CHAPTER 9. TERM AND EXTINGUISHMENT OF TRADEMARK RIGHTS
Section 1. Term of Trademark Rights
I. Term
The term of a trademark right shall be ten years from the date its establishment was
registered (Section 19 (1)).
The main reason for fixing the term for trademarks is different from that for patentrights. Creative rights such as patent rights are greatly indebted to the products of alarge number of predecessors, even though intellectual products belong to the respective
inventors. An exclusive right is provided as compensation for the publication of an
invention for a fixed term for balancing the interests of inventors and society. Therefore,
any created products should enter the public domain after a certain period. If patent
protection continued permanently, the development of the activities of the generalpublic would be limited, and the development of industry, the express purpose of the
Patent Law, would never be attained.
However, the term of trademark rights has been fixed for completely different reasons
from that of patent rights. Since the trademark registration system has been establishedin order to prevent unfair competition and to protect business reputation, trademarks
may be protected permanently. However, after a certain period, the owner of a
trademark right might discontinue his business, or he himself may want to discontinue
the use of it because and exchange his trademark for a new one. If there are a numberof registered trademarks that have remained unused for a long period, they wouldinterfere with a third party attempting to select a trademark for registration, or theywould make the examination process time-consuming. Unused trademarks therefore
need to be disposed of. As social conditions may change, the assessment of public
interests related to trademarks may also change, and re-examination of trademarks
might become necessary. For all of these reasons, the term of trademark rights has been
fixed.
The term of a trademark right can be renewed upon filing a request. Without such arequest, a trademark right will be terminated. Therefore, trademark rights are regarded
as continuing semi-permanently. The term of trademark rights has been reduced from
20 years under the former Law to 10 years in an attempt to dispose of trademarks
without any practical meaning ("Chikujo Kaisetsu (Commentaries on the TrademarkLaw)" p. 1053).
II. Renewal of Term
1. Renewal of Term of Trademarks(1) Nature of Renewal
The same trademark must always indicate the same origin in order to prevent unfair
competition and protect business reputations. Accordingly, the term of trademarks may

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be renewed by filing an application. An application for renewal is made not for creatinga new trademark right, but for extending the term of the original right (Vol. 9, Daishinin(former Supreme Court), Minshu, p. 744, Jul. 30, 1930; Daishinin, Hanrei (Precedents),
p. 876, May 1, 1947). The date of expiration of the renewal term is fixed based on thedate of registration of the original trademark without regard to the date of registration of
the renewal. The expiration date of the first renewal term is, therefore, the twentiethanniversary of the original registration date.
If the renewal of the mark for only a portion of the original designated goods ordesignated services were approved, the procedure would become more complicated.
Similarly, if a portion of the trademark right were disposed of, the disposal would havethe same effect. For this reason, partial renewal of the designated goods or services is
not allowed ("Chikujo Kaisetsu (Commentaries on the Trademark Law)" p. 1053).
(2) 1996 Amendment
The Law as amended in 1996 discontinued substantive examination at the time ofrenewal and the check on uses of the registered trademark in relation to the provisionsof the Trademark Law Treaty. Under the pre-amendment Trademark Law, examination
was conducted for ascertaining whether the trademark relevant to the renewal
application fell under the grounds for non-registrablity in relation to public interest(Section 4 (1) (i) to (iii), (v), (vii) and (xvi)). A check on the uses of the registeredtrademark was conducted together with this examination (former Trademark Law,
Section 19 (2)). However, since the Trademark Law Treaty prohibits "the furnishing ofa pledge and/or evidence concerning the use of the mark" and "substantive examination
at the time of renewal" (Treaty, Article 13 (4) (iii), the substantive examination for nonregistrability and the use of registered trademarks at the time of renewal werediscontinued.
In conjunction with the discontinued procedures, the trial system for invalidation ofrenewal of trademark rights was abolished (Section 48). As an alternative system, atrial for the invalidation of a trademark registration may be demanded on the grounds
that the trademark falls under the grounds for non-registrability in relation to public
interest that arises after registration. (However, the substantive examination is still
conducted for the renewal of registration of defensive marks, and such renewal issubject to the rules for filing of an application. Regarding the renewal of overlapping
registration of a trademark in respect of services, only the first renewal is made subject
to the rules for filing of an application.)
2. Renewal of Duration of Trademarks(1) Time Limit for Filing a Request
A request to renew a trademark registration shall be made within six months prior to thedate of expiration of the term (Section 20 (2)). Where the owner of a trademark right isunable to make a request for registration of renewal within the prescribed time limit, hemay make such a request belatedly within six months from the expiration of that time
limit (Section 20 (3)).

2Internationally, problems often occur due to foreigners' misunderstanding that
registration of renewal need not be made until the time of expiration. There is also a
criticism the protection for the owners of trademark rights in Japan is inadequate
compared with legislation in other countries (No. 160, Tokyo High Court, Hanyu, p.
127, Feb. 27, 1964). In addition, since there is an assumption that trademarks in respectof services are more related to medium and small-sized enterprises than trademarks inrespect of goods, the time limit for filing a renewal was extended on the occasion of
introduction of the system. This requirement as to the time limit was further relaxed by
the 1996 amendment of the Law.
Where a request for renewal of registration is not made within the time limit allowed forthe owner to make such a request, the trademark right shall be deemed to have been
extinguished retroactively from the time of the expiration of the term (Section 20 (4)).
(2) Restoration of Trademark Rights
As discussed above, if a request for renewal of registration is not made within the time
limit, the trademark right is deemed to have been extinguished (Section 20 (4)).
However, where the owner of the extinguished trademark right is unable to make arequest for registration of the renewal within the time limit "due to reasons outside his
control," he may make such a request within 14 days (or, if he resides abroad, within
two months) from the date on which the reasons ceased to be applicable but not later
than six months following the expiration of said time limit (Section 21 (1)). When arequest for registration of renewal is made, the term shall be deemed to have beenrenewed retroactively from the time of the expiration of the term; namely, the trademark
right is restored (Section 21 (2)).
However, the effects of the restored trademark right shall not extend to the following
acts after the expiration of the time limit but before the request for renewal of theregistration is made (Section 22).
c use of the registered trademark with respect to the designated goods or designatedservices; andd the acts mentioned in each paragraph of Section 37 (acts deemed to be infringement).
"Reasons outside his control" is strictly interpreted as the inability of the owner himself
or his agent to file a request due to acts of God or serious illness, etc.
The provisions in the Trademark Examination Guidelines regarding justifiable reasonsfor non-use of trademarks are quoted for reference as follows:"Whether there is any justifiable reason for the use of registered trademarks notconnected to the designated goods must be judged, comprehensively taking various
circumstances into consideration. The following requirements must be met, as a rule, inorder to acknowledge the reasons as justifiable.""The reasons for non-use must be related to the current owner of the trademark right,
owner of the right of exclusive use or non-exclusive use (hereinafter referred to as"owner of the trademark right, etc.") at the time of filing for renewal of registration."3

"Such reasons shall include, without limitation, earthquake, typhoon, or any other act ofGod, spreading fire, arson, destruction, or any other act of a third party by intention or
negligence, embargo, delay in authorization procedure, or enforcement of governmental
authorities."
Section 20 (2) of the former Trademark Law provided that the time limit for a request
for renewal of registration shall be within six months prior to the date of expiration of
the term. The former Law also provided in Section 20 (3) that where the person filing arequest for renewal of registration was unable to make such a request within theprescribed time limit, he may make such a request within 14 days from the date on
which the reasons ceased to be applicable but not later than two months from theexpiration of that time limit. In one case, the existence of "reasons outside his control"
under Section 20 (3) of the former Law was disputed. In this case, the court held:"Reasons outside his control" pursuant to the provision should mean cases where aperson who intends to file a request for renewal of trademark registration is unable tofile within the time limit, even though he or she took the care normally expected infiling such a request. Such reasons are not limited to inability due to acts of God orother unavoidable situations. Inability due to any subjective or personal reason that
occurred to the person who filed the request himself is also included. The person who
filed the request in this case was in hospital due to acute nephritis during the period
prescribed for filing a request for renewal. He was in a critical condition and complete
bed rest was ordered by the doctor. He was not permitted to see any visitor other thanhis family.
It is acknowledged that, in this situation, his judgment and thinking ability wasconsiderably weakened and he was unable to keep the filing for renewal in his mind.
Therefore, the reason for the inability of this person to file a request fell under the"reasons outside his control" set forth in the aforementioned provision (Vol. 8, No. 1,
Tokyo District Court, Mutaishu, p. 244, Jun. 28, 1976). In another case, the vicedirector of the General Affairs Department of a company, who was in charge ofmanagement of industrial property rights such as trademark rights, carelessly missed thetime limit for filing for renewal of a registered trademark because he was too busy withother matters. In this case, it was acknowledged that he was busy then, but not too busy
to make the filing for renewal impossible within the time limit. In this case, the court
did not agree that there existed any "reason outside his control" (Vol. 20, No. 4, Tokyo
District Court, Shogetsu, p. 93, Nov. 16, 1973).
(3) Written Request for Renewal of Registration
Any person desiring to request a renewal of the term of a trademark right (the owner ofa trademark right) shall submit a request for renewal to the Commissioner of the Patent
Office stating the following (Section 20 (1)):(i) the name and the domicile or residence of the requester;(ii) the registration number of the trademark registration;(iii) other matters fixed by ordinance of the Ministry of Trade and Industry.

4(4) Renewal of Term of Right Based on Defensive Mark Registration
The 1996 Amendment of the Law simplified the system for registration of renewal, in
line with the stipulations of the Trademark Law Treaty, by discontinuing the former
application system and adopting a new request system. (Translator's note: The
simplified system not requiring identification documents, etc., of the applicant for filingis referred to as the "request" system, and otherwise, as the "application" system.)
However, with regard to defensive mark registration, a decision was made to maintainthe application system in light of the provisions for renewal under the Trademark Law
Treaty (Treaty, Article 21) that were applied to defensive marks, and due to thenecessity to protect famous marks.
For these reasons, the provision concerning renewal of the term of a trademark rightapplied mutatis mutandis in Section 68 (3) was deleted, and new provisions concerning
renewal of the term of defensive marks were stipulated in Chapter VII (Section 65 (2)and (10)). Consequently, an application for renewal of a registration shall be madewithin six months prior to the date of the expiration of the term (Section (3)), and, if theapplication is unable to be made within the time limit due to reasons outside theapplicant's control, the application shall be made within 14 days (or, in case of aresident abroad, two months) from the date on which the reasons ceased to be applicable
but not later than six months following the expiration of said time limit.
In order to prevent excessive applications for defensive mark registration and an
associated increase in the examination workload, the application fee for registration ofrenewal of defensive marks was prescribed to be twice the normal application fee(Section 76 (2)).
The Patent Office has formulated the Trademark Examination Guidelines that treat the
renewal of the term of rights based on defensive mark registration as follows:"1. If the indications of the name or appellation, or address or domicile of the owner ofa trademark right listed in the Trademark Register and the applicant for registration are
not identical, the owner and the applicant shall not be regarded as the same person."(E.g., the owner is indicated as "XX Kabushiki Kaisha", while the applicant is indicatedas "XX Company" (Trademark Examination Guidelines, p. 74).) This assumption ismade for convenience sake. Since these persons are actually the same person, it isenough to change the indication in the Trademark Register in cases of a mere change ofthe trading name.
Unlike an initial application for trademark registration, a request for renewal ofregistration does not require any specimens of trademarks, descriptions and indicationsof designated goods. This is because an application for renewal is not creating a newright but is maintaining an existing right, and therefore, no documentation to establish aright is necessary.
"2. If any mark is indicated or any designated goods or services are stated by mistake inany application for renewal of registration of defensive marks, they shall be treated as if

5they were not included in such an application." (Trademark Examination Guidelines, p.
74.) If any trademark specimen (a document that indicates the trademark) is attached tothe application, even though it is not required, the specimen shall be treated as if it were
not attached (Trademark Examination Guidelines regarding defensive marks, p. 74,
1992).
(5) Omission of Substantive Examination and Trial for Invalidation of Trademark
Registration
This provision added some new grounds based on post-registration non-registrability to
the list of grounds for requesting a trial for invalidation of a trademark registration.
Under the Law prior to the 1996 amendment, a substantive examination was conducted
to determine if the registration fell under any of the grounds for non-registrability after
registration at the time of renewal; if the renewal was erroneously made, a trial forinvalidation of trademark renewal (former Law, Section 48) might be demanded (former
Law, Section 19 (2) (i)). The substantive examination system was discontinued and thestipulation as to a trial for invalidation of a renewal registration was deleted. However,
if a trademark has become against the public interest, approving the renewal registrationof such a trademark contravenes the essential gist of the trademark registration system.
Therefore, as an alternative, several grounds were added as Item (v) to the nonregistrable grounds as post-registration grounds for demanding a trial for invalidation of
trademark registration (Section 46 (1)). [The provision concerning refusal of renewal(former Section 19 (2), Proviso (2)) was deleted in line with the Trademark Law Treaty.
However, trademarks not in use for a long period of time were left to generally accepted
treatment.]
The supplemental grounds for demanding a trial for invalidation based on postregistration grounds are as indicated below:
c Trademarks that are identical to or similar to the national flag, the imperial
chrysanthemum crest, a national decoration, a medal of merit, or a foreign national flag;(Section 4 (1) (i))
d Trademarks that are identical to or similar to a State coat of arms or other emblem(other than a national flag) of a country party to the Paris Convention (meaning theParis Convention for the Protection of Industrial Property) a Member of the World
Trade Organization or a contracting party to the Trademark Law Treaty, which havebeen designated by the Minister of Trade and Industry (4 (1) (ii));e Trademarks that are identical to or similar to a mark indicating the United Nations or
any other international organization and designated by the Minister of Trade andIndustry; (4 (1) (iii))
f Trademarks comprising a mark identical to or similar to an official seal or sign thatindicates supervision or certification by the Government of Japan or by the Governmentof a country party to the Paris Convention or a Member of the World Trade
Organization or a contracting party to the Trademark Law Treaty, or by a local public

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entity and that has been designated by the Minister of Trade and Industry, which areused on goods or services identical to or similar to the goods or services in respect ofwhich such seal or sign is used; (4 (1) (v))
g Trademarks liable to contravene public order or morality; (4 (1) (vii)) andh Trademarks liable to be misleading as to the quality of the goods or services. (4 (1)(xvi))In addition to those mentioned in each of the preceding subparagraphs, trademarks thatare used as generic names (trademarks that do not enable consumers to recognize thegoods or services) and other grounds of registrability under Section 3 are not examined.
(Whether the trademark has become a generic name or not depends on the time when it
is used.) Accordingly, the registration of these trademarks remains effective.
There is no period for exclusion with regard to the time for demanding a trial forinvalidation. Therefore, interested persons may demand such a trial at any time. Wherea trial decision to invalidate a trademark registration has become final and conclusive,
the trademark right shall be deemed not to have existed from the time the trademark
registration began to fall under the provisions concerning non-registrability (Proviso of
Section 46-2 (1)). In cases where the time at which the registered trademark began tofall under Section 46 (1) (v) cannot be identified, the trademark right shall be deemed
not to have existed from the date of the registration (date of announcement ofregistration) of a demand for a trial to invalidate the trademark registration (Section 462 (2)).
(6) Payment of Fee for Registration of Renewal
Any person who obtains renewal of a trademark registration shall pay a registration fee(Section 40 (2)) at the time of the request for renewal of registration (Section 41-3). In
this case, the registration fee may be paid in installments (Section 41-2 (2)).
A person who applies for renewal of registration of the term of a trademark right shallpay, as the registration fee, an amount equivalent to the registration fee multiplied by
the number of classes of the classification of goods and services covered (Section 40(2)). After the amendment, the number of such classes of the classification of goods
and services may be reduced for renewal registration. In this case, the registration fee
may be reduced according to the number of reduced classes.
If a person makes a request for renewal of registration belatedly, i.e. within six months
from the expiration of the time limit, he shall pay, in addition to the registration fee due(Section 40 (2)), a surcharge equivalent in amount to the registration fee (Section 43 (1)and (3)).
(7) Registration of Renewal of Term
When the registration fee or the first installment thereof has been paid, the renewal of
the term of the trademark right shall be registered (Section 23 (1)). The renewal takes

7effect by this registration. Upon registration, the following particulars shall be
published in the Trademark Gazette:(i) the name and the domicile or residence of the owner of the trademark right;(ii) the registration number and date of the registration of renewal; and(iii) other necessary particulars (Section 23 (3)). The Trademark Registration Orderstipulates the details of the registration procedure.
The term of a trademark right may be renewed by a request for renewal of registration at
the time the initial term expires or when any renewal term expires (Section 19 (2)).
When a request for renewal of the term of the trademark right is made belatedly after
the expiration of the time limit under Section 20 (3), the term shall be deemed to havebeen renewed by registration upon expiration of the term (Section 20 (3) and Section 19(3)). The submission of documents to identify an applicant that were at one timerequired for filing a request for renewal of registration is no longer necessary under thecurrent request for renewal system (Section 20 (2) of the former Trademark Law wasdeleted). If the request form is incomplete, it can be corrected later, and normally, therenewal is made almost automatically. When a request for registration of renewal ismade by the owner of an extinguished trademark right, the term shall be deemed to havebeen renewed retroactively from the time of the expiration of the term (Section 21 (2)).
(8) Transitional Measures (measures concerning renewal of registration at the time of
introduction of service mark registration)
It was stipulated that the examination of the likelihood of confusion over source withrespect to overlapping registrations of service marks should be conducted at the time an
application for renewal of the term of the trademark was filed. Although the"overlapping registrations of trademarks" was acknowledged at the time when theservice mark registration system was introduced on April 1, 1992, as special measures,the stipulation required examinations to be conducted so as to avoid adverse effects
caused by such overlapping registrations. If there was any likelihood of causing
confusion over source with another overlapping registered trademark, the application
for renewal registration was refused (Law as amended in 1991, Supplementary
Provision, Section 8). However, the stipulation was amended and a substantive
examination was discontinued due to the provisions of the Trademark Law Treaty.
Although the Treaty prohibited substantive examination and “checking on” the use of aregistered trademark at the time of renewal, a provision was formulated to allow an
examination to be conducted only once at the time of the renewal of registration in order
to avoid any adverse effects) taking the circumstances in Japan into consideration)(Trademark Treaty, Section 22 (6)). Therefore, the likelihood of confusion over thesource of designated goods or services shall be examined on the occasion of the firstrenewal of registration with regard to overlapping trademark registration. (The Law asamended in 1991, Supplementary Provisions, Section 8 was deleted, and Sections 11 to
19 of Supplementary Provisions were formulated and added to the Law as amended in
1996.)
Transitional measures concerning renewal registration are provided in the
Supplementary Provisions as follows: At the time of enforcement of the 1996
Amendment, examinations related to applications for renewal of the term of trademark

8rights and rights based on defensive mark registration pending at the Patent Office,payment of registration fees, and registration procedures shall continue to follow
precedent (The 1991 Amendment, Supplementary Provisions, Section 7 (1) and (4)).
Section 2. Extinguishment of Trademark Rights
I. Extinguishment of Trademark Rights
Extinguishment of a trademark right means that a trademark right that has come into
effect loses effect due to the occurrence of certain events. The events that cause
extinguishment shall include: (i) expiration of the term; (ii) cancellation of registration,
or a ruling for such cancellation; (iii) non-existence of an heir; and (iv) surrender.
Additionally, there is a procedural extinguishment through trials for cancellation of
trademarks (Sections 51, 52, 52-2, 53, 53-2).
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, or not
to have existed from the time when any extinguishing event occurred (Section 46 (2)).
Some argue that invalidation of registration was not a reason for extinguishment of a
trademark right on the grounds that invalidation is different in nature from cancellationof registration, or that the trademark right could not be extinguished because it had
never existed (Yoshiwara/Takahashi, p. 164; Adachi, "Patent Law", p. 108). Othersargue that invalidation was a reason for extinguishment of a trademark right on the
grounds that the right tentatively existed until being invalidated (Toyosaki, p. 277,
Amino p. 829, Nakayama/Fifty Lectures, p. 143).
Cancellation due to non-payment of fees and extinguishment through trials will be
discussed in a subsequent chapter. Although discontinuance of business was a reason
for extinguishment under the former Law, which regarded a trademark and business as
inseparable (Vol. 18, No. 9, Supreme Court, Minshu, p. 1992, Nov. 26, 1964), it is nolonger regarded as a reason for extinguishment under the current Law (The Trademark
Law of Germany has recently been amended just as the Law of Japan was amended).
II. Reason for Extinguishment of Trademark Rights
1. Expiration of Term
Although a trademark right is, in effect, semi-permanent, the term is fixed for a certain
period; namely, ten years from the date of registration of the establishment of the right,
with the intent to dispose of unused rights, and the trademark right remains in effect on
the assumption that its term may be renewed upon expiration of the current term.
Should the procedure for renewal not be taken, the trademark right is extinguished upon
expiration of the term (Section 19). However, a trademark right can remain in effectsemi-permanently, if the owner of the trademark right uses it in an appropriate way,without failing to follow the procedure for renewal of registration (Section 19 (2) andSection 23).

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2. Cancellation of Trademark Registration
In the event that a trademark registration has been cancelled due to non-use (Section 50),
acts that cause confusion over goods or services (Sections 51, 52-2 & 53), or acts
conducted by an agent or representative for a person who has the right to a foreign
trademark without the authorization of such person (Section 53-2), the trademark right
will be extinguished (Sections 50 to 55).
3. Absence of Heir
A trademark right shall be extinguished when there is no person claiming to be an heir
within the period for publication prescribed by Section 958 of the Civil Code (Section
35; Patent Law, Section 76). This is an exception to the principle of the Civil Code that
any inherited property shall revert to the National Treasury. Trademark rights, bycontrast, are terminated, because it is considered more reasonable that trademark rights
should be used by the general public rather than revert to the State. In a case where a
trademark right belongs to an estate in bankruptcy or it is the subject of a claim, it is not
extinguished (Kaneko/Someno, p. 205; Toyosaki p. 205; Amino p. 830; Nakayama,
Fifty Lectures, p. 143).
If, in a case where a trademark is jointly owned, one of the joint owners without an heir
has died, his share shall revert to the other joint owner(s) (Civil Code, Sections 255 and264).
4. Surrender of Trademark Rights
Because a trademark right is a proprietary right, it may be surrendered. A portion of a
trademark connected to certain designated goods or designated services may besurrendered (Section 69; in this case, the number of designated goods and designatedservices covered by the trademark will be reduced). Where there is an exclusive
licensee, pledgee, or non-exclusive licensee, a person who has the right to the trademark
may surrender his trademark right only with the consent of other such persons so as not
to harm interested persons by the surrender (Section 35; Section 97 (1)). If, in a casewhere a trademark is jointly owned, one of the joint owners has surrendered his share,
the share shall revert to the other joint owners (Civil Code, Sections 255 and 264).
Extinguishment by surrender of a trademark right shall be of no effect unless it isregistered, so as not to extend unexpected damages to a third party (Section 35; Patent
Law, Section 98 (1) (i)). However, there is no stipulation concerning the retroactivity
and other effects of the act of surrender, and this issue is left to interpretation.
Generally, it is said that surrender shall not be interpreted as retroactive.
After a trial decision supporting the examiner's decision to refuse a trademark
application due to similarity to a registered trademark of another person, the right to theregistered trademark was surrendered and the registration was cancelled. In that case,the court held as follows: The legitimacy of the trial decision should generally be
judged in reference to the time of the trial decision. However, in view of the provisionsof Section 35 of the Law and Section 98 (1) (i), the effect of the surrender of a
trademark right does not apply retroactively to the time prior to the trial decision, and if
the registered trademark in comparison is extinguished by surrender after the decision, it

10should not affect the appropriateness of the trial decision (Vol. 11, No. 2, Tokyo High
Court, Mutaishu, p. 505, Oct. 25, 1979). In another case, the court commented asfollows based on the same grounds: After the conclusion of oral proceedings at a trial
for invalidation of a trial decision, which previously invalidated a later filed trademark
registration due to similarity to a prior trademark registration, the right to the priortrademark registration was surrendered. After the ruling was made dismissing thedemand for invalidation, the cancellation of the prior trademark registration due to thesurrender was registered. Because the effect of the surrender of a trademark is notapplied retroactively, the demand for invalidation of trademark registration on the
grounds of violation of Section 4 (1) (xi) of the Law remains effective, even if the rightto the prior trademark registration was subsequently surrendered. Accordingly, thecourt held that the surrender of the trademark did not have any effect on the legitimacyof the ruling (Vol. 19, No. 3, Osaka District Court, Mutaishu, p. 389, Oct. 14, 1987; Vol.
21, No. 1, Osaka High Court, Mutaishu, p. 88, Mar. 3, 1989).
Moreover, in the same case, the owner of the right to the prior trademark registration
requested compensation for unfair profits gained by the infringer to the persons who
used the junior (later filed) trademark after the ruling supporting the trial decision
invalidating the later filed trademark registration. The effect of the surrender of a
trademark is not retroactive and, in addition, the trademark right is deemed never tohave existed if a trial decision invalidating the trademark registration has become final
and conclusive pursuant to Section 46 of the Law. Therefore, the court held that thecompensation for unfair profits could be admitted, even if the owner of the trademark
right surrendered such right before the ruling supporting invalidation as such became
final and conclusive (Vol. 21, No. 1, Osaka High Court, Mutaishu, p. 88, Mar. 3, 1989).

11