Summary of Unauthorized Use Cancellation Trial
A trial for cancellation of fraudulent use is a trial for requesting cancellation of the trademark registration on the grounds of unauthorized use by the trademark owner or the licensee (Articles 51, 52, and 53 of the Trademark Law). ..
Articles of the trial for cancellation of fraudulent use
Article 51 The trademark right holder intentionally uses a trademark similar to the registered trademark for the designated goods or designated services, or uses the registered trademark or similar trademark for the designated goods or goods or services similar to the designated goods or designated services. If the quality of goods or services is misunderstood or confused with the goods or services related to the business of another person, any person may request a trial to cancel the trademark registration.
2. A person who has been a trademark right holder shall not be assigned to the designated goods or services related to the trademark registration, or these, unless five years have passed from the date when the trial decision to cancel the trademark registration was finalized pursuant to the provisions of the preceding paragraph. For similar goods or services, the registered trademark or the trademark registration for the similar trademark cannot be obtained.
Article 52 The trial set forth in paragraph (1) of the preceding Article may not be requested after five years have passed from the day when the fact of use of the trademark prescribed in the same paragraph of the trademark right holder disappeared.
Article 52-2 As a result of the transfer of trademark rights, similar registered trademarks used for the same goods or services or trademarks with different trademark rights related to the same or similar registered trademarks used for similar goods or services In the case of belonging to the right holder, the trademark right holder pertaining to the one registered trademark is the use of the registered trademark for the designated goods or designated services for the purpose of unfair competition, and the trademark right holder pertaining to the other registered trademark. In the event of any confusion with the goods or services related to the business of the exclusive licensee or the ordinary licensee, any person may request a trial to cancel the trademark registration.
2. The provisions of Article 51, paragraph 2 and the preceding article shall apply mutatis mutandis to the trial set forth in the preceding paragraph.
Article 53. Misunderstanding of the quality of goods or services when the exclusive use right holder or ordinary use right holder uses the registered trademark or similar trademark for the designated goods or designated services or similar goods or services. Or, if a person is confused with a product or service related to the business of another person, any person may request a trial to cancel the trademark registration. Provided, however, that this shall not apply if the trademark owner is not aware of the fact and has taken due care.
2. A trial decision has been made to the effect that the trademark registration should be canceled by the person who was the trademark right holder, the exclusive use right holder, or the normal use right holder who used the use prescribed in the preceding paragraph. Only after five years have passed from the fixed date, the registered trademark or the trademark similar to the designated goods or designated services related to the trademark registration or the goods or services similar to these shall be registered. I can't.
3. The provisions of Article 52 shall apply mutatis mutandis to the trial set forth in paragraph 1.
Article 54 When the trial decision to cancel the trademark registration is finalized, the trademark right will be extinguished thereafter.
Requirements for cancellation
Trial under Article 51 of the Trademark Law
It is a requirement that if the trademark owner uses it within the scope of the prohibited right, it may be confused with (1) quality misunderstanding or (2) goods or services related to the business of another person.
Use within the scope of the prohibited right here means use within the orange range in the table on the upper right, and means use in any of the following (1) to (3).
(1) Use a trademark similar to the registered trademark for the same goods / services as the designated goods / services.
(2) Use the same trademark as the registered trademark for goods / services similar to the designated goods / services.
(3) Use a trademark similar to the registered trademark for goods / services similar to the designated goods / services.
Use within the scope of the exclusive right, that is, use of the same trademark as the registered trademark for the same goods / services as the designated goods / services (use within the red range in the table on the upper right) is subject to cancellation. Must not be.
The use of so-called different-colored similar trademarks is outside the scope of this trial because it is considered to be the use of the scope of exclusive rights in consideration of the actual situation of the transaction (Trademark Law, Article 70, Paragraphs 3 and 1). ..
It is a requirement that it be intentionally confused with (1) quality misunderstanding or (2) goods or services related to the work of others.
It is terrible to revoke a trademark right by mistake.
Trial of Article 52-2 of the Trademark Law
When a conflicting trademark right belongs to a different trademark owner as a result of the transfer of the trademark right, the trademark right relating to another registered trademark is used for the purpose of unfair competition within the scope of the exclusive right of the trademark. It is a requirement that the person, the right holder, etc. be confused with the goods or services.
Article 51 of the Act applies, not this article, to unauthorized use within the scope of the trademark owner's prohibited rights.
Trial under Article 53 of the Trademark Law
It is a requirement that the use by the non-exclusive licensee or the exclusive licensee within the scope of the exclusive right or the prohibition right causes (1) misunderstanding of quality or (2) confusion with goods or services related to the business of others.
Not only the scope of the prohibited right but also the use of the scope of the exclusive right is covered.
Even if the trademark is used within the scope of the exclusive right, it is subject to cancellation when the licensee supplies a product whose quality is inferior to that of the trademark owner's product, etc., or the trademark of another person (registered). As a result of the fact that (even if it is not a trademark) may be prominent and confusing, the licensee may misuse it in a way that harms the interests of consumers.
Intention by the non-exclusive licensee or the exclusive licensee is not a requirement and is subject to cancellation even by negligence.
It does not apply if the trademark owner does not know the fact even with due care (the proviso of Article 53, Paragraph 1 of the Trademark Law).
Billing requirements
Claimant
Any number of people can claim any fraudulent use revocation trial.
This is because the referee has a strong public interest in protecting consumers.
Timing requirements
Any fraudulent use cancellation trial can be claimed within 5 years from the date when the fact of fraudulent use disappears.
Effect of trial decision
In any trial for cancellation of unauthorized use, if the trial decision is finalized, the trademark registration will be canceled and the trademark right will be extinguished in the future (Article 54 of the Trademark Law).
* It is not a retroactive disappearance.
Re-registration for 5 years is prohibited in any case of trial for cancellation of fraudulent use.
Re-registration of a trademark similar to a revoked trademark right or a designated product / designated service similar to a designated product / designated service is also prohibited.
In the case of a request dismissal trial decision, the trademark registration will be maintained and non-bis in idem will be applied in any trial for cancellation of unauthorized use.
If you are dissatisfied with the trial decision, you can file a complaint by a lawsuit to cancel the trial decision before the trial decision is finalized.
