Abolition of Second Part Fee for International Trademark Registrations

Abolition of Second Part Fee for International Trademark Registrations

Overview:

The JPO will change the payment of individual fees for international trademark registrations from a “two-step” remittance to a “lump-sum” remittance.

Current Practice:

As to international trademark registrations, an individual fee is payable in two parts in Japan.  Among the Madrid Union members, Japan, Brazil and the Republic of Cuba are the only countries that allow two-step payment of the individual fee.

The WIPO states that:

The first part of the individual fee will have to be paid at the time of the designation of Japan (either in the international application or in a subsequent designation).  The second part will have to be paid only if the Office of Japan is satisfied that the mark which is the subject of the international registration qualifies for protection (for all or some only of the goods and services concerned). Therefore, the payment of the second part will, if applicable, be required at a later date than that of the designation of Japan.

For our overseas clients, we basically do not handle the filing of international trademark registrations, while we handle responses to provisional refusals and the subsequent procedures.  If the JPO considers that a trademark is in condition for allowance, we receive a certified copy of a Decision to Grant and forward it to our client. 

Then, the client (not us) receives a notification from the WIPO regarding the payment of the second part of the individual fee.  In order to obtain protection in Japan, the client is required to pay the second part of the individual fee at their end.

Once the second part fee is paid, we receive a certified copy of the trademark registration from the JPO and forward it to our client by post.

New Practice:

On or after April 1, 2023, the JPO will no longer accept two-step payment of the individual fee. Under the new practice, in order to obtain protection for a international trademark registration, the individual fee should be paid at once, in the same manner as in most other countries. 

We believe that the JPO will send certified copies of trademark registrations to us as under the current practice, and therefore, we will continue to forward them to our clients by post.

 

We believe the above comments will be clear to you.  Should you have any further questions, please do not hesitate to contact us at info@allegropat.com

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