Trademark Act Article 53-2: Trial for Cancellation of Improper Use
The trial for cancellation of improper use under this Article is intended to strengthen the protection of persons who hold rights related to trademarks in other Paris Convention member countries.
Since Japan and foreign countries are different nations, a trademark right may be acquired in Japan for a registered trademark, etc., for which a right related to a trademark (a right equivalent to a trademark right in Japan) has been established in a Paris Convention member country, etc., other than Japan. Here, if the trademark right holder in a Paris Convention member country, etc., other than Japan, and the trademark right holder in Japan are the same or equivalent (such as group companies), no problem arises. However, it is possible that a third party may secure a trademark right in Japan.
In such cases, this Article provides for a trial to retroactively cancel the trademark right secured by that third party.
The petitioner under this Article is a person who holds a right related to a trademark (a right equivalent to a trademark right) in a Paris Convention member country, a WTO member, or a party to the Trademark Law Treaty. Note that Japan is not included in the Paris Convention member countries, etc., under this Article. This is because, in Japan, there are no rights equivalent to trademark rights other than trademark rights themselves, and trademark rights can be dealt with under Article 4, Paragraph 1, Item 11 of the Trademark Act.
Furthermore, as a prerequisite for cancellation in the trial for cancellation of improper use under this Article, it is necessary that: (i) the registered trademark in Japan falls within the scope of being identical or similar to the trademark related to the right in a Paris Convention member country, etc.; (ii) the application for the registered trademark in Japan was filed without just cause (improperly); and (iii) the application for the registered trademark in Japan was filed by an agent, representative, or a person who was an agent or representative within one year prior to the filing date.
Just cause in an application for trademark registration in Japan refers to cases where the right holder in a Paris Convention member country, etc., has abandoned the trademark right, has clearly indicated an intention not to acquire the right, or has given consent.
Also, an agent is a person who has been granted some form of agency authority by the trademark owner, such as a natural person or a legal entity, and a representative is a representative of a trademark owner that is a legal entity. Furthermore, by stipulating in this Article that it includes a person who was an agent, etc., within one year prior to the filing date, it provides more generous protection than Article 6-7 of the Paris Convention.
・Trademark Act Article 53-2
Article 53-2: Where a registered trademark is a trademark related to a right related to a trademark (limited to a right equivalent to a trademark right) held by a person in a country of the Paris Convention, a member of the World Trade Organization, or a party to the Trademark Law Treaty, or a trademark similar thereto, and designates goods or services related to said right or goods or services similar thereto, and the application for trademark registration was filed by an agent or representative of the person holding the right related to the trademark, or by a person who was an agent or representative within one year prior to the date of the application for trademark registration, without the consent of the person holding the right related to the trademark and without just cause, the person holding the right related to the trademark may request a trial for the cancellation of said trademark registration.
・Paris Convention Article 6-7
Article 6-7: Regulation of registration and use of trademarks by agents or representatives (1) If the agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies, without such proprietor's authorization, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favor of the said registration, unless such agent or representative justified his action. (2) The proprietor of the mark shall, subject to the provisions of paragraph (1), be entitled to oppose the unauthorized use of his mark by his agent or representative. (3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must exercise the rights provided for in this Article.
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