最終更新日 2023-06-26
When you prepare for trademark recordal in Japan, for example, for recording the change of the registrant’s address for all the existing trademark registrations in Japan, you may have encountered the following problems:
- The registrant’s address or name in Japanese is not shown exactly the same throughout the subject trademark registrations.
- The registrant’s address or name in some of the trademark registrations is not current.
Under such circumstances, you would need to take additional steps to correct or update the records before you carry out the intended recordal. Isn’t that frustrating?
I will show you three steps you can take now to avoid frequent last-minute hassles.
Step 1: Use the same spelling of the trademark owner’s name and address
Ask your associate in Japan to obtain a copy of the trademark register for each trademark registration that you want to update its record from the Japan Patent Office. Also, ask them to translate the name and address of the registrant into English so that you can identify any inconsistency among the subject registrations.
Note that spelling variations are common when transliterating English letters in Japanese. So, you’d better have a fixed way of spelling the registrant’s name and address in Japanese.
Step 2: Use the same spelling of name and address
If you find any inconsistency among the registers regarding the registrant’s name or address, or if the registrant’s name or address has changed, you need to proceed to record the change or correction for the relevant registrations.
In a case where several transfers of ownership by assignment have not been recorded, you’ll need to register each transfer along with supporting documents in chronological order up to the present one.
If you can’t produce supporting documents because, for example, any of the past assigners or assignees no longer exists, or any of the assignment deeds have been lost, and no valid substitute certificates are available, you may not be able to record the present transfer of ownership. You may consider filing a new trademark application for the same mark.
Step 3: Obtain information beforehand on the requirements for the planned recordal
If you plan to record any changes to existing trademark registrations in Japan, you should get information well in advance from your Japanese associate on the requirements for recordal, such as required documents and approximate costs.
You also should confirm whether an assignment contract executed in your country can be used for recordal in Japan.
Note
Recordal takes effect upon entry into the trademark register in Japan. Thus, as for assignment, the assignee can’t claim itself as a legitimate owner of the trademark, nor can it enforce its trademark rights against others until the recordal process of the assignment has been completed. Delays in collecting supporting documents or submitting incomplete applications that are most likely rejected may hinder the timely enforcement of your trademark rights.
Requirements for recordal are different by country. Make sure you have a reliable associate from whom you can get the necessary information on trademark recordal and who can manage your trademark portfolio best.