How to remove a senior registered mark in the most effective manner

The Japan Trademark Law provides several provisions to make trademark registrations ineffective once successfully registered.

  1. Opposition (Article 43bis)
  2. Invalidation trial (Article 46)
  3. Non-use cancellation trial (Article 50)
  4. Cancellation trial based on misleading use by registrant (Article 51)
  5. Cancellation trial based on fraudulent use by assignee of divided trademark right (Article 52bis)
  6. Cancellation trail based on misleading use by licensee (Article 53)
  7. Cancellation trial based on unauthorized registration by person concerned (Article 53bis)

According to the statistical data released by the Japan Patent Office (JPO), it shows that non-use cancellation trial is at lowest risk in view of past success rate.

<Success rate in 2016>

  • Non-use cancellation trial: 80%
  • Invalidation trial: 47%
  • Opposition: 17%

 

Non-use cancellation

Article 50 (1) of the Trademark Law provides that;

Where a registered trademark (including a trademark deemed identical from common sense perspective with the registered trademark, including a trademark consisting of characters identical with the registered trademark but in different fonts, a trademark that is written in different characters, Hiragana characters, Katakana characters, or Latin alphabetic characters, from the registered trademark but identical with the registered trademark in terms of pronunciation and concept, and a trademark consisting of figures that are considered identical in terms of appearance as those of the registered trademark; hereinafter the same shall apply in this article) has not been used in Japan in connection with any of the designated goods and designated services for three consecutive years or longer by the holder of trademark right, the exclusive right to use or non-exclusive right to use, any person may request a cancellation trial of such trademark registration in connection with the relevant designated goods or designated services.

 

In Japan, burden of proof to demonstrate genuine use of the disputed mark during the past three years rests just on trademark owner. In other words, non-use cancellation trial is not burdensome to claimant at all. Besides, the law does not require the claimant to have legal interest to the result of cancellation trial. It also boosts preference to non-use cancellation trial.

It also should be noted that claimant is not obliged to file a non-use cancellation against the entire goods/services designated by registered mark in dispute. In the meantime, Article 50(2) provides that non-use cancellation trial results in fail where trademark holder successfully proves genuine use of the registered mark on any one of goods/services in question. It means the more goods/services are requested for cancellation trial, the less likely to win the trial, since the Trademark Law does not allow partial cancellation decision.

 

Article 50(2)

Where a request for the cancellation trial under the preceding paragraph is filed, unless the trademark holder proves that any of the holder of trademark right, exclusive right to use or non-exclusive right to use has used the registered trademark in Japan in connection with any of the designated goods or designated services pertaining to the request within three years prior to the registration of the request for the trial, the holder may not prevent cancellation of the trademark registration in connection with the relevant designated goods or designated services; provided, however, that this shall not apply where the holder shows just causes for non-use of the registered trademark in connection with the relevant designated goods or designated services.

 

Today’s lesson: Grasp all, lose all.

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