Trademark registration invalidation trial Consult a patent attorney at a major patent firm! (Tokyo. Osaka office)

1 What is a trademark invalidation trial?

I was preparing to manufacture, sell, etc. a newly developed product with a perfect name. However, someone else has registered a trademark that is very similar to the name of the product, and I can’t use it. I am disappointed. I’m going to have to cancel everything I’ve ordered with the name on it, including the packaging for the product, and have to have it redesigned.

The other person’s trademark may not be valid. Some registered trademarks may have been registered incorrectly in the examination at the time of application. You should consult with a patent attorney at a patent office. If you can invalidate your trademark registration by filing a request for an invalidation trial with the Patent Office, all your preparation will not have been in vain.

I see that some rights are not valid. Thanks. I’ll consult with them.

What are invalidation trials and grounds for invalidation？

What are invalidation trials?

A trial for invalidation of trademark registration is a trial to invalidate and extinguish a trademark registration that has the following grounds for invalidation.

By filing a request for an invalidation trial, you can invalidate (1) a trademark that was mistakenly registered when it should not have been registered, or (2) a registered trademark that became inappropriate after registration.

Examples of reasons for invalidation

1. Examples of violation of trademark registration requirements (same as reasons for refusal under Article 3 of the Trademark Law)

• A trademark consisting only of a common name for the goods, etc. (e.g., “word processor”)
• A trademark consisting solely of a mark indicating the place of origin, quality, shape, etc. of the goods (e.g., “Wakayama”)
• A trademark consisting solely of a common name (e.g., “TANAKA”)
• A trademark consisting solely of a simple and common mark

2. Examples of reasons for non-registration (the same as the reasons for refusal under Article 4(1) of the Trademark Law)

• Trademarks identical or similar to national flags, chrysanthemum emblems, Red Cross marks, marks of international organizations, prefectural marks, etc.
• Trademarks that are offensive to public order and morals
• Trademarks identical or similar to registered trademarks of others, which are used for identical or similar goods
• Trademarks that may cause misidentification of the quality of goods, etc.
• Trademarks that are likely to confuse with the products of another person’s business, etc.

2 Who can file a request for an invalidation trial?

Not just anyone can file a request for an invalidation trial. Only interested parties may file a request. Interested parties include persons who are preparing to use a trademark identical or similar to the registered trademark for identical or similar goods or services.

What are the requirements for a person of interest?

• A person who is using or has used a trademark identical or similar to the registered trademark for identical or similar goods or services.
• Any person who may use the same or similar trademark in the future. (Those who are preparing to use a trademark identical or similar to the registered trademark)
• Persons who may be disadvantaged by the registered trademark due to confusion as to the origin of the goods.
• Persons who are or have been involved in litigation concerning trademark rights, or persons who have received warnings of trademark infringement.

3 What is the time limit for requesting an invalidation trial?

An invalidation trial can be filed even after the trademark right has expired. For example, if you are sued for damages for trademark infringement and you can cancel the trademark registration, you will not have to pay damages because the trademark right never existed in the first place. However, please note that there is an exclusion period for the procedure.

Heh. I see. It is good to know about the Trademark Law system. So an invalidation trial is also a way to counter an infringement suit.

Since invalidation trials are time-consuming and expensive, we recommend that you register your product’s name as a trademark before you prepare your business. 

AmazingDX below is a new trademark application service that saves you time and money.  You can be assured that AmazingDX is a service provided by a large, experienced international patent firm.

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