Malicious Trademark Registration – Unauthorized person has filed your trademark? We can help you solve problem!

Your trademark may be registered by others without your permission!

I just found out that another company had filed and registered our company’s trademark without our permission. My company hadn’t filed a trademark yet. What would be the purpose of doing such a thing? How should we deal with it?
There are some malicious people who are taking the liberty of registering other people’s trademarks as their own. It may not be a good idea to leave them alone without taking action.
Then, tell me what we should do to address the problem.

Malicious trademark applications/registrations

The Japanese trademark law states that trademarks should be registered for goods and services used in one’s business.
 

However, there are malicious people, known as “trademark brokers,” who have others’ trademarks registered as their own without their permission.
If your company’s trademark becomes a target of trademark brokers, you may experience problems and damages, so you should be careful.

Trademark Applications by Trademark Brokers

Trademark brokers use the Internet to find trademarks that are actually used as product names, brand names, or brand logos, but have not yet been filed with the Patent Office, and then file applications under their own names.

Although the JPO is concerned about the large number of trademark applications filed by some applicants that are preemptive of other people’s trademarks, this is not considered illegal under the current law.
Many such applications are filed without payment of the application fee, in which case the application is dismissed and the trademark is never registered.

 
If a trademark broker has filed an application for a trademark identical or similar to your trademark, but the application fee has not been paid, you may proceed with your own application.

However, if the trademark broker’s application is examined and the registration fee is paid, the rights to the trademark become the trademark broker’s property.

Warning of trademark infringement!

Trademark brokers may warn you of trademark infringement if they acquire rights to someone else’s trademark as their own.

One day, you may suddenly receive a warning letter from the “right holder” who had the trademark registered for fraudulent purposes, telling you to stop selling the goods because it is an act of trademark infringement.

There are also actions by malicious “right holders” to platforms when retailing products on Amazon, Rakuten, etc., where the management side determines that there is a suspicion of trademark infringement and temporarily suspends the selling of the products.

When you have not registered your own trademark, you will not be able to sell your product if a malicious “right holder” reports infringement of his/her rights.
In such a case, even if you provide information to the management side and argue that the trademark belongs to your company, it is difficult to have your argument accepted, and it is unlikely that you will be able to sell your product again in the platform.

If such a situation is left unresolved, the selling account may be closed at worst.

Licensing agreements and assignment of trademark rights

In the above cases, if the malicious person withdraws the report to the management, you will be allowed to list the item again.

Trademark brokers aim to make a profit from the trademarks they have registered.
Therefore, they may proceed to negotiate a license agreement or assignment of trademark rights on the condition that the report of trademark infringement is withdrawn.
If a license is granted, it will be reported to the management side, and if the management side determines that it is not an infringement of trademark rights, the item can be listed again

Discussion with “right holder”

It must be very upsetting to have your trademark registered by someone else without your permission and to be accused of trademark infringement.
You may even be unwilling to pay a license fee to the other party.

It is not easy and take time to reach an amicable resolution.
If you have trouble with a malicious “rights holder,” the worst that can happen is that you may end up in a lawsuit.
We recommend you having consultation with specialists such as lawers and patent attorneys.

To avoid accused of infringement

The most important thing is to immediately file an application of the trademark that is used by your company with the Patent Office.

Once the trademark is registered, it is also effective to mark the trademark with the Ⓡ (Registered trademark) so that it is clear to third parties that it is a registered trademark.
This will prevent other companies from stealing your trademark and claiming infringement.

For more information on the Ⓡ (Registered trademark), please refer to the following article.

How to deal with malicious trademark registrations by third parties

The following shows the JPO systems available if you wish to cancel a trademark registered by a trademark broker.

Opposition to registration

Within two months after a trademark is registered (two months from the date of publication of the Gazette), it may be possible to file an opposition with the JPO to cancel the trademark registration.

Invalidation Trial

If the opposition period has expired, it may be possible to request an invalidation trial to invalidate the trademark registration.

Non-use Cancellation Trial

A trademark that is registered by a trademark broker may not be in use. If the trademark has not been used for three years after registration, a non-use cancellation trial can be filed to cancel the trademark registration.

For more information on how to counter unauthorized trademark registration by third parties, please refer to the following articles

Cases in foreign countries

Fraudulent trademark registrations by third parties occur not only in Japan but also in foreign countries.
It is often the case that companys’ trademarks are registered in a certain country bofore they know.

Japanese products are recognized worldwide as being of high quality and are very popular overseas, especially in Southeast Asian countries, and counterfeit products often appear. So, care must be taken.

In China, buying and selling of trademarks is done on a large scale on the Internet.
Buying and selling of trademarks has become a business.

Fraudulent trademark registrations by third parties are not limited to large companies or well-known trademarks.
Recently, there have actually been cases where even the trademarks of small local Japanese companies have been registered without their knowledge.
This has resulted in unexpected costs.

If you are exporting or considering exporting your products, we recommend that you ask a patent firm or patent attorney to search your trademark or a trademark similar to your trademark that has been filed by a third party in the exporting country.

I know what to do when another company registers a trademark, I’ll figure out how to proceed.
After all, it’s important to promptly file an application to register my company’s important trademark.

Summary

If you are troubled by the fact that your company’s trademark has been registered by a third party, or you have been accused of trademark infringement, it is best to seek the opinion of an expert.


Our experienced trademark attorneys will be happy to assist you, so please feel free to contact us using Request Form.

supervisor
Supervisor for the article:
HARAKENZO WORLD PATENT & TRADEMARK
Osaka Legal Strategy Department General Manager Akinori HACHIYA
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