Outline of trademark invalidation trial
A trademark invalidation trial is a system for requesting invalidation of a trademark right for which there is a reason for invalidation (Article 46 of the Trademark Law).
A defendant who has been filed in a trademark infringement proceeding may request a trial for invalidation in order to invalidate the trademark right.
Alternatively, a person who wants to use a trademark may request a trial for invalidation in order to invalidate the trademark right.
Requirements for request for invalidation trial
Claimant eligibility
Interested parties can request a trial for invalidation of a trademark (Trademark Law, Article 46, Paragraph 2).
Subject to billing
You can request a trial for invalidation for each designated product or designated service (Trademark Law, Article 46, Paragraph 1).
Reason for invalidation
The reasons for invalidation are as follows.
・ Trademarks without discriminating power (Article 3 of the Trademark Law)
・ Trademarks that are offensive to public order and morals (Trademark Law, Article 4, Paragraph 1, Item 7)
・Trademarks including portraits of others or names of others (Trademark Law, Article 4, Paragraph 1, Item 8)
・ Unregistered well-known trademark (Trademark Law, Article 4, Paragraph 1, Item 10)
・ Registered trademark of the prior applicant (Trademark Law, Article 4, Paragraph 1, Item 11)
・Trademarks that may be confused with goods or services related to the business of others (Trademark Law, Article 4, Paragraph 1, Item 15)
・Trademarks that are the same as or similar to trademarks that are well known in Japan or abroad and are used for fraudulent purposes (Trademark Law, Article 4, Paragraph 1, Item 19)
・Trademark registered by a trademark registration application of a person who does not inherit the rights arising from the trademark registration application
Billing period
You can request a trial for invalidation not only during the term of the trademark right but also after the trademark right is extinguished (Trademark Law, Article 46, Paragraph 2).
This is to counteract damages that may be claimed by the trademark owner after the trademark right is extinguished.
Billing procedure
Submit the request for appeal to the Commissioner of the Patent Office (Article 131, Paragraph 1 of the Patent Law, which applies mutatis mutandis) and pay the prescribed fee (Article 76 of the Trademark Law).
In the appeal request, the facts that are the basis for invalidating the patent are specifically specified, and the reason for the request, including the relationship with the evidence, is stated for each fact that requires proof (Patent Law No. 131 applied mutatis mutandis). Article 2).
Effect of finalization of invalidation trial decision
The trademark right is considered to have not existed from the beginning (Article 46-2, Paragraph 1 of the Trademark Law).
However, in the case of a subsequent invalidation reason, it is considered that it did not exist from the time when the reason was applicable (provided in Article 46-2, Paragraph 1 of the Trademark Law).
In this case, if the applicable reason for subsequent invalidation cannot be specified, the trademark right shall be deemed to have not existed from the date of registration of the request for trial for invalidation (Trademark Law, Article 46-2, Paragraph 2).
