Control of Right
After acquisition of a trademark right, it is of particular importance to control and maintain the right properly and to enforce it effectively. In the following, we will provide explanation to respective fields where proper maintenance of the trademark right is required.
Renewal of Trademark right
Unlike a patent right, a trademark right can be renewed for another 10 years by filling an application for registration of renewal and paying renewal registration fees. Practically, it is possible to maintain the trademark right permanently by filling the renewal application every 10 years.
The application for registration of renewal can be filled during a period from 6 months prior to the expiration of the duration of the trademark right to the date of expiration thereof.
Expense for one application (one duration) for registration of renewal of the trademark right is as below.
When a trademark similar to yours is applied and/or registered, it is important that you take a proper action such as providing information to the Patent Office or raising an objection. It is recommended after the acquisition of the trademark right that in order to access to information required for taking such an action, you watch the application and/or registration of the trademark that may infringe your trademark.
“HARAKENZO more “, in cooperation with a private firm providing a monitoring service, provide timely information on the trademark that may infringe yours.
Strategy on Non-use
The Trademark Act stipulates that any person can file a request for a trial for rescission of a registered trademark that has not been used for 3 consecutive years or longer by a holder of a trademark right after the registration thereof (i.e., a request for a trial for rescission can be filed against a registered trademark not in use).
It is important that you properly use the registered trademark after the registration thereof so as to avoid a situation that the registered trademark right falls in an unused registered trademark. It is required that the registered trademark be used in connection with designated goods or services, and as such, use of the registered trademark in connection with goods or services merely similar to the designated ones pertaining to the registered trademark is basically considered “non-use.” In this case, a request for a trial for rescission of the registration may be filed against that registered trademark right.
On the other hand, the registered trademark is considered being properly used, in a case where a trademark falls in any of trademarks as below, which are trademarks deemed identical from common sense perspective with the registered trademark.
- A trademark consisting of characters identical with those of the registered trademark but in different fonts
- A trademark written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from those of the registered trademark but identical therewith in terms of pronunciation and concept
- A trademark consisting of figures considered identical in terms of appearance as those of the registered trademark
- Other trademarks which considered being identical from common sense perspective with the registered trademark
License of Right
License of a trademark right is a system in which a licensor or the like of the trademark authorizes a licensee, by a method other than assignment, to use a registered trademark to designated goods or services.
Please note that, for the license of the trademark, the licensor of the trademark right is obligated to make sure that the licensee does not misapply the trademark.
It is recommended that when you admit usage of a registered trademark by others (e.g., when you allow an affiliate, a subsidiary or the like to use the registered trademark), you and a licensee of the registered trademark close a license agreement in advance. Please let us handle important matters of a license agreement such as specification of license or preparation of required documents so that future confusion or unnecessary conflict can be avoided.
Transfer of Right
Transfer of a trademark right refers to a process for changing a holder of a trademark right while a right pertaining thereto remains the same.
For the transfer of the trademark right to others by assignment or the like, you are required to file “application for registration of transfer of a trademark right” with the Japan Patent Office. Transfer of the trademark right is categorized into either “general succession” including merger or inheritance or “specified succession” including assignment or the like. The following description briefly deals with “a transfer by assignment”, typical use of a trademark right.
■ Assignment of a Trademark Right
Where there are two or more designated goods or services, a trademark right may be divided into each of the designated goods or services in transferring such a right. The Trademark Act speculates that in the case of transfer of a trademark right by assignment, application for registration requires to be filed so that a confusion arising from the transfer of the trademark right can be avoided.
For “application for registration of transfer of a trademark right by assignment,” certificate of transfer signeted or signed by an assignor as well as letters of attorney by both the assignor and an assignee are required, in principle (if you entrust a task to us, we will prepare all the formats for required documents).