By michael li
Yes, if the registration was paid in installments and the second payment is missed. For a Japanese national trademark registration, leaving that installment and any required surcharge unpaid beyond the six-month late-payment period can cause the right to be treated as extinguished, with effect going back to the five-year point. A restoration procedure may be available, but paying the seller does not protect the buyer from this deadline.
The mistake can begin with an ordinary assumption: the registration has a ten-year term, so nothing needs paying until year ten. That is not necessarily how the seller paid for it.
For a business buying a Japanese trademark, the important question is therefore not just whether the transfer will be recorded. It is whether another payment falls due before the buyer expects it.
This article concerns direct Japanese national registrations. The payment arrangements for international registrations designating Japan should be checked separately rather than assumed to follow the same process.
A Japanese trademark right ordinarily runs for ten years from its establishment registration. Under Article 41-2 of the Trademark Act, however, the registration fee can be paid in two installments rather than in one payment covering the whole term. Renewal fees can also be split.
This creates a distinction that matters during an acquisition. The end of the current term and the next payment deadline may be different dates.
A buyer checking the ten-year expiry date has not, by that check alone, established whether the second installment has been paid. Nor does buying the registration start a fresh ten-year term.
For background on the national filing process, the Practical Guide to Direct Trademark Registration in Japan explains how an application moves through registration and maintenance. When purchasing an existing mark, that general process needs to be matched against the payment history of the particular registration.
Consider a hypothetical purchase in the fourth year after registration. The buyer pays the agreed price, receives the signed assignment documents and instructs a representative to record the transfer.
The seller’s file contains a receipt for the first installment. Nobody asks about the second one.
The seller expects the buyer to handle future expenses. The buyer expects the representative handling the transfer to deal with future deadlines. The representative has been instructed to record the assignment, not to take over ongoing maintenance.
No one has necessarily acted dishonestly. The problem is that each party understands the handover differently.
The purchase agreement might allocate future fees to the buyer, but that still leaves practical questions unanswered. Which representative will make the payment? Has that representative accepted the instruction? Who will provide the funds, and who will check that the payment was completed?
The example is hypothetical, not a reported client matter. Its point is the gap between agreeing who bears an expense and arranging for someone to make the payment.
In a January 28, 2014 judgment, the Tokyo District Court dismissed Fuki Co., Ltd.’s claim seeking the transfer of four trademark rights from the registered owner’s heir. The case was numbered 2013 (Wa) No. 3255.
Fuki argued that the original holder had applied for and maintained the marks under an arrangement for the company. Its evidence included payment of certain renewal-related expenses. The court nevertheless found that the alleged arrangement supporting the transfer claim had not been established.
A written agreement from 1973 treated the original holder as the owner and granted use rights. The court also considered that Fuki’s payment of some renewal costs was consistent with maintaining trademarks it used under licence.
This was not a missed-installment case, and it does not show a buyer losing a purchased mark through nonpayment. Its relevance is narrower: paying trademark expenses did not, on those facts, establish the claimed entitlement to a transfer.
For an acquisition, the same separation is useful. Evidence of ownership and evidence of maintenance payments answer different questions. A complete file needs both.
A missed ordinary deadline does not always mean that the registration is beyond recovery. Article 41-2 allows the second installment to be paid within a further six months, generally with a surcharge equal to the installment under Article 43, subject to the statutory exception.
If the required payment is not completed within that period, the right is deemed extinguished retroactively at the five-year point. The consequence is not simply a late charge added to the buyer’s next invoice.
Article 41-3 provides a separate route for restoration following an unintentional failure, subject to procedural requirements and time limits. Restoration should not be treated as automatic, and Article 41-4 limits the effect of a restored right against certain acts during the intervening period.
The buyer should promptly give the Japanese representative the registration details, available receipts and relevant correspondence. The representative can then establish the dates and assess the available procedure, rather than trying to resolve the problem from a seller’s assurance or an isolated invoice.
A general assurance that the trademark is “valid” or “up to date” is not a substitute for checking the current term and its payment records. A short handover table can help the buyer and the incoming representative work through the same documents without confusing the purchase price with official payments.
| What to check | Records to request | What needs to be confirmed |
|---|---|---|
| Registration being purchased | Current register information and assignment documents | The registration number, owner and designated goods or services match the agreed asset. |
| Current term | Establishment-registration details and any relevant renewal records | The start and end dates of the term being reviewed are clear. |
| Payment arrangement | Registration or renewal fee records, with the representative’s explanation where needed | The current term was paid in full or in installments. |
| Payments already completed | Filing acknowledgements and payment records identifying the registration, fee type and period | The evidence covers the intended official payment, not just the purchase price or a professional invoice. |
| Next deadline | A written deadline calculation checked by the responsible representative | Any remaining installment or renewal action has been identified. |
| Responsibility after closing | Accepted written instructions and funding arrangements | A named person is responsible for authorizing, funding and carrying out the next task, with completion evidence sent to the buyer. |
An invoice described as “trademark transfer” may leave its scope unclear. Ask whether it covers assignment recordal only or also includes a separate maintenance payment. A transfer of funds to a representative should be followed by confirmation that the intended official payment was made.
Missing paperwork deserves careful wording. If a receipt cannot be found, the payment is unverified; it is not automatically unpaid. The buyer should resolve that uncertainty without turning an incomplete file into an accusation against the seller.
Where closing is close to a deadline, the parties should identify who can authorize and fund the payment while their advisers settle who ultimately bears the expense. A disagreement over reimbursement should not leave everyone waiting for someone else to act.
For the broader issues that continue after a purchase, including ownership records, licensing and use, see Japanese Trademark Law: Practical Compliance for Cross-Border Brand Operators. A payment check is one part of taking over the registration, not the whole exercise.
No. Registration and renewal fees can be paid in full or in installments. The buyer needs to establish which arrangement applies to the current term rather than assume that every registration carries a second payment.
The parties should make the cost allocation explicit in their agreement. Regardless of who agrees to bear the expense, the buyer should obtain separate evidence that any required official payment has actually been completed.
No. The ordinary term is measured from establishment registration, with subsequent terms governed by renewal, not by the purchase date. The buyer takes over a registration with an existing term and payment history.
The Trademark Act provides a six-month late-payment period, generally requiring an equal surcharge. A separate restoration procedure may be available after that period, but the dates, circumstances and procedural requirements need prompt assessment.
The buyer should receive the registration details, current-term information, available payment evidence and written confirmation of the next required action. The representative taking over that action should acknowledge the instruction, particularly if the engagement otherwise covers only the transfer.
IPcrossark’s trademark services include Japanese trademark assignment applications, renewal filings and fee payments, and changes to owner or agent details. A business acquiring a registration can begin the discussion with the registration number, assignment documents and available payment records.
Before instructing the work, the buyer can contact IPcrossark to clarify which filings are included, which charges are official fees and what completion records will be supplied. If a second installment is approaching, it should be raised expressly rather than assumed to form part of the transfer engagement.
The aim is to leave the buyer with a defined filing task and an identified person responsible for the next step. Disputed ownership, contractual liability and eligibility for restoration require separate, case-specific legal assessment.
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