Summary of non-use cancellation trial
A trial for cancellation of non-use is a trial requesting the cancellation of a registered trademark if the registered trademark has not been used in Japan for three years or more (Article 50 of the Trademark Law).
In Japan, regardless of whether the trademark is actually used or not, it is a trademark that meets the registration requirements of Article 3, Paragraph 1 of the Trademark Law, Article 3.1, each item, Article 4, Paragraph 1, etc. On the other hand, we have adopted a registration principle that grants trademark rights.
Therefore, the trademark right will continue even if the registered trademark is not used.
However, the trademark right is originally given to the credit accumulated by the use of the trademark, and if the registered trademark is not used for a certain period of time, the credit to be protected does not occur or the credit generated also It is thought that it disappeared and the object of its protection disappeared.
The survival of such unused trademarks will limit the choice of trademarks by third parties.
Therefore, in order to organize the unused trademarks individually, a trial for cancellation of non-use has been set up.
In addition, the non-use cancellation trial can be requested by "any number of people".
Not only interested parties such as trademark infringement, but also third parties who are about to acquire trademark rights can request a trial for cancellation of non-use.
Article 50 of the Trademark Law
Article 50 of the Trademark Law
1. If none of the trademark right holder, exclusive use right holder or ordinary use right holder has used the registered trademark for each designated goods or designated services in Japan for three consecutive years or more, any person shall be the same. A referee may be requested for the cancellation of the trademark registration pertaining to the designated goods or designated services.
2. If a request for a trial set forth in the preceding paragraph is made, either the trademark right holder, the exclusive use right holder, or the normal use right holder in Japan within three years before the registration of the trial request is the designated product for which the request is made. Or, unless the demandee proves that he / she is using the registered trademark for any of the designated services, the trademark owner is unavoidable to cancel the trademark registration for the designated goods or designated services. Provided, however, that this shall not apply when the demandee makes clear that there is a valid reason for not using the registered trademark for the designated goods or designated services.
3. From March before the request for the trial set forth in paragraph (1) to the date of registration of the request for the trial, either the trademark right holder, the exclusive use right holder, or the normal use right holder has designated the request. When the claimant proves that the use of the registered trademark for goods or designated services is after knowing that the trial is requested, the registered trademark is used. The use of is not applicable to the use of the registered trademark prescribed in paragraph 1. Provided, however, that this shall not apply when the demandee makes clear that there is a valid reason for using the registered trademark.
Requirements for non-use cancellation trial
(1) Do not use in Japan for 3 years or more (Trademark Law, Article 50, Paragraph 1)
Since it is "continuously", if you use the trademark even once every three years, you will be exempt from cancellation.
Here, the non-use of the trademark for 3 years is as follows: (1) If 3 years have passed since the trademark right was set and registered, and (2) it was used after the trademark right was set and registered. You may not have used the trademark for more than 3 years.
Since it is "in Japan", even if you use the trademark in a foreign country, you cannot avoid canceling the trademark. This is because it cannot be said that trademark credit has been generated in Japan.
If the trademark was used between 3 months before the request for the trial for non-use cancellation and the date of registration of the request for trial, the requester for the trial for non-use cancellation knows that the trademark has been used. At the time of proof, the use of the registered trademark is not recognized (Article 50, Paragraph 3 of the Trademark Law). It is a regulation to prevent rush use to avoid cancellation of trademark registration.
(2) Not used by any of the trademark owner, exclusive licensee, non-exclusive licensee, or member of the organization (Trademark Law, Article 50, Paragraph 1, Article 31-2, Paragraph 3).
If used by any of the above, the registered trademark will embody business credibility.
The "normal license" may not be registered.
(3) The registered trademark is not used for each designated product or designated service (Trademark Law, Article 50, Paragraph 1).
"Designated goods or designated services" refers to the designated goods / designated services described in the trademark gazette, and even if the designated goods / designated services similar to the designated goods / designated services are used, the trademark is canceled. I cannot escape.
"Registered trademark" means a trademark that has been registered as a trademark, that is, a trademark described in a trademark gazette. Trademarks that are recognized as the same according to social conventions, such as those whose typeface and character display have been changed, are included, and if a trademark that is considered to be identical according to social conventions is used, the registered trademark shall be canceled by a trial for cancellation of non-use. There is no (Trademark Law, Article 50, Paragraph 1 parentheses).
④ There is no justifiable reason for non-use (Trademark Law, Article 50, Paragraph 2 proviso)
"Justice" refers to timed legislation, natural disasters, etc.
Effect of finalization of trial decision of non-use cancellation trial
If the trial decision to revoke the trademark right is finalized, the trademark right will be deemed to have been extinguished retroactively on the date of registration of the request for appeal (Trademark Law, Article 54, Paragraph 2).
This avoids exercising rights such as claims for damages based on unused trademark rights.
Trial of non-use revocation trial
Attaching a trademark to a product that is not subject to commercial transactions in the general market does not constitute the use of Article 50 of the Trademark Law (decision on February 28, 2001).
Plaintiffs argue that Panpotencia is widely promoting the content of the course and the provision of printed matter, but the company is promoting the education business with names such as "Dale Carnegie Training" in the general market. It is a course and does not advertise the printed matter of Evidence A No. 6 and No. 7. These printed materials are distributed free of charge to all students of the course and cannot be obtained by anyone other than the students, and they will not be subject to commercial transactions in the general market after leaving the course. It cannot be said to be a product under the Trademark Law.
For the purposes of Article 50 of the Trademark Law, a "commodity" must be a product that is independently distributed in the market as an object of commercial transactions, and there is also "use of a registered trademark for the product". Therefore, it should be said that it is necessary for the specified act of Article 2, Paragraph 3, Paragraph 4 of the same law to be performed as an identification display of the product.
This case is a case in which the use of a trademark was disputed.
Even if the Tokyo High Court uses a trademark for something that is distributed free of charge to all students, the distribution cannot be obtained by anyone other than the students, and is subject to commercial transactions independently in the market. Since it is not a product that is distributed as a trademark, we have decided that it will not be used as a trademark.
In other words, even if a trademark is attached to a product that is not an independent target of commercial transactions in the market and is not distributed, the basics of the trademark, such as the self-other product identification function and the advertising function, cannot be exhibited. It is probable that you have determined that you are not using it.
If you do not use the trademark on the item that is sold independently as an object of commercial transaction in the market, you will not use the trademark and the trademark will be canceled by the trial for cancellation of non-use.
If the designated goods / designated services of the lower concept are used, the designated goods / designated services of the higher concept cannot be canceled (2009 No. 10171).
In this case, when the product name of the superordinate concept such as "steel" and the product name corresponding to the subordinate concept such as "special steel member for construction or construction" are listed side by side as the designated product. , If you are using "steel-only parts for construction or construction" which is a designated product of the lower concept, it is certified that "steel" which is a designated product of the higher concept is also used.