TRADEMARK:SOEI Patent & Law Firm

1: How long is a trademark right protected?

Trademark right may be protected indefinitely. However, since the term of registration for trademark right is 10 years, the owner of the registration must renew it before the expiration of the term. To maintain the trademark right indefinitely, the trademark right owner needs to renew it every 10 years.

 

2: When may the owner of a trademark registration file a request to renew the registration?

The request for renewal must be filed no earlier than six months prior to the expiration date of the registration. However, there is a six-month grace period.  The owner of a trademark registration can still file a request for renewal up to six months following the expiration date by paying the appropriate registration fee and a surcharge.

 

3: Can applicants delete some classes when filing a request for renewal?

Yes, the applicant can delete any unnecessary classes when filing a request for renewal, thereby saving the official fees for the unnecessary classes. In this case, a power of attorney is necessary, which is not required in the regular renewal procedure.

In addition, the applicant can delete any unnecessary classes when paying the registration fee, thereby saving the official fees for the unnecessary classes.

 

4: Are there any ways to revoke a registered trademark?

Yes.
(1)Opposition
Within two months of the publication date of the registration, any person can file an opposition against the trademark registration.

(2)Invalidation Trial
If the opposition was not successful or the time period for filing an opposition has passed, an interested party can demand an invalidation trial at any time after registration.

(3)Cancellation Trial
If a registered trademark has not been used within the last three years, any person can request cancellation of the registration. This method is sometimes effective when the registered trademark is cited as a prior registration against your pending application.

 

5: In Japan, when is the power of attorney necessary?

For direct applications or Paris Route applications, a power of attorney is necessary to withdraw or transfer the application. However, it is not necessary to submit a power of attorney to file an application, a response to a Notice of Reasons for Rejection, or a request for renewal.

For international applications under the Madrid Protocol, a power of attorney is necessary to file a response to a Noticication of Provisional Refusal, in addition to the procedures mentioned above.

In addition, a power of attorney is necessary to file an opposition, appeal, and a reclassification application.

 

6: What problems commonly occur when changing the name, address, etc. of the owner of the registration and transferring the registration to a new owner?

In Japan, even minor differences between the address shown in the Request for Change of Name, Address, etc. or the Assignment and the address of record in the JPO may cause the JPO to refuse the request on the grounds that the party of record and the party identified in the Request or Assignment is not the same party.

Therefore, the address in the Assignment must be completely identical to the address of record in the JPO. In order to avoid a formality objection making it necessary to execute the Assignment again, care should be taken to ensure the address in the Assignment matches the address of record in the JPO.