managed by Amazing DX.
We will inform you of the deadline for responding to a notice of reasons for refusal and the deadline for payment of the registration fee, and manage them appropriately.
After receiving instructions from the client, Amazing DX will handle the payment of the registration fee, so there is no need to prepare documents.
Furthermore, Amazing DX will notify you when the renewal deadline is approaching, free of charge (renewal management fee)!
There are various online trademark registration services, but some of them charge an optional fee for renewal management.
However, Amazing DX offers free of charge trademark renewal and management fees for all trademark applications filed with us.
Some people say that small trademark firms cannot be trusted with renewal management because they are worried about whether they will still be around in 10 or 20 years, but Amazing DX is operated by a major international patent firm in Japan, so you can rest assured that we will manage your trademark renewals after registration.
Amazing DX Trademark Search
If you have any trouble with Amazing DX, please feel free to contact us via chat.