When you transfer your rights to a third party… Application for registration of trademark transfer

Registering the transfer of a trademark

I’ve decided to obtain a trademark right from another company by transfer. Since it is an important property, I want to make sure that I know the proper procedures to follow with the Japan Patent Office.

In the case of an assignment, it is a “limited succession”. There are “limited succession” and “general succession” depending on the cause of the transfer of rights, and the documents to be submitted for each are different, so please make sure to check them!

Trademark rights (as well as patent rights, utility model rights, and design rights) are a type of property right and can be transferred to others.
This page explains the procedure for transferring a registered trademark right: “Application for registration of transfer”.

Application for transfer registration

When a trademark right is transferred (by assignment, inheritance, etc.) due to a contract, etc., an application for registration of transfer is required.
Without registering that the rights have been transferred, the party receiving the transfer cannot exercise the rights.

Please note that there are “limited succession” and “general succession” depending on the cause of the transfer of rights, and the documents to be submitted differ depending on whether it is a partial transfer of rights or a transfer of an interest.

Required Documents

Limited succession

Limited succession includes [assignment], [donation], [bequest], and [judgment].
The following documents are to be attached to the application for transfer registration.
For the application form, please refer to the JPO website “Procedures for transfer of rights, etc.” (in Japanese).

• If the right holder transfers the entire right, a sales contract deed or a deed of assignment, etc. must be submitted.
• When the right holder transfers a part of the right, a partial transfer deed, etc.
• In the case of a partial assignment by the right holder, a deed of partial assignment, etc.
• In the case where some of the co-owners renounce their co-ownership interest in the co-ownership interest, a deed of renunciation of co-ownership interest, etc.

• Deed of donation, etc.

• Will, etc.

• In the case of a court judgment (including settlement and mediation) as the cause of registration, an enforceable authenticated copy of the judgment, settlement statement, mediation statement, etc.

* If the procedure is requested to a patent attorney, a power of attorney must also be submitted.

General Succession

General succession includes [inheritance], [corporate merger], and [company split].
The following documents are to be attached to the application for transfer registration.
For the application form, please refer to the JPO website “Procedures for transfer of rights, etc.” (in Japanese).

• A copy of the family register, etc. (proof of the ancestor’s death and proof of heirship)

• Original copy of the certificate of registered matters of the successor that states the fact of a merger or original copy of the certificate of closed registered matters of the inheritee.

• Original certificate of registered matters of the successor that states the fact of the company split or original certificate of closed registered matters of the inheritee.

* If the procedure is requested to a patent attorney, a power of attorney must also be submitted.

Who is responsible for the procedure, the assignor or the assignee?

As a general rule, “the ‘person obliged to register’ who transfers the right and the ‘registered right holder’ who receives the right must jointly apply for registration of transfer,” but either one of them can apply alone by submitting an additional document.

Generally, the “registered right holder” is responsible for the procedure.

In the case of application by the “registered right holder” alone:
In addition to the deed of assignment, a letter of consent (a sole application consent form) stating, among other things, that the registered right holder alone consents to the application for registration and stamped by the person obliged to register is to be submitted.
Alternatively, a deed of assignment stating that the registered right holder alone consents to the application may be submitted along with a copy of the deed of assignment.

Fees for applying for transfer registration

The following is an explanation of the costs involved in the transfer registration process.

• Stamp fee: 30,000 yen per case * Revenue stamps
  If you request a patent attorney, the attorney’s fees, etc. will be charged.

In the case of transferring rights prior to trademark registration, the procedure will be carried out at the cost of stamps: 4,200 yen per case (*Patent revenue stamp). The documents to be submitted are not an application for registration of transfer, but a notification of change of applicant’s name.

* The link in the “Other Change Procedures” section below explains the details.

Time required to complete transfer registration

The application for transfer registration must be made in writing, affixed with the appropriate stamps for the procedure, and submitted at the JPO office or by mail. The procedure cannot be completed online.

After submitting the application to the JPO, a formal examination will be conducted, and the application will be registered in the register in about two weeks.
After the registration, the applicant will receive a notice of registration in about two weeks.

In other words, it takes about four weeks to receive the registration notice, but only after the application has been registered in the registry, the completion of the transfer can be confirmed by making a request to inspect the registry without waiting for the dispatch of the registration notice.

Points to note if the application procedure is incomplete

If there is a deficiency in the application procedure, you will receive a “Directive to Amend Procedure” from the JPO. You may respond to this by submitting an amendment within two months.
If the deficiencies are resolved by the response, the date of receipt of the transfer application is secured, the transfer application is entered in the registry, and a notice of registration is sent.

On the other hand, if the deficiencies are not resolved by amendment, the JPO will send a “Notice of Reasons for Rejection”. In response to this, the applicant may submit a written statement of defense within two months.
It is important to note that a statement of defense is a statement of opinion on the reasons for dismissal before the dismissal is made, and does not mean that the application can be amended.
If the reasons for dismissal are not resolved by the written statement, the application will be dismissed, and the application form and the stamp affixed to the application will be returned to the applicant without postmark.

Other change procedures

An application for registration of transfer is a procedure to transfer a trademark for which rights have accrued, i.e., after registration, but also before trademark registration.
In this case, a “Notification of Change of Applicant’s Name” must be submitted to the JPO.
The procedure for notifying a change in the applicant’s name costs 4,200 yen (*Patent revenue stamp), which is less expensive than the procedure for registering a transfer after registration.
If the transfer of rights is finalized prior to trademark registration, it will be less expensive to go through the transfer procedure before the trademark rights arise (before the registration fee is paid).

In addition, if there is no transfer of rights and you simply change your company name or address, you must also notify the JPO (“Notification of change of address (residence)” / “Notification of change of name (name)” or “Application for registration of change of registered owner’s indication”).

It’s still complicated and I’m not sure about doing it by myself… I’ll consult an expert patent attorney.

Summary

The application for transfer registration is complicated even for experts, such as the cause of the transfer and the required documents.
If you are not sure which procedure or form is right for you, or if you are worried about going through the process by yourself, please feel free to contact our office.
Before applying for registration of transfer, we can also provide consultation with a view to preventing problems after the transfer, such as checking the contents of the deed of assignment. Our patent attorneys specializing in trademarks will support you.