My trademark was applied for and registered by someone else! Is there a solution?

Someone else has taken your trademark?

We applied to register the brand name of our product as a trademark, only to find out that another company has already registered it before us. How can someone else, who is not related to us, register it when it is clearly our brand?

Under Japanese trademark law, it is possible to apply for and register someone else’s trademark. In fact, there have been many cases where someone else has been ahead of them.

Is that so!? If the law allows it, then our company cannot use it anymore… Very troubling for a brand that we hold dear…

If you have reason to believe that “the trademark should not be registered,” there are several solutions, so don’t cry yourself to sleep just yet!

Why can someone else file and register the application?

In Japan, the “first-to-file” principle is adopted, which grants rights to those who file an application first.
Even if someone else is using the trademark first, if that person has not registered it, someone else can register it by filing an application first.

In addition, a trademark may be registered “for a trademark used in connection with goods or services relating to one’s own business” [Trademark Law, Article 3, Paragraph 1, Pillar 1].

The above “a trademark used” includes not only cases where the applicant is already using the trademark, but also cases where the applicant “intends to use the trademark in the future” in connection with the designated goods or designated services.

Thus, it is possible to file a trademark application, and even register a trademark, even if the applicant is a completely unrelated person.

And, unfortunately, some do business by filing applications for trademark registration that are preemptive of others’ trademarks and then charging high royalty fees to those who actually use the trademark.

Japan Patent Office Alert

In recent years, a large number of applications for trademark registration have been filed by some applicants, including applications that are preemptive of other people’s trademarks. Moreover, most of these applications have not paid the application fee and are incomplete in terms of procedures.
The JPO considers this a problem and has issued a warning.

To all those who have applied for trademark registration of their own trademarks to other parties (caution) [in Japanese]

According to the JPO, even if someone else has applied for registration of your trademark, you are urged not to give up your own trademark registration.

Cases where a preemptive trademark application is not registered as a trademark

(1) Failure to pay the fee
As a matter of course, if the application is filed but the application fee is not paid, the application will be rejected.
The rejection will generally take place within 4 to 6 months from the filing date of the application.

(2) Where the trademark applied for is not for use in connection with goods or services related to the applicant’s business (Article 3(1), Pillar 1 of the Trademark Law)

As mentioned at the beginning of this article, “Even a person who has no relation to the designated goods or designated services can file a trademark application. (Trademark Examination Guidelines No. 122(2)).
In general, the JPO will not grant registration if there is “reasonable doubt” as to whether the trademark is already in use or whether there is an intention to use the trademark in connection with the designated goods or designated services stated in the application (Trademark Examination Guidelines, 12.2. (2)).

(3) Applications preempt another’s well-known trademark
If your trademark is famous or well-known, the registration may not be granted even if someone else files an application for that or a similar trademark.
Here, the term “well-known” is defined to include not only a trademark that is widely recognized by the end consumers of the goods or services designated by the trademark, but also a trademark that is widely recognized among dealers (Trademark Examination Guidelines, Section 3.7.3.).

Trademarks that fall under “the name or title of another person, or a famous pseudonym, stage name or pen name, or a well-known abbreviation thereof” are also not eligible for registration (Trademark Examination Guidelines No. 375).

Other applicable cases include “an application for a mark of public interest of a third party” and “an application that may be detrimental to public order or good morals”.

Nevertheless, it is not necessarily true that a preemptive application will be rejected. Since the other party is also engaged in “business,” so to speak, there may be trademarks with preemptive applications that are registered through a variety of means.
If the other party’s trademark should not be registered, there is a system whereby you can file a petition with the Japan Patent Office to prevent the registration of your trademark.

How can I prevent someone else’s trademark from being registered?

If you discover that someone else has applied for or registered your trademark, consider the steps you can take.

Observation

This is a system to prevent the registration of someone else’s trademark application by providing information to the JPO. This system is available for trademarks under examination.

For more information, please refer to the related guide page.

Filing an Opposition

This is a system for filing an opposition to the registration of another person’s trademark with the Commissioner of the JPO.
When a trademark is registered, it is published in the “Trademark Gazette”. If you find a trademark that should not be registered, you can file a “Statement of Opposition” stating justifiable reasons.

Invalidation Trial

There is a fixed period within which an opposition can be filed, which is two months from the date of publication. After that period, if there are still grounds for invalidation, an “Invalidation Trial of Trademark Registration” can be filed. Only interested parties of the trademark registration may file a request.

Trial for cancellation of non-use

When he/she becomes aware of the trademark registration of another person, if the right holder has not used the registered trademark continuously for more than three years, he/she may request a trial for cancellation of the trademark registration based on non-use (trial for cancellation of non-use), assuming that more than three years have passed since the registration of the trademark.

In addition, if the right holder satisfies conditions such as having used the trademark himself/herself prior to the filing of the trademark application by another person, he/she has the right to continue to use the trademark (right of prior use).

I don’t have to give up yet. I ask the patent attorney which methods are effective against registering a trademark that other companies have already done!

Summary: The important thing is to file a trademark application early!

We have told you that there are solutions for trademarks that have been applied for and registered by others, but they can be very labor intensive and expensive.
Also, in the case of a registered trademark, until the cancellation is completed, you cannot sell or service related products with any peace of mind.

What is still important is to file an application for your own trademark as soon as possible.

People who maliciously and without permission apply for other people’s trademarks target product names that have not yet been filed application, so be sure to file your trademark application quickly before it is publicly available.

Amazing DX can help you file a trademark application in Japan quickly.
We hope you will take advantage of this service.