Trademark Act Article 46: Trial for Invalidation of Trademark Registration
This article provides for trials for the invalidation of trademark registration.
Only interested parties may request a trial for the invalidation of trademark registration (Article 46(2) of the Trademark Act). This is because the purpose of a trial for the invalidation of trademark registration is to resolve disputes between parties, and it is not primarily for the public interest like an opposition to registration.
The grounds for invalidation are basically the same as the grounds for refusal. However, they differ from the grounds for refusal in that: (i) Article 8(1) of the Trademark Act is a ground for invalidation but not a ground for refusal (in the case of a later application for a prior registration, it does not fall under Article 4(1)(xi) of the Trademark Act), (ii) Article 6 of the Trademark Act is a ground for refusal but not a ground for invalidation (because there is no actual harm after registration), (iii) Article 46(1)(iv) of the Trademark Act is a ground for invalidation but not a ground for refusal (registration against a person who has not succeeded to the rights arising from the trademark registration application), and (iv) Article 46(1)(v) through (vii) of the Trademark Act are grounds for invalidation but not grounds for refusal because they are events that occur subsequently.
For the essay examination, remember the point that "in the case of a later application for a prior registration, it does not fall under Article 4(1)(xi) of the Trademark Act."
As a general rule, the time for determining whether a trademark registration has grounds for invalidation is at the time of the trademark registration. However, for grounds for invalidation that occur subsequently or grounds for invalidation established from a public interest perspective, the determination is made at the time when the ground for invalidation is considered to have occurred.
I will explain this specifically.
(i) Article 4(1)(i) to (iii), (v), (vii), and (xvi) of the Trademark Act are grounds for invalidation established from a public interest perspective (public interest grounds). The reason these are considered grounds for invalidation is that Article 13(6) of the Trademark Law Treaty states, "No Office of any Contracting Party may, in connection with the renewal of a registration, examine the registration in respect of the substantive conditions," and this is to handle cases where new countries or the like are formed after renewal.
(ii) Article 3 of the Trademark Act is not a ground for invalidation. This is because if a registered trademark becomes a generic name, a third party can use it under Article 26 of the Trademark Act, so there is no problem with continuing the registration (renewal).
(iii) Article 4(1)(xix) of the Trademark Act is not a ground for invalidation. This is because it would be too harsh to treat cases that fall under this subsequently as grounds for invalidation if the trademark was not well-known or there was no unfair intent at the time of registration.
A trial for the invalidation of trademark registration can be requested for each designated good or designated service, and the request can be withdrawn. For this reason, there are cases where "only" some of the designated goods, etc., become invalid.
A trial for the invalidation of trademark registration can be requested even after the trademark right has expired (Article 46(3) of the Trademark Act). This is because if there was a period during which the trademark right existed, claims for damages based on use, etc., during that period may be made. On the other hand, if the trademark right has been retroactively extinguished (there is "no" period during which the trademark right existed), a trial for the invalidation of trademark registration cannot be requested. This is because there is no right to be invalidated.
・Trademark Act Article 46
(Trial for Invalidation of Trademark Registration)
Article 46 (1) Where a trademark registration falls under any of the following items, a request for a trial for the invalidation of the trademark registration may be filed. In this case, if the trademark registration relates to two or more designated goods or designated services, the request may be filed for each designated good or designated service: (i) where the trademark registration has been granted in violation of the provisions of Article 3, Article 4(1), Article 7-2(1), Article 8(1), (2) or (5), Article 51(2) (including cases where it is applied mutatis mutandis pursuant to Article 52-2(2)), Article 53(2), or Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 77(3); (ii) where the trademark registration has been granted in violation of a treaty; (iii) where the trademark registration has been granted for a trademark registration application that does not satisfy the requirements prescribed in Article 5(5); (iv) where the trademark registration has been granted for a trademark registration application filed by a person who has not succeeded to the rights arising from the trademark registration application; (v) where, after the trademark registration has been granted, the holder of the trademark right has become a person who cannot enjoy the trademark right pursuant to the provisions of Article 25 of the Patent Act as applied mutatis mutandis pursuant to Article 77(3), or the trademark registration has come to violate a treaty; (vi) where, after the trademark registration has been granted, the registered trademark has come to fall under any of the trademarks listed in Article 4(1)(i) to (iii), (v), (vii), or (xvi); (vii) where, after the trademark registration for a regional collective trademark has been granted, the holder of the trademark right has ceased to be an association, etc., or the registered trademark has ceased to be widely recognized among consumers as indicating the goods or services pertaining to the business of the holder of the trademark right or its members, or has ceased to fall under any of the items of Article 7-2(1). (2) A request for a trial under the preceding paragraph may be filed only by an interested person. (3) A request for a trial under paragraph (1) may be filed even after the expiration of the trademark right. (4) Where a request for a trial under paragraph (1) has been filed, the chief trial examiner must notify the exclusive licensee of the trademark right and any other person who has a registered right relating to the trademark registration of that fact.
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