``Trademarks you've gone to great lengths to acquire are canceled because you're not using them.'' Did you know that such a thing can actually happen? Japan's trademark law has a system for cancelling registered trademarks that have not been used continuously for three years or more. That is Non-use cancellation trial (Trademark Law Article 50).
This system is an important risk that trademark owners should understand from a "defense" perspective. If your company's registered trademark is canceled due to non-use, the foundation of your brand could be fundamentally shaken. The brand value that has been built up over many years can be destroyed by a single appeal.
On the other hand, it is also very effective as an "offensive" weapon. If a trademark owned by another company is an impediment to your company's business development, and the trademark is not being used, you can request a cancellation trial for non-use and have the rights extinguished. This can be a breakthrough in cases where prior trademarks are a bottleneck in launching a new brand or entering the market.
This article provides a comprehensive explanation of useful knowledge in practice, from an overview of the non-use revocation trial system to defensive measures, offensive strategies, and daily intellectual property management points. Don't you feel secure just by having a trademark? Please take this opportunity to review your company's trademark management system.
Table of Contents
Non-use cancellation trial is a trial system stipulated in Article 50 of the Trademark Law, and it is a system that allows you to request the cancellation of registration of a registered trademark that has not been used continuously in Japan for three years or more. Once a trademark is registered, it does not mean that it is secure forever; ``use'' is a prerequisite for maintaining rights.
System overview of non-use revocation trial (Trademark Law Article 50)
Behind this system is the basic concept of the trademark system. A trademark is something that only demonstrates its origin display and quality assurance functions when it is actually used in business. If an unused trademark continues to remain registered, it will unduly restrict opportunities for other businesses to use the trademark and inhibit healthy competition. For this reason, a system of non-use cancellation trials has been established based on the idea that there is no need to maintain rights for trademarks that are not used.
Trademark rights have unique characteristics compared to other intellectual property rights. While patent rights and design rights expire after a certain period of time, trademark rights can last semi-permanently if renewed and registered. However, this assumes that you are using it.
If a trademark is left unused, the following problems will occur:
Non-use revocation trials are positioned as apublic interest system to prevent these harmful effects and ensure that the trademark system functions in line with its original purpose.
One of the major features of non-use revocation trials is that any person can make a claim. Article 50, Paragraph 1 of the Trademark Act clearly states "any person", and anyone can request a trial for cancellation of non-use, regardless of whether or not they have a conflict of interest. This is in contrast to invalidation trials under the Patent Act (Article 123, Paragraph 2 of the Patent Act), in which only interested parties are eligible to claim.
Anyone can request it - no conflict of interest is required
A non-use revocation trial can be filed by any person, regardless of interest. This is based on the system's purpose that eliminating trademark non-use is in the public interest. Therefore, claims can be made not only by competing companies, but also by those who are starting a new business, consumer organizations, and even individuals. In practice, there are many cases where, when a prior trademark that poses an obstacle is found during a pre-application clearance search, a cancellation trial is requested on the grounds of non-use of the trademark.
This ``any person can claim'' feature means that there is always a risk for trademark owners. If your company's registered trademark has not been used for three years or more, you could be in a situation where anyone could file a request for a non-use cancellation trial at any time. Conversely, it also has the advantage of being relatively easy to take action to cancel another company's trademarks that are hindering business development.
In order for cancellation to be granted in a non-use cancellation trial, the following three requirements must all be met. Conversely, if the trademark owner can overturn any of the above, it may be possible to avoid cancellation.
The most basic requirement is that the registered trademark in question has not been used in Japan for 3 years prior to the registration of the appeal. What is important here is that the starting point for the ``3 years'' is not the ``date of request for appeal,'' but the ``date of registration of the request for appeal.'' There is a slight time lag before a request for appeal is registered with the Japan Patent Office, but in practice it is generally a few weeks from the filing date.
The meaning of "use" is also strictly defined by law. The act of use must fall under Article 2, Paragraph 3 of the Trademark Act, and specifically includes the following acts.
Merely knowing or remembering a trademark is not considered use. Specific usage behavior in actual business activities is required.
A non-use cancellation trial can be requested for each designated product or designated service. For example, if a certain trademark is registered with Class 25 "Clothing" and Class 35 "Providing benefits to customers in the course of retail business", there may be a situation where the trademark is used for "Clothing" but not for "Retail".
In this case, the claimant can request a cancellation trial targeting only the unused "retail" portion. Conversely, trademark owners can maintain rights only for the goods and services they use. In this way, non-use cancellation judgments are not "all-or-nothing," but are flexibly determined on the basis of designated goods and services.
However, what you should be careful about is the interpretation of the scope of the goods and services used. For example, if the specified product "confectionery" is used only for "chocolate," there may be a dispute as to whether the use is permitted for the entire "confectionery" or only for "chocolate." In trial practice, if the specific product being used falls within the scope of designated products, there is a tendency for use of the designated product to be approved.
Even if you have not used the service for more than three years, you can avoid cancellation if there is a "justifiable reason". However, the cases in which this "just cause" is accepted are extremely limited.
The hurdle for "just cause" is extremely high
Only reasons that cannot be attributed to the trademark right holder are accepted as "justifiable reasons", such as natural disasters, legal regulations (e.g. pending approval of the Pharmaceutical Affairs Law), wars or civil disturbances. Economic and managerial reasons such as simple business slump, temporary suspension of sales due to management decisions, problems with successors, and difficulty in procuring raw materials are not recognized as legitimate reasons. Also, subjective intentions such as ``planning to use it in the future'' or ``preserving the brand'' are not valid reasons.
The table below summarizes the three requirements and their specific details.
| Requirements | Content | Point |
|---|---|---|
| Not used for more than 3 years | The registered trademark has not been used for designated goods or services in Japan for three years before the registration of the appeal. | Use is limited to acts defined in Article 2, Paragraph 3 of the Trademark Act. If it is used for even one day within three years, it does not meet the requirements |
| Determination of designated goods/services | Cancellation will be determined for each designated product/service. If only some products/services are used, only the unused parts will be canceled | Even if you register with a wide range of specifications, you can only protect your rights within the scope of the goods and services actually used. |
| No Justification | There is no justifiable reason for non-use that cannot be attributed to the trademark owner | Permitted only in extremely limited cases such as natural disasters and legal regulations. Business reasons or "future use plans" are not allowed |
How should a trademark right owner respond when a request for a non-use revocation trial is filed? Here, we will explain practical defense measures in detail.
The biggest feature of non-use cancellation trials is that the burden of proof is on the demandee (trademark right holder). In normal litigation, the principle is that the party claiming the trademark proves it, but in a non-use cancellation trial, the claimant only has to claim that the trademark is not being used, and the trademark right holder must prove with evidence that the trademark is being used.
This shift in the burden of proof is based on the idea that the person who knows best about the usage of a trademark is the trademark owner himself/herself. However, even if it is actually used, there is a risk that it will be canceled if appropriate evidence is not prepared, so it is extremely important to preserve evidence on a daily basis.
It is absolutely no good to leave it unattended - it will be automatically canceled if you do not answer
When a non-use revocation trial is requested, if the trademark right owner does not submit a written answer, the trial judge accepts the claimant's argument as is, and a revocation decision is made. There is no such thing as "if you ignore it, it will disappear naturally". When you receive a notice of appeal (copy) from the Japan Patent Office, be sure to respond within the deadline. The deadline for filing a written response is 40 daysfrom the date of service of the copy (specified period, which may be extended). If you miss this deadline, you may lose the opportunity to respond and the cancellation may become final.
In order to prove use in a non-use cancellation trial, you need evidence that clearly shows who used the trademark, when it was used, what trademark it was used for, and what goods and services it was used for. Depending on the type of evidence, the probative power at trial varies greatly.
Things that are likely to be accepted as valid evidence
On the other hand, the following types of evidence may have weak probative power on their own or may be considered invalid:
You may think, ``I should just rush to start using it after a request for revocation trial is filed,'' but this is not the case. Article 50, Paragraph 3 of the Trademark Law stipulates that use made after knowing that an appeal will be filed (so-called "last-minute use") will not be accepted as evidence of use.
Last-minute use is clearly prohibited by law
Article 50, Paragraph 3 of the Trademark Law stipulates that use of a trademark after knowing that a request for appeal will be filed will not be accepted as evidence of use "if the requester proves that the use occurred after knowing that a request for appeal will be filed." In practice, if you suddenly start using the drug immediately before or after filing a request for appeal, there is a very high risk that it will be recognized as ``last-minute use'' due to the unnatural timing. Even if you suddenly start using a trademark that has not been used for three years several months before filing an appeal, it will be invalidated if the use occurs at an unnatural time. Continuous use on a regular basis is the best defense.
The best way to prepare for a non-use revocation trial is to have a regular intellectual property management system in place. "Attack is the best defense", but "management is the best defense". Here, we will introduce three specific management points.
Management point 1: Understand the scope of "same as socially accepted"
In a non-use cancellation trial, it is not necessary that the trademark be used in exactly the same manner as the registered trademark. Use is permitted as long as it is considered to be the same in terms of social convention. Specifically, the following cases apply:
However, care must be taken as there are cases where trademark identity may no longer be recognized, such as when the graphical elements of the logo are significantly changed, or when characters are added or deleted. Regularly check whether the aspect of the trademark used in actual business is within the scope of "same socially accepted" as a registered trademark.
Management point 2: Regularly collect and save usage evidence
The most important thing in preparing for a non-use revocation trial is to systematically collect and preserve evidence of trademark use on a daily basis. If you rush to gather evidence after receiving a request for trial, it may be too late. We recommend establishing the following routine.
Management point 3: Regularly inventory your portfolio
The number of trademark rights owned by a company tends to increase as its business expands. However, not all trademarks are used in your current business. Review your trademark portfolio from the following perspectives through regular inventory.
It is efficient to take inventory of your trademark portfolio at the time of renewal. Once you have paid the renewal fee, make a decision by comparing the usage status of each trademark with your future business plan. Securing evidence of trademarks that should be maintained and organizing unnecessary trademarks will also lead to optimization of intellectual property costs.
So far, we have explained non-use revocation judgments from a defensive perspective, but now let's look at how to use them as an offensive strategy. Non-use cancellation judgments can be a powerful tool for promoting your company's brand strategy.
During a clearance search for a trademark application, it is not uncommon for a company to discover a commercial trademark that is identical or similar to the trademark it wishes to use. In this case, the following options are usually considered:
Of these, a non-use cancellation trial is the most effective in cases where the prior trademark is not actually used. Once the prior trademark is cancelled, the hurdle is removed and your company's trademark application has a better chance of being registered. This strategy can be used in a variety of situations, such as launching a new brand or securing domestic trademarks for overseas expansion.
Before filing a request for cancellation for non-use, it is extremely important to thoroughly investigate whether the trademark in question is actually not being used. If the other party can provide evidence of use, the appeal will not only be dismissed and the trial costs will be wasted, but there is also the risk that the other party will learn of your company's intentions.
Make sure to conduct a preliminary investigation - "Departing without notice" is prohibited
Before filing a request for non-use cancellation trial, please thoroughly conduct the following investigation.
If no trace of use is found as a result of the investigation, it can be determined that the possibility of success in a non-use revocation trial is high. However, evidence of use is often in the possession of the trademark owner, making it difficult to confirm in advance that the trademark has not been used completely. After understanding this point, consider the risk and return in a comprehensive manner before filing an appeal.
Although a non-use cancellation trial is a powerful tool, filing a trial is not necessarily the only solution. In some cases, it may be effective to first trynegotiating transferwith the trademark owner.
Case where transfer negotiations should be considered
Regardless of which strategy you choose, thorough research and expert advice is essential. By formulating a strategy that combines non-use cancellation judgments and transfer negotiations, it is possible to realize brand strategies in the most efficient manner.
Non-use cancellation trials are an area of trademark law that requires particularly specialized knowledge and practical experience. Regardless of whether you are on the defensive or attacking side, by consulting and requesting a patent attorney, you will be able to respond more reliably and efficiently.
Advantage 1: Evaluation of used evidence and strategic evidence composition
Patent attorneys can accurately determine what kind of evidence is valid and what kind of evidence is insufficient based on past trial decisions and precedents. If you are on the defense side, you will select the most effective evidence from the evidence you have and write a written defense that logically proves the fact of use. If you are on the attacking side, evaluate the possibility of the other party's use in advance and determine the probability of success in filing an appeal. The knowledge of experts is also essential in determining whether the manner of use of a trademark falls under the category of "same according to socially accepted standards."
Advantage 2: Avoiding procedural risks
Non-use revocation trials have strict procedural requirements and deadlines. If you miss the deadline for filing your answer by even one day, you may lose your rights, no matter how legitimate the reason may be. By hiring a patent attorney, you can avoid these procedural mistakes and take the necessary actions at the appropriate time. Additionally, based on our experience, we are able to accurately make decisions regarding additional claims and supplementary evidence as the trial progresses.
Advantage 3: Planning a comprehensive brand strategy
Non-use revocation trials cannot be completed as a standalone procedure, but should be positioned within a company's overall brand strategy. Patent attorneys are familiar with all aspects of trademark practice, including trademark application, registration, management, and dispute handling, and can propose comprehensive brand strategies, including non-use cancellation trials. For example, we can support you from multiple perspectives, such as adjusting the timing of filing a new trademark application in parallel with the cancellation of an earlier trademark, auditing the usage status of the entire portfolio, and reviewing license agreements.
Although the non-use cancellation trial is a system that deals with the basic requirement of "use" of a trademark right, its practice is very deep and there are many aspects that are difficult to judge. Understanding both "defense" and "offense" and practicing both daily intellectual property management and strategic utilization are the keys to protecting and increasing a company's brand value.
Is there a risk that your company's trademark will be canceled due to non-use, or are other companies' unused trademarks becoming an obstacle to business development? If you have any concerns, please consult an expert patent attorney.
Please contact EVORIX for consultation regarding non-use revocation judgment
Our experienced patent attorneys provide one-stop support for everything from trademark defense measures to offensive strategies.
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AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).