Trademark Act Article 68-32: Special Provisions for Trademark Registration Applications After Cancellation of International Registration
This article is a relief provision for cases where the basic application or basic registration at the office of origin loses its effect due to so-called central attack.
Central attack refers to the fact that if the basic application or basic registration at the office of origin loses its effect within five years from the date of international registration, protection under the international registration cannot be received to the extent that it has lost its effect (Protocol Article 6(3)).
When the effect of the basic application or basic registration at the office of origin is lost due to central attack, the person who was the holder of the international registration may re-file as a trademark registration application in Japan for all or part of the cancelled goods or services (Trademark Act Article 68-32, Paragraph 1).
This re-filing, if certain conditions are met, will have its filing date retroactively applied to the international registration date of the international registration application (or the subsequent designation date in the case of subsequent designation) (Protocol Article 9-5). The prescribed conditions are: (i) the trademark registration application in Japan is filed within three months from the date of cancellation of the international registration, (ii) the trademark related to the application is "identical" to the trademark that was the subject of the international registration, and (iii) the designated goods, etc., of the trademark registration application are within the scope of the designated goods and services included in the international registration. In addition, if Paris Convention priority was recognized for the cancelled international registration, priority is also recognized for the re-filing in Japan (Protocol Article 9-5).
・Trademark Act Article 68-32
(Special Provisions for Trademark Registration Applications After Cancellation of International Registration)
Article 68-32: When an international registration designating Japan has been cancelled for all or part of the goods or services for a trademark that was the subject of the international registration pursuant to the provisions of Article 6(4) of the Protocol, the person who was the holder of the international registration may file a trademark registration application for all or part of said goods or services.
(2) A trademark registration application pursuant to the provisions of the preceding paragraph shall be deemed to have been filed on the date of international registration of the international registration referred to in the same paragraph (or the date of subsequent designation related to the international registration if the international registration referred to in the same paragraph relates to a subsequent designation) if it falls under any of the following items:
(i) The trademark registration application under the preceding paragraph is filed within three months from the date on which the international registration under the same paragraph was cancelled.
(ii) The trademark for which trademark registration is sought is identical to the trademark that was the subject of the international registration under the preceding paragraph.
(iii) The designated goods or designated services related to the trademark registration application under the preceding paragraph are included in the scope of the goods or services designated in the international registration under the same paragraph.
(3) If priority under the provisions of Article 4 of the Paris Convention was recognized for the international trademark registration application related to the international registration under Paragraph 1, said priority shall be recognized for the trademark registration application under the provisions of the same paragraph.
(4) The same shall apply to the preceding paragraph when priority under the provisions of Article 9-3 or Article 43-3(2) of the Patent Act as applied mutatis mutandis by replacing terms pursuant to Article 13(1) was recognized for the international trademark registration application related to the international registration under Paragraph 1.
(5) Regarding the application of the provisions of Article 10(1) to a trademark registration application under the provisions of Paragraph 1, the phrase "part of a trademark registration application" in the same paragraph shall be read as "part of a trademark registration application (limited to those included in the scope of goods or services designated in the international registration under Article 68-32(1))."
(6) If a person filing a trademark registration application under the provisions of Paragraph 1 is unable to file the application within the period prescribed in Paragraph 2(i) due to reasons beyond their control, they may file the application within 14 days (or two months for overseas residents) from the date on which the reasons ceased to exist, and within six months after the expiration of that period, notwithstanding the provisions of the same item.
(7) A trademark registration application filed pursuant to the provisions of the preceding paragraph shall be deemed to have been filed at the time the period prescribed in Paragraph 2(i) expired.
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