What is “observation” by third party? Procedure to prevent trademark registration in Japan

What is observation by third party?

I just happened to find a trademark application that is similar to the one I’m using. It doesn’t look like it’s registered yet, but is there anything I can do to stop it from being registered?

Then, you can use third party’s observation system. By proceeding anonymously, you can submit to the examiner information that is detrimental to the registration of the trademark, while avoiding the risk of being identified as the source of the information.

This article explains the third party’s observation system available during trademark examination.

Overview of third party’s observation system

The “third party’s observation system” allows for provision of inform to the JPO during the examination of a trademark application that the application is not suitable for registration.

Anyone can submit the information, and it can be submitted ANONYMOUSLY.

You request to the JPO to reject the application (i.e., not to register the trademark) at the examination stage by submitting a “Submission of Publications, etc.” as reference information with a reason for rejection and its basis.

The observation system is expected to be used not only in cases where an application is filed for trademark that you use, but also in cases where someone has filed an application for trademark in general terms.

Contents to claim by third party’s observation

The content of the information is limited to be provided. It can be claimed that the trademark is not registrable under any of the following provisions of the Trademark Law.

• Article 3.
• Article 4(1)(i), (vi) through (xi), (xv) through (xix)
• Article 7-2, paragraph 1
• Article 8(2) or (5)

For detailed information on the third party’s observation, please refer to the JPO website Submission of Third Party’s Observation (only available in Japanese).

If the information is not provided anonymously, you can receive feedback on whether the provided information is being used.

Cost for providing information by third party’s observation

There is no JPO official fee for providing information (stamp fee), but a fee is required when requesting a patent attorney or patent firm, which generally ranges from approximately 100,000 to 200,000 yen.

As explained above, since the content that can be claimed in the information is fixed, and it is necessary to prepare documents for the information based on legal grounds along with the reasons for the claim, it is recommended to ask a specialist for the procedures.

In terms of cost, when canceling or invalidating a registered trademark, there is the cost of patent office fees (stamp fee*), as well as fees for the expert at the time of the procedure and in subsequent correspondence. Considering this, the third party’s observation system is very easy to use.

*The stamp fees differ depending on the procedure, ranging from 11,000 yen for oppositions and 55,000 yen for trials for cancellation or invalidation, depending on the number of classes to be requested.

Advantages of third party’s observation

The system has three advantages as follows.

Prevention of registration of target trademark

Once a trademark is registered, it is very difficult to cancel or invalidate the right. Not only is it expensive, but it also takes time to get results. If the matter is litigated, it can take several to five years to get results.

Anonymity

As explained earlier, information can be provided anonymously. On the other hand, oppositions, invalidation trials, and trials for cancellation of non-use cannot be filed anonymously.

By proceeding anonymously, the trademark applicant cannot identify the person who provided the information, thereby reducing the risk of retaliatory action.

Reasonable cost

As indicated in the section ” Cost for providing information for third party’s observation”, the cost can be reduced compared to filing an opposition or invalidation trial after registration.

Disadvantages of third party’s observation

The system has two possible disadvantages as follows.

Applicant will know imprtance of trademark for someone

The fact that the informational has been filed will alert the applicant that someone does not want the trademark to be registered.

Therefore, it is possible that the applicant may check to see if someone is using a trademark similar to the trademark, and then enforce his/her rights after the trademark has been registered.

No additional procedures after submitting information

If the examiner notifies the applicant of a reason for refusal after the information is provided, the applicant will have to respond. Even if there is a counterargument, the provider is not allowed to make another opinion, etc. in response to the counterargument.

After the information is provided, the JPO examines the application.

Even though you can do it anonymously, it’s not without risk. But if I did not know the system, I would never have even considered it.

Alternative measures

Even if the provision of information is not successful and the subject trademark is registered, it is still possible to file an opposition to registration or an invalidation trial. If the trademark has not been used for more than three years after registration, a trial for cancellation of non-use may be requested.

Please refer to the following articles for details of each procedure.

Summary

If you have any concerns, doubts, or problems regarding the third party’s observation system, please contact us using REQUEST FORM.