Trademark Opposition in Japan: Requirements, 2-Month Deadline and Procedure

"Someone has registered a trademark in Japan that is almost the same as our brand. Can we stop it?" "Is there a way to challenge a registration without going to court?"

Japan has an opposition system that lets anyone ask the Japan Patent Office (JPO) to cancel a newly registered trademark. It is cheaper and simpler than a trial, but the deadline is very short. In this article, Japanese Patent Attorney Toru Kano of BrandAgent explains the requirements, the deadline and the procedure for foreign brand owners.

What is a trademark opposition?

An opposition is a request to the JPO to cancel a trademark that has already been registered. Examiners can overlook problems, so the system works as a public re-check after registration: third parties point out errors, and the JPO reviews the registration again.

Japan uses a post-registration opposition system. Unlike some countries, there is no opposition period before registration — you can only oppose after the mark has been registered and published.

Deadline: within 2 months of publication

Two months passes quickly, especially when documents have to be translated and evidence collected abroad. If Japan is an important market, we recommend watching new Japanese registrations in your field so you can act in time.

Who can file an opposition?

Anyone can file — you do not have to prove that you are an interested party. Foreign companies and individuals can file too. However, if you have no domicile or business office in Japan, the opposition must be filed through a Japanese patent attorney, and the same applies to all later procedures.

Grounds for opposition

Grounds are limited to those listed in Article 43-2 of the Japanese Trademark Act. The main ones are:

• Article 3: lack of distinctiveness (e.g. a common name or a descriptive word)
• Article 4(1): statutory bars, such as item (xi) similarity to an earlier registered mark, item (xvi) risk of misleading as to quality, and item (vii) public order or morality
• Article 7-2(1): violation of the requirements for regional collective trademarks
• Article 8(1), (2) and (5): violation of the first-to-file rule
• Violation of a treaty

In practice, similarity to an earlier mark (Article 4(1)(xi)) is the most common ground.

Some grounds cannot be raised in an opposition — for example, violation of the one-mark-one-application rule (Article 6), registration by a person not entitled to it, and events that occur after registration. These are handled by invalidation or other trials instead. If your own agent or distributor registered your brand in Japan without permission, a separate cancellation trial under Article 53-2 (based on Paris Convention Article 6septies) is available.

The opposition procedure

The opponent may supplement grounds and evidence within 30 days after the 2-month opposition period ends, but changes that alter the substance of the opposition are generally not allowed. Several oppositions against the same registration are usually examined together. An opposition can be withdrawn until the notice of reasons for cancellation is issued.

Decisions and their effect

The JPO either maintains or cancels the registration. When a cancellation becomes final, the trademark right is treated as never having existed.

If the registration is cancelled, the owner can appeal to the Intellectual Property High Court within 30 days. A decision to maintain the registration cannot be appealed — the opponent would need to file an invalidation trial (if an interested party) to continue the challenge.

Opposition vs. invalidation trial vs. non-use cancellation trial

Within the 2-month window, opposition is usually the first option to consider. After the window, or when you want to pursue the matter as an interested party, an invalidation trial is the choice. If the registered mark is not actually being used in Japan, a non-use cancellation trial can be the simplest route.

Practical points

• Act early: the 2-month deadline cannot be extended. Contact a Japanese patent attorney as soon as you find the registration.
• Legal grounds and evidence: "it's unfair" or "we used the name first abroad" is not enough. The opposition must be based on a statutory ground supported by evidence.
• If your registration is opposed: foreign owners must also respond through a Japanese patent attorney. Do not ignore a notice of reasons for cancellation.

BrandAgent handles oppositions and trials for overseas clients in English and Chinese. With more than 4,000 applications filed, every case is handled personally by a licensed patent attorney. Consultations and quotes are free.

FAQ

• Q. Can a foreign company file an opposition in Japan?
  A. Yes. Anyone can file. If you have no domicile or office in Japan, it must be filed through a Japanese patent attorney.
• Q. What if the 2-month period has already passed?
  A. Opposition is no longer possible. Consider an invalidation trial (interested parties only) or, if the mark is not used in Japan, a non-use cancellation trial.
• Q. Is an opposition likely to succeed?
  A. It depends on the case. It can be effective when there is a clear legal ground, such as a similar earlier mark. Subjective arguments will not be accepted.
• Q. Can an opposition be withdrawn?
  A. Yes, until the notice of reasons for cancellation is issued. If all oppositions are withdrawn, the proceedings end.

Summary

Related articles

• Trademark Invalidation Trial in Japan: Grounds, Who Can File, and How It Differs from Opposition
• Non-Use Cancellation Trials in Japan: Requirements, Procedure and When You Can Win
• Refused for a Similar Trademark in Japan? Article 4(1)(xi) Explained by a Japanese Patent Attorney
• What Is a Trademark Right in Japan? When It Arises, Scope, Duration and Infringement