Editor’s Note: Japan trademark opposition law is the focus of this article in our ongoing series on global trademark opposition laws and strategy.
Japan is an example of a country that respects the intellectual property rights of international trademark owners.
Here are some important things to know.
Who may file. Any person may file with the Commissioner of the Japan Patent Office (JPO) an opposition to registration within two months from the date of publication of the bulletin containing the trademark.
The opposer must include the following particulars:
- the name and the domicile or residence of the opponent to the registration and a representative thereof;
- the indication of the trademark registration pertaining to the opposition to registration; and
- the grounds of the opposition to registration and the indication of supporting evidence.
Once filed, the Opposer is permitted an additional 30 days from the expiration of the opposition filing period to amend its opposition and introduce any additional proofs.
A person filing an opposition to registration of a trademark can do so on one of the following main grounds of Japanese patent and trademark laws:
- violation of registrability of trademarks (Section 3);
- violation of reason of unregistrability (Section 4 (1));
- violation of reason of unregistrability (Section 7 (2));
- violation of first to file rule (Section 8, et seq.); and
- violation of rule prohibiting re-registration of cancelled trademarks; (Sections 51-53);
- violation of enjoyment of trademark rights by foreign nationals (Section 25)
(there are other additional grounds that are not listed above).
Authorized representative. Under Article 8 of the Patent Act, any party, including trademark opposers, who don’t reside or who are not domiciled in Japan cannot conduct any procedures directly with the JPO and must appoint a representative in Japan.
Duration of opposition. The Japanese Patent Office seeks to render a decision within eight months after filing of the opposition.
Written ruling. Each trademark opposition proceeding and ruling thereon must contain the following particulars: