Provisions applied mutatis mutandis to revocation

Paragraphs 2 and 3 of Articles 48, Paragraphs 1 and 3 of Article 49, Article 52 and Article 53 shall apply mutatis mutandis to the examination of revocation.

Paragraphs 2 and 3 of Article 57 shall apply mutatis mutandis to an application for revocation on the ground prescribed in Subparagraph 1 of Paragraph 1 of Article 63.

Paragraph 3 of Article 57 shall apply mutatis mutandis to the circumstance that a proprietor of a revoked trademark furnishes proof of use pursuant to Paragraph 2 of Article 65.

Grounds for opposition and time limit on filing

Any person may file an opposition to registration of a trademark with the Registrar Office within three months from the day following the date of publication of registration on the grounds that such registration falls under Paragraph 1 of Article 29, Paragraph 1 of Article 30, or Paragraph 3 of Article 65.

The opposition referred to in the preceding paragraph may be filed for some of the designated goods or services of the registered trademark.

An application for opposition shall be filed against a single registered trademark.

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Opposition procedure

Any person who opposes a registered trademark shall file an application stating the facts and grounds along with a copy thereof. Any attachments to the application shall also be enclosed with the copy.

The Registrar Office shall serve the copy on the proprietor of opposed trademark, who may make observations to the opposition within the prescribed period; where the proprietor files the observations, the Registrar Office shall serve a copy of the observations on the opponent, who may comment on the observations of the proprietor within the prescribed period.

Where the observations filed pursuant to the preceding paragraph is likely to delay the proceedings, or where the facts and evidence are sufficiently clear, the Registrar Office may conduct opposition proceedings directly without giving the opposite party a notice to make observations.

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Invariance of concerned party in opposition

A transfer of the right of a trademark of which the opposition proceedings is underway shall have no effect on the said opposition proceedings.

A transferee of trademark right referred to in the preceding paragraph may declare to assume the position of the opposed party in the opposition proceedings.

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Withdraw of opposition

An opponent may withdraw his/her opposition to a registered trademark before the disposition of such opposition is rendered.

An opponent who withdrew his/her opposition to a registered trademark shall not file an opposition once more or invalidation against such opposed trademark based on the same facts, evidence and grounds as those in the withdrawn opposition.

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Grounds for invalidation; proof of use of earlier trademark

An interested party may file an invalidation with the Registrar Office, or a trademark examiner may submit a proposal to the Registrar Office for an invalidation, against a trademark registration on the grounds that such registration falls under Paragraph 1 of Article 29, Paragraph 1 of Article 30, or Paragraph 3 of Article 65.

An applicant who file an invalidation with the Registrar Office against a trademark registration on the grounds that such registration falls under Subparagraph 10 of Paragraph 1 of Article 30 shall furnish proof that, during the period of three years preceding the date of the application for invalidation, the earlier trademark has been used in connection with the goods or services in respect of which it is registered and which he/she cites as justification for his/her application, or that there are proper reasons for non-use, provided the earlier trademark has at that date been registered for not less than three years.

The proof of use furnished pursuant to the preceding paragraph shall be capable of establishing the genuine use of the trademark in accordance with general commercial practices.

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Grounds for revocation; revocation of some goods or services

The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if such trademark is in any of the following:

(1) where the trademark is altered by the proprietor in different forms in which it was registered or supplemented with additional notes whereby the trademark is identical with or similar to another person’s registered trademark in relation to goods or services which are identical with or similar to those for which another person’s registered trademark is designated, and hence there exists a likelihood of confusion on relevant consumers;
(2) where the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee;
(3) where no appropriate and distinguishing indication is added pursuant to Article 43, unless the indication has been added and hence there does not exist any likelihood of confusion before the disposition of revocation rendered by the Registrar Office;
(4) where the trademark has become the generic mark or term, or common shape for the designated goods or services; or
(5) where, in consequence of the actual use of the trademark, such trademark is likely to mislead the public as to the nature, quality, or place of origin of the goods or services.

The revocation shall also apply in the case where the proprietor of the registered trademark who, knowingly or with reasonable grounds to know, shows no objection to the conduct as prescribed in Subparagraph 1 of preceding paragraph by a licensee.

The trademark registration shall not be revoked on the ground prescribed in Subparagraph 2 of Paragraph 1 if such use as in referred to in that subparagraph is commenced or resumed before the application for revocation is filed, unless any such commencement or resumption of use within the period of three months before the filing of the application is because the proprietor became aware that the application might be filed.

Where grounds for revocation exist in respect of some of the designated goods or services of the registered trademark, the registration may be revoked in respect of those goods or services.

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Revocation procedure

The Registrar Office shall serve a copy of an application for revocation on the proprietor of a registered trademark, who may make observations to the revocation within the prescribed period; where the proprietor files the observations, the Registrar Office shall serve a copy of the observations on the applicant, who may comment on the observations of the proprietor within the prescribed period. An application for revocation may be dismissed directly if the application is devoid of any concrete facts and evidence or based on obviously groundless claims.

Where a copy of an application for revocation against a registered trademark on the ground prescribed in Subparagraph 2 of Paragraph 1 of Article 63 has been served on the proprietor of such trademark, such proprietor shall furnish proof of his/her use. Such registration may be revoked directly if the proprietor fails to make observations within the prescribed period.

Where the trademark registration was revoked on the ground prescribed in Subparagraph 1 of Paragraph 1 of Article 63, a trademark which is identical with or similar to the revoked trademark in relation to goods or services which are identical with or similar to those for which the revoked trademark is designated shall not be applied for registration by the former proprietor of the revoked trademark or transferred or licensed to such former proprietor within three years from the day following the date of revocation; the aforementioned shall also apply to the circumstance that the trademark right has been abandoned before the disposition of revocation rendered by the Registrar Office.

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