Harassment? How to Counter Preemptive Trademark Applications and Trademark Registrations

Someone has trademarked my name!

My Youtube channel name was trademarked by someone before I knew it!
Is it harassment? What should I do?

That’s a problem. Take action now.
The countermeasure will depend on what stage the other party’s trademark application is.

This article explains how to respond if your naming (brand name) has been intercepted by someone else’s trademark application.

If you are troubled by a preemptive application, please consult a patent attorney now!

Why can I file a preemptive application?

Since a trademark protects the trust accumulated through the use of a mark, the original intent is to grant rights to those who use the mark.
However, since it is difficult to prove who was the first to use a trademark, the first-to-file principle is adopted in Japan. In other words, the first applicant to apply is granted the right (the first to file wins).

The term “first-to-file” is used here to describe the practice of filing an application for someone else’s name first.

What is the purpose of the person filing a preemptive application?

The purposes of a third party who files a preemptive application may include the followings;

• They wanted to file an application first because they want to use the trademark themselves (in some cases, they are unaware that others are using the trademark).
• Wanting to charge the original user a licensing fee or sell the trademark at a higher selling price by acquiring the trademark rights (trademark troll).
• To interfere with a competitor’s business by preventing the free use of the trademark (harassment).

Wasn’t the preemption application taken care of?

Certainly, the JPO has taken measures against “mass preemption applications”, but it is important to note that they are not measures against all “preemption applications”.

In the past, there was a problem with the practice of some companies filing large numbers of applications for other people’s trademarks without paying a fee. The reason for this is that the Trademark Law Treaty requires that trademark applications be accepted even without payment of a fee.
The way these vendors maintained their applications was by division of the application when they received a notice of insufficient fees from the Patent Office.

https://www.jpo.go.jp/faq/yokuaru/trademark/tanin_shutsugan.html

The law has been amended to prevent the retroactive filing date of an application even if the application is divided when the fee has not been paid.

In other words, if the person filing the prior application has paid the fees normally, the application may be registered.

Measures against preemptive applications in Japan

In Japan, the following trademarks are not eligible for registration

• Trademarks that are not used in connection with goods or services related to one’s own business (Trademark Law, Article 3(1), Principle Paragraph)
• A trademark identical or similar to a well-known mark indicating a national or local government, an agency of a national or local government, a non-profit organization in the public interest, or a non-profit business in the public interest (Trademark Law Article 4(1)(vi) )
• A trademark that is likely to be injurious to public order or morals (Trademark Law 4(1)(vii))
• A trademark that includes the portrait of another person or the name, famous pseudonym, artistic name, or pen name of another person or a well-known abbreviation thereof (except those with the consent of such other person). (Trademark Law Article 4(1)(viii))
• A trademark that is widely recognized among consumers as indicating goods or services pertaining to the business of another person or a trademark similar thereto, which is used in connection with such goods or services or goods or services similar thereto (Trademark Law 4(1)(x))
• A trademark identical or similar to a trademark that is widely recognized among consumers in Japan or abroad as indicating goods or services pertaining to the business of another person, which is used for a wrongful purpose (meaning the purpose of obtaining a wrongful profit, the purpose of causing damage to others, or any other wrongful purpose. The same shall apply hereinafter) (excluding those listed in the preceding items). (Trademark Law Article 4(1)(xix) )

Therefore, you can take measures against a preemptive application by claiming to the Patent Office, etc. that the preemptive application falls under these items.

“Providing Information” if before the trademark is registered

• Time: Before registration of establishment (before refusal)
• Who can provide information: Anyone

https://www.jpo.go.jp/system/trademark/shinsa/johotekyo/touroku_jouhou.html

At the stage when the trademark application is published in the trademark application gazette, you can “provide information” to the JPO examiner, informing him or her that “this is the trademark I am using”.

You can provide information anonymously, but since you will not receive feedback, it is recommended that you go through a patent attorney’s office.

“Opposition” if within 2 months of the trademark publication

If your trademark has been registered within 2 months, you should first consider filing an opposition.

• Time: within 2 months from the date of publication of the trademark publication
• Requested by: Anyone

You know, the name of a well-known video genre has been trademarked, and it got a lot of attention.
Not that any particular person is using it, but that kind of thing bothers everyone.
Can anyone file an opposition?

You can file an objection “by anyone” within the period!
So if you are also in trouble, you should not hesitate to file a petition.
Even if you lose your objection, it will lead to a subsequent invalidation trial!

I don’t want the other party to know my personal information! If you don’t want the other party to know your personal information, you can file an opposition through our patent office.

Please feel free to contact us at https://xb114.secure.ne.jp/~xb114051/Inquiry_form.html

“Invalidation Trial”: if two months have passed since the trademark was published in the trademark gazette.

• Time: After trademark registration (but within 5 years from the registration date for some reasons of invalidation)
• Requested by: Interested parties

Only interested parties may file a request for an invalidation trial.
Persons who have requested an opposition but it was not approved are also included as interested parties.

“Trial for Cancellation of Unauthorized Use” if you have a relationship with the other party.

• Time: within 5 years from the date of registration of establishment of the trademark right
• Requester: A claimant who has trademark rights in a country that is a member of the Paris Convention, a member of the World Trade Organization, or a contracting party to the Trademark Law Treaty.

Your company is a foreign company, and a company that was a partner of yours in Japan until less than one year before the application was filed has filed the application independently.
You can file a request for a trial for cancellation of improper use in cases such as the following.

“Trial for Cancellation of Non-use” if it has been more than 3 years since registration and the opponent has not used the trademark for more than 3 years.

• When: When the opponent’s trademark has not been used continuously for more than 3 years
• Requested by: Any person

Sometimes it is too late to realize that a preemptive application has been filed.
If more than 3 years have passed, you may cancel the registration on the grounds that the opponent is not using your trademark.

If you cancel the other party’s rights, you can “file a trademark application” yourself.

Even if you can cancel the other party’s application, a second or third preemptive application may appear.
If you want to protect the name you use as your business, such as the name of your channel, the best way to do this is to file and register your own trademark application.

Amazing DX can help you quickly file a trademark application to Japan
Please take advantage of this service.

If you cannot cancel the other party’s trademark, you have a “right of first use.”

There are cases where a trademark registration cannot be canceled because the other party has also been using the trademark properly or has been recognized as having distinctiveness.
In such cases, if you can prove that you were using the trademark yourself before the trademark application was filed and meet the requirements, you may be able to continue to use the trademark as is.

Prevention of Preemptive Filing in Foreign Countries

I heard that even if you register it in Japan, there are cases where it is filed preemptively in another country, like China.

There are many examples of preemptive applications in foreign countries. It’s hard to monitor every country, but you can limit the damage by narrowing it down to specific countries.

Watching Services

Many foreign countries have information-providing and opposition systems.
There are many services available for watching trademark applications in foreign countries.

• Watching by Clarivate
• Watching service of Mark Eye
• JPDS’s watching service

Filing a foreign application quickly

If you file a trademark application in Japan, you can use the Madrid Protocol to immediately file a foreign application.
If you can file first, you can prevent a preemptive application in advance.

Amazing DX also offers foreign application consultations with leading international patent firms, so take advantage of it!

There are many ways to prevent preemption! Consult with an expert!

Preemptive filing measures vary depending on the time of year and the situation.
First, consult with a patent attorney who is an expert in intellectual property matters.

Even if someone who filed ahead of me says “Don’t use my trademark without my permission!”, I’d consult an expert first before giving in or crying myself to sleep!

If you are having trouble with a preemptive application, consult a patent attorney now!