Trademark Act Article 77: Mutatis Mutandis Application of the Patent Act
This article applies the Patent Act mutatis mutandis with certain substitutions.
The Patent Act does not have an appeal against a decision to dismiss an amendment but the Trademark Act does have an appeal against a decision to dismiss an amendment. For this reason, the provisions regarding the extension of the period for requesting a trial are substituted (Article 77(1) of the Trademark Act).
In addition, since Articles 9 and 14 of the Patent Act are applied mutatis mutandis, an appeal against a decision to dismiss an amendment must be requested by all applicants (treated as an act disadvantageous to others) (Article 77(2) of the Trademark Act).
If the renewal registration fee (Article 40(2) of the Trademark Act), the renewal registration fee paid in installments (Article 41-2(2) of the Trademark Act), or the surcharge is not paid, an order for amendment will be issued (Article 77(2) of the Trademark Act). On the other hand, defects in the items of Article 5-2(1) of the Trademark Act are not subject to the dismissal of unlawful procedures under Article 18-2(1) of the Patent Act, so a
defect in the items of Article 5-2(1) of the Trademark Act will be met with a supplementation order (Article 77(2) of the Trademark Act).
Regarding procedures for which the method of appeal is stipulated in the Trademark Act, an appeal under the Administrative Complaint Review Act cannot be filed (Article 77(7) of the Trademark Act). This is because the Administrative Complaint Review Act and the Administrative Case Litigation Act are general laws, whereas the Trademark Act is a special law, and therefore the provisions of the Trademark Act, as a special law, take precedence.
・Trademark Act Article 77
(Mutatis Mutandis Application of the Patent Act)
Article 77 (1) The provisions of Articles 3 through 5 (Periods and Dates) of the Patent Act shall apply mutatis mutandis to the periods and dates provided for in this Act. In this case, the term "Article 121(1)" in Article 4 of the Patent Act shall be deemed to be replaced with "Article 44(1) or 45(1) of the Trademark Act."
2 The provisions of Articles 6 through 9, 11 through 16, 17(3) and (4), 18 through 24, and 194 (Procedures) of the Patent Act shall apply mutatis mutandis to applications for trademark registration, applications for defensive mark registration, requests, and other procedures relating to trademark registration or defensive mark registration. In this case, the term "appeal against a refusal" in Article 9 of the Patent Act shall be deemed to be replaced with "an appeal under Article 44(1) or 45(1) of the Trademark Act," the term "appeal against a refusal" in Article 14 of the Patent Act shall be deemed to be replaced with "an appeal under Article 44(1) or 45(1) of the Trademark Act," the term "(ii) where the procedure violates the formalities specified in this Act or an order thereunder." in Article 17(3) of the Patent Act shall be deemed to be replaced with "(ii) where the procedure violates the formalities specified in this Act or an order thereunder; (ii-2) where the registration fee under Article 40(2) of the Trademark Act or the registration fee to be paid at the time of the application for renewal registration under Article 41-2(7) of the Trademark Act (including the surcharge to be paid under Article 43(1) or (2) of the Trademark Act) is not paid for the procedure.", and the term "items of Article 38-2(1)" in Article 18-2(1) of the Patent Act shall be deemed to be replaced with "items of Article 5-2(1) of the Trademark Act (including cases where it is applied mutatis mutandis pursuant to Article 68(1) of the same Act)."
3 The provisions of Article 25 (Enjoyment of Rights by Foreign Nationals) of the Patent Act shall apply mutatis mutandis to trademark rights and other rights relating to trademark registration.
4 The provisions of Article 26 (Effect of Treaties) of the Patent Act shall apply mutatis mutandis to trademark registration and defensive mark registration.
5 The provisions of Articles 189 through 192 (Service) of the Patent Act shall apply mutatis mutandis to service under the provisions of this Act.
6 The provisions of Article 195-3 of the Patent Act shall apply mutatis mutandis to dispositions under the provisions of this Act or orders thereunder.
7 The provisions of Article 195-4 (Restriction on Requests for Administrative Review under the Administrative Complaint Review Act) of the Patent Act shall apply mutatis mutandis to assessments, decisions to dismiss amendments, decisions of rescission, or trial decisions under the provisions of this Act, decisions to dismiss written oppositions to registration or written requests for trials or retrials, and dispositions for which it is provided that no appeal may be filed under the provisions of this Act, or their inaction.
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