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Q. If a party obtains from the owner of a registered trademark a license to use that trademark, must the license be registered with the Japan Patent Office?


A license that is exclusive must be registered with the JPO because Trademark Law Article 30(4) says that Patent law Article 98(2), which relates to the legal effects of registration, shall apply mutatis mutandis to an exclusive right to use, and such registration is a condition for the license to be effective. This also applies to a license regarding a patent, utility model, or design right.

Although a nonexclusive trademark license is not required to be registered with the JPO, we highly recommend that it be registered, because such registration is required to enforce licensed trademark rights against third parties, including a new owner of the trademark registration.
Therefore, if a licensed trademark has been transferred from the original owner to a new owner, the licensee of a nonexclusive license that has not been registered with the JPO runs the risk that the new owner might successfully assert its rights against the nonexclusive licensee and prevent that licensee from using the trademark.

Regarding this, the “automatic-perfection system” that has been effective since April 2, 2012, and that allows a nonexclusive licensee of a registered patent, utility model, or design to assert its license rights against third parties without the license being registered, does not apply to trademark licenses. It therefore is necessary to be careful regarding the acquisition of a nonexclusive license for a trademark.



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