table of contents
Opposition to trademark registration
What is the registration opposition system?
Even though examiners at the Japan Patent Office are conducting examinations, cases may occur where they overlook previously registered trademarks and register the same or similar trademarks that were filed later.
Additionally, there are gray areas in regulations that stipulate that registration is not possible, so it is not perfect.
Therefore, in case a trademark that is not suitable for registration is registered, an opportunity is given to file an "opposition" requesting the cancellation of the registration. The petition isAnyonecan be done.
By filing an opposition to trademark registration with the reason that the trademark should not be registered, the Japan Patent Office will examine whether the registration is appropriate, and if approved, the registration will be cancelled.
Examples of grounds for opposition
Examples of grounds for filing an objection include:
- Trademarks that do not allow consumers to recognize that the goods or services are related to the work of some person
- Trademarks that are contrary to the public interest, such as being confusing with marks of public institutions
- Trademarks that may harm public order or good morals
- Trademarks that include other people's names, famous abbreviations, etc.
- Trademarks that are the same or similar to other people's well-known trademarks, etc.
- A trademark that is the same or similar to another person's registered trademark and is used for the same or similar designated goods/services.
- Trademarks that are the same as or similar to the name of a variety registered under the Seeds and Seedlings Law
- Trademarks that are likely to cause confusion with goods or services related to the business of others
- Trademarks that may cause misunderstanding of product quality or service quality
- Items that are the same or similar to another person's well-known trademark and are used for fraudulent purposes
Period for filing an objection
If you believe that one of the reasons listed above applies, you may not always be able to file an opposition to the registered trademark. The Trademark Law stipulates that "an opposition may be filed within two months from the date of publication of the trademark listing bulletin." Documents must be submitted.
After submitting documents for opposition to registration, a written hearing will be conducted by multiple administrative judges at the Japan Patent Office, and after determining whether there is a reason to cancel the registration, the applicant will be notified of the results.
How to file an objection within the period
Trademark registrations are published, but potentially affected parties are not contacted and cannot be known without accessing the public information.
Therefore, in cases where an opposition has been filed within the period, we will periodically monitor the progress of the trademark in question from the stage of post-application examination to ensure that it has been registered. There are often
Fees for filing an objection
Office fees (patent stamp fees) start from 11,000 yen, and will be added as the number of categories increases. If you request a patent attorney, a separate fee will be charged.
Countermeasures other than filing an objection
In addition to filing an opposition, you can invalidate or cancel a trademark registration, or provide information detrimental to the registration at the pre-registration examination stage. Here's how:
Invalidation trial
If the opposition period (two months after publication of the trademark bulletin) has passed, you can request a trial to invalidate the trademark registration.
- Who can request an invalidation trialinterested partieslimited to. For example, a relationship must be established, such as being sued by a trademark owner for trademark infringement, or attempting to do business using the same or similar trademark.
- It is important to note that once five years have passed since registration, the grounds for requesting an invalidation trial will be limited.
- Office fees (patent stamp fees) start from 55,000 yen, and will be added as the number of categories increases. If you request a patent attorney, a separate fee will be charged.
Please see below for details regarding invalidation trials.
Cancellation trial
There are several types of cancellation trials to cancel trademark registration, but here we will introduce the non-use cancellation trial, which is the most commonly used.
Non-use cancellation trial is a system that allows you to request cancellation of a trademark registration if it has not been used for a certain period of time (the most recent three years or more) after trademark registration. All or part of the designated goods/services that are subject to cancellation will be listed in the appeal request form. Registration will be canceled if all of the selected specified products are confirmed to be unused. It is up to the trademark owner to prove whether or not the trademark is used.
- AnyoneYou can request a cancellation trial. Since the requester must be listed on the appeal request form, the other party (trademark owner) will know who filed the request for cancellation.
- Office fees (patent stamp fees) start from 55,000 yen, and will be added as the number of categories increases. If you request a patent attorney, a separate fee will be charged.
Regarding the cancellation trial here. for more information.
Information provision
It is used for the purpose of preventing the trademark from being registered by providing information to the Patent Office that the trademark should not be registered. For determining whether to register at the screening stageReference informationSubmit a document called "Publication Submission Form" to the Patent Office asReference informationTherefore, it is up to the examiner whether to adopt it or not).
- Anyoneinformation can be provided. If you do not wish to reveal your name as an information provider, you can submit anonymously.
- There is no office fee (patent stamp fee), but if you request a patent attorney, a fee will be charged.
Invalidation trial
What is the invalidation trial and the reasons for invalidation?
What is an invalidation trial?
A trademark registration invalidation trial is a trial that invalidates and annihilates a trademark registration that has the following reasons for invalidation.
When an invalidation trial is filed and a trial decision to invalidate becomes final, 1) trademarks that were not supposed to be registered but were registered by mistake, and 2) registered trademarks that have become inappropriate after registration will be invalidated. I can.
Example of invalidity reason
1. Examples of violation of trademark registration requirements (same reasons for refusal stipulated in Article 3 of the Trademark Law)
- A trademark consisting only of a common name for the product, etc. (e.g. "word processor")
- A trademark consisting only of a mark that indicates the product's origin, quality, shape, etc. (e.g. "Wakayama")
- A trademark consisting only of a common name or name (e.g. "Tanaka")
- A trademark consisting only of a simple and common mark
2. Examples of violations of grounds for non-registration (same as grounds for refusal under Article 4, Paragraph 1 of the Trademark Act)
- Trademarks that are the same as or similar to the national flag, chrysanthemum emblem, red cross mark, mark of an international organization, mark of a prefecture, etc.
- Trademarks that violate public order and morals
- A trademark that is the same or similar to another person's registered trademark and is used for the same or similar products.
- Trademarks that may cause misunderstanding of product quality, etc.
- Trademarks that may cause confusion with products, etc. related to the business of others
The above reasons are listed as invalid.
Requester for invalidation trial
Not just anyone can request an invalidation trial. Only those who are recognized as interested parties can make a claim. Interested parties also include those who are preparing to use a trademark that is the same as or similar to a registered trademark for the same or similar goods or services.
Stakeholders and their requirements
- A person who uses or has used a trademark that is the same as or similar to a registered trademark for the same or similar goods or services.
- A person who may use a trademark that is the same as or similar to a registered trademark in the future (a person who is preparing to use a trademark that is the same or similar to a registered trademark)
- Those who may be disadvantaged due to confusion about the origin of products due to a registered trademark
- A person who is or has been involved in a lawsuit regarding trademark rights, or a person who has been warned of trademark infringement.
Period for requesting invalidation trial
An invalidation trial can be filed even after the trademark right has expired. For example, when a lawsuit is filed for damages for trademark infringement, if the trademark registration can be canceled, it will be assumed that the trademark right never existed from the beginning, and there will be no need to pay damages. However, please note that the procedure has a exclusion period, so you may not be able to make a claim at any time.