What is Trademark Opposition to Seek Cancellation of Trademark After Registered in Japan?

After Trademark Application Registered

I checked my registered trademark on the Patent Information Platform and the status shows ‘Published for Opposition’, what’s wrong?

There is no problem with the display indication, as it is shown for any trademark registrations for a certain period of time after registration. However, during that period, a third party can request for cancellation of the registered trademark, so you may need to be aware of that opposition system.

What? It has been examined and registered, but might be cancelled? What is that opposition system?

This article provides an overview of the opposition system for trademark registration in Japan.

１．What is Opposition System?

Even though a JPO examiner has examined a trademark application, it is possible for the examiner to overlook a previously registered trademark and register an identical or similar trademark that is filed later.
In addition, there are other gray areas in the regulations that determine that a trademark cannot be registered, so it is not perfect.

Therefore, in case a trademark is registered that is not suitable for registration, an opportunity to file an “opposition” is given to request for cancellation of the registration. The opposition may be filed by anyone.
The JPO will examine the unsuitability of the trademark for registration, and if approved, the registration will be cancelled.

２．Examples of Grounds for Opposition

The following are examples of grounds for opposition.

• Trademarks that are not recognizable by consumers as goods or services to whom the business pertains
• Trademarks that are contrary to the public interest such as those confusingly similar to the mark of a public institution
• Trademarks that are likely to be injurious to public order or good morals
• Trademarks that include names of another person, etc. or well-known abbreviations, etc.
• Trademarks identical or similar to well-known trademarksof others, etc.
• Trademarks identical or similar to trademarks registered by others and used for the same or similar designated goods/services
• Trademarks identical or similar to a name of a variety registered under the Plant Variety Protection and Seed Act
• Trademarks that are likely to cause confusion with the goods or services pertaining to the business of another person
• Trademarks that are likely to cause confusion as to the quality of the goods or services
• Trademarks identical or similar to a well-known trademark of another person and is used for a wrongful purpose

３．Time Limit for Filing Opposition

A trademark may not be opposed at any time for any of the reasons listed in 2. above. Since the Trademark Law stipulates that an opposition may be filed “within two months from the date of the trademark publication,” it is necessary to submit the documents within two months from the date of publication of the trademark registration.

After the submission of the documents, a written hearing will be conducted by several trial examiners at the JPO to determine whether there are grounds for canceling the registration, and the result will be noticed.

４．Fees for Filing Opposition

The fee for filing an opposition (patent stamp fee) is 11,000 yen and up, and the fee will be added as the number of classees increase. If a patent attorney is requested, a separate fee will be charged.

５．Other Methods

In addition to opposition, it is possible to invalidate or cancel a trademark registration, or to provide information prejudicial to registration at the examination stage prior to registration. The methods are as follows.

Invalidation Trial

After the opposition period (2 months after publication of the trademark registration) has elapsed, a request for a trial for invalidation of the trademark registration may be filed.

• Only interested persons may request an invalidation trial. For example, the person must be related to the trademark owner, for example he is being sued by the trademark owner for trademark infringement, or he is trying to do business using the same or similar trademark.
• It should be noted that once five years have passed since registration, the grounds for requesting an invalidation trial are limited.
• Office fee (patent stamp fee) is 55,000 yen and up, and increase with the number of classes. A separate fee will be charged if a patent attorney is requested.

Cancellation Trial

A trial for cancellation of a trademark registration can be requested when a trademark has not been used continuously for a certain period of time (more than the last 3 years) since the registration of the trademark. The person must state in the request for trial all or part of the designated goods/services for which the cancellation is sought. If non-use is confirmed for all of the selected designated goods, the registration will be cancelled. The trademark owner is required to prove whether or not the trademark is being used.

• Anyone may file a request for a trial for cancellation. Since the name who filed the request for cancellation must be stated in the request for trial, the other party (the trademark owner) will know who filed the request.
• Office fee (patent stamp fee) is 55,000 yen and up, and inreases with the number of classes. A separate fee will be charged if a patent attorney is requested.

Provision of Information

This is used to provide the JPO with information about a pending trademark application that this trademark should not be registered, in order to prevent the trademark from being registered. A document called “Submission of Publications, etc.” is submitted to the JPO as reference information to determine whether or not to register the trademark at the examination stage (since this is reference information, it is up to the examiner to decide whether or not to adopt it).

• Anyone can submit information. If you do not wish to be named as an informant, you may submit the information anonymously.
• No office fee (patent stamp fee) is charged, but a fee will be charged if a patent attorney is requested.

I see! It is possible to request for cancellation of registration in case it is registered by mistake, etc.

Conclusion

We hope that you now have a general idea of the opposition system of trademark registration.

If you have any questions, please do not hesitate to contact us.

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