Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

The Japanese trademark system applies “First-to-File system”, therefore basically an application of a trademark which is filed later than another application by a third party cannot be registered.

In a case where a prior registered trademark of a third party conflicts with your trademark, there is a possibility not only of rejection of your later trademark application but of infringement of the third party’s trademark right.

In order to address such situations, there are several ways to be considered under the Japanese trademark system.

1. Dispute solutions

1) Cancellation of the trademark registration not in use (Article 50)
     This is commonly-used strategy when the registered trademark has been not in use for more than three consecutive years without any justifiable reason in Japan.  A trail for cancellation of the trademark registration can be filed with relatively simple procedure.
      Please refer to our previous post for your reference.

2) Cancellation of the trademark registration without a just cause (Article 53-2)
     If you have has the right pertaining to the trademark and it has not been five years since the third party’s trademark was registered without your approval, without a just cause, a trial for cancellation of the trademark registration can be filed.   
     
     * you should be a person in a country of the Union to the Paris Convention, a member of the World Trade Organization or a Contracting Party to the Trademark Law Treaty to file the trial.

3) Opposition or invalidation
     If your trademark had been well-known or famous in Japan at the time of the filing, an opposition to or a trial for validation of the trademark registration can be filed on the ground of Article 4 (1)(x) or (xv).  If your trademark had been also well-known abroad, Article 4 (1)(xix) can be the ground for the opposition or invalidation if the registered trademark is used for unfair purposes.  
   
    * An opposition should be filed within two months from the date of publication of the Trademark Gazette. 
     * A trail for invalidation on the ground of Article 4 (1)(x) or (xv) should be filed within five years from the registration date if the trademark was registered without ill-intent or the purpose of unfair competition.

2. Negotiation solutions

1) Assignment
     The third party’s trademark right may be transferred in whole or in part, or may be divided for each of the designated goods or designated services.  
    
     * When the trademark right is divided, it should not be used in a manner that causes confusion for the purpose of unfair competition (Article 52-2).

2) License (Article 30, 31)
     A right to use of the registered trademark may be granted by the third party.

3) Prior user’s right (Article 32)
    If your trademark had been used and become well-known in Japan before the filing date of the earlier trademark application by the third party, you may claim a prior user’s right. 
    
    *It should be noted that the prior user’s right may not be claimed unless your trademark had become well-known before the filing date of the earlier application.  In addition, the third party can request to mark your goods/services with a suitable indication so as to prevent any confusion.

4) A Letter of Consent, Assign-Back
     A letter of consent will not be able to overcome the rejection against your later application.  An “Assign-Back” procedure carries risks even if the procedure can be considered. 
    Please refer to our previous post for your reference.

3. Our comments

Ultimately, filing an application of your trademark before the third party’s filing is the safest, surest and easiest way.  Highly recommended is the filing as soon as possible if you think of conducting business in Japan.


End of report

HIROTA, Miho
AIGI Intellectual Property Law Firm