Trademark Advice for Individuals and Small and Medium-sized Enterprises

 

Opposition to the registration

In the case that a trademark that should not have been registered in the first place has been registered, it is possible to request a re-examination of the case by filing an Opposition to the registration. The Opposition must be filed within two months after the date of publication of the trademark in the Japanese Trademark Gazette. Once this deadline is passed, it is necessary to file a Trial for invalidation in order to obtain a revision of a mistaken registration.

 

 

Trial for Invalidation

When a trademark that shouldn’t have been registered has been mistakenly registered or when it subsequently appears that a trademark was unfairly registered, it is possible to invalidate the registered trademark. The trial procedure that allows for a retroactive dismissal of the trademark right is called Trial for Invalidation.

 

 

Trial for Rescission

If, for reasons that appeared after registration, it becomes inappropriate to maintain a trademark that had been originally registered without defect in the examination process, it is possible to dismiss the trademark by filing a Trial for Rescission. There are five types of Trial for Rescission, as described below.

 

  • Trial for Rescission due to lack of use (Article 50 of the Japan Trademark Act)

A Trial for Rescission due to lack of use can be filed in order to request the rescission of the registration in the case that neither the owner of the trademark right nor the exclusive licensee nor a non-exclusive licensee have used the registered trademark in Japan in the three years preceding the filing of the Trial for Rescission.

 

  • Trial for Rescission due to unfair use by the owner of the right (Article 51 of the Japan Trademark Act)

A Trial for Rescission due to unfair use by the owner of the right can be filed in order to request the rescission of the registration in the case that the owner of the right has deliberately attempted to cause confusion with the product or service of a third party through the use of the registered trademark in connection with similar products or services.

 

    • Trial for Rescission due to unfair use by the licensee (Article 53 of the Japan Trademark Act)

Japanese Trademark Law imposes at the same time a duty of fair use of the registered trademark to the licensee and a duty of control of the licensee to the owner of the right. Accordingly, a Trial for Rescission due to unfair use by the licensee can be filed in order to request the rescission of the registration in case of violation of the said duty of control.

 

      • Trial for Rescission due to unfair use by the owner of the right following a transfer of the right (Article 52-2 of the Japan Trademark Act)

A Trial for Rescission due to unfair use by the owner of the right following a transfer of the right can be filed in order to request the rescission of the registration when, as a result of a transfer of the right, the use of the registered trademark by the separate owners of the right is causing confusion in the mind of the consumer. This serves as a protective measure against the confusion that can appear with regards to the source of a trademark following a transfer of the right.

 

      • Trial for Rescission due to unfair registration by a representative (for example by an outlet) (Article 53-2 of the Japan Trademark Act)

A Trial for Rescission due to unfair registration by a representative can be filed when a representative has registered the trademark without the consent of the entity entitled to the rights related to the trademark.