Trademark Act Article 47: Exclusion Period
This article stipulates the exclusion period for trials for invalidation.
A trademark right arising from an erroneous registration may be invalidated through a trial for invalidation (Article 46 of the Trademark Act). However, if a certain period after registration (five years from the date of registration) has passed without a request for a trial for invalidation being filed, then in order to respect and maintain the existing legal status, the defect constituting the ground for invalidation is considered cured, and a request for a trial for invalidation is not permitted (Article 47, Paragraph 1 of the Trademark Act). However, if the trademark right should not be maintained for public interest reasons, a request for a trial for invalidation is permitted even after the exclusion period has elapsed.
The exclusion period is five years from the date of registration (Article 47, Paragraph 1 of the Trademark Act). Specifically, if a trademark registration was made in violation of Article 3, Article 4, Paragraph 1, Item 8, Article 4, Paragraph 1, Items 10 to 15, Article 4, Paragraph 1, Item 17, Article 8, Paragraph 1, Article 8, Paragraph 2, Article 8, Paragraph 5, or Article 46, Paragraph 1, Item 4, it becomes impossible to request a trial for invalidation once five years have passed from the date of registration (Article 47, Paragraph 1 of the Trademark Act).
The exclusion period applies conditionally in cases of erroneous registration in violation of Article 7-2, Paragraph 1 of the Trademark Act. In this case, the exclusion period applies if five years have passed from the date of registration and the registered trademark is widely recognized among consumers as indicating the goods or services pertaining to the business of the trademark holder or its members. In other words, if the requirements of Article 7-2, Paragraph 1 are met after the fact, the ground for invalidation due to a violation of Article 7-2, Paragraph 1 is treated as having been resolved.
As an exception, there are cases where the exclusion period does not apply. This applies when: (i) for Article 4, Paragraph 1, Item 10 and Article 4, Paragraph 1, Item 17, the registration was obtained for the purpose of unfair competition; and (ii) for Article 4, Paragraph 1, Item 15, the registration was obtained for an unfair purpose. A specific example of this case is when a person who discovers that another company's famous trademark has not been registered obtains a trademark registration for the purpose of obtaining licensing fees or similar.
To look at it another way, grounds for invalidation established from the perspective of public interest are not subject to the exclusion period because public interest is prioritized, whereas grounds for invalidation established from the perspective of private interest are subject to the exclusion period because the stabilization of rights is prioritized.
Furthermore, the exclusion period does not apply to defensive marks (Article 68, Paragraph 4 of the Trademark Act). This is because the level of fame that should be protected by a defensive mark may be lost over time.
・Trademark Act Article 47
Article 47 (1) Where a trademark registration has been granted in violation of the provisions of Article 3, Article 4, Paragraph 1, Item 8 or Items 11 through 14, or Article 8, Paragraph 1, 2 or 5, where a trademark registration has been granted in violation of the provisions of Article 4, Paragraph 1, Item 10 or 17 (excluding cases where the trademark registration was obtained for the purpose of unfair competition), where a trademark registration has been granted in violation of the provisions of Article 4, Paragraph 1, Item 15 (excluding cases where the trademark registration was obtained for an unfair purpose), or where a trademark registration falls under Article 46, Paragraph 1, Item 4, a request for a trial for invalidation of the trademark registration may not be filed after the expiration of five years from the date of registration of the establishment of the trademark right. (2) Where a trademark registration has been granted in violation of the provisions of Article 7-2, Paragraph 1 (limited to cases where the trademark was not widely recognized among consumers as indicating the goods or services pertaining to the business of the applicant for trademark registration or its members as a result of the use of the trademark), and five years have passed from the date of registration of the establishment of the trademark right, and the registered trademark is widely recognized among consumers as indicating the goods or services pertaining to the business of the trademark holder or its members, a request for a trial for invalidation of the trademark registration may not be filed.
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