最終更新日 2023-06-26
If records in the trademark register have yet to be updated despite several changes, you will likely have difficulty recording a new change to the owner information in the trademark register.
A chain of title means the historical sequence of events relating to ownership of trademark registrations. It needs to be appropriately recorded without delay every time a change occurs.
In this post, I’ll show you typical examples of “non-updated” chains of title and how to deal with them.
Typical Examples of “non-updated” chains of title
- Case 1 Although the registrant’s name or address has been changed several times, no requests for recording such changes have been filed.
- Case 2 Although the owner of trademark registration has been changed due to a company merger several times, no requests for recording the change of ownership by merger have been filed.
- Case 3 Although the trademark registration has been assigned to another company several times, no requests for recording the change of ownership by assignment have been filed.
- Case 4 Although changes in combination with either of the above have occurred to a trademark registration or its registrant, no requests for recording such changes have been filed.
How to deal with non-updated chains of title
Take the following steps to deal with non-updated chains of title concerning Japanese trademark applications/registrations:
- Step 1 Obtain
- Arrange the sequence of events in chronological order, starting from when the owner information was last recorded in the register to the present.
- Step 2 Consider what recordal requests must be filed.
- Step 3 Consult JPO about necessary recordal requests and documentation through your agent in Japan, if necessary.
- Step 4 Collect the required documents, including signed or certified/notarized documents, and send them to your agent in Japan to prepare and file appropriate requests with JPO.
Requests that can be omitted within the chain of title
- Changes of the registrant’s name or address, which occurred after the current information was recorded and before the most recent change occurred, can be omitted. You can file a single “Request for Change of Name or Address” to change the name or address from the one on the register to the most recent name. (Case 1 above)
- Changes of ownership by company merger, which occurred after the current information was recorded and before the most recent change occurred, can be omitted. You can file a single “Request for Change of Ownership by Merger” to change the owner from the recorded owner to the most recent owner. (Case 2 above)
- In case of a combination of change of name or address and change of ownership by merger, a “Request for Change of Name or Address” can be omitted. In this case, you can file a single “Request for Change of Ownership by Merger” to change the owner, but you also need to submit a document explaining all the changes in the chronological order. (Case 4 above)
- In case of a combination of change of name or address and change of ownership by assignment, only if the change of name or address occurred after the change of ownership can a “Request for Change of Name or Address” be omitted. In this case, you can file a single “Request for Change of Ownership by Assignment” to change the owner, and you also need to include a brief statement attesting to the change of name or address and its date in the request. (Case 4 above)
Requests that you cannot omit within the chain of title
- You cannot omit requests for change of ownership by assignment within the chain of tile. (Case 3 above)
- You must examine whether prior assignment documents can be used for recordation purposes.
- Acceptable documents are a notarized copy of the assignment contract or its extract, an uncertified “certificate of transfer” or “transfer document” that is prepared under the Trademark Law Treaty Article 11 (1)(b).
- In case a party involved with the assignment has already dissolved, you may consider whether the other party is entitled to “subrogation” for a change of ownership.
A chain of title is sometimes very complicated, and you’ll need to provide your agent in Japan with enough information to help them understand the background and history of the changes and what documentation would be required.