Trademark Oppositions in Japan

Oppositions in national trademark registration procedure in Japan

 

A trademark is any sign that can be represented graphically and capable of distinguishing goods or services.

After filing the trademark application, there is an examination step in which the examiners from the Patent and Trademark Office checks the proposed description of goods and/or services associated with the given mark and decides whether it can be registered or not.

1.                  Trademark opposition filing deadlines in Japan

In case that the examiner considers that the trademark is distinctive for certain goods or a service of a trader and that it is not deceptive, he gives the approval for publication of the mark in the Japanese Gazette.

After publication in the Official Gazette, there is a period of 2 months in which any person who has previous rights and/or who has reasons to believe that he would be damaged by the registration of a pending trademark may file an opposition. This period is not extendable.

Given the short time for filing an opposition, most owners of major or valuable trademarks subscribe to the Official Gazette (which contains a list of trademarks published for opposition or have services that monitor the Official Gazette for publication of potentially conflicting trademarks.

2.                  Trademark opposition parties in Japan

It is important to note that, at this stage, the official examiner is no longer involved with the application.

The opposition to the grant of a trademark application may be filed by the owner of previously registered trademark or of a well-known trademark or by any other owner of previously registered intellectual property rights: trademarks, company names, domain names, author’s rights, etc.

The opposition must be filed in writing and accompanied by payment of the official opposition fee. If the fee is not paid, the opposition is not taken into consideration by the Office.

The opponent has to prove that there are valid grounds as to why the trademark applicant is not entitled under law to register or to continue holding the mark.

3.                  Trademark opposition grounds in Japan

The grounds of opposition must contain a statement showing how the petitioner would be damaged by the registration of the pending trademark, as well as a statement of the grounds for opposition.

An opposition can be filed based on absolute or relative grounds. The absolute grounds may be based on a descriptive or non-distinctive character of the trademark filed for registration, on a conflict with official signs, etc.

The relative grounds state that a trademark is confusingly similar to an existing registered trademark or that it conflicts with an existing prior common law rights established. An opposition based on relative grounds can only be filed by an owner of any prior relative rights.

4.                  Defense to a trademark opposition in Japan (answer to an opposition; counter-statement)

The owner of a pending application is given a „notice of opposition” (a copy of the opponent’s claims) and has a period of 30 days for residents in Japan and 90 days for foreign residents following the end of the two-month opposition period. in which he may submit an answer to an opposition filed before the Patent and Trademark Office. If he does not submit a counter-statement, his trademark application is dismissed.

The defense usually consists of a number of simple denials of the notice of opposition.

At this state, there is no need to submit any evidence in support of the defense of the opposition.

There is no official fee to be paid for filing the counter-statement.

5.                  Examination and decision in a trademark opposition file in Japan

In this jurisdiction, a tribunal of three (regularly) trial examiners studies the opposition before seeking a response from the trademark holder and decides to sustain the registration if it finds the opposition groundless. If the opposition is well founded, the registrant will receive the chance to file arguments.

6.                  Appeals to a trademarks opposition decision in Japan

An opposition decision can be appealed  within 30 days from the date of the decision only by the applicant or the trademark owner. An opponent cannot appeal if its opposition fails.
The appeal authority is Tokyo High Court.
A higher appeals are possible and can be made to the Japanese Supreme Court.

If you are facing oppositions in national trademark registration procedure in Japan, please contact us at office@trademark-oppositions.com.