Trademark Opposition System
Once a trademark application is filed, it is examined by an Examiner of the Japan Patent Office (“JPO”) and if there are no grounds for rejection, the trademark is registered. The purpose of the Trademark Opposition System is to enhance the reliability in trademark registrations through providing opportunities for third parties to seek revocation of a trademark registration within a certain period of time after registration and rectifying any errors, if any, in granting the registration.
We are explaining the procedure of trademark opposition with a flowchart as follows.
(1) An application for trademark registration has been filed and if it has passed the examination, a decision of registration is issued. Then the trademark will be registered subject to the payment of registration fee.
(2) After the trademark is registered, a Trademark Gazette publishing the registered trademark will be issued.
(3) Within 2 months from the date on which the Trademark Gazette containing the trademark was published, any person may file an opposition to the trademark registration. Grounds for opposition are, for example, that the trademark lacks the requirements for registration (Article 3 of Trademark Act), the trademark is unregistrable (Article 4 of Trademark Act). In a typical case, an opposition is filed on the grounds that a registered trademark and its designated goods are similar to the opponent’s earlier registered trademark and its designated goods (Article 4, Paragraph 1, Item 11 of the Trademark Act).
(4) Once an opposition is filed, JPO proceeds with formality examination, preliminary recording on the Register, etc.
(5) JPO further sends documents to the parties concerned, including sending a duplicate of the opposition to the right holder. At this stage the right holder need not file a reply to the opposition.
(6) On the basis of the opposition as filed, a panel of 3 or 5 trial examiners conducts an examination and issues a decision as to whether or not there are any grounds for revocation of trademark registration. If it decides that there are grounds for revocation, it will issue a notification of grounds for revocation to the right holder. Against this notification, the right holder may file a counter-argument within 40 days (3 months in the case of foreign residents).
(7) After a counter-argument is filed, a further examination will be conducted. If the trial examiners conclude that there are still grounds for revocation, a decision to revoke the registration will be issued. On the other hand, if they conclude that there are no grounds for revocation from the beginning or that there are no longer grounds for revocation, a decision to maintain the registration will be issued.
Once a decision to maintain the registration or a decision to revoke the registration is issued, a duplicate of the decision will be served to the parties concerned, such as the right holder and the opponent.
Against a decision to revoke the registration, the right holder may file a suit at the Tokyo High Court. Against a decision to maintain the registration, the opponent is not allowed to file an appeal, but it may file an invalidation trial against the said trademark registration.