Explains what to look out for when filing a joint application!

I’ve decided to file a joint trademark application with another company!

When filing a joint trademark application, there are many things to be aware of before and after the application is filed. If you do not check the precautions before filing the application, you may get into trouble later on.

You’re right, we don’t want any trouble. Tell me what precautions I should know in advance!

In this article, we will introduce specific precautions to be taken before and after filing a joint application.

Multiple applicants can file a trademark application jointly.

Two or more persons may file a trademark application jointly. This can be a joint application by an individual and an individual, a corporation and a corporation, or a joint application by an individual and a corporation.
In the case of a joint trademark application, the “Applicant(s) for trademark registration” section of the application form should be repeated and the “Name(s) and Address(es)” of the joint applicant(s) should be indicated. The share of ownership should be entered in the “Share of Ownership” column next to “Applicant for trademark registration”.

Once a trademark is registered, all applicants become trademark owners.

How to share trademark rights

In addition to filing a joint application, you may also transfer a portion of your trademark interest after registration.
By filing a notification with the Patent Office, the trademark will be registered in joint ownership, and all co-owners will then become trademark owners.

Things to keep in mind when filing jointly

Compared to a regular trademark application, there are several things to keep in mind when two or more persons file a joint trademark application.
Specifically, the following points should be noted.

Trademark rights pertaining to co-ownership are stipulated in Article 35 of the Trademark Law (the provisions of Article 73 of the Patent Law are applied mutatis mutandis to trademark rights).

Things to keep in mind during the ongoing application process

When a trademark application is filed jointly, the rights resulting from the application are shared.
Therefore, when withdrawing an application, filing a request for a trial, etc., an application must be filed by all joint right holders (Article 14 of the Patent Law).

The consent of the other applicants must also be obtained when transferring their share (i.e., changing the name of one of the joint applicants to that of a third party) (Patent Law, Article 33, Paragraph 3).

Things to keep in mind when using trademarks

There is no specific provision in the law regarding the use of trademark rights by each co-owner.
There is no problem as long as all applicants use the trademark to the same extent as the registered trademark.

Points to note regarding licensing

Each co-owner may not establish an exclusive right to use or grant a non-exclusive right to use to another person in connection with his/her trademark right without the consent of the other co-owners (Article 73(3) of the Patent Law, as applied mutatis mutandis under the Trademark Law).

Things to keep in mind when registering a renewal

When registering a renewal of a trademark right, the procedure must be completed by all right holders. Failure to do so by all right holders will result in the rejection of the application for registration of renewal.

（Reference: JPO）

In other words, if you file a joint application, you (your company) cannot perform important procedures such as assignments, requests for appeals, and renewals alone. I understand that there are multiple things to take care of from before filing a trademark application to after registration.

To the extent that you share the rights, you need to obtain the consent of the other applicant or go through the procedures together with the other applicant.
Also, you need to be careful because there is no stipulation regarding use. Before filing an application, it is advisable to discuss with the joint applicant in which business and in what manner the trademark will be used after registration.

I see. It seems to me that sharing the points to be noted with the co-applicant before filing the application, and then discussing the manner in which the application will be used, will help to avoid problems.

In Joint Applications

This article has described the precautions to be taken when filing a joint trademark application.

Joint applications must be filed with the understanding that trademark rights are shared.
In order to avoid problems between joint applicants, we recommend that all applicants are involved from the meeting stage of the application and share the precautions.

Please feel free to contact us for advice on joint applications.
We will guide you through what you need to know about joint applications.
We also recommend that you sign a joint application agreement before filing the application. We can also confirm the terms of the joint application agreement, so please do not hesitate to contact us for consultation.