Explanation of trial for   cancellation of a registered trademark not in use!

What is a trial for cancellation of a registered trademark not in use?

A trial for cancellation of a registered trademark not in use is a trial to cancel a trademark registration that has not been used in Japan for more than three years.

What should I do if a A trial for cancellation of a registered trademark not in use is requested?

If a request for a trial for A trial for cancellation of a registered trademark is filed, the trademark owner or other person must submit evidence of use of the trademark. This evidence is limited to evidence of use within the period of three years prior to the registration date of the request for a trial and use in Japan.

What is a trial for   cancellation of a registered trademark not in use?

A trial for cancellation of a registered trademark not in use is a system that allows cancellation of a trademark registration that has not been used for three years. The reason for this is that if a person who is not using the trademark has the rights to the trademark, it will limit the choice of trademark for those who wish to use the trademark other than the right holder.

When requesting a trial for   cancellation of a registered trademark not in use

When filing a request for a trial for cancellation of non-use, it is not necessary for the applicant to provide evidence that he/she has not used the registered trademark for three years. This is because the trademark owner knows best whether or not the registered trademark is being used.

What if a non-use cancellation trial is requested?

If a trial for  cancellation of a registered trademark not in use is requested, evidence of use of the registered trademark by the trademark owner must be submitted. This evidence must be evidence of use within the period of three years prior to the registration of the request for a trial, and must prove use in Japan. Failure to submit such evidence will result in cancellation of the registered trademark.

Points of proof of use

The evidence to be submitted must contain the following (1) through (6):

(1) When: The use must be within 3 years prior to the registration date of the request for trial. It is sufficient if the registered trademark has been used at least once during this three-year period.

(2) Where: The use must be in Japan.

(3) Who: The use must be made by either the holder of trademark right, the exclusive right to use, or the non-exclusive right to use.

(4) For which goods or services: use in connection with any of the designated goods or designated services pertaining to the request

(5) Which trademark: use of a registered trademark (including a trademark that is recognized as identical in the common sense of the society)

(6) how the trademark is used: the use of the trademark is such that it falls under any of the items of Article 2(3) of the Trademark Law.

Valid evidence of use

Examples of valid evidence of the use of a trademark include

Photographs or videos: Photographs or videos showing the actual use of the trademark. However, it is important that the trademark portion is clearly visible and that the date can be confirmed.

Transaction documents: Transaction documents that support the fact of sale of goods displaying the registered trademark are also effective evidence. These include contracts, order slips, shipping slips, delivery slips, invoices, and receipts. It is important that these documents include the date, the name of the trademark owner, etc. and the name and location of the store, etc., the part number, the model number, and the order code.

In addition, correspondence (e.g., e-mail, fax, etc.) exchanged in the process of placing and receiving orders may serve as indirect evidence to supplement this proof.

Advertising materials: Advertising materials by the trademark owner or licensee may also be useful evidence. Newspapers, magazines, catalogs, pamphlets, flyers, TV commercials, banner ads on websites, billboards, neon signs on streets, calendars, etc.

Introductory articles: Introductory articles by third parties other than the trademark owner/user are also valid evidence.

Documents kept by administrative offices, etc.: Documents kept by administrative offices, etc. related to the distribution of goods or provision of services are also valid evidence.

Points to note when using a registered trademark with partial changes

Care must also be taken when using an arranged version of a registered trademark. Even if a trademark is so arranged that it is not considered identical to the registered trademark, it is not considered “use of the registered trademark,” and there is a risk of cancellation due to non-use.

When using an arrangement of a registered trademark, it is important to consider whether the arranged trademark can be considered identical to the registered trademark in the socially accepted sense, and if necessary, to file a trademark application for the arranged trademark.

I see. I now understand the system of non-use cancellation trials and the actions that need to be taken if a request is made!

summary

This article explains the trial for cancellation of trademark non-use. Trademarks are one of the most important assets in business. In order to protect your rights, it is important to regularly check the use of your trademark and prepare the necessary evidence. In addition, when requesting or receiving a request for a trial for cancellation of non-use, it is recommended to seek an expert’s opinion.

Feel free to consult a patent attorney!

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