What is trademark cancellation? Non-use cancellation trial system in Japan and more

Can registered trademark be canceled?

I’m thinking of registering a trademark. I’ve decided on a name. Can I still register a logotype (text font) or mark (graphic) if I haven’t decided yet? If I can register it, it won’t be canceled, right?
If you have a name in mind, you can register it in the “standard character” format. On the other hand, it is possible for a trademark registration to be cancelled after it has been registered. We will also inform you of the precautions to take.
目次 Index
    1. Can registered trademark be canceled?
  1. When to file trademark application (1)
  2. When to file trademark application (2)
  3. Can registered trademark be cancelled?
    1. Points to note regarding trial for non-use cancellation of trademark
  4. What is use of registered trademark?
    1. Points to note regarding designated goods and services
    2. Others
  5. Summary

When to file trademark application (1)

It is possible to file a trademark application even when the naming has been decided.

Even if its logotype (character font) or mark (graphic) has not yet been decided, it is possible to register a trademark using “standard character font” designated by the Japan Patent Office.

In addition, the Japanese trademark system does not require use of a trademark at the registration stage, so a trademark can be registered even if it is not in use.

When to file trademark application (2)

Under the Japanese trademark registration system, if there are identical or similar trademarks, the trademark right is given to the applicant who files an application with the JPO first. You may file a trademark application in a standard character format first. Then, after deciding on a trademark to use, you may file a separate application for that trademark.

In this way, trademark rights can be obtained by comprehensively taking into account of the importance, risks and costs of the trademark.

A trademark can be registered while its actual logo is still undecided, while there are notes to pay attention for that! I wonder if there is any penalty for not continuing to use it?

Can registered trademark be cancelled?

While it is possible to register a trademark in an unused state, it does not necessarily mean that you can maintain an unused trademark right forever. Since the trademark system grants rights based on the use of a trademark, a request for cancellation of a registration can be filed if the trademark has been in a state of non-use for more than 3 years.

Points to note regarding trial for non-use cancellation of trademark

The following are key points regarding a trial for non-use cancellation of a trademark.

One of the key points in the use of a trademark is whether the registered trademark and the actual style of the trademark in use are considered to be identical.

What is use of registered trademark?

In the case that you are using a trademark that is considered identical to the registered trademark in the goods or services designated by the registered trademark, even if a request for cancellation of the registration is filed, the registration will not be cancelled by submitting evidence of use which the Japan Patent Office recognizes the use of the registered trademark.

If the trademark used is a letter, even if the typeface (font) is different from that of the registered trademark, as long as the character type (kana characters, kanji characters, or romaji) is the same, it is often judged that the trademark is the same as the registered trademark. If the character type is changed and used, it may be judged to be different from the registered trademark.

Please refer to the following article for more information on the use of trademarks.

Note that if the trademark is registered as a combination of figures and letters, use of only figures or only letters is not considered use of the registered trademark.

Points to note regarding designated goods and services

Since it is possible to select each of its designated products as the object of cancellation of a registered trademark, a request for pinpoint cancellation may be filed. Even if the goods are not strictly the same as the designated goods or services of the registered trademark, the use of the trademark is allowed if it is judged to be within the scope of the designated goods or services.

Since judgments regarding designated goods and services require specialized knowledge, we recommend that you consult or request a patent attorney, patent firm, or other specialist when you are in such a situation to proceed.

I think I’m going to make a terrible mistake if I proceed with canceling a registered trademark and the decisions that come with it since I do not know well about that. I guess I’d better consult a patent attorney or patent firm before proceeding!

Others

In addition to trials for non-use cancellation, the Trademark Law also provides for other procedures to cancel or invalidate a registered trademark.

Please refer to the following article for information on how to deal with preemptive trademark applications and trademark.

Trial for cancellation due to unauthorized use

Even if you use a registered trademark, if you intentionally misrepresent the quality of the goods or services, or use the trademark in a way that causes confusion with other trademarks, the registration will be cancelled.

Here are some examples of actual cases of cancellation.
The owner of the registered trademark “BOSSANJERASU” (No. 4229908 / designated goods: belts, etc.) had been selling men’s belts with the following trademark on the belt label.

Source: Trademark Trial Decision Bulletin / Cancellation 2012-300944

The registered trademark of Hugo Boss who requested the cancellation trial and the registered trademark subject to cancellation are as follows.

The registered trademark consists of the same typeface, same size, and equal spacing, but in fact “BOSS” was used in a conspicuous manner.

In the cancellation trial, the JPO found that the trademark used corresponded to the use of “BOSSANJERASU” in a similar range, and found that the defendant knew of the existence of the well-known trademark “HUGO BOSS” and intentionally committed an act that was likely to cause confusion by misidentifying the source.

Even if it is a registered trademark, it is necessary to give sufficient consideration to the manner in which it is used.

Summary

If you have any concerns or problems when you have decided on a name but have not yet decided on a trademark to use or about cancellation of a registered trademark, please contact us using Contact Form.

supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
Osaka Legal Strategy Department General Manager Akinori HACHIYA
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