Investing in Japan
How to Set Up Business in JapanSection 5. Trademark and Design Protection Systems
5.4 Cancellation of trademarks
5.4.1 Non-use of trademarks
Under Japan's Trademark Law, trademarks can be registered even if they are not in use at the time under the principle of registration. However, you should be fully aware that, if a trademark is not used at all within a period of three years following registration, a petition for the cancellation of that trademark may be filed by an interested third party. Incidentally, "use" of a trademark is not limited to the displaying of the trademark directly on a product; the printing of a trademark in a pamphlet together with an image of the product, the use of the trademark in an advertisement for the goods such as in a newspaper, or the displaying of goods featuring the trademark on an Internet website all constitute "use."
- Problematic point :
- By the rapid spread of the Internet of these days, everyone can easily access many kinds of website in the world. In such circumstances, when the trademark is used only on the website, there are arguments whether it could be the use of the trademark under Japan's Trademark Law. If the trademark is used on the website obviously for the purpose of the sales in Japan, it could be authorized that it is the use of the trademark. However, if the trademark is used on the website for the purpose of the sales in foreign countries, there is a doubt whether it is the use of the trademark under Japan's Trademark Law or not.
5.4.2 Cancellation of proxy registration
Japan's trademark system protects the right of duly authorized trademark owners. For instance, where overseas-based goods or services are provided in Japan, and where the overseas company involved has entered into an agency agreement with a Japanese company, if that local agent applies for registration of the overseas company's trademark without due cause or permission the duly authorized trademark owner may file a petition for the cancellation of the Japanese registration, and can thereby regain their trademark rights.