Outline of Procedures Implemented due to the Accession to the Singapore Treaty on the Law of Trademarks (STLT)

April 1, 2016
Japan Patent Office

The Act for Partial Revision of the Patent Act and Other Acts (Act No. 55 of 2015) including provisions to implement the provisions of the Singapore Treaty on the Law of Trademarks (STLT) , which will come into force on June 11, 2016 for Japan, has come into force on April 1, 2016. Accordingly, we hereby describe below the outline of the implemented procedures.

1.Relief in respect of specified time limits (Article 5(3) of the Patent Act applied mutatis mutandis pursuant to Article 77(1) of the Trademark Act)

In accordance with the provision in Article 14 (2) (ii) of the STLT, the applicant may now request for extension of a specified time limit, only within a certain period, even after the expiration of the time limit specified by the provisions of the Trademark Act, except for those in the process of an appeal against the decision by an examiner.

For instance, with regards to the extension of specified time limits by request before the expiration of the specified time limit (Article 5(1) of the Patent Act applied mutatis mutandis pursuant to Article 77(1) of the Trademark Act), the applicant may now request for the extension within two months even after the expiration of the specified time limit (This period is prescribed by the Ordinance for Enforcement of the Trademark Act).

* The time limit for requesting the extension after the expiration of the specified time limit is two months from the day following the last day of the said time limit even when the last day falls on a day when the JPO is closed, such as Saturdays, Sundays and national holidays.

* With regard to requests for extension of specified time limit after the expiration of the said specified time limit, applicants need to pay a fee of 2,100 yen when requesting for the extension before the expiration of the time limit, 4,200 yen when requesting for the extension after the expiration of the time limit.

Please refer to the page below for details regarding the extension of the specified time limit for responding to a Notification of Reasons for Refusal.

Reference

Change of Operating Procedures regarding the Extension of the Specified Time Limit for Responding to a Notification of Reasons for Refusal concerning Patent Applications and Applications for Trademark Registration (starting from April 1, 2016

2.Relief when failing to comply with the prescribed time limit, etc. concerning special provisions at the time of filing an application (Article 9(3), etc. of the Trademark Act)

In accordance with the provision in Article 14 (2) (ii) of the STLT, the applicant may now conduct procedures, only within a certain period of time, even after the expiration of the time limit for procedures prescribed by the Trademark Act.

For instance, even where the applicant fails to comply with the period for procedures described below, the applicant may now conduct the said procedures within even two months after the expiration of the prescribed time limit (This two-month period is prescribed by the Ordinance for Enforcement of the Trademark Act).

*When conducting such procedures after the expiration of the time limit for procedures, the applicant needs to submit a Request for Extension of a Period and also must pay a fee of 4,200 yen.

• （1）Submission time limit for a certifying document to get eligible for special provisions at the time of filing an application (Article 9(3) of the Trademark Act)
• （2）Submission time limit for a priority certificate (Article 13 of the Trademark Act)
• （3）Time limit concerning payment of registration fee (Article 41(3) of the Trademark Act)
• （4）Time limit concerning first installment payment of registration fee (Article 41-2(3) of the Trademark Act)
• （5）Time limit concerning payment of defensive mark registration fee (Article 65-8(4) of the Trademark Act)

3.Restoration of a trademark right, etc. (Article 21, etc. of the Trademark Act)

In accordance with the provision in Article 14 (2) (iii) of the STLT, it is now possible under certain conditions to restore trademark rights, etc. that have extinguished due to being unable to file an request for registration of renewal of duration for a trademark right, etc.

For instance, even where the owner of the right fails to comply with the time limit of procedures described below, if there is a justifiable reason for such failure to comply (i.e. where the owner of the right has failed to comply with the time limit and the Patent Office finds that the failure occurred in spite of due care required by the circumstances having been taken), the owner of the right may conduct the said procedures within the period prescribed by the Ordinance for Enforcement of the Trademark Act (within two months from the date on which the justifiable reason ceased to exist and within six months after the expiration of the period for relevant procedures).

• （1）Period during which the owner of a trademark right may file a request for registration of renewal of duration for the trademark right (Article 21 of the Trademark Act) (This relief has been implemented by 2011 Amending Act)
• （2）Period during which the owner of a trademark right may make a delayed payment for the last installment payment of registration fee and registration surcharge (Article 41-3 of the Trademark Act) (This relief has been newly established by 2015 Amending Act)
• （3）Period during which the applicant may file an application for registration of renewal of duration for a defensive mark registration (Article 65-3(3) of the Trademark Act)
• (This relief has been implemented by 2011 Amending Act)

[Last updated 8 April 2016]

Contact

Customer Relations Policy Division, Trademark and Customer Relations Department, Japan Patent Office E-mail:PA1100@jpo.go.jp