Trademark Act Article 20: Application for Registration of Renewal of Duration
1. Overview
This article stipulates the application for registration of renewal of the duration of a trademark right.
Trademark rights basically continue to exist as long as the trademark holder continues to file applications for registration of renewal. Viewed from the opposite perspective, if the trademark holder does not file an application within the period for registration of renewal, the trademark right expires. More precisely, if the trademark holder does not file an application within the period for registration of renewal, the trademark right is deemed to have expired "retroactively to the time of expiration of the duration."
1.1. Application for Registration of Renewal of Duration of Trademark Right
To file an application for registration of renewal, a prescribed application form must be submitted to the Commissioner of the Japan Patent Office (Article 20(1) of the Trademark Act). Regarding this application form, it is a form with the long name "Application for Registration of Renewal of Duration of Trademark Right". The stamp to be affixed to this application document is a patent revenue stamp, which seems to be easily confused with a standard revenue stamp.
●Source of Information
・Application for Registration of Renewal of Duration of Trademark Right
・Sample of Application for Registration of Renewal of Duration of Trademark Right (Renewal/Bulk Payment)
1.2. Others
It is possible to file an application for registration of renewal for only a portion of the designated goods, etc. (Article 11 of the Ordinance for Enforcement of the Trademark Act). If interpreted exactly as stated in the provisions, renewal cannot be done for each designated good, etc., but an application for registration of renewal can be filed by reducing the number of classes of designated goods, etc. (Article 11 of the Ordinance for Enforcement of the Trademark Act).
Note that in the case of renewal of defensive mark registration, an "application" for registration of renewal is required. This is because it is necessary to examine whether the defensive mark is well-known at the time of renewal.
The period during which an application for registration of renewal can be filed is from six months before the expiration of the duration of the trademark right until the day of expiration (Article 20(2) of the Trademark Act).
If an application for registration of renewal could not be filed during the period from six months before the expiration of the duration of the trademark right until the day of expiration (Article 20(2) of the Trademark Act), it is possible to file the application within six months after the expiration of that period (Article 20(3) of the Trademark Act). No reason is required for the application under Article 20(3) of the Trademark Act (this is based on Rule 8 of the Regulations under the Trademark Law Treaty). In other words, even if there is no cause beyond one's control (for example, even if it is a careless mistake by an agent), an application under Article 20(3) of the Trademark Act can be filed. However, an additional fee is required for an application under Article 20(3) of the Trademark Act.
If an application for registration of renewal is not filed even within the six-month period after the expiration of the duration (the period under Article 20(3) of the Trademark Act), the trademark right is deemed to have expired retroactively to the time of expiration of the duration (Article 20(4) of the Trademark Act).
・Trademark Act Article 20
(Application for Registration of Renewal of Duration) Article 20: A person who files an application for registration of renewal of the duration of a trademark right must submit an application to the Commissioner of the Japan Patent Office stating the following matters: (i) The name and address or residence of the applicant; (ii) The registration number of the trademark registration; (iii) In addition to the matters listed in the preceding two items, matters specified by Ordinance of the Ministry of Economy, Trade and Industry. (2) An application for registration of renewal must be filed within the period from six months before the expiration of the duration of the trademark right until the day of expiration. (3) If a trademark holder is unable to file an application for registration of renewal within the period prescribed in the preceding paragraph, they may file the application within the period specified by Ordinance of the Ministry of Economy, Trade and Industry, even after that period has elapsed. (4) If a trademark holder does not file an application within the period during which they are able to file an application for registration of renewal pursuant to the provisions of the preceding paragraph, the trademark right is deemed to have expired retroactively to the time of expiration of the duration.
・Ordinance for Enforcement of the Trademark Act Article 11
(Matters to be Stated in Application for Registration of Renewal of Duration of Trademark Right) Article 11: The matters specified by Ordinance of the Ministry of Economy, Trade and Industry as referred to in Article 20(1)(iii) of the Trademark Act shall be, in the case of filing an application by reducing the number of classes of goods and services pertaining to the trademark right, the classes of goods and services for which registration of renewal is sought.
・Regulations under the Trademark Law Treaty Rule 8: Details Concerning Duration and Renewal
For the purposes of the application of the provisions of Article 13(1)(c), the period during which an application for renewal may be filed and the renewal fee may be paid shall start at least six months before the day on which the renewal is due and shall end at least six months after the day on which the renewal is due. If an application for renewal is filed or the renewal fee is paid after the day on which the renewal is due, the Contracting Party may make the payment of a surcharge a condition for the renewal.
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