CHAPTER 13. TRIALS
Section 1. Overview
I. Trial System
Any person shall be entitled to the right of access to the courts (Japanese Constitution,
Article 32), whether the person is an individual or an enterprise, or whether in a civil
dispute or an administrative dispute. This provision does not mean that every disputemust be dealt with in the courts from beginning to the end, but it means that final accessto the courts must be guaranteed. It may be reasonable that disputes which require
expertise in a particular field be first handled by an administrative agency such as the
Patent Office and then submitted to the court for judgment of the appropriateness of theadministrative agency's decision.
An administrative agency such as the Patent Office (the Department of Appeal) is calleda "semi-judicial agency", and its judgment function is called a "semi-judicial function."
The trial itself is not a judicial act. It has some similarity to a judicial act but it isactually an administrative act. It is not a lawsuit. A decision is rendered in a trial,
however, prior to any court decision, so that the first instance of a suit against a trial
decision is not submitted to the Tokyo District Court where the competentadministrative agency (that rendered the decision) is, but to the Tokyo High Court (See
Section 63 (1); the Tokyo High Court has a Special Industrial Property Section). Thesesuits consist of a two-step trial system, not a three-step trial system.
Trial decisions are effective against the public.
II. Kinds of Trials
Trials consist of the following types:(a) (i) Trials against the examiner's decision of refusal (Section 44), and (ii) trials
against rulings to decline amendments (Section 45) that are brought as an appeal by aperson who has an objection;(b) Trials for invalidation of trademark registrations (Section 46);(c) (i) Trials for cancellation of trademark registrations not in use (Section 50); (ii)trials for cancellation of trademark registrations due to illegitimate use by a trademark
owner (Section 51); (iii) trials for cancellation of trademark registrations transferred
after separation or division for trademarks used in a confusing way with an intent toviolate the rules of fair competition (Section 52-2); (iv) trials for the cancellation of
trademark registrations due to the illegitimate use of a trademark by the owner of a rightof exclusive or non-exclusive use of such trademark (Section 53); and (v) trials for thecancellation of trademark registrations due to registration of the trademark in a foreigncountry (which is a party to the Paris Convention or a WTO Member) by the trademark
right owner's agent or representative, etc. without legitimate reason or the owner's
authorization (Section 53-2).
Because these matters concern the material rights and interests of the parties concerned1

as set forth in the Trademark Law, they must be disposed by the most prudent
procedure; namely, trial proceedings. Moreover, further impartiality and fairness of theprocedures are secured by allowing the parties to make an appeal as a legal remedy.
III. Persons Demanding Trials and Persons' Interests Required for Demanding
Trials
The former Trademark Law had a provision to limit the persons eligible for demanding
trial to interested persons (e.g., Former Trademark Law, Section 22 (2)). This provision
tended to lead to fruitless arguments as to whether a person demanding a trial had aninterest in the trial or not, for which considerable time and trouble was required.
Therefore the current Law deleted the provision related to the eligibility of such persons.
Our interpretation of such a revision is that a person is not required to have an interest in
the trial he is demanding. However, the current Law has provided that "any person may
demand a trial" but the trial he may demand is only the type of trial that may be
demanded also by a person not interested in the trial. In addition, the current Law has
been revised to include the phrase, "any person may demand a trial" for cancellation ofa trademark not in use (Sections 50, 51, 52-2 & 53; i.e., so-called "public trial
provisions"). In light of these legislative changes, we can construe that a person
demanding a trial is required to have an interest in the trial, say, in cases of a trial forinvalidation.
The interests mentioned here mean legal interests. They are more than mere economic
interests or actual interests. Any demand for a trial would be accepted in cases where
the interest of the person who demands a trial is likely to be impaired by his opponent's
legal status or act: for instance, in cases where the demanding person has received awarning based on a trademark right, where the trademark application made by the
person has been rejected, where the person is filing a trademark application that is likely
to be in conflict with any other trademark (Vol. 2, No. 1, Tokyo High Court, Mutaishu, p.
615, Nov. 21, 1979), where the person is using a trademark that is likely to be in conflictwith any other trademark (Vol. 2, No. 1 Tokyo High Court, Mutaishu, p. 44, Feb. 25,
1970), and where the person has a business plan for which a trademark is to be used andbecause of this, he has requested the transfer of the trademark (No. 1166, Tokyo High
Court, Hanji, p. 152, May 14, 1985).
The requirement that a person demanding a trial must have an interest in the trial aims
to avoid such irrelevant trials as are demanded just for bringing about confusion,
demanded by an agent on behalf of the principal who has an interest but does not
actually desire to make such a demand, or demanded by an agent in his name by
mistake (for examples of dismissals of such trials, see Vol. 112, 2896, Supreme Court,
Sokuho (Prompt Report), p. 112, Oct. 30, 1981 and Vol. 12, No. 2, Tokyo High Court,
Mutaishu, p. 678, Nov. 12, 1980). In light of the deleted provision concerning theeligibility of a person demanding a trial, we should not interpret the requirement too
strictly. Court decisions basically take the same position. (One court decided that a
party's interests are acknowledged in cases where the party had a business plan using
the trademark. This decision did not intend to limit the acknowledgment of a party's
interests only to such a case, but to relax the interpretation. No. 1166, Tokyo High
Court, Hanji, p. 152, May 14, 1985.).

2Section 2. Appeal Trials
I. Trial against Examiner's Decision of Refusal(a) This is an appeal against the examiner's decision of refusal of a trademark
application, which forms the main part of the appeal system in which no defendant
exists.
A person who is dissatisfied with the examiner's decision that his application is to berefused may demand a trial thereon within 30 days from the transmittal of theexaminer's decision (Section 44 (1)).
(b) The Law protects a person who demands a trial by granting the following period ofgrace:
Where, due to reasons beyond his control, a person is unable to demand a trial under
Section 44 (1) within the time limit prescribed therein, he may, notwithstanding thesubsection, make a demand within 14 days (where he is a resident abroad, within twomonths) from the date when the reason ceased to be applicable, but not later than six
months following the expiration of said time limit (Section 44 (2)).
"Reasons beyond his control" are not only limited to the party's inability due to acts of
God or other unavoidable situations, but also include inability due to any subjective or
personal reason that has occurred to the person; that is, illness or any other reason thatcauses a normally attentive person to miss the time limit, even though they tookappropriate care. ("Commentary on the Trademark Law" p. 272; Yoshihara/Takahashi, p.
197. Some argue that reasons beyond his control means only objective and indisputablereasons; Nakayama, Fifty Lectures, p. 107.).
II. Trials against Ruling to Decline Amendment(a) A person who has received a ruling to decline an amendment that would change thegist of a trademark registration pursuant to Section 16-2 (1) may demand a trial thereon
within 30 days from the transmittal of the ruling (Section 45 (1)).
For instance, any change that has been made to the trademark sample attached to theapplication with an intention to change it to a different trademark is a change of the gist.
(b) Where an applicant for a trademark registration has filed a new trademark
application with respect to the designated goods or services as amended within 30 days
from the transmittal of a ruling to decline an amendment, the trademark application
shall be deemed to have been filed at the time of submission of that amendment and theapplicant may not demand a trial against the examiner's decision (Section 17-2; Proviso
of Section 45 (1); Design Law, Section 17-3).
The decision as to whether to file a new trademark application or a trial against theexaminer's decision is left to the applicant.

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(c) The provision mentioned above concerning the grace period allowed for a demand
for a trial against the examiner's decision of refusal is applicable here (Section 45 (2);Section 44 (2)).
(d) Where an applicant has demanded a trial against a ruling to decline an amendment,
the examiner shall suspend the examination of the trademark application until the trial
decision has become final and conclusive (Section 16-2 (4)).
This suspension is because the content of the trademark, or the designated goods orservices to be examined would vary, depending on whether the demand for the trial isaccepted or dismissed. The details of the trademark or designated goods or services
under examination are still undetermined while the demand is pending and reexamination might become necessary, depending on the result of the trial.
The approval of a demand for a trial and the examiner's ruling on the registration of a
trademark application are independent from each other. Consequently, there may be acase where a demand for a trial against a ruling to decline an amendment has been
accepted but the trademark application has been refused.
Section 3. Trial for Invalidation of Trademark Registration
I. Trial for Invalidation of Trademark Registration
1. SignificanceThis is an appeal to show opposition to the registration of a trademark, the main system
in inter-partes trials.
Any flaw in a trademark registration would go against the public interest and the benefitof free use of indications if that trademark were registered and were to remain effective
as an exclusive trademark right. Such trademark registration should be invalidated as arule. Nevertheless, since the invalidation of a registration will have material effect on
the legal standing of the existing owner of the trademark and other parties concerned, a
trademark registration would not be invalidated without any specific grounds forinvalidation prescribed by law.
2. Grounds for Invalidation of Trademarks(1) Trial for invalidation
Should a trademark registration fall under any of the following subsections, a trial may
be demanded for the invalidation of the trademark registration. In such an event, if two
or more items of designated goods or services are covered by the trademark registration,a trial may be demanded with respect to each of such designated goods or services(Section 46 (1)):(i) where the registration has been effected contrary to Sections 3 (registrability;
distinctiveness), 4 (1) (non-registrability), 8 (1), (2) or (5) (first-to-file rule), 51 (2)(prohibition of re-registration after a cancellation decision; including its application
under Section 52-2 (2)), Section 53 (2) (same as Section 52-2 (2)), or Section 25

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(enjoyment of rights by aliens) of the Patent Law as applied under Section 77 (3) of thisLaw;(ii) where the registration has been effected contrary to the provisions of a treaty;(iii) where the registration has been effected in respect of a trademark application filed
by a person who has not succeeded to the right deriving from the trademark application;(iv) where, after the registration, the owner of the trademark right has become a person
who can no longer enjoy such right under Section 25 of the Patent Law as applied under
Section 77 (3) of the Law, or the registration no longer complies with a treaty;(v) where, after the registration, the registered trademark has become a trademark
falling under Section 4 (1) (unregistrability) (i) to (iii), (v), and (vii) to (xvi).
(2) Difference between grounds for invalidation of trademark registration and grounds
for decision of refusal
The grounds for (Section 46 (1)) invalidation of trademark registration are, because of
its nature, almost the same as the grounds for an examiner's decision of refusal (Section
15), except for some special cases.
The provision as to exclusion of identical or similar trademarks under Section 8 (1)(First-to-file) that is included in Section 46 is not included in the grounds for an
examiner's decision of refusal under Section 15 (examiner's decision of refusal). This isbecause when an application is examined, no application would be refused based on the"first-to-file" provision under Section 8 (1). All applications are examined in the lightof the provision concerning the existence of previously filed identical or similar
trademark registrations under Section 4 (1) (xi). If a junior (later filed) application isregistered prior to a senior (earlier filed) application, the junior application would be
regarded as violating Section 8, which would constitute grounds for a trial forinvalidation of a trademark registration. If the junior application is registered prior to
the senior application, the senior application would not be refused pursuant to Section 4(1) (xi), nor would the senior application, needless to say, fall under the grounds forinvalidation of registration, (Commentary on the Trademark Law, p. 1134).
The provision of Section 15 (iii) (principle of one application per trademark) is notincluded in the grounds for invalidation of trademark registration under Section 46. If a
trademark violates the one-application-per-trademark principle (Section 6), andviolation is overlooked and the trademark is registered despite the violation, thetrademark would not cause any real harm once it has been registered, so that its
registration is not regarded as grounds for invalidation. (Commentary on the Trademark
Law, p. 1134. Toyosaki regards such a breach as an immaterial procedural flaw that is
curable. Toyosaki, p. 438.)
An examiner's decision regarding a trademark application under Section 46 (1) (iii)(non-succession to the right) would not pose any problem, since such non-complianceof the application with this provision can be cured through amendment. Therefore, this5

provision is also not included in Section 15. However, once the registration of the
trademark has been effected by mistake, the registration would be regarded as grounds
for invalidation, because the registration has been made by a person not vested with theright.
Section 46 (1) (iv) (the owner of the trademark right has become a person not eligible toenforce the right (e.g. a person of foreign nationality) after registration) indicates a casewhere the maintenance of a trademark right has become illegal, even though theregistration was not made by mistake.
Subsection (v) was added in connection with the revision of the Law in 1996, whereby
the substantive examination for renewal registration was abolished and the trial forinvalidation of renewal registration was discontinued.
(3) Restrictive list of grounds for trial for invalidation
The grounds for a trial for invalidation of a registration are limited to those listed in
Section 46. No registration is rendered invalid by a trial unless it falls under any ofsuch grounds (Commentary on the Trademark Law, p. 1135). A registered trademark
would be maintained even if such maintenance has become inappropriate after the
trademark registration. The registration would be maintained if the trademark has
become a generic name or a commonly used trademark, except where appropriate
grounds for invalidation exist. In such a case, the trademark is individually treated as
one to which the prohibitive right is not extended pursuant to Section 26 (1) and (2).
(The final court decision is binding on only the parties concerned up to the time of thetrial.) Accordingly, should a mark that once became a generic name regain
distinctiveness as a trademark in society, the flaw of the substantially invalid trademark
registration may possibly be cured.
(4) Cure of defects in grounds for trial
In one case, a trademark was registered contrary to the provisions of Section 4 (1) (xiii)(application within one year from the extinguishment of a trademark right). A trial forinvalidation of the registration was demanded on the grounds of the breach of thissection. However, when the trial was demanded, one year had already elapsed since thedate of extinguishment of the trademark registration. Partly because Subparagraph(xiii) only relates to private interests, the defect was regarded to have been cured and theparty was not allowed to demand a trial (Commentary on the Trademark Law, p. 1135;
Eguchi (2), p. 56). Breach of Section 51 (1) (prohibition of re-registration after a rulingto cancel an illegitimately used trademark) or Section 53 (2) (same) will be penalizedeven if 5 years have elapsed. No exclusion period is allowed, nor is any defect curable.
(5) Unit for demands for trials
If two or more designated goods or designated services are covered by one trademark
registration, a trial for invalidation may be demanded with respect to each of suchdesignated goods or services (Section 46 (1)). Should one of such designated goods orservices be in conflict with another trademark right, it may be too severe to invalidate
the whole trademark registration. A trademark registration may be invalidated in part(Commentary on the Trademark Law, p. 1135).

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(6) Grounds for invalidation timing
A ruling for the invalidation of trademark registration is rendered based on whether
grounds for invalidation existed at the time of the registration, as a rule, except for the
post-registration grounds indicated in Section 46 (1) (iv) and (v) (Toyosaki, p. 438).
(7) Examination guidelines concerning demands for trials based on post-registration
non-registrability
When demanding a trial for invalidation of trademark registration where the grounds for
non-registrability occurred after registration, as set forth in Section 46 (1) (v), thegrounds for the trial and a means of proof to verify such a fact must be presented in the
demand and should include the fact that the registered trademark in question falls under
the non-registrability with respect to the designated goods or designated services
referred.
Moreover, it is necessary to show when the registration began to fall under the grounds
for post-registration non-registrability and that the fact constituting such grounds
continues to exist when the trial is demanded. Proof or evidence will be required under
Section 46 (1) (iv).
There are cases where, despite the fact that the registration falls under the grounds forpost-registration non-registrability as set forth in Section 46 (1) (iv) or (v), the time
(date) when the registration fell under such grounds cannot be identified. To illustrate,in cases where the registered trademark in question has become one likely to be
misleading as to the quality of the goods or services (Section 4 (1) (vi)) due to a change
in trading circumstances after the registration, it may be extremely difficult to identify
the time when the trademark began to fall under the non-registrability grounds. In sucha case, it is at least necessary to prove that the trademark was not suitable forregistration at the time the demand for a trial for invalidation was filed.
3. Time for Filing Demands for Invalidation
Infringement of a trademark right in a criminal case, and a demand for compensation, ora demand for compensation for unfair profits gained by the infringer in a civil casemight cause a dispute even after the extinguishment of a trademark right. It is therefore
provided that a trial may be demanded for the invalidation of trademark registrationeven after the extinguishment of a trademark right (Section 46 (2)).
4. Notification
When a trial for invalidation of trademark registration has been demanded, the persons
concerned need to be informed of the fact. The trial-examiner-in-chief shall notify theowner of the right of exclusive use and other persons who have any registered rights
relating to the trademark registration (Section 46 (3)).
5. Exclusion Period(1) Gist
An exclusion period, during which a trial for invalidation cannot be demanded, should

7not be specified with respect to trademark registration allowed in spite of the nonregistrability provision in view of the public interest. On the other hand, it would bereasonable to have an exclusion period with regard to trademark registration allowed inspite of the non-registrability provision in view of a private interest, if a trial forinvalidation has been demanded after the use of a trademark for a long time. A
exclusion period is required in order to stabilize both the use of the trademark and theinterests of the parties concerned.
(2) Reasons for application
Where a trademark registration has been effected contrary to any of the following
provisions, a trial for invalidation of the trademark registration may not be demanded
until after five years from the registration of the establishment of the trademark right(Section 47).
1. Section 3 (Registrability);
2. Section 4 (1) (Non-registrability in view of private interest), (viii) (Improper use ofnames, etc.), (xi) (Similarity to an earlier filed trademark registration), (xii) (Defensivemark), (xiii) (within one year after extinguishment), (xiv) (Agricultural Seed andSeedlings Law);
3. Section 8 (1), (2) or (5) (Senior application);
4. Section 4 (1) (x) (Protection of well-known trademarks) or (xvii) (Mark indicating
the origin of wines, etc.) (except where registration was obtained with an intention toviolate the rules of fair competition);
5. Section 4 (1) (xv) (Prevention of confusion) (except where the registration was
obtained for unfair intention); or
6. Section 46 (1) (iii) (Application by a person who has not succeeded to the right),(3) Reasons for non-application
In contrast, where a trademark registration has been effected contrary to any of thefollowing, the registration violates a treaty after the registration has been effected, andno exclusion period can be set up with regard to a trial for invalidation of a trademark
registration.
1. Section 4 (1) (Non-registrability in view of the public interest) (i) to (vii)1;
2. Section 51 (2) (Prohibition of re-registration after a decision of cancellation);
3. Section 52-2 (2) (same);
4. Section 53 (2) (same);
5. Section 25 of the Patent Law (Enjoyment of rights by aliens), contrary to a treaty;
where a trademark registration falls under Section 25 of the Patent Law (Enjoyment ofrights by aliens).
(4) Mutual Kick-Out or Mutual Exclusion
As stated above, if the junior (later filed) application has been registered prior to the1

The subsections are as follows: (i) national flag, etc.; (ii) (state coat of arms, etc.); (iii) (markindicating the United Nations); (iv) (the Red Cross ensign, etc.); (v) (official seal which indicatescertification, etc.); (vi) (famous mark indicating a non-profit organization, etc.) and (vii)(contravention of public order or morality)), (ix) (a prize awarded at an exhibition), (x) (well-known
trademark in connection with the issue of unfair competition); (xvi) (trademark liable to mislead as
to the quality), (xviii) (three-dimensional shape being indispensable to ensure the function), (xix)(protection of well-known trademark in Japan and abroad).

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senior (earlier filed) application, the senior application is not refused pursuant to Section
4 (1) (xi), nor is the application regarded as falling under grounds for a trial forinvalidation. In such a case, however, if the two registrations coexist, and the exclusion
period expires without a trial for invalidation being demanded by the owner of the
trademark right of the senior application against the owner of the junior application,
double registration takes place. Under the former Law, there was a "mutual kick-out or
exclusion of associated trademarks" phenomenon, whereby applications for theregistration of both associated trademarks were mutually rejected. The associatedtrademark system as such was abolished under the current Law, and a similar trademark
can be assigned to any other person. Trademark administration is entrusted to theparties concerned, and this has resulted in the ownership by more than one person of
two trademarks whose prohibitive rights are interwoven. In such a case, the confusion
between both trademarks may be prevented by marking with a suitable indication.
However, as a so-called "consent" system has not been adopted, if the assignor files anapplication for a new similar trademark, there is a possibility of mutual kick-out or
exclusion of associated trademarks occurring. As a result, not only the assignee but also
the assignor can file a trademark application which corresponds to the associatedtrademark under the former Law. We must be careful about this point when assigning aformer associated trademark or a divided trademark right.
(5) Additional grounds for invalidation after the lapse of the exclusion period
It is not permissible to add any grounds for invalidation for which the exclusion period
expired during the pendency of the trial for invalidation. (No. 1028, Supreme Court,
Hanji, p. 125, Feb. 17, 1983; when grounds were added one after another, the court
decision treated such grounds as exceptions. Daishinin (former Supreme Court), Hanrei(Precedents), p. 2, July 8, 1946.)
The stabilization of interests is important, but the reasonableness of each case is also
important. It is no wonder that the owner of the right of a trademark feels the decisionof invalidation is unreasonable regarding a trademark registration he has used for only ashort period. If this issue is considered in view of the meaning of the legislation, there
may be an argument that if the trademark is used by the owner of the trademark rightduring the exclusion period, such time period of use should be subtracted from theexclusion period, or that non-use of the trademark for a certain period of time by theowner of the trademark right should be included as an exception in the requirement forthe demand for a trial.
6. Time When Invalidation of Registration Takes Effect
Where a trial decision that the trademark registration is to be invalidated has become
final and conclusive, the trademark right shall be deemed never to have existed.
However, where a trademark registration falls under any of the grounds for nonregistrability set forth in Section 46 (1) (iv) and (v) afterwards, the trademark right shallbe deemed not to have existed from the time the trademark registration came to fallunder Section (1) (iv) or (v). (Section 46-2). In such a case, a claim in a criminal caseand a demand in a civil case would become groundless. Some argue that royalties must
be refunded without special provisions (Yoshihara/Takahashi, p. 202). Others argue that9the party concerned is not eligible to request a refund of royalties because, in practice,
he has received the exclusive benefit until the decision of invalidation. The opinion thatthe party concerned is not eligible to request such refund is generally accepted andpredominant in precedents.
II. Trial for Invalidation after Renewal Registration of Trademark Right
It would be inappropriate to effectively maintain a trademark right in cases where there
is a material flaw with respect to the renewal registration of the trademark right due forthe same reason as the legislative reasons of Section 46 (Trial for invalidation of
trademark registration) in relation to the public interest. If there is any reason
prescribed by law to invalidate the registration, the registration of the trademark renewal
would be rendered invalid. Section 46 is of practical use if the renewal of a trademark
registration has been effected although the non-registrability grounds were identified
after the establishment of the trademark right has been registered.
Because a substantive examination is no longer conducted during the process of therenewal registration of a trademark right, Sections 48 and 49 of the former Trademark
Law (Trial for invalidation of renewal registration) were deleted. If any grounds forinvalidation that have existed since the registration of establishment are discovered after
the renewal registration of the trademark, a trial for invalidation of such registration(Section 46) would be demanded (Commentary on the Trademark Law, p. 1135).
Section 4. Demanding Trials for Invalidation of Trademark Registrations
I. Trials for Invalidation of Trademark Registrations
1. GistThe essential objectives of the Trademark Law are to ensure the maintenance of thebusiness reputation of persons using trademarks and to protect trademarks. Despite theregistration principle being adopted, trademark registration assumes good faith and fairuse of trademarks. To acknowledge the existence of a trademark not in use (which
exists only as a formality) without any practical meaning is to restrict the freedom ofuse of the marks in the industry and unfairly limits the choice of trademarks, which isundesirable in light of the Trademark Law philosophy.
A trademark becomes socially valuable only when it is used. The Trademark Law isintended for the protection of a substantive trademark in use. For the sake of
convenience, an application for registration may be filed with respect to a trademark notin use. This, however, also assumes an intention of using the trademark. Accordingly,
where neither the owner of the trademark right nor the owner of a right of exclusive use
nor the owner of a right of non-exclusive use has been continuously using the registeredtrademark (or a trademark generally accepted as identical) in respect of each item of thedesignated goods or designated services in Japan for three years or more, any person
may demand a trial for the cancellation of registration of the trademark with respect tosuch designated goods or designated services (Section 50 (1)).
2. Requirement for Demanding Trials for Cancellation of Registration of Trademarks

10Not in Use
A trial for the cancellation of trademark registration may be demanded in the following
cases: where neither the owner of the trademark right nor the owner of a right of
exclusive use nor the owner of a right of non-exclusive use has been continuously using
it in Japan for three years or more (without legitimate reasons).
(1) Continued non-use of a trademark
It is required that the registered trademark has not been used continuously for three
years or more. The condition of "three years or more" of non-use of a trademark is
indispensable. If the trademark right is assigned or a license of the right of use is
granted during the period of non-use, the period of non-use prior to such assignment or
licensing must not be overlooked, nor should the computation of the period of non-use
be newly started with respect to the assignee or the new owner of the right of use. The
court holds that not only the circumstances after the assignment but also before theassignment or licensing must be taken into consideration for judging whether such alegitimate reason exists or not (Vol. 13, No. 2, Tokyo High Court, Mutaishu, p. 903, Nov.
25, 1981).
If a trademark owner is not using a trademark in Japan but he is using the trademark in aforeign country, Section 50 (1) applies.
Continued non-use of a trademark means non-use either by the owner of the trademark
right, the owner of a right of exclusive use, or the owner of a right of non-exclusive use
for three years. If any of these three parties uses the trademark, Section 50 (1) would beinapplicable. For this provision to apply, non-use by any one of the three parties for aperiod of three years is not required. It may be reasonable to consider that, based onwhen the exclusive right of use and non-exclusive right of use are established, thecontinual period of non-use should be compounded. In cases where assignment of the
trademark right has taken place, the period of non-use should be compounded. (Kitaargued that this position had been originally taken at the time of legislation. No. 596,
"Law concerning Partial Amendment of the Patent Law, etc. (Vol. II)", Shojiro Kita, Juri,p. 114; Amino objected to the position from the standpoint of literal interpretation. He
argued that if a trademark right was transferred from person to person within the three
years, cancellation of the right would become impossible, and therefore considerationmust be given to each case when the rule of non-use was applied. Amino, p. 839.). The
computation of the period of non-use starts from when a demand for a trial is registered.
(2) Eligibility of persons demanding trials
The Law prior to the 1996 Revision had no specific provision as to the eligibility of
persons demanding trials for cancellation of registered trademarks not in use. Therefore,
the interpretation of the lack of a specific provision was that eligible persons should be
limited only to "interested persons." On the other hand, the 1996-Revised Law specifies
that "any person" is eligible. The Law states that "any person" may demand a trial, but
the demand would be regarded as abuse of a right and would not be accepted if theperson is deemed to have intent to harm the demandee (Section 50 (1)).

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(3) Non-use of a trademark by the owner of the right of use
It is required that "neither the owner of the trademark right, nor the owner of a right of
exclusive use, nor the owner of a right of non-exclusive use" has used the trademark
right. If any of these three parties has used the trademark, Section 50 (1) would beinapplicable. When the trademark is used in the marketplace by any third party contrary
to the intention of these three parties, such use is not regarded as being use of the
trademark. (Kaneko/Someno, p. 829; Amino, p. 837). However, advertising andpromotion of the goods covered by the trademark in the marketplace is regarded as
being use of the trademark, if in compliance with the intention of the three parties.
The right of non-exclusive use referred to here does not include a statutory nonexclusive license such as a prior user's third-party right.
(4) Non-use of trademarks in respect of designated goods or services
Non-use requires that the trademark has not been used in respect of any of thedesignated goods or designated services. If the trademark is used in respect of any
goods or services merely similar to the designated goods or services, this is not regarded
as being use of the trademark in respect of the designated goods or services, so Section
50 (1) is applicable. In cases where an associated trademark under the former Law isused, it is regarded merely as the use of similar goods or services and not use of thedesignated goods or services, so that Section 50 (1) would be applicable however,"identical trademarks" set forth in Section 50 (1) need not be identical in a strict sense.
"Trademarks regarded as being generally accepted as identical" would be sufficient(Section 50 (1)).
In cases where more than one of the goods or services among the designated goods ordesignated services are designated, and the trademark is used in respect of only some ofthe designated goods or services and not in respect of the others, Section 50 (1) isapplicable to the goods or services for which the trademark is not in use.
However, even if the trademark has been cancelled in respect of the goods for which thetrademark is not used, the person who has demanded a trial for cancellation cannot use asimilar trademark in respect of the goods for which the owner of the original trademark
right is using such trademark if they are within the scope of the prohibitive right of theoriginal trademark. This is because the owner of the trademark may demand an
injunction by exercising the prohibitive right. This point should not be misunderstood.
A trial for cancellation of a registered trademark not in use may be demanded withrespect to some of the designated goods or designated services. On the other hand, if
the demandee can prove that the trademark has been used in respect of any of thedesignated goods or designated services, he can avoid complete cancellation (Section 50(2)). A demand for a trial for cancellation of a trademark registration not in use may not
be withdrawn individually for each of the designated goods or services covered by thetrademark (Section 56 (2) interpreted from the opposite point of view. The applicationof Section 155 (3) of the Patent Law applied to Section 50 (2) of the pre-revised Patent
Law was abolished.) Accordingly, it is of vital importance for successful cancellation ofa trademark registration to select the designated goods or services with respect to which

12such a trial should be demanded. (There was a case where a trial was demanded forcancellation of a trademark with respect to more than one of the designated goods inrelation to Section 50 of the former Trademark Law (Law, No. 46, 1975). The court
held that if the non-use of the trademark was proved with regard to only some of thedesignated goods covered by the trademark, the trademark registration should becancelled for such goods. For instance, the registered trademark, "MAYER", thatcovers "control bands", etc. as the designated goods, was used by the owner of the
trademark right only in respect of a sewing machine included in the designated goods
but not used for the remaining items. The court stated as follows: The trial decision that
did not cancel the trademark registration for the reason that the fact of non-use was not
acknowledged with respect to the items other than the sewing machine was against thelaw, because its judgment was based on a mistaken fact (No. 357, Tokyo High Court,
Hanyu, p. 281, Feb. 23, 1977; to the same effect, No. 1387, Tokyo High Court, Hanji, p.
130, Feb. 27, 1991.) After the revision, the entire demand would be rendered invalid
under Section 50 (2), if the use of a registered trademark has been proved with respect
to any of the designated goods or services to which the demand in question relates.
Which system is better is a legislative matter. However, this argument can be madeonly with regard to the cases that were pending in the Patent Office as of January 1,
1976 when the pre-revised provision was still applicable.)
Currently, the significance of the use of good or services raises questions. In proving
the use of a trademark, it often becomes the topic of an argument whether the trademark
is used in respect of goods or services and to what extent the goods or services are
related to the mark.
(5) Use of trademarks similar to registered trademarks and trademarks regarded as
identical
Non-use of "a registered trademark" is required for the application of Section 50. The
provision of Section 50 would be applicable even if a trademark similar to the registeredtrademark has been used (except for a similar trademark that would be consideredidentical if they had the same coloring; Section 70 (1)). However, in actual situations, itwould be rather unusual were a trademark identical, in a strict sense, to the trademark
sample attached to the application to be consistently used in the same mode for businessactivities. The use of a registered trademark must be interpreted so that it agrees with
the interpretation generally accepted by the public; in other words, the meaning and theinterpretation of the use of a trademark that is regarded as identical with the registeredtrademark in some respects are significant. The 1996-Revised Law has specified that a
trademark used in respect of the designated goods or services does not have to bestrictly identical with the original trademark, but has to be generally accepted as
identical. Specifically, such a trademark is described as: "including a trademark
consisting of identical characters only with their fonts modified, trademarks which, with
their indication mutually replaced with hiragana and katakana characters (Japanesephonetic characters) and Latin alphabet may imply an identical pronunciation andconcept, a trademark consisting of figures common in appearance, and other trademarks
regarded as being generally accepted as identical with the registered trademark"(Section 50 (1)).

13(6) Acknowledgment of use of a registered trademark
Judgement should be made on whether each case should be regarded as use of aregistered trademark on a case-by-case basis, after due consideration of the actual
business circumstances in each industry to which the designated goods and designatedservices belong.
[A] Examples regarded as use of a registered trademark(i) Trademarks consisting of identical characters with only their fonts modified
Ex. 1 Mutual replacement of a different printing typeface (Ch'in-cho type, Ming-cho
type, Gothic type, etc.)
a. Ch'in-cho typec. Ming-cho typeb. Gothic typed. Round Gothic typeEx. 2 Mutual replacement of different styles of longhand (block style, semi-cursive
style, cursive style, etc.)
a. Regular block styleb. Cursive style

Ex. 3 Mutual replacement of printed-type font and cursive-style font
Ex. 4 Mutual replacement of traditional Chinese characters and simplified Chinesecharacters
Ex. 5 Mutual replacement of upper-case letter and lower-case letter of the Latinalphabet(ii) Trademarks which, with their indication mutually replaced in hiragana or katakana
characters (Japanese phonetic characters) and Latin alphabet, may imply an identicalpronunciation and concept
Ex. 1 Mutual replacement of hiragana and katakana
a. CHAMPION in hiragana
b. CHAMPION in katakanac. WANPAKU in hiragana (naughty)
d. WANPAKU in katakanae. YOIKO-NO-KUNI in hiragana
f. YOIKO-NO-KUNI in katakanacountry where good boys and good girls live)
Ex. 2 Mutual replacement of hiragana, katakana and Latin alphabet
a. RABU in katakana (hiragana)b. APPURU in katakana (hiragana)c. RAION in katakana (hiragana)d. POSUTO in katakana (hiragana)e. SUKURU in katakana (hiragana)f. SUMOMO in katakana (hiragana)[love][apple][lion][post, mail, position][school, class][plum]

14(A

g. HOTARU in katakana (hiragana)[lightning bug](iii) Mutual replacement of figures having a common appearance(Examples) See figures(iv) Other trademarks regarded as being generally accepted as identical with theregistered trademark
Ex. 1
Mutual replacement of hiragana, katakana, and Chinese characters in theindication of trademarks which may imply identical pronunciation and concept
a. Hatsuyume in hiragana (katakana) (Dream on the second night of the New Year)a' Hatsuyume in Chinese charactersb. Kanpaku in hiragana (katakana) (the Chief Adviser to the Emperor in Japanese
history)b'. Kanpaku in Chinese charactersc. Hokutosei in hiragana (katakana) (the Big Dipper)c'. Hokutosei in Chinese charactersEx. 2 Use of either the upper line or lower line of a registered trademark consisting of
two lines and the upper line and lower line may imply identical concept
Taiyo (sun) in Kanji
Ex. 3 Mutual replacement of vertical writing (from top to bottom) and horizontal
writing from left to right or right to left (excluding writing from right to left in case of
Latin alphabet) of trademarks consisting of words indicated in identical characters andfonts
Nagai Haru (long spring) in Chinese characters and hiragana[B] Examples not regarded as use of a registered trademark(i) Mutual replacement of hiragana and katakana(Example)
A particular concept is changed into a different concept by mutual
replacement of hiragana and katakana in cases of trademarks consisting of words offoreign origin
a. choco (simplified way of referring to chocolate) in katakana
a' choko (small sake cup) in hiragana
b. cam (a kind of part for machinery) in katakanab' kamu (chew) in hiragana(ii) Mutual replacement of hiragana, katakana, and Latin alphabet(Example)

Trademarks identically pronounced but implying different concepts when

15

their indication is mutually replaced by hiragana, katakana, and Latin alphabeta. pisu (in katakana or in hiragana) peacepiece
b. hohru (in katakana or in hiragana)

hall
hole

c. raito (in katakana or in hiragana)

light
right
write

(iii) Other trademarks NOT regarded as being generally accepted as identical
Ex. 1 Trademarks identically pronounced but implying different concepts when theirindication is mutually replaced by hiragana, katakana, and Latin alphabet
a. Kikyo in hiragana (in katakana)a' Kikyo in Chinese characters (bellflower)a" Kikyo in Chinese characters (homecoming)b. Saiten in hiragana (in katakana)b' Saiten in Chinese characters (festival)b" Saiten in Chinese characters (marking)c. Yosei in hiragana (in katakana)c' Yosei in Chinese characters (fairy)c" Yosei in Chinese characters (training)c"' Yosei in Chinese characters (request)
Ex. 2 Mutual use of Chinese characters and Latin alphabet in cases of trademarks
differently pronounceda. Niji (rainbow)
b. Kyujitsu (holiday)c. Ongaku (music)
Ex. 3 Mutual use of characters for a word implying a particular concept and a figure
which is regarded to represent the identical concept
Kaeru in a Chinese character (frog)
Ex. 4 Mutual use of a figure representing a particular concept and another figure
regarded as representing the identical concept (excluding figures having a common
appearance)
It is often argued in the court, among other things, whether or not the trademark has
been used to decide the relevance of a demand for a trial for the cancellation of a16

trademark registration. To acknowledge the use of a registered trademark in this case, it
should be judged whether a trademark in use is regarded to be generally accepted as
identical with the registered trademark. In making such a judgment, it must be taken
into consideration that the registered trademark would be changed with respect to thearrangement, layout and other modes when used in actual commercial situations.
However, it must be noted that "use of a trademark" means the use of a trademark
within the scope of the right of use, and it does not include the use of a trademark
beyond such scope; that is, the use of a trademark similar to the registered trademark
with respect to the designated goods or goods similar to the designated goods (in otherwords, within the scope of the prohibitive right).
For instance, a trademark, "continental" was completely identical with the registeredtrademark, "CONTINENTAL" in terms of the pronunciation and concept. Also, no
substantial difference was discovered in appearance that would affect business. The
court concluded that the use of the trademark, "continental", was regarded to be use of
the registered trademark, since the trademark belonged to the category accepted as
identical with the registered trademark (Vol. 10, No. 1, Tokyo District Court, Mutaishu,
p. 193, May 12, 1978). There was another ruling that the use of a graphic or figure
trademark generally accepted as identical was regarded to be the use of the registeredtrademark (Vol. 21, No. 3, Tokyo District Court, Mutaishu, p. 733, Sep. 26, 1989). With
respect to a trademark consisting of horizontally written characters, "clin (in katakana)"
in respect of the designated goods classified in Class 7, "Various tiles that belong to thisClass, other materials exclusively used for construction or structuring, cement, buildingstone, glass", a trial for cancellation of the registration was demanded on the grounds
that the trademark was not used in respect of "metal materials exclusively used forbuilding or structuring" included in the designated goods. The court held as follows:
The part, "expan kanagu" of the trademark, "clin expan kanagu", has been used in order
to identify the goods. The part which is regarded to be distinctive as a trademark is only
the characters, "clin". Since the trademark would be generally accepted as identicalwith the registered trademark, the distribution of such mark affixed to the trading
documents for joint metal fittings was regarded to be use of the registered trademark(No. 1369, Tokyo High Court, Hanji, p. 147, Oct. 26, 1989). A trademark consisting of
the two lines of horizontally written characters, "LITTLEWORLD (in katakana)" and"LITTLEWORLD (in English)", and the same characters placed in a shape of a circle,
and a registered trademark consisting of the two lines of horizontally written characters,"LITTLEWORLD" and "LITTLEWORLD (in katakana)" implied identicalpronunciation and concept although they had a small difference in appearance.
However, when viewed as a whole, they were generally accepted as identical, andaccordingly, the court concluded that the use of the trademark was regarded as use of
the registered trademark (No. 1350, Tokyo High Court, Hanji, p. 134, Feb. 20, 1990).
If, in cases where a trademark cannot be regarded as very similar in appearance to theregistered trademark, the difference of such a trademark is not a change of the basic or
essential part of the registered trademark nor would it affect the uniqueness anddistinctiveness of such registered trademark, the use of the mark is regarded to be use of
the registered trademark set forth in Section 50 of the Trademark Law. The owner ofthe registered trademark consisting of a figure and the characters "POLA" and "POLA”
in katakana, used a mark consisting of a figure completely identical with the figure of17

the registered trademark and the characters "POLA" combined with several otherfigures and characters by affixing it to the center of the bottom of a piece of wrapping
paper covering a box containing fruit (the designated goods) when delivering the box tocustomers. Of the mark affixed to the wrapper, the part described above maintained thedistinctiveness of the trademark and was at least regarded to be a mark that fell into thesame category as the trademark. Therefore, the court concluded that the trademark had
been used (Vol. 23 No. 1, Tokyo High Court, Chitekishu, p. 163, Feb. 28, 1991).
An example of a case where the fact of use was denied is given here. With respect to aregistered trademark consisting of the characters "DIAMETRING" and"DIAMETRING in katakana" and a figure with a cross at the center of a hexangular starthat covers "spinning rings and machine tools not falling into other classes, each part
thereof and various control bands, hoses and packing" under former Class 17 as thedesignated goods, the court ruled that the use of only the figure without characters was
not regarded as use of the registered trademark (Vol. 14, No. 3, Tokyo High Court,
Mutaishu, p. 651, Sep. 30, 1982).
Whether a registered trademark was used with respect to the designated goods or not
was disputed. The owner of a trademark right was using his registered trademark"SKIN LIFE (in katakana)" in respect of facial cleansing cream. The facial cleansing
cream, if practically judged on the basis of the recognition of persons in the businessand consumers, fell into "cosmetics" included in the designated goods under theregistered trademark. The court adjudged that the registered trademark had been used
(Vol. 17, No. 2, Tokyo High Court, Mutaishu, p. 213, May 14, 1985). On the other hand,the court acknowledged the non-use of a trademark in the following case. With respect
to a trademark "Amilock (in katakana)" that covers "couplers and other goods that fall
into the class" under Class 9 as the designated goods, when, despite the application of
the trademark to a coupler, the coupler was used only as a part of a humidifier which
was classified into "chemical machine tools" under Class 9, the trademark was notregarded as being used in respect of "chemical machine tools" (Vol. 20, No. 1, Tokyo
High Court, Mutaishu, p. 175, Apr. 12, 1988). The owner of a trademark, "nichicon's
packcon (in katakana)", which covers the designated goods "electric machinery andtools, telecommunications machinery and tools, electronic application machinery andtools (except for those related to medical equipment), and electric components andparts" used a registered trademark "nichicon", which constitutes associated trademarks
together with the trademark "nichicon's packcon" (those trademarks are similar to eachother), by affixing it to condensers and thermistors and their packaging. Because thesecondensers, etc. were merely parts of the various electric machinery and tools, etc.
which had been designated as the goods covered by the trademarks, if the associatedtrademarks were applied to such parts, it would not directly mean that the trademark inquestion was used in respect of the finished goods for which a trial for cancellation of
the trademark registration was demanded (Vol. 22, No. 3, Tokyo High Court, Mutaishu,
p. 687, Oct. 29, 1990).
(7) Absence of legitimate reasons
The demandee can avert cancellation if he has justified that there are legitimate reasonsfor the failure to use the registered trademark. Whether there is any legitimate reason or18not must be judged, taking all the circumstances into consideration. However, as a rule,
legitimate reasons are considered to exist in the following cases, where the owner of a
trademark right or the right of use of a trademark has not been able to use it due tounforeseeable circumstances beyond his control. Typical of such cases are as follows:c Earthquake, typhoon or any other act of God;d Fire, arson, destruction or any other act of a third party by intention or negligence;e Embargo, delay in authorization procedure, enforcement of government authorities(No. 2706, Trial decision, Published Trial Decisions, p. 59, Oct. 1, 1985, circumstances
under occupation; No. 782, Supreme Court, Published Trial Decisions, p. 93, Feb. 5,
1968, during the liquidation proceedings by law; Trial decision, Hanrei (Precedents), p.
216, Sep. 1, 1950, during the re-evaluation period of pharmaceuticals; No. 2289, Trialdecision, Published Trial Decisions, p. 21, Jul. 1, 1982, Permission under the Drugs,
Cosmetics and Medical Instruments Act; No. 1869, Trial decision, Published Trial
Decisions, p. 75, Dec. 13, 1979, if the prohibition has been canceled with respect tosome of the designated goods or the designated services, legitimate reasons for non-use
still exist with respect to the remaining prohibited part).
On the other hand, the following reasons are not generally accepted as legitimate
reasons for non-use:c A person failed to use a trademark due to an accidental fire (gross negligence), etc. or
due to illness;d A person failed to use a trademark because of a delay in the development of the
products caused by slump in business, depression, or inability to procure funds, etc.;
e Commercialization of a product is delayed due to technical problems or marketabilityof the product (No. 2706, Trial decision, Published Trial Decisions, p. 59, Oct. 1, 1985,
as to a delay in the completion of bridge construction and the trademark of Naruto
Ohashi (bridge)).
Whether any legitimate reason exists or not should be specifically considered for eachcase and decided in light of generally accepted ideas. The court held as follows:
Legitimate reasons mean any circumstances that prevent the use of a trademark withrespect to the designated goods referred to in the demand for a trial for cancellation
when it is considered too strict in light of generally accepted ideas to attribute the failure
to use the trademark to the owner of the trademark right (No. 615, Tokyo High Court,
Hanyu, p. 121, Jul. 30, 1985).
3. Transitory Measures as to the Special Provisions concerning Associated trademarks
Prior to the 1996-Revised Law, if the owner of a trademark right, the owner of a right of
exclusive use, or the owner of a right of non-exclusive use had used the registeredtrademark and another registered trademark, both of which "mutually constituteassociated trademarks", no person may demand a trial for cancellation of registration
also of any registered trademark not in use, despite the fact that none of such owners
had used any of the registered trademarks in respect of the designated goods or services19

in Japan continually for three years or more (Former Trademark Law, Section 50 (2),statement in parenthesis). The associated trademark system, as a system for reinforcing
the protection of rights, played a vital role. Under this system, if only one of theassociated trademarks had been used, the remaining associated trademarks wereconsidered to be used, therefore avoiding demands for trials for cancellation ofregistration. In order to avoid a drastic change and to have enterprises makepreparations for trademark protection measures, the 1996-Revised Law provided that
pending trials for cancellation of trademark registration due to non-use should follow
precedents (Supplementary provisions, Section 10 (1)). The provision of Section 50 (2)of the former Trademark Law is still applicable to trials for cancellation of registrationof trademarks not in use demanded prior to March 31, 2000 (Supplementary provisions,
Section 10 (1)).
Since associated trademarks became ordinary trademarks from April 1, 1997
(Supplementary provision, Section 4), if the fact of having used, after April 1, 1997, a
trademark which used to be an associated trademark has been proved, the associatedtrademark is not regarded to have been used, and therefore, the special provisions areinapplicable. In a trial for the cancellation of a registered trademark not in use,demanded between April 1, 1997 and March 31, 2000, if the use of a registeredtrademark and another trademark which "mutually constitute associated trademarks" hasbeen proved, that fact would be an effective defense.
4. Proof of Use of Trademark(a) In cases where a trial for cancellation of a trademark registration has been demanded,
unless the owner can prove the use of the registered trademark in respect of any of thedesignated goods or designated services to which the demand relates, he shall not avert
the cancellation of the registered trademark for the designated goods or designatedservices (Section 50 (2)).
(b) It may be difficult or impossible in some cases to prove that neither the owner of the
trademark right, nor the owner of a right of exclusive use, nor the owner of a right of
non-exclusive use has used the registered trademark at any place in Japan. The Law
before the revision in 1975 assumed the non-use of a trademark unless the trademark
was used in smaller areas such as a city, town, or village where the owner of the
trademark was located, and considered that this method would make the proof of nonuse easier. However, practically, it was difficult to prove non-use in large cities, so theprovision concerning the cancellation of a trademark registration on the grounds of nonuse was hardly ever applied. If a stricter method proof were required, the proof of nonuse would be called a "devil's proof" and the system of the cancellation of a trademark
registration due to non-use would lose its significance. On the other hand, if in fact aregistered trademark had been used somewhere, it would be far easier for the owner toprove that he had used it than for the demander to prove non-use. For this reason, a newprovision has been made whereby the burden of proof has been transferred to the owner(whereby the system has become more reasonable, some say). Such a revision has
made the cancellation of a trademark registration easier and reinforced the obligation to
use trademarks (Section 50 (2)).

20(c) The courts have stated as follows: In a trial for the cancellation of a trademark
registration, the examination covers whether the registered trademark has been usedwithin the three years prior to the demand for the trial. It is a reasonable interpretationthat the period allowed for proving the above fact may extend until the conclusion oforal proceedings at the trial. Section 50 (2) has provided, in its text, that the use of aregistered trademark should be a requirement for averting the cancellation of theregistration. Also, this section has imposed on the owner of a trademark right a partial
responsibility for the collection of materials for the judgment of non-use, and thereby
has diminished the examiners' burden of responsibility for examining evidence ex
officio in the trial. This provision is not considered to have made it a requirement for
averting the cancellation that the owner of a trademark right should prove use of the
trademark at the time of the trial decision. Therefore, this provision would not affect the
judgment (Vol. 45, No. 4, Supreme Court, Minshu, p. 538, Apr. 23, 1991; No. 2871,
Tokyo High Court, Hanrei, p. 12, Nov. 30, 1987).
5. Use of a Trademark after Registration of a Demand for a Cancellation Trial(1) Commencement of the period of non-use
The owner must prove that the trademark has been used within the three years prior to
the registration of the demand for the trial. Use after such registration does not serve as
grounds for averting the cancellation under Section 50 (2).
If post-registration use is regarded as the use set forth in Section 50 (2), the system
would lose its significance. Should the owner of the trademark right use the registeredtrademark in respect of the designated goods or services related to the demand for a trial
for the cancellation of a trademark due to non-use after the registration of such ademand, the grounds for cancellation, namely the continual non-use of the trademark forthree years, would no longer be invalid. And so, the cancellation cannot be averted.
However, this provision shall not apply in the case where the owner justifies that there
are legitimate reasons for the failure to use the registered trademark. The owner can be
exempted from the demand for a trial only while a legitimate reason exists. As soon as
the fact constituting the legitimate reason has ceased to exist, the period of non-use of a
trademark resumes.
(2) Prevention of last-minute use(a) The parties concerned, such as the owner of the trademark right, etc. can avert thecancellation of a registered trademark by using the trademark within the three years
prior to the registration of a demand for a cancellation trial of registration of a
trademark not in use. For this reason, there were many cases where a party concerned
suddenly began "last-minute use" of the registered trademark to avert the cancellation
upon sensing the possibility of its opponent filing a demand for a trial as a result of the
opponent's behavior in negotiations for assignment or licensing.
In order to eliminate such last-minute use of a registered trademark, if a registeredtrademark for which a cancellation trial has been demanded is used by any party

21

concerned, such as the owner of the trademark right, from three months before ademand for such cancellation until the date of the registration of the demand, such a use
shall not be regarded as use of the registered trademark, provided that the demanding
party proves that the registered trademark has been used with the knowledge that thecancellation trial for the registered trademark would be demanded and that thedemanding party cannot present any legitimate reasons for such use of the registeredtrademark (Section 50 (3)).
(b) Proof of last-minute use
The owner is liable to prove the use of a registered trademark, while the demanding
party is liable to prove such a use is a last-minute use.
The demanding party must prove that the use of the registered trademark proved by theowner meets the following conditions:c The registered trademark has been used during the period from three months before
the demand for such cancellation until the date of the registration of the demand;andd The registered trademark has been used by the user (the owner of the trademark right,
the owner of a right of exclusive use, or the owner of a right of non-exclusive use) withthe knowledge that the cancellation trial would be demanded.
Specifically, the demanding party must prove in the course of a trial the fact that thedemandant conveyed his intention to file a demand for a cancellation trial by contentscertified mail or in the presence of a third party witness in the process of negotiations
for assignment of the trademark right or the like.
(c) Legitimate reasons for use of registered trademark
If the use of a registered trademark by the owner or user, as proved by the demanding
party, satisfies the requirements to be considered last-minute use, the use is not regarded
as last-minute use in cases where the owner or user can prove any legitimate reasons forsuch use. Legitimate reasons in such a case include:c The user had a definite plan to use the registered trademark before he knew of thedemanding party’s intention to file the demand for a trial, and it was pure chance thatthe user used the trademark during the period in question.
d The user was prevented from using the registered trademark by restrictions such as
conditions related to the goods, or governmental permission or approval, and he had nochoice other than to use it during the period in question.
6. Obligation of Notification
Where a trial has been demanded, the trial examiner-in-chief shall notify the owner of aright of exclusive use with respect to the trademark right and other persons who have
any registered rights relating to the trademark registration (Section 55, Section 46 (3)).

227. Time When Cancellation of Trademark Registration Takes Effect
When a trial decision ordering cancellation of trademark registration has become final
and conclusive, the trademark right shall become extinguished from that moment(Section 54). As a rule, the trial decision takes effect when the decision becomes final
and conclusive (Section 54 (1)). However, a trademark right shall be deemed to havebeen extinguished on the date the demand is registered for the trial for cancellation
where the trial decision has become final and conclusive in the trial (Section 54 (2)).
Because of this provision, the owner (or user) of the trademark right is able to avert his
opponent's exercise of a right such as a right to file a demand for compensation basedon a trademark right for the registered trademark not in use from the date a trial forcancellation of the mark was demanded up to the date the trial decision for cancellation
becomes final and conclusive.
II. Trial for Cancellation of Trademark Registration Due to Illegitimate Use
1. System of Cancellation of Trademark Registration Due to Illegitimate Use(1) Types of cancellation trials
Trials for cancellation of a trademark registration due to illegitimate use of a registeredtrademark are divided into two types. One is a trial for cancellation due to illegitimate
use of a registered trademark by the owner of a trademark right, and the other is a trial
for cancellation due to illegitimate use of a registered trademark by the owner of a rightof use. Both types aim at protecting consumers' interests.
Section 51 provides that "where the owner of the trademark right intentionally uses a
trademark similar to the registered trademark in respect of the designated goods ordesignated services, or intentionally uses the registered trademark or a similar trademark
in respect of goods or services similar to the designated goods or designated services ina way that may be misleading as to the quality of the goods or services or which may
cause confusion with goods or services connected with any other person's business, any
person may demand a trial for the cancellation of the trademark registration" (Section
51 (1)). Section 53 provides that "where the owner of a right of exclusive or nonexclusive use uses the registered trademark or a similar trademark in respect of thedesignated goods or designated services or goods or services similar thereto in a way
which may be misleading as to the quality of the goods or services or which may cause
confusion with goods or services connected with any other person's business, any
person may demand a trial for the cancellation of the trademark registration. However,this provision shall not apply where the owner of the trademark right was both unawareof the fact and taking appropriate care" (Section 53 (1)).
(2) Difference in the scope of application
A trial for the cancellation of a trademark registration due to illegitimate use by theowner of a trademark right generally begins with an explanation of the right of use andthe prohibitive right. The owner of a trademark right has a right to use the registeredtrademark in respect of the designated goods or the designated services (right of use),
while the use of a trademark right in the scope of the prohibitive right is not an23

affirmative right of the owner. The owner is allowed in fact to use the trademark rightat will in the scope of the prohibitive right, which actually works to prohibit use byothers.
In a trial for the cancellation of a trademark used by the owner of a trademark right, a
trial decision of cancellation may be rendered on the grounds of illegitimate use within
the scope of the prohibitive right, but not on grounds of illegitimate use within the scopeof the right of use.
On the other hand, in a trial for cancellation of a trademark used by the owner (holder)of a right of use, a trial decision may be rendered not only for cancellation on the
grounds of illegitimate use within the scope of the prohibitive right but also forcancellation on the grounds of illegitimate use within the scope of the right of use.
Such a difference is not caused by the difference in nature between the two cancellation
systems, but by the difference taken as to the protection of consumers.
(3) Provisions concerning public trials
Not only interested persons, but any other person may demand either a trial forcancellation due to illegitimate use by the owner of a trademark right or by the owner ofa right of use, as in cases of opposition to the granting of a trademark registration. Thisis known as a public trial provision. The penalties of such provisions are intended toprotect the public. If illegitimate use of a trademark in respect of any of the designatedgoods or designated services is discovered, the trademark with respect to all such goods
or services is cancelled. It is further argued that a trial for cancellation of a registeredtrademark should be demanded with respect to all the designated goods and services(Toyosaki, p. 431).
(4) Difference of the scope of illegitimate use
A trial for cancellation of trademark registration under Section 53 was formulated inorder to eliminate the evils arising from the establishment of the licensing system by
imposing an obligation to oversee the use of the trademark upon the owner of a
trademark right to avoid situations that may be misleading as to the quality of the goods
or services or that may cause confusion (Commentary on the Trademark Law, p. 1153;
Questions and Answers 3713, p. 2; Toyosaki, p. 432; Amino, p. 867;
Yoshihara/Takahashi, p. 213; Eguchi (1), p. 156)
Whether used by the owner of a trademark or the owner of a right of use, the use of a
trademark in the scope of the prohibitive right is not based on their rights, but simply on
the fact of the mark’s use. Consumers may sustain unexpected losses when misled bydesignated goods or services or due to confusion of the origin of such goods or services.
However, in cases of illegitimate use by the owner of a right of use, a penalty in theform of cancellation is imposed, affecting the use of a trademark within the scope of theright of use of that mark. Accordingly, cancellation due to the illegitimate use of a
trademark by the owner of the right of use is more consumer protection-oriented thancancellation due to illegitimate use by the owner of a trademark.
(5) Penalizing a trademark right24

The reasons why a trademark right and not a right of use has become the subject ofpenalty are considered to be as follows: (i) The legal grounds for cancellation of a
private right, such as a right of use, by an administrative action are ambiguous andprecedents for such legislation are very few; (ii) Should a license agreement becancelled after the filing of a demand for a trial, the demand would be dismissed due tothe loss of the subject matter of the trial and if this is the case, the significance of thistrademark registration cancellation system would be lost; (iii) The responsibility of theowner of a trademark right must be clarified (Commentary on the Trademark Law, p.
1154). There is an argument, from a legislative standpoint, however, that the licensing
system must be changed to an approval system so that approvals can be cancelled under
the cancellation system (Toyosaki, p. 432; Amino, p. 867; Eguchi (1), p. 156).
2. Trial for Cancellation of Trademark Registration due to Illegitimate Use by the
Owner of a Trademark Right(1) Gist
The owner of a trademark right has a right to use the registered trademark in respect ofthe designated goods or services (right of use). However, his use of the trademark in thescope of the prohibitive right is no more than a de facto use. Should the owner of a
trademark right intentionally use the registered trademark in a way which may be
misleading as to the quality or may cause confusion of origin, consumers would sustain
unexpected losses. This trial system is intended for the protection of consumers by
imposing restrictions on the owner of a trademark right through cancellation of theregistered trademark, should he use it illegitimately (Commentary on the Trademark
Law, p. 1148).
This cancellation system of a registered trademark is a penalty rule to protect
impairment of consumers' interests by the owner of a trademark right through his
illegitimate use of a trademark. (Commentary on the Trademark Law, p. 1148. In
opposition to this position, Suekawa argues that this cancellation system is a penalty
against the abuse of a trademark right. This opinion is, however, doubtful. Hiroshi
Suekawa, Vol. 19, No. 6, "So-called Intention in Section 15 (1) of the Trademark Law",
Minsho, p. 20. The author agrees with Dr. Ishii who opposes regarding an "intention" asa requirement. Teruhisa Ishii, No. 64, "Commentary on Cases", Hanmin, 1932.)
Section 51 (1) is a provision intended for consumer protection. Not only an interested
person, but any person may demand a cancellation trial if there exists a fact that meetsthe requirements (Section 51 (1)).
(2) Requirements
Any person may demand a trial for the cancellation of a trademark registration due toillegitimate use by the owner of a trademark right, if the following requirements are
met: (i) The owner of the trademark right (ii) intentionally (iii) uses a trademark similar
to the registered trademark in respect of the designated goods or designated services, orintentionally uses the registered trademark or similar trademark in respect of goods orservices similar to the designated goods or designated services (iv) in a way which may
be misleading as to the quality of the goods or services or which may cause confusion
with goods or services connected with any other person's business (Section 51 (1)).

25

(a) Illegitimate use of a trademark by the owner of a trademark right
Section 51 (1) provides that any person may demand a trial (public trial provision) but
the recipient of the demand is the owner of the trademark right. This subsection limits
an illegitimate user only to the owner of the trademark right; Section 53 separately
provides for illegitimate use by the owner of a right of exclusive use or non-exclusive
use. If a person who is to become the owner of a trademark right afterwards
intentionally used the trademark illegitimately prior to the filing of an application forregistration, a trial for cancellation of the trademark registration might be demanded
even after he becomes the owner of the trademark right (Vol. 22, Daishinin (former
Supreme Court), Minshu, p. 291, Apr. 20, 1943; Sho Takeda, "Application of Section 15(1) of the Trademark Law [Hanpi (Commentary on Precedents)", Vol. 18, No. 6, Minsho,
p. 94]).
The Supreme Court held: Section 51 provides that any person may demand a trial.
Although this provision appears to imply that any person without exception may
demand a trial, a demand for cancellation of a registered trademark against the principleof good faith and trust would not be acceptable, even if the demand were based on thisprovision formulated with the public interest in mind (No. 1207, Supreme Court, Hanji,
p. 114, Apr. 22, 1986).
(b) In cases where a trademark that has been used consists of its original element plus
any figure within the scope of the prohibitive right of a registered trademark owned byanother person, it may be inappropriate to narrowly interpret that such a use is regarded
to be use of the trademark, if the trademark is recognized as a composite trademark as awhole.
(c) Intention: Section 51 applies only in cases where a trademark is intentionally used,and not where it is used in negligence. However, if a trademark that was used by
negligence in the beginning continued to be so used knowingly, the use would finally
fall under the provision.
The opinions as to the definition of "intentional use" can be roughly divided into thefollowing two types: To be acknowledged as "intentional use", (i) the user must beaware of a trademark of another person (No. 3841, Daishinin (former Supreme Court),
Newspaper, p. 17, Apr. 16, 1935); (ii) the user must be aware not only of the trademarkof another person but also of the confusion that such use may cause to goods (Gaku,
Explanatory Comments, p. 810; Yoshitsugu Harima, "Requirements for Application ofSection 51 of the Trademark Law", Vol. 78, No. 1, Hatsumei (Invention) p. 108; No.
3062, Daishinin (former Supreme Court), Newspaper, p. 9, Jul. 10, 1929; Daishinin(former Supreme Court), Hanrei (Precedents), p. 920, Dec. 28, 1940; Vol. 22, Daishinin(former Supreme Court), Minshu, p. 761, Aug. 10, 1943; Vol. 12, No. 2, Tokyo High
Court, Mutaishu, p. 417, Jul. 28, 1980; Vol. 14, No. 3, Tokyo High Court, Mutaishu, p.
829, Dec. 23, 1982; No. 132, Supreme Court, Minshu, p. 175, Feb. 24, 1981). The
Third Petty Bench of the Supreme Court held as follows: To be acknowledged as"intentional use", the owner of the trademark right must use a trademark similar to theregistered trademark in respect of the designated goods or designated services, or use
the registered trademark or a similar trademark in respect of the designated services andthe owner must be aware that such use may cause confusion with goods or services

26connected with any other person's business.
position of (ii).

As stated above, the court takes the

However, it is another problem whether the intent of unfair competition or to infringe
profit is necessary in addition to these requirements (Morikatsu Aragaki, "Various Trials
under the Trademark Law", Vol. 10, Compendium of Industrial Property Rights
Practices, p. 218). It turns out these requirements are not necessary.
Many practical issues have been mostly disposed according to Opinion (i). (No. 406,
Kokoku Shinpan (Appeal Trials), 1938, Hanrei 2849, p. 2 and many other arguments
uphold the opinion (i). Questions and Answers, p. 3712.) Opinion (i) is regarded as an
accepted theory in a number of treatises (Toyosaki, p. 430; Amino, p. 856;
Kaneko/Someno, p. 835, Miyake (Hatsu) as to the former Law, p. 370). From theviewpoint of consumer protection, the author agrees with Opinion (i), by which theacknowledgement of use is easier than Opinion (ii), which has been upheld by a coupleof court decisions.
The acknowledgement of intentional use is not so difficult in the precedents, because
the intent of unfairly competing has been excluded from their requirements. The court
held as follows: For instance, "intentional use" should be interpreted as an awareness on
the part of a trademark owner when using a trademark similar to the registeredtrademark in respect of the designated goods, or using the registered trademark or asimilar trademark in respect of the designated goods and his awareness of the likelihoodof confusion with goods or services connected with any other person's business as aresult of such use. If the use of a trademark similar to the registered trademark in
respect of the designated goods is based on a judicious compromise made with theowner of the existing trademark right similar to said registered trademark, it cannot be
concluded that the owner of the trademark right who is using the similar trademark was
not aware of the use. Therefore, it cannot be said that the owner had no intent (Vol. 14,
No. 3, Tokyo High Court, Mutaishu, p. 829, Dec. 23, 1982). If the use of the trademark
were continued, neglecting a demand to modify the mode of indication or for the
discontinuance of the use of a trademark liable to cause confusion, such use would be atypical case of intentional use.
A quasi-intention is not required for the
acknowledgment of intentional use (Toyosaki, p. 430; Amino, p. 622; Eguchi (1), p.
151; Daishinin (former Supreme Court), Ibid., Jul. 10, 1929; Daishinin (former
Supreme Court), Ibid. Aug. 10, 1943; Supreme Court, Ibid., Feb. 24, 1981). If bothfacts, namely, that the trademark user is doing business in the same industry and thetrademark is well-known, are taken into consideration, the court can presume theperson's intentional use. (In many trials, the court reaches a decision of the user's
awareness of the likelihood of confusion or even his intentional use only on the basis of
the fact that the trademark is well known.) As an example of such a decision, in a casewhere the registered trademark "Trappistinus-no-Oka (in katakana) (The Trappistinus
Hills)" and a figure, etc. was used in respect of the designated goods, which included
candies and other confectioneries, with the knowledge that another confectioner was
manufacturing and selling their products under the trade name of "Trappistinus
Covenant" or "Trappistinus", the use was regarded as intentional use (No. 1580, Tokyo
High Court, Hanji, p. 131, Jul. 18, 1996).

27

(d) Misleading use as to quality and confusion of goods
Section 51 applies where (i) the owner of a trademark right uses the trademark in a way
which may be misleading as to the quality of the goods or services, or (ii) which may
cause confusion with goods or services connected with any other person's business.
"Misleading as to the quality of goods," mentioned in (i), means using a trademark in away such that it may mislead consumers to mistake a cold medicine for a digestive
medicine. In a commentary on the Trademark Law (Chikujo Kaisetsu) p. 1149, it isargued that cases where the owner of the trademark right has used the trademark in a
way misleading as to the quality by merely degrading the quality of the goods do not
fall under the provision of this section. "Confusion with goods or services" in (ii) falls
under Section 51 if there is a likelihood of causing confusion, although there exist no
goods or services connected with any other person's business to be confused. (Questions
and Answers 3713, p. 2; On the other hand, there is also another opinion that regards theuse of a trademark as a precondition (Yoshihara/Takahashi, p. 210). The author agrees
with the former opinion in view of consumer protection and the public interest.)
To acknowledge the awareness of confusion, it is not sufficient to acknowledge thesimilarity of the trademarks in question with cited trademarks. The likelihood ofconfusion should be judged with regard to both trademarks and the designated goods orservices. "Any other person's business" in such a case should include the business of theowners of the trademark rights of both trademarks, the owners of the right of use, andthe owners of the trademark rights not yet registered (Commentary on the Trademark
Law, p. 1149; Aragaki, Treatise op.cit., p. 218; Questions and Answers, p. 3713).
Confusion does not necessarily mean actual confusion. A likelihood of confusion would
be sufficient. The text of the provision does not state, "a trademark that has caused
confusion." "Misleading use as to quality and confusion of the origin" need not haveactually occurred as in the provisions of Section 4 (1) (xvi) and (xv) (Amino, p. 856;
Aragaki, Treatise op.cit., p. 218; Daishinin (former Supreme Court), Hanrei(Precedents), p. 928, Jul. 7, 1930). If the trademark is further modified so that it
becomes more similar in appearance to a trademark of any other person, suchmodification would be acknowledged likely to cause confusion (Vol. 11, Daishinin(former Supreme Court), Minshu, p. 801, May 2, 1932).
(3) Effects
Since Section 51 is a provision intended for the protection of the public, if such
illegitimate use is identified with respect to a part of the designated goods or services.
In such a case, a trial for cancellation of the registered trademark should be demandedwith respect to all the designated goods or services, and the registration of the trademark
would be cancelled with respect to all as well (Commentary on the Trademark Law, p.
1148; Nakayama, Fifty Lectures, p. 150).
(a) Time when cancellation takes effect: When a trial decision ordering cancellation ofa trademark registration has become final and conclusive, the trademark right shallbecome extinguished from that moment (Section 54). The effect is not retroactive.
(b) Unregistrable period: Where a trademark registration has been cancelled as apenalty, the former owner of the trademark right may not obtain a trademark registration28

of the same or similar trademark, for the designated goods or designated services
covered by the trademark registration or for goods or services similar thereto, until five
years have elapsed since the date when the trial decision ordering cancellation became
final and conclusive (Section 51 (2)). Any application in violation of this subsection
would be rejected and any registration in violation of this subsection would fall under
the reasons for non-registrability (Commentary on the Trademark Law, p. 1148).
(c) Exclusion Period: If a trademark was used illegitimately in the past, but it has since
been used legitimately afterwards, it would be too severe to leave such a trademark
unregistered permanently. Accordingly, a trial for the cancellation of the trademark
registration may not be demanded after the lapse of five years from the date on which
the owner of a trademark right ceased to use the trademark in an illegitimate manner(Section 52). The reason for this legislation is that during the five years of legitimate
use, a reputation would be built up and it would be inappropriate to injure such areputation.
Conversely, there are cases where a trial for the cancellation of trademark registration
may be demanded with respect to a trademark that was illegitimately used in the past,
despite purely legitimate uses during the five years from the date on which the owner ofa trademark right ceased to use the trademark in a legitimate manner. (Generally
accepted theory. A court held that a trial could be demanded after such a trademark
owner ceased the illegitimate use. See Vol. 15, Daishinin (former Supreme Court),
Minshu, p. 1159, Jun. 19, 1936.) In cases where a trademark is taken over by a general
successor, if the former owner of the trademark right illegitimately used the trademark,a trial for the cancellation of the trademark registration may be demanded, despite thefact that his successor is legitimately using the trademark and the illegitimate use hasceased to exist (Vol. 15, Daishinin (former Supreme Court), Minshu, p. 1159, Jun. 19,
1936; Hidefumi Egawa, Vol. 90, Hanmin, Commentary on Case, p. 384, 1929). The
same interpretation would apply also in cases of succession by a limited successor, sothat this provision remains effective (Egawa, Ibid.; Negative opinion under the previous
Law, Miyake (Hatsu), p. 370).
3. Trial for Cancellation of Trademark Registration due to a Party's Act Which May
Cause Confusion After Separate Transfer of the Trademark(1) Gist
After the revision of the Trademark Law (the 1996 Law, No. 68), a trademark right canbe divided and each one of the divided trademark rights may be separately transferred.
Upon this revision of the Law, the associated trademark system was abolished and theseparate transfer of each divided trademark right came to be approved. Since separatetransfer of a trademark came to be approved also for each item of similar goods andservices (Section 24-2), there was a possibility of confusion of such goods and services.
The trial system for cancellation of trademark registration has been established in orderto prevent such confusion.
Therefore, the following provision has been formulated: Where, as a result of thetransfer of a trademark right, a trademark right that is similar or identical to a registeredtrademark and is used for identical goods or services or similar goods or services comes29

to belong to a different owner, who has an intention of violating the rules of faircompetition and may cause confusion with the goods or services connected with thebusiness of the owner of the original registered trademark or the owner of the right of its
exclusive or non-exclusive use, and where the original registered trademark is in use by
its owner, any person may demand a trial for the cancellation of the trademark
registration (Section 52-2).
(2) Requirements(a) In cases where one of the trademark rights owned by a single owner has been
separately transferred or where there are two or more items of the designated goods ordesignated services, and the trademark right has been transferred separately for each ofsuch items (Section 24-2 (1)), a trademark similar to the registered trademark used for
identical goods or services, or the registered trademark or similar trademark used forsimilar goods or services belongs to a different owner of the trademark right.
(b) The owner of a trademark right has used the registered trademark with an intentionof violating the rules of fair competition for its designated goods or designated services
in a way which may cause confusion with goods or services connected with the businessof owners of other registered trademarks. In a situation where confusion is likely tooccur among consumers, it can be assumed that one of the owners of trademarks similar
to each other is trying to gain a profit by letting confusion reign and taking advantage ofthe other owner's reputation. Based on such an assumption, the intention of unfair
competition can be found; for this reason, the intention of unfair competition has been
included in the requirements for the cancellation of registration. Confusion is anobjective fact that goes to whether unfair competition actually exists or not. Therefore,
unless an intention of unfair competition is a requirement for cancellation, thetrademark owned by the party whose reputation has been taken advantage of and whose
interest has been impaired would also be cancelled, unreasonably. Legislators decide if
the intent to violate the rules of fair competition is present on a case-by-case basis,taking all factors, such as motive, purpose, the actual conditions of the use, how well thetrademark is known, and the level of confusion, into account.
There could be a case where both parties mutually demand a trial for cancellation after
an amicable transfer of the trademark. In such a case, the trademark owner with anintention of unfair competition is identified by examining which party will sustain the
impairment of reputation, taking into consideration how well known both trademarks
are. The trademark of the owner identified to have an intention of unfair competition inthis way will be cancelled.
(3) Persons vested with a right to demand a trial
Any person may demand a trial for the cancellation of a registered trademark that has
been used in a way which may cause confusion.
Since the use of a registered trademark with an intention of unfair competition in a waythat may cause confusion would impair the interest of consumers, the provision allows
any person to file a demand for a trial for the cancellation of the trademark registration.
Therefore, any person also includes a person other than the parties, such as a consumer
organization or a trade association.

30

A party, either assignor or assignee, may demand a trial. It does not matter which filed ademand earlier. If a trademark is divided into two or more items of the designatedgoods or services and each trademark is assigned separately, the dispute will take place
between the assignees.
If one of the parties who own trademarks similar to the other as a result of theassignment of trademarks mentioned above has caused confusion by using anothertrademark similar to his own registered trademark, the provision of Section 51 (1)would apply. Furthermore, if use by the owner of a right of use has caused confusion
with the owner etc. of any other registered trademark, a trial for the cancellation ofregistration may be demanded under Section 53 (1); Section 51-2 does not provide forthese circumstances.
(4) Effects
If the owner of a trademark has used a registered trademark (even if it is his own
trademark), with the intention of unfair competition in a way that may cause confusion
with goods or services connected with any other person's business, he may be granted a
trial decision whereby the trademark registration related to the registered trademark
used in that way would be entirely cancelled. He would not be permitted to demandindividual trials for cancellation for each item of the designated goods or services. If
the trademark registration covers more than one category of the designated goods orservices, the registration would be cancelled with respect to all such categories.
When a trial decision ordering cancellation of a trademark registration has become final
and conclusive, the trademark right shall be extinguished from that moment (Section
54). The owner of the trademark right may not obtain a trademark registration of thesame or similar trademark for the designated goods or designated services covered by
the trademark registration until five years have elapsed since the date when the trial
decision ordering cancellation became final and conclusive (Section 52-2 (2); Section
51 (2)), provided, however, that there is an exclusion period of five years with respect tothe demand for a trial for cancellation.
4. Trial for Cancellation Due to Illegitimate use by the Owner of a Right of Use(1) Gist
Where the owner of a right of exclusive or non-exclusive use uses the registeredtrademark or a similar trademark in respect of the designated goods or designatedservices or goods or services similar thereto in a way which may be misleading as to thequality of the goods or services or which may cause confusion with goods or services
connected with any other person's business, any person may demand a trial for thecancellation of the trademark registration. However, this provision shall not apply
where the owner of the trademark right was both unaware of the fact and taking
appropriate care (Section 53 (1)).
As a result of the establishment of a right of exclusive use and the licensing system of aright of non-exclusive use, the trial system for the cancellation of a trademark
registration under Section 53 was formulated in order to remove "evils arising from theestablishment of the licensing system" by imposing an obligation to oversee on theowner of a trademark right with regard to the use of a trademark that may be misleading31

as to the quality of goods or services or that may cause confusion (Commentary on theTrademark Law, p. 1153; Questions and Answers 3713, p. 2; Toyosaki, p. 432; Amino, p.
866; Yoshihara/Takahashi, p. 213; Eguchi (1), p. 156; Aragaki, Treatise op.cit., p. 220).
Section 53 provides for "evil prevention measures" that penalize illegitimate use so as toensure a fair right of use system. This provision is intended for preventing excessive
establishment and granting of rights of use and ultimately for the protection of
consumers (Amino, p. 867).
By the provisions of Section 53, consumers are more firmly protected in thatcancellation of a trademark registration may be demanded also with respect to the use ofa trademark in the scope of the right of use. Accordingly, this system of cancellation ofa trademark registration is intended as a more severe penalty aimed at stronger
consumer protection than the system of cancellation on the grounds of illegitimate useof a trademark by intention by the owner of the trademark right (Toyosaki, p. 432;
Amino, p. 867).
Under Section 53, not only interested persons, but any person may demand a trial as incases of an opposition to the granting of a trademark registration. This is known as apublic trial provision. Section 53 is a penalty provision. Therefore, if any of thedesignated goods or designated services is illegitimately used, the trademark registration
would be cancelled with respect to all the designated goods or designated services. It
also stands to reason that the scope of similarity of a trademark under Section 53 neednot be interpreted more narrowly, because Section 53 is a more severe provision than
Section 51 in terms of consumer protection.
(2) Requirements
The provision of Section 53 shall be applicable in cases where: (i) the owner of a rightof exclusive or non-exclusive use (ii) uses the registered trademark or a similar
trademark in respect of the designated goods or designated services or goods or services
similar thereto (iii) in a way that may be misleading as to the quality of the goods orservices or that may cause confusion with goods or services connected with any otherperson's business.
(a) Action of the owner of a right of use of a trademark Section 53 is regarded to be apenalty provision in cases of illegitimate use by the owner of a right of use. Its
purposes are to prevent the evils of the establishment of the right of use and the grantingof licenses, to prevent excessive establishment of rights of use and the excessive
granting of licenses, and ultimately to protect consumers, so that this section specifies
that the owner of a trademark right must oversee when the owner of a right of use uses
the trademark. In particular, Section 53 does not require an level of intent on the part ofthe owner of a right of use. It applies also in cases of negligence. Should one of theowners of a right of use illegitimately use a trademark, all the owners of rights of use
would be penalized. Because of this, a person who has granted a license to use a
trademark and other owners, if more than one owner of a right of use is involved, must
exercise care.
(b) Scope of illegitimate use: Section 53 applies to illegitimate use of a trademark ingeneral (or a similar trademark) in respect of the designated goods or the designated32

services, or goods or services similar to the registered trademark. This provision isapplicable typically in cases where a trademark is used in respect of goods or services
whose quality has been degraded, and as a result the trademark misleads consumers as
to the quality of the goods or services, or where the use of a trademark is likely to cause
trouble to consumers by causing confusion about the origin of the goods or services.
However, applicable cases are not limited to those mentioned. A trial for cancellation
under Section 51 of the Trademark Law, as stated in Subsection 2, "Trial for
Cancellation of Trademark Registration due to Illegitimate Use by the Owner of a
Trademark", is a provision to control illegitimate use of a trademark within theprohibitive scope, while Section 53 includes "use of a trademark in respect of thedesignated goods or designated services" in the requirements, which is not included in
Section 51. For this reason, the illegitimate use of a trademark is not required to bewithin the scope of the prohibitive right. The section also provides for "illegitimate use
within the scope of a right of use of a registered trademark", such as the owner of a
trademark right affixing the trademark to goods or services of inferior quality, contrary
to consumers' expectations (Commentary on the Trademark Law, p. 1153; Questions
and Answers 3713, p. 3; Toyosaki, p. 432; Amino, p. 868; Yoshihara/Takahashi, p. 213;
Eguchi (1), p. 156; Aragaki, Treatise, op.cit., p. 220).
If the requirements for cancellation provided for in Section 51 are compared with thosein Section 53, Section 53 is obviously stricter than Section 51 in that Section 51
includes the requirement of intent for a person who uses the trademark, and excludes
from the requirements the use of a trademark in respect of the designated goods ordesignated services.
Also, under Section 53, a trademark that appears to be similar, either as a whole or inpart, to any other trademark, and which is likely to cause confusion with such othertrademark should be regarded as a similar trademark from the view point of consumer
protection.
(c) Intention and negligence: Section 53 does not include "intention" in its requirements,
like Section 51 does. In other words, the section applies also in cases of illegitimate use
by negligence (Toyosaki, p. 432; Amino, p. 868; Yoshihara/Takahashi, p. 213; Eguchi(1), p. 156; Aragaki, Treatise op.cit.).
(d) Misleading use that affects the quality and confusion of goods or services: Theprovision of Section 53 shall be applicable in cases where the owner of a right of
exclusive or non-exclusive use uses the registered trademark or a similar trademark in
respect of the designated goods or designated services or goods or services similar
thereto (i) in a way which may be misleading as to the quality of the goods or servicesor (ii) which may cause confusion with goods or services connected with any otherperson's business.
c "Use of a trademark in a way that may be misleading as to the quality of the goods"
means, for example, cases where use of a trademark has misled consumers to mistake acold medicine for a digestive medicine, or has disappointed consumers by supplying
goods or services inferior to the goods or services of the owner of the trademark right(Commentary on Trademark Law, p. 1153).

33

d "Use of a trademark in a way which may cause confusion with goods or services
connected with any other person's business" means even cases where, if "goods orservices connected with any other person's business" do not actually exist, use of the
trademark is likely to cause confusion just as if the hypothetical goods or services wereactual goods or services connected with any other person's business. The likelihood ofconfusion under Section 53 should not be judged based on abstract arguments but on
specific arguments on such possibility. However, specific arguments in this case does
not necessarily mean the actual occurrence of confusion; the existence of an objective
risk of confusion would be sufficient. Section 53 does not state "which has caused
confusion", but states "which may cause confusion." "Use of a trademark in a way
which may cause confusion" does not mean a situation where consumers have been
actually misled as to quality nor where goods or services have actually been confused(Supreme Court, Hanrei (Precedents) 2881, p. 316, Feb. 15, 1985; Supreme Court,
Hanrei (Precedents) 2881, p. 310, Oct. 19, 1983).
The requirements as to the acknowledgment of misleading use and confusion should not
be interpreted too strictly in order to protect consumers. The decision of how wellknown the trademark is one of the elements for judging whether there is confusion. If
the owner of a trademark has modified his own trademark, and thereby it has become
similar to a trademark of another person, the trademark is likely to cause confusion withthe other trademark (Vol. 11, Daishinin (former Supreme Court), Minshu, p. 801, May 2,
1932; Tokyo High Court, Ibid., Oct. 19, 1983).
For example, a registered trademark, "Minefood (in katakana)", consists of only one
line taken from an original trademark that consisted of three lines, Minefood (inKatakana), Minefood (in hiragana) and MINEFOOD (in Latin alphabet). Anothertrademark, "Minefood (in katakana)", was used in respect of goods identical with thedesignated goods covered by the original trademark consisting of three lines. The court
held that the use of the trademark, "Minefood (in katakana)", had caused confusion
between the designated goods of the original trademark and the identical goods of thesecond mark and approved the cancellation of the registered trademark, "Minefood (inkatakana)" (No. 1825, Supreme Court, Hanrei (Precedents) p. 138, Jul. 11, 1989).
The “other person” includes the owner of a trademark right, the owner of a right of
exclusive use, and the owner of a right of non-exclusive use (Toyosaki, p. 432; Amino,
p. 868). It can be said that confusion of origin is expected when a license is granted.
However, the following two cases must be considered separately: (a) the use of the
trademark has misled consumers as to the quality of the goods or services; and (b) theuse of the trademark has caused confusion with goods or services connected with anyother person's business. Section 53 would apply in the case of (a), and also in the caseof (b) if, as a result of such use, consumers' expectations were not satisfied (the use has
misled consumers as to the quality-Amino, p. 869). Illegitimate use by the owner of aprior user's right should be regarded as a reason for cancellation of the prior user's right.
If such a use is not regarded as intentionally violating fair competition rules; this would
represent one of the inadequacies of the Law.
“Any other person” under Section 53 should include a person who owns a trademark

34not yet registered.
unregistered mark.

The trademark cited may be either a registered mark or an

There was a case where the court gave a decision as to misleading use and likelihood of
causing confusion of a trademark based on only one catalogue (Supreme Court, Ibid.
Feb. 15, 1985; Tokyo High Court, Ibid. Oct. 19, 1983).
There was also a case where the court attached greater importance to a judicial
compromise than acknowledgement of the misleading use or the likelihood of confusionof a trademark. The following is taken from the original court judgment (Vol. 14, No. 3,
Tokyo High Court, Mutaishu, p. 829, Dec. 23, 1982): The main purpose of Section 51(1) is to protect the interests of the public by allowing the cancellation of a registeredtrademark owned by a person who has illegitimately used the trademark, whereby theowner of a trademark right is prevented from using his trademark in a way which may
mislead as to quality or cause confusion with goods connected with any other person's
business. In light of the above stated purpose of the provision, even if the illegal use ofa registered trademark is based on a judicial compromise between A and B, theillegitimacy of the use of the trademark is not diminished. Therefore the trial decision
which held that the registered trademark should not be cancelled for the reason that theuse had been based on a judicial compromise and not due to intentional modification
was against the Law. However, the court of Jokoku-appeal adjudged that a demand fora trial for the cancellation of a trademark registration pursuant to the provision ofSection 51 (1) was not permissible because it violated the principle of faith and trust.
The court argued as follows: The provision of Section 51 (1), in view of the protectionof general consumers, aims to avoid the impairment of the public interest by theillegitimate use of a trademark by penalizing the owner of the trademark right who has
used the trademark illegitimately. On the other hand, the Trademark Law protects theinterests of the owner of a registered trademark right after the lapse of five years ormore from the registration of the trademark, even if the registered trademark is likely tocause confusion when it is illegitimately used, and pays less attention to the interests ofpersons in business or the public interest. For example, the owner of a trademark (A)has used a trademark similar to his own registered trademark in a way which may cause
confusion with goods connected with B's business. B, however, once he admitted A's
use of the registered mark in a judicial compromise between A and B, withdrew its
opposition to the granting of the registered trademark owned by A and received payment
as compensation. As a consequence, A continued to use the trademark. Taking the
purpose of the Trademark Law as well as the above-stated facts into consideration, thecourt held that a demand for the cancellation of the trademark registration that is against
the principle of fairness and trust is not permissible and reversed and remanded thedemand (No. 120, Supreme Court, Hanji, p. 114, Apr. 22, 1986; Despite this decision
rendered by the Supreme Court, the registered mark was extinguished due to nonpayment of the registration fee). The author disagrees, from the standpoint of consumer
protection, with this decision that attached more importance to the judicial compromisethan the misleading use and confusion.
(e) Exceptions
Section 53 has been formulated to penalize illegitimate use by the owner of a right touse a trademark, preventing evils as a result of the authorization of the licensing system

35

and reinforcing the obligation to oversee the use of trademarks. However, although an
obligation to take appropriate care has been imposed on the owner of a trademark rightby the provision, the illegitimate use provided for in this section means use by theowner of a right of use; therefore, it would be too severe to cancel the trademark
registration if the owner of the trademark right both takes due care and is unaware of theillegitimate use. Accordingly the provision of Section 53 would be inapplicable in sucha case.
Due care with respect to the use of a trademark means not only taking care oroverseeing but also more practical overseeing acts such as periodical supervision or
attention to reports. The responsibility of proof lies with the owner of a trademark right(Toyosaki, p. 433; Amino, p. 870).
(3) Effects(a) Time when cancellation takes effect: When a trial decision ordering cancellation ofa trademark registration has become final and conclusive, the trademark right shallbecome extinguished from that moment (Section 54).
(b) Non-registrable period: To penalize illegitimate use effectively, where a trademark
registration has been cancelled, the former owner of the trademark right and the former
owner of the right of exclusive or non-exclusive use may not obtain a trademark
registration of the registered trademark or a similar trademark for the designated goods
or designated services covered by the trademark registration or for goods or services
similar thereto until five years have elapsed since the date when the trial decisionordering cancellation became final and conclusive (Section 53 (2)). Any application
against this section would be rejected and any trademark registration against this section
would be regarded as falling under the grounds of non-registrability (Commentary on
the Trademark Law; p. 1148).
(c) Exclusion Period: A trial for the cancellation of a trademark registration may not be
demanded after the lapse of five years from the date on which the owner of a trademark
ceased to use the trademark illegitimately (Sections 52 & 53 (3)). It would be too
severe a penalty to cancel a trademark permanently on grounds of illegitimate use of the
trademark in the past, if the trademark is used legitimately afterwards (Commentary on
the Trademark Law, p. 1150). Section 52 provides that a cancellation trial may not be
demanded after five years from the date on which the fact of illegitimate use ceased toexist (Section 52). This provision has been made for the reason that it would beinappropriate to ruin the reputation of the trademark that might be built up during thefive-year period (Commentary on the Trademark Law). If the trademark was usedillegitimately in the past, a cancellation trial may be demanded within five years fromthe date on which the owner of a trademark right ceased to use the trademark in an
illegitimate manner. We must accept it in view of consumer protection, if the reputation
is impaired within that five year period.

36

Trademark Law, Ch. 13 (p. 451-466)
III. Trial for Cancellation of Illegitimate Trademark Registration by Agent of
Foreign Owner
1. Gist(1) Illegitimate Registration by an Agent
Trademark rights are established under the sovereignty of each nation and they are
registered in their respective home countries. However, goods and services are
distributed internationally today, and therefore, it would be impossible, by only strictlyinterpreting the territorial nature of each trademark right, to take appropriate protective
actions to cope with the current international state of affairs and to assure the fairinternational distribution of goods and services.
Import agents for foreign owners of trademark rights who sell goods under the
trademarks in the destination country (e.g., Japan) file applications for registration of
the trademarks without obtaining the approval of the foreign owners of the trademarks
from time to time so as to prevent the trademarks from being registered by other persons(or occasionally because the foreign trademark owners are indifferent to registration), toprevent illegal imports (or occasionally because the foreign trademark owners are
indifferent to illegal importation) or to defend their own interest in the distribution.
Such a trademark registration may result in the granting of an exclusive distributorshipto the agent in the destination country against the owner's will. This may beunreasonable anyway in view of fair competition and international good faith (because
the trademark has been registered without the owner's approval, even if the foreign
trademark owner was initially indifferent to the registration and trademark). Also,
consumers in the destination country tend to recognize the goods with the trademark
affixed as originating from the foreign trademark owner in many cases, whether the
trademark has been registered in the country or not. Thus, an application filed withoutauthorization impedes the smooth flow of trade, and goes against consumers' interestand international good faith commercial practices.
(2) Lisbon Amendment of the Paris Convention
The illegitimate registration by an agent as discussed above caused a controversy
among many nations, so that Article 6-7 of the Paris Convention was adopted at the
Lisbon Amendment Conference.
Japan ratified this Lisbon Amendment in 1965. Upon this ratification, the revised
provisions were included, such as: Section 53-2 (Demand for a trial for cancellation ofregistration) and Section 4 (4) (Application by the demandant after cancellation) of theTrademark Law, Section 1 (2) (Demand for injunction of use), Section 1-2 (3) (Demandfor compensation), and Section 6 (Exceptions to registration) of the Unfair Competition
Prevention Law. These provisions were not completely identical with the provisions of
the Convention, but the provisions as to the protection of a foreign trademark owners
were adopted in order to satisfy the obligations imposed by the Convention.
Furthermore, a provision has been incorporated to allow a person with a right to a37

trademark to demand a trial for the cancellation of its registration against illegitimate
registration of the trademark by his agent, etc. (Section 53-2).
2. Requirements
Where a registered trademark is a trademark of a person who has a right to thetrademark in a country party to the Paris Convention or a Member of the World Trade
Organization or a country party to the Trademark Law Treaty (but only where such rightis equivalent to the trademark right) or is similar to such a trademark, and the goods orservices relating to such right or similar goods or services have been made thedesignated goods or designated services, and moreover the trademark application
concerned was made, without a legitimate reason and without the authorization of theperson who has the right to the trademark, by his agent or representative or by a person
who was his agent or representative at any time during the year preceding the filing dateof the application, then the person who has the right to the trademark may demand atrial for the cancellation of its registration (Section 53-2).
“Legitimate reasons” include cases where a person who has a right to the trademark has
surrendered the trademark or such a person has convinced other persons that he is notinterested in obtaining the right in the country in question (Botenhausen, AnnotatedParis Convention, p. 121; Haruo Goto, Lectures on Paris Convention, p. 340).
The expression, "a right to the trademark" is used instead of "a trademark right",
because "a trademark right" would mean "a trademark right under the Trademark Law
of Japan." The topic addressed here is "a trademark right under the Trademark Law ofeach member country", so that the expression, "a right to the trademark" is used. Also,
since "a right to the trademark" would include a right such as "a pledge on the
trademark," etc., the phrase, "but only where such right is equivalent to the trademark
right" was added as a note in parenthesis.
Some uphold a broad interpretation that "agent or representative" means an agent, a soleagent, or a commission agent who imports and distributes the goods for the trademark
owner (Toyosaki, p. 391; Gaku, p. 854) and others uphold a narrow interpretation that a
representative means a representative authorized by the trademark owner who is a legal
entity and that an agent is a person, whether he is a natural person or a judicial person,
who is granted some type of authority by the trademark owner. Normally, "agent or
representative" would mean a person who is authorized to conduct transactions of goods
or services, but it does not necessarily mean only such a person. It also includes aperson authorized to conduct any acts other than such transactions (Commentary on theTrademark Law, p. 1156). However, Section 53-2 provides that a person who has aright to the trademark may demand a trial for cancellation of a registration in cases
where his agent or representative has filed a trademark identical or similar to such a
trademark without a legitimate reason and contrary to the trust relationship between theagent or representative and the person who has the right to the trademark. In the caseconcerning the trademark, "CASITE", the applicant of the trademark was a customer ofthe exclusive exporter of the goods to which the trademark registered in the UnitedStates was affixed and he was merely an importer/distributor. The applicant had nolegal status in Japan as sole agent or sole import agent, based on a special distributionagreement or commercial practices with respect to the goods, nor was any special trust38

relationship acknowledged to exist with the trademark owner mentioned above. For
these reasons, the court did not adjudge the person as an agent or representative
provided for in Section 53-2 (Vol. 15, No. 3, Tokyo High Court, Mutaishu, p. 832, Dec.
22, 1983).
3. Effects(1) Time when cancellation takes effect
When a trial decision ordering cancellation of a trademark registration has become final
and conclusive, the trademark right shall become extinguished from that moment(Section 54). The effect is not retroactive. Such a trial decision of cancellation isrendered on the grounds of the relationship between the principal and the agent, andsuch grounds do not fall under reasons for non-registrability in general which arise fromobjective defects of the registration itself.
(2) Exclusion Period
If a trademark was registered illegitimately in the past but it has been used for many
years, it would be too severe to leave such a trademark permanently cancellable in viewof the circumstances of both parties. If the principal is considered to be taking
appropriate care, a trial for the cancellation of the trademark registration may not be
demanded after the lapse of five years from the registration of the establishment of the
trademark right (Section 53-3). The reason for this legislation is that, during the lapseof five years, a reputation may be built up and if so, it would be inappropriate to ruinsuch a reputation provided that the trademark owner is taking appropriate care. Article
6-7 of the Paris Convention provides that domestic legislation may provide an equitable
time limit within which the proprietor of a mark must exercise the rights provided for inthis Article.
Section 5. Trial Procedure
I. Formal Requirements of Demands for Trial(1) A person demanding a trial shall submit a written demand to the Commissioner of
the Patent Office stating the following (Section 56 (1); Section 131 (1) of the Patent
Law):(1) Written demand(i) the name and the domicile or residence of the demandant and his representative;(ii) an identification of the trial case;(iii) the relief sought in the demand and the grounds therefor(2) Amendments to the written demand
An amendment to the written demand shall not change the gist thereof except withrespect to the grounds for the demand (Section 56 (1); Patent Law, Section 131 (2)).
II. Formality Examination(1) Formality examination
When a submitted written demand has been accepted, a formality examination is39

conducted in order to check the adequacy of the demand as to formality.
(2) Invitation to amend the demand
When a demand does not comply with the requirement to state the name and the
domicile or residence of the demandant and his representative, and the grounds for therelief sought in the demand, etc., or the demandant has not paid the prescribed fees, thetrial examiner-in-chief shall invite the demandant to amend the demand, designating anadequate time limit (Sections 56 (1) & 76; Patent Law, Sections 131 (1), (2) and 133(1)).
(3) Trial decision for dismissal on grounds of non-compliance with formal requirements
The trial examiner-in-chief may dismiss the procedure by a ruling where a person whom
he has invited to make an amendment to a procedure fails to make the amendment
within the designated time limit (Section 56 (1); Patent Law, Section 133 (3)).
A ruling for dismissal of the procedure shall be in writing and shall state the reasons
therefor (Section 56 (1); Patent Law, Section 133 (4)). The ruling in this case is a
decision for dismissal and the trial is only a formality and is thus simple, so that insteadof a collegial body, the trial examiner-in-chief may render the ruling at his sole
discretion.
III. Reply(1) Submission of a written reply
When a trial has been demanded, the trial examiner-in-chief shall transmit a copy of thewritten demand to the demandee after formality examination, and shall give him an
opportunity to submit a written reply, designating an adequate time limit (Section 56(1); Patent Law, Section 134 (1)).
(2) Transmittal of a written reply and a written refutation
Upon receipt of the written reply from the owner, the trial examiner-in-chief shalltransmit to the demanding party a copy of the written reply (Section 56 (1); Patent Law,
Section 134 (3)). Legally, the transmittal of a written refutation by the parties to eachother is left to the discretion of the trial examiner-in-chief. However, a trial is a semijudicial procedure and therefore, a transmittal of the written refutation would benecessary to satisfy both parties with respect to the trial and to assure fairness andcompleteness of the procedures; written refutations are so transmitted in practice.
(3) Examination of the parties
The trial examiner-in-chief may examine the parties and interveners with respect to thetrial in order to assure a proper examination (Section 56 (1); Patent Law, Section 134(4)). A trial examination may be given orally or by documents.
IV. Dismissal of Irregular Demand by Trial Decision(a) An irregular demand for a trial which cannot be amended may be dismissed by a trial
decision without giving the demanding party an opportunity to submit a written reply(Section 56 (1); Patent Law, Section 135).

40

(b) Where there is a specified period for filing a demand for a trial, and the demand isfiled after the expiration of that period or my a person who is not competent to make thedemand, the trial decision will be for dismissal. Grounds for such dismissal are notamendable, so that the decision of dismissal is rendered immediately. The trial
dismissal decision is made by a collegial body of examiners after trial examination.
V. Trial Examination
1. Various Principles as to the Formality of Trial Examination(1) Oral examination proceedings and documentary examination proceedings
Examination for a so-called inter-partes trial is conducted orally as a rule, while that foran ex-parte trial is conducted by documents. In oral proceedings, a party's statement
gives examiners a fresh and strong impression. Examiners can ask parties relevant
questions on the spot, avoiding unnecessary statements and expediting the examination
process. An oral proceeding tends to make the examination open to the public and more
direct, but at the same time, it may cause the possibility of omission due to difficulty inhearing, insufficient understanding of the particulars of technical issues, inconveniencein organizing the result and lack of reliability in consequence. On the other hand, in adocumentary examination, parties' statements are accurate, technical materials can beread repeatedly for understanding the particulars, and the result can be conveniently
organized in a reliable manner. However, documentary proceedings have weakness inthat a large volume of related materials requires hours to read, the real intention of theparty is hard to ascertain, and exchange of documents and organizing of points at issue
take a long time. The Trademark Law has adopted both oral examination and the
documentary examination as stated above, taking the strengths and weaknesses of bothtypes of examination into consideration. However, in practice, trial examinations aremostly conducted by documentary proceedings at present for various reasons.
(2) Inter-partes trial examination
The inter-partes trial examinations (trial for invalidation of trademark registration andtrial for cancellation of trademark registration) shall be conducted by oral trial
examination. However, the trial examiner-in-chief may decide to conduct the trial by
documentary examination on a motion by a party or an intervener or ex officio (Section
56 (1); Patent Law, Section 145 (1)).
(3) Ex-parte trial examination
The ex-parte trial examinations (trial against the examiner's decision of rejection, trial
against the examiner's decision to decline amendments, trial for exclusion of trial
examiner, and trial for challenge of trial examiner) shall be conducted by documentary
examination. However, the trial examiner-in-chief may decide to conduct the trials byoral examination on a motion by a party or ex officio (Section 56 (1); Patent Law,
Section 145 (2)).
(4) Notification of oral proceedings
Where a trial is conducted by oral examination, the trial examiner-in-chief shall fix thedate and place thereof and transmit a document stating such date and place to the parties

41

and the intervener (Section 56 (1); Patent Law, Section 145 (3)).
2. Public Examination Principle(1) Significance
Oral examinations shall be conducted in public in order to assure fairness. This is thebiggest reason why a trial examination is said to be a semi-judicial procedure. However,this provision shall not apply where public order or morality is likely to be injured
thereby (Section 56 (1); Patent Law, Section 145 (5)). The judgment of whether theexamination is liable to injure the public order or morality changes as the times change.
Decision by a collegial body of trial examiners is required when an examination ceases
to be conducted in public.
(2) Interpreter
If a party or intervener to an oral examination does not have command of Japanese, or isdeaf or dumb, an interpreter shall attend the examination. A deaf or dumb person may
give statements in writing and may be questioned in writing. This serves to assure
openness to the public as well as the accurateness of the examination (Section 56 (1);Patent Law, Section 146; Civil Code Procedure, Section 154).
(3) Preparation of oral argument record and public examination principle(i) With respect to a trial by oral examination, the trial clerk designated by theCommissioner of the Patent Office shall prepare the record setting forth the gist of thetrial examination and other necessary matters whenever a trial takes place (Section 56(1); Patent Law, Sections 144-2, 147 and 150 (4)).
(ii) The provisions concerning the record of oral argument (Section 160 (2) and (3)) of
the Code of Civil Procedure shall apply mutatis mutandis to the record. (Section 56 (1);Patent Law, Section 147 (2)) Anyone may be allowed to inspect or copy the record oforal argument (Section 56 (1); Patent Law, Section 186). The preparation of the recordof the oral argument is meant to assure the accurateness of the examination, and the
publication of such a record is a manifestation of one of the public examination
principles.
3. Trial Ex Officio(a) Since any case concerning trademarks is effective against the public and affects not
only the propriety interest of a party but also the interest of the public, the trial
examiner-in-chief may decide to conduct the trial on a motion ex officio, regardless of
the intent of a party or an intervener. Even where a party or an intervener fails to
initiate a procedure within the time limit prescribed by law or designated in accordancewith the law or fails to appear on the date designated for oral examination, the trial
examiner-in-chief may proceed with the trial proceedings (Section 56 (1); Patent Law,
Section 145 (3) & Section 152).
(b) Any trial case is effective against the public, so that even grounds that have not been
pleaded by a party or an intervener should be examined in a trial. In such a case, thetrial examiner-in-chief shall notify the parties and the interveners of the result of the42trial examination and give them an opportunity to state their opinion thereon,
designating an adequate time limit. Since a trial examination is a semi-judicial
procedure, it should not be conducted on grounds unknown to a party or an intervener(Section 56 (1); Patent Law, Section 153 (1) & (2)).
(c) Nevertheless, because of the semi-judicial nature of a trial, to examine grounds thathave not been pleaded in a trial would be going too far and is unnecessary. Only therelief sought by the demandant may be considered in the trial examination (Section 56(1); Patent Law, Section 153 (3)). However, even grounds that have not been pleaded
by a party or an intervener may be examined (Section 56 (1); Patent Law, Section 153(1) & (2)).
VI. Proceedings
1. Joint Trial(1) Significance and types
A joint trial means a trial demanded jointly by more than one person, or in which morethan one demanding party exists. Joint trials are divided into: (i) "voluntary joint trials"
which may be demanded by two or more demanding parties, who are not required tomake a joint demand; and (ii) "required joint trials" which are demanded jointly bymore than one demanding party or where all the joint owners must be made“demandants.” In a joint trial, a demand is made jointly. In other words, a trial isdemanded with respect to the same trademark right on the same grounds. This isbecause a trial decision should become final and conclusive with respect to all thedemandants.
(2) Voluntary joint trial
Where two or more persons demand a trial concerning the same patent right, thedemand may be made jointly (Section 56 (1); Patent Law, Section 132 (1)). Such a trial
is a voluntary joint trial.
(3) Required joint trial(i) Where a trial is demanded against any of the joint owners of a trademark right, all the
joint owners shall be made a party (Section 56 (1); Section 132 (2)). Such a trial is anecessary joint trial.
(ii) Where the joint owners of a trademark right or a right to obtain a trademark demanda trial concerning the right under joint ownership, the demand shall be made jointly by
all the joint owners (Section 56 (1); Patent Law, Section 132 (2)). The joint owners of aright arising from a trademark application demand a trial concerning the right underjoint ownership when they demand a trial against an examiner's decision of rejection ora trial against an examiner's decision to decline amendment. Such a trial is also anecessary joint trial.
(4) Final and conclusive decisions effective on all parties
Where there are grounds for interruption or suspension of the trial proceedings on thepart of one of the demanding parties or owners in a joint trial, the interruption or43

suspension shall have effect on all of them (Section 56 (1); Patent Law, Section 132 (4)).
This is natural in cases of a joint trial, which requires that the trial decision becomes
final and conclusive with respect to all the parties.
2. Intervention(1) Significance“Intervention” refers to the system wherein a third party joins one of the parties to thetrial, while an inter-partes trial is pending, in order to continue the trial proceedings.
Interventions under the Trademark Law consist of two types: intervention in the joint
trial as a party and intervention in order to assist one of the parties. "While the trial ispending", namely, "until the conclusion of the trial" means until the conclusion of thetrial is notified.

(2) Intervention(a) Intervention in the joint trial as a party
Any person who may demand a joint trial, that is, who is qualified to demand a joint
trial, may intervene in the trial as a demandant until the conclusion of the trial(intervention in the joint trial as a party) (Section 56 (1); Patent Law, Section 148 (1)).
Such an intervener may continue the trial proceedings even after the demand for the trial
has been withdrawn by the original party (Section 56 (1); Patent Law, Section 148 (2)).
This is analogous with the case where, after the demand for the trial has been withdrawn
by one of the demandants in a joint trial, the remaining demandants may continue thetrial proceedings.
(b) Intervention in order to assist one of the parties
Any person who has an interest in the result of the trial may intervene in the trial, inorder to assist one of the parties, until the conclusion of the trial (Intervention in order toassist one of the parties; Section 56 (1); Patent Law, Section 148 (3)). "Any person who
has an interest in the result of the trial" means any person whose legal interest isaffected by whether or not a trademark right exits, such as a person who has a right toexclusive use or non-exclusive use or a pledgor in a trial for invalidating a trademark
registration.
Such an intervener may initiate and take part in any procedure relating to a trial, since a
trial decision has effect on the intervener and the intervener has a material interest in the
result of the trial (Section 56 (1); Patent Law, Section 148 (4)).
(3) Interruption and suspension of the trial proceedings
Parties and interveners are closely connected in their interest. Therefore, where there
are grounds for interruption or suspension of the trial proceedings on behalf of anintervener, the interruption or suspension shall also be effective against a party otherthan the intervener (Section 56 (1); Patent Law, Section 148 (5)).
(4) Intervention procedure(a) Formal requirements of a demand for intervention
A person desiring to intervene shall submit to the trial examiner-in-chief a written

44demand (for the details of its form, see Trademark Enforcement Regulations, Section 22
and Patent Law Enforcement Regulations, Section 49, Form 65) to intervene. The trial
examiner-in-chief shall transmit a copy of the demand to intervene to the parties and theinterveners and give them an opportunity to express their opinions, designating anadequate time limit (Section 56 (1); Patent Law, Section 149 (1) & (2)).
(b) Ruling to approve intervention
Where a demand to intervene is made, the trial examiner in the trial concerned shallrender a ruling thereon through a trial. Such a ruling shall be in writing and state thereasons therefor. No appeal shall be filed against the ruling (Section 56 (1); Patent Law,
Section 149 (2), (3) and (4)).
3. Combination and Separation of Trials
When one or both of the parties to two or more trials are the same, the trial
examinations may be combined. Trial examinations that have been combined may laterbe conducted separately (Section 56 (1); Patent Law, Section 154 (1) & (2)). Section
154 (1) of the Patent Law applied mutatis mutandis to Section 56 (1) of the Trademark
Law provides for the combination of trials. However, the Law does not approvecombining trial decisions. (The former Trademark Law approved the combination ofboth trials and trial decisions.)
4. Taking of Evidence (and Evidence Preservation Procedure)(1) Taking of evidenceWith respect to a trial, evidence may be taken on a motion by a party or an intervener, or
ex officio (Section 56 (1); Patent Law, Section 150 (1)). Taking of evidence means to
examine personal means of proof such as witnesses, experts, or the parties concerned, as
well as material means of proof such as documents and inspection results. Taking ofevidence is a means to obtain basic materials for a trial.
(2) Preservation of evidence(a) Gist
With respect to a trial, evidence may be preserved on a motion by an interested person,
before the demand for the trial is made, and on a motion by any party or intervener, or
ex officio, during the pendency of the trial (Section 56 (1); Patent Law, Section 150 (2)).
Preservation of evidence means an act of examining and securing evidence, when there
are some circumstances which would make it impossible or difficult to examine theevidence unless it is taken in advance. Urgent preservation of evidence would be
required in cases where a witness is likely to die from illness or has a plan to go abroad
on a long business trip. Therefore, preservation of evidence not only available during
the pendency of the trial but also before the filing of a demand for a trial.
(b) The motion before the demand for a trial should be presented to the Commissionerof the Patent Office (Section 56 (1); Patent Law, Section 150 (3)), because a trial
examiner has not been designated yet. Where a motion has been presented before thedemand for a trial, the Commissioner of the Patent Office shall designate the trial

45

examiner and the trial clerk in charge of preserving the evidence (Section 56 (1); Patent
Law, Section 150 (4)). The designated trial examiner preserves evidence.
(c) Any evidence that is unknown to the parties or interveners should not be examinedin a trial. The trial examiner-in-chief should notify the parties and the interveners of theresult thereof and shall give them an opportunity to state their opinion, designating anadequate time limit (Section 56 (1); Patent Law, Section 150 (5)).
(d) Entrusting to take or preserve evidence
Taking or preservation of evidence may be entrusted to a local court or a court withsummary jurisdiction in the place where the case is to be handled (Section 56 (1); Patent
Law, Section 150 (6)) for the convenience of case processing.
(e) Application mutatis mutandis of the Code of Civil Procedure
The provisions of the Code of Civil Procedure shall be applied mutatis mutandis to thetaking or preservation of evidence (Section 56 (1); Patent Law, Section 151).
The provisions of the Code of Civil Procedure such as "Designation of date"(Patent Law,
Section 151; Code of Civil Procedure, Section 93 (1)), and "Summon on a fixed date"(Patent Law, Section 151; Code of Civil Procedure, Section 94) are applied mutatis
mutandis to the taking or preservation of evidence through the application of the Patent
Law (Section 56 (1); Patent Law, Section 151). In these applications, however, the"facts that the party admitted in court and the obvious facts therein" shall read "obvious
facts." Since a trial decision adopts ex officio principles, the phrase of the Code of Civil
Procedure, "facts that the party admitted in court", in compliance with the adversary
system has been deleted (Section 56 (1); Patent Law, Section 151).
5. Withdrawal of Demand for Trial(a) A demand for a trial may not be withdrawn after the conclusion of the trial
examination has been notified (Section 56 (1); Patent Law, Sections 155 (1) & 156 (1)).
A trial decision concerning a trademark is effective against the public and therefore trial
proceedings are conducted ex officio. Because of this, a demand for a trial may not be
withdrawn after a trial examiner has been professionally convinced and is ready to makea judgment.
(b) A demand for a trial may not be withdrawn, without the consent of the adverse party,
after the written reply has been submitted by the demandee, because such withdrawal
would waste the efforts of the adverse party (Section 56 (1); Patent Law, Sections 134(1) & 155 (2)).
(c) When a demand for a trial for invalidation of trademark registration has been madewith respect to two or more items of the designated goods or services covered by thetrademark, the demand may be withdrawn for any of the designated goods or services(Section 56 (2); Patent Law, Section 155 (3)) in the same way as such a demand may bemade for any of the designated goods or services.
6. Conclusion of Trial46

(1) Notification of conclusion of a trial
Since trial proceedings are handled ex officio, the time for rendering a trial decision
should be notified in advance to the parties and the interveners. When a case is readyfor the rendering of a trial decision, the trial examiner-in-chief shall notify the parties
and the interveners of the conclusion of the trial examination (Section 56 (1); Patent
Law, Section 156 (1)). "When a case is ready for the rendering of a trial decision"means "when all the evidences and reasons are considered to have been sufficiently
examined."(2) Reopening of trial examination
In cases where any evidence that has an effect on the trial proceedings needs to bereexamined because the trial examiner has failed to examine such evidence, the trial
examiner-in-chief may, if necessary, reopen a trial examination, upon a motion by aparty or an intervener, or ex officio, in order to assure the completeness of the trial
examination (Section 56 (1); Patent Law, Section 156 (2)).
(3) Time for trial examination
The trial decision shall be rendered within 20 days from the notification of theconclusion of the trial examination. However, the decision may be rendered after thelapse of 20 days if the case is complicated or if there are unavoidable circumstances(Section 56 (1); Patent Law, Section 156 (3)). The provision of the Patent Law that has
been applied mutatis mutandis to Section 56 (1) of the Trademark Law is an instructive
provision. Any breach of this provision would not constitute a violation of Law.
7. Trial Decision(1) Conclusion of a trial decision
When a trial decision has been rendered, the trial shall be closed (Section 56 (1); Patent
Law, Section 157 (1)). A trial examination is closed upon the rendering of a trial
decision, except for trial examination cases which are closed upon a ruling, such as aruling for exclusion of a trial examiner, a ruling for challenge, or a ruling forintervention. A trial examination is closed also upon the withdrawal of the demand forthe trial.
(2) Written trial decision
The trial decision shall be in writing and state the particulars mentioned below (Section
56 (1); Patent Law, Section 157 (2)):(i) the number of the trial;(ii) the name and the domicile or residence of the parties and the interveners as well asof their representatives;(iii) an indication of the trial case;(iv) the conclusions of the trial decision and the reasons therefor;(v) the date of the trial decision.
(3) Transmittal of trial decision
Once a trial decision is rendered, the Commissioner of the Patent Office shall transmit

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the trial decision to the parties, the interveners, and persons whose demand to intervene
has been refused (Section 56 (1); Patent Law, Section 157 (3)).
(4) Effects of trial decision (Double jeopardy prohibition)
When a final and conclusive trial decision in a trial for invalidation of a trademark
registration or a trial for the cancellation of a trademark registration has been registered,
no one may demand a trial on the basis of the same facts and the same evidence(Section 56 (1); Patent Law, Section 167). Section 167 of the Patent Law appliedmutatis mutandis to Section 56 (1) of the Trademark Law provides the principle
prohibiting double jeopardy in order to give authority to the final and conclusive powerof a trial decision and to avoid unnecessary procedures. Because a trademark right iseffective against the public, it would be reasonable to consider that the prohibition
against double jeopardy is binding not only on the parties but also on third parties. The
Law provides that such a principle takes effect when a final and conclusive trial
decision has been registered, because third parties never know of such a final andconclusive decision unless registered.
"The same facts" mean basic facts other than new facts which are sufficient to overrulea final and conclusive decision previously rendered, while "the same evidence" meansno powerful new evidence that would be sufficient to overrule a final and conclusive
decision. "The trial" means the same type of trial. In fact, if one of the piece ofevidence is different, the principle of double jeopardy prohibition may not be applied.
8. Relationship between Trademark Trials and Other Trials or Litigations(1) Suspension of trial proceedings
Trial proceedings are related to other trials or litigations and effect those proceedings.
The trial proceedings may, if it is deemed necessary in the trial, be suspended until aruling on an opposition to the trademark or a trial decision in another trial has become
final and conclusive or litigation proceedings have been concluded (Section 56 (1);Patent Law, Section 168 (1)).
For instance, if a trial for invalidation of trademark registration is demanded while atrial for cancellation of the trademark registration is pending, it would be reasonable tosuspend the procedure for the cancellation trial until the trial decision in the invalidation
trial becomes final and conclusive. Should a witness in the trial be charged with perjury
while a trial for invalidation of a trademark registration is pending, it would also be
reasonable to suspend the procedure for the invalidation trial until the litigation withregard to the perjury has been concluded.
(2) Suspension of Litigation
Where a suit has been filed, the court may suspend the proceedings until a trial decision
has become final and conclusive (Section 56 (1); Patent Law, Section 168 (2)).
For instance, if a trial for invalidation for a trademark registration is demanded while acivil or criminal action with respect to infringement of a trademark right is pending, it
would be reasonable to suspend such proceedings until the trial decision in the trial has
become final and conclusive.

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9. Bearing of Trial Costs(1) Costs(i) Who shall bear the costs in connection with a trial for the invalidation of a trademark
registration or a trial for the cancellation of a trademark registration shall be decided exofficio by way of the trial decision where the trial is terminated by a trial decision or bya ruling in the trial where the trial is terminated other than by a trial decision (Section 56(1); Patent Law, Section 169 (1)).
Sections 61 to 66, 69 (1) and (2), 70 and 71 (2) (Bearing of litigation costs) of the Codeof Civil Procedure shall apply mutatis mutandis to the costs in connection with the trial
under the preceding subsection (Section 56 (1); Patent Law, Section 169 (2)).
(ii) The costs in connection with a trial against an examiner's decision of refusal or aruling to decline amendment shall be borne by the demandant or the opponent (Section
56 (1); Patent Law, Section 169 (3)).
Section 65 (Costs of joint litigation) of the Code of Civil Procedure shall apply mutatis
mutandis to the costs borne by the demandant or the opponent under the preceding
subsection (Section 56 (1); Patent Law, Section 169 (4)).
(iii) The amount of costs in connection with a trial shall be decided by theCommissioner of the Patent Office, upon request, after the trial decision or the rulinghas become final and conclusive (Section 56 (1); Patent Law, Section 169 (5)).
The extent, amount and payment of the costs of a trial, as well as the payment necessary
for procedural acts for the trial to be effected, shall be governed by the provisions in the
Law on Civil Procedure Costs, etc. (Law No. 40 of 1971) which relate to these matters,
unless they are incompatible (Section 56 (1); Patent Law, Section 169 (6)).
(2) Enforceable ruling on amount of costs
A final and conclusive ruling on the costs in connection with a trial shall have the same
effect as an enforceable title of liability (Section 56 (1); Patent Law, Section 170).
Section 6. Retrial
1. GistThe final and conclusive effect of a trial decision must not be unreasonably revoked.
However, should there be a material defect in the procedure leading to the trial decision
or in the facts on which the trial decision was based, it would be appropriate to revoke
the final and conclusive effect of the trial decision in order to ensure fairness. Retrial isa method of objection against the final and conclusive trial decision and a procedure to
revoke the final and conclusive effect of the trial decision, reopen the examination, andrender a decision again.
2. Retrial Cases(a) Against a final and conclusive ruling to revoke a registered trademark or a final andconclusive trial decision, the party concerned or an intervener may demand a trial. The

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provisions of the Code of Civil Procedure shall apply mutatis mutandis to grounds for ademand for a retrial (Section 57; Code of Civil Procedure, Sections 383 (1)&(2) and339).
Retrial is a method of objection available in exceptional circumstances. Disputing a
final and conclusive decision impairs legal stability, so that a demand for a retrial is not
admitted without some compelling reason. Since the Trademark Law allows a demand
for a trial against any final and conclusive trial decision, such a demand should be
admitted in practical situations for a trial against a trial examiner's decision of rejection
or a trial against examiner's decision to decline amendment.
(b) Where the demandant and the demandee in a trial have in collusion caused a trial
decision to be rendered with the purpose of injuring the rights or interest of a third
person, such person may demand a retrial against the final and conclusive trial decision.
In such a trial, the demandant and the demandee shall be made joint demandees (Section
58). This provision addresses a demand for retrial against the decision caused to berendered by the demandant and demandee in collusion for fraudulent purposes.
3. Time Limit for Demand for Retrial(a) A retrial must be demanded after the ruling to cancel a trademark or the trial decisionbecame final and conclusive and within 30 days from the date on which the demandant
became aware of the grounds for the retrial (Section 61; Patent Law, Section 173 (1)).
(b) Where, due to reasons outside his control, a person is unable to demand a retrial
within the time limit prescribed in paragraph (a) above, he may, notwithstanding theprovision of paragraph (a), make the demand within 14 days (where he is a resident
abroad, within two months) from the date when the reasons ceased to be applicable, but
not later than six months following the expiration of said time limit. Where a retrial isdemanded on the grounds that the demandant was not represented in accordance withthe applicable provisions of law, the time limit provided for in paragraph (a) shall becounted from the day following the date on which the demandant or his legal
representative became aware that the ruling to revoke a trademark or the trial decision
had been rendered, due to the transmittal of a copy thereof (Section 61; Patent Law,
Section 173 (2) & (3)).
(c) No demand for a retrial may be made after the expiration of three years from thedate on which the ruling to revoke a trademark or the trial decision became final andconclusive (Section 61; Patent Law, Section 173 (4)).
(d) Where grounds for a retrial have arisen after the ruling to revoke a trademark or thetrial decision became final and conclusive, the time limit prescribed in the preceding
paragraph (a) shall be counted from the day following the date on which the grounds
first arose (Section 61; Patent Law, Section 173 (5)).
(e) Section 173 (1) and (4) shall not apply to a demand for a retrial made on the grounds
that the trial decision conflicts with a final and conclusive trial decision previously
rendered (Section 61; Patent Law, Section 173 (6)).

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4. Restriction on Effects of Trademark Right Restored by Retrial(a) Where a trademark right relating to a revoked or invalidated or cancelled trademark
registration has been restored through a retrial, the effects of the trademark right shallnot extend to the following acts:(i) the use in good faith of the registered trademark in respect of the designated goods ordesignated services after the ruling to revoke or the trial or retrial decision became final
and conclusive but before the registration of the demand for a retrial;(ii) the acts mentioned in each paragraph of Section 37 performed in good faith after theruling to revoke or the trial or retrial decision became final and conclusive but before
the registration of the demand for a retrial.
(b) Where a trademark right relating to a revoked or invalidated trademark registration
has been restored through a retrial, or where the establishment of a trademark rightunder a trademark application which was refused by a trial or retrial decision has beenregistered through a retrial, and where a person has, in good faith, been using theregistered trademark in Japan or a trademark similar thereto on the designated goods ordesignated services or goods or services similar thereto after the ruling to revoke or thetrial or retrial decision became final and conclusive but before the registration of thedemand for a retrial and, as a result, the trademark has become well-known among
consumers as indicating the goods or services as being connected with his business at
the time of registration of the demand for a retrial, such person shall have a right to use
the trademark on the goods or services, provided that he does so continuously. The
same shall apply in the case of a person who has succeeded to the business concerned.
Section 32 (2) (Request to mark person's goods or services with a suitable indication soas to prevent any confusion) shall apply mutatis mutandis to such a case as describedabove (Section 60).
5. Application Mutatis Mutandis of Trial Proceedings
The provisions concerning trial proceedings such as Section 131 of the Patent Law
apply mutatis mutandis to retrials against trial decisions in many trademark trial cases.

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