Non-use Cancellation

 

Article 1 of the Japan Trademark Law provides that the Law, by means of protecting trademarks, aims to maintain good will bestowed on business entity who uses trademarks and thereby to contribute to the development of the industry as well as the protection of consumers benefit. In the meantime, the use of trademark is not a prerequisite for registering trademark under the Law.

Needless to say, main function of trademark is to be able to distinguish goods and services of the same kind in the market. When registered trademark ceases to function as a source indicator for long, it is not worthy of protection any more in light of legislative intent of the Law.

Accordingly, the Trademark Law establishes that the Japan Patent Office shall, at the request of anyone, interested or non-interested, cancel a trademark registration when without a good cause of non-use, the trademark has not been used in the territory of Japan, by the owner, a licensee or other authorized person, for three consecutive years immediately before the filing date of the petition for non-use cancellation.

Trademark registration grants its owner the exclusive right to use it. But if the trademark is not genuinely and effectively used in the market, the owner can lose this right since the trademark would not be complying with its essential function of identifying a certain good or service in the market. In turn, a third party interested in using the trademark can obtain its cancellation and then register it in its favor. But the trademark owner must be given at least a three year period as from the registration date to use its trademark in the market.

A party may simply file a petition for non-use cancellation with the JPO to demand cancellation of the mark by stating that the mark has not been used for over three years from the registration date. Within 1 months from the acceptance of the case, the Trial Board of JPO will issue a notice of presenting evidence to the trademark registrant, requiring presenting the evidence of using the trademark within 70 days for a non-resident (40 days for resident). If the trademark registrant fails to provide evidence or otherwise the evidence is insufficient to prove the use of the trademark, the Trial Board may issue a decision to cancel the trademark registration. In other words, the issue of burden of proof rests on trademark registrant.

The course of action may take 4-8 months to complete on the part of JPO. The decision of the Trial Board is subject to judicial review by the IP High Court.