If your Japanese distributor has registered your brand as a trademark: cancellation, transfer, and continued sales

1 Checking the Japanese registration and the relationship when the application was filed

We first review the Japanese registration records and the commercial relationship when the other party filed the application.

We identify the company holding rights in the trademark abroad, the company that filed the Japanese application and the current registered owner, and the parties to the distribution agreement. These roles may be held by different companies. For example, an overseas parent company may hold the rights while a separate sales subsidiary is a party to the agreement.

We then put the filing date, the date of the initial registration of the Japanese trademark right, and the dates when the commercial relationship began and ended on a single timeline. Our review covers the relationship at the filing date and at any time during the preceding year.

We also check the scope of the rights. Which goods or services are specified in the other party's Japanese registration? Which mark, goods, and services do the foreign rights cover? The goods that the parties traded may differ from those covered by the registration.

We then identify missing documents: foreign registration certificates, records of the dealings at the time, and correspondence that may indicate instructions or consent concerning registration.

For a discussion of identifying the contracting parties and the applicable law, see International legal services.

2 Can the distributor's registration be challenged?

Once a decision by the Japan Patent Office to cancel the registration becomes final and binding, the trademark right ceases to exist to the extent canceled. That right no longer provides a basis for an injunction against future use. Cancellation does not transfer the Japanese trademark right to the manufacturer. Other registrations and contractual restrictions require a separate review. How to obtain a Japanese trademark right in the manufacturer's own name is considered separately.

Under Japanese law, a person holding rights in a trademark abroad may seek cancellation of a Japanese registration through proceedings before the Japan Patent Office if the registration was obtained by that person's agent or representative without the right holder's consent and without just cause. The following requirements apply.

Requirements for seeking cancellation on this ground

Matter to check	Requirement
Foreign rights	The party seeking cancellation must hold a right equivalent to a trademark right in a country covered by the relevant international treaty arrangements. Use of the mark abroad, by itself, is not enough.
Relationship and timing	The application must have been filed by a person who was the foreign right holder's agent or representative at the filing date, or who had been in that relationship at any time within the preceding year.
Trademark and scope	The Japanese mark must be identical or similar to the mark covered by the foreign right, and the designated goods or services must also be identical or similar to those covered by that right.
Consent and just cause	The application must have been filed without the foreign right holder's consent and without just cause.
Period for filing the request	A request may not be filed after the five-year period starting on the date of the initial registration of the Japanese trademark right has expired.

We assess the documents against these requirements. Whether the distributor qualifies as an agent or representative does not depend solely on the label used in the contract or on whether a distribution agreement exists. We also consider the distributor's actual role in the sales arrangements and whether a close relationship of trust had developed through the parties' commercial dealings. We also review whether the correspondence may be read as consenting to registration and, if so, in whose name the right was to be acquired. A request to apply in the manufacturer's name is different from consent for the distributor to acquire the right in its own name.

Even after the deadline for this ground of cancellation has passed, the registration may be challenged on other grounds. One example is a registration obtained with the intention of using a mark for an improper purpose. This ground concerns marks identical or similar to another party's mark that was widely recognized among relevant consumers in a foreign country as identifying that party's goods or services when the Japanese application was filed. We compare sales and advertising materials showing that recognition at the time of the Japanese application with the history of negotiations over the registration.

For a request to the Japan Patent Office to cancel a registration for nonuse, we check whether there has been no use of the registered trademark in Japan for the relevant goods or services by the right holder or any licensee for a continuous period of at least three years. This includes checking when and how the former distributor used the mark and the evidence of that use.

While assessing a challenge to the registration, we also consider obtaining a transfer of the right or agreeing on terms of use.

3 Reviewing sales and imports now and after a change of distributor

Whether sales may continue depends on the basis for using the trademark in each sales channel, both now and after a change of distributor. We identify the planned activities for each channel: who will import the goods, who will sell them, and which markings will appear on which products.

A right to use a trademark based on prior use is a right under Japanese law to continue using the mark if the relevant requirements are met. To assess this ground, we check whether the manufacturer had used the mark in Japan before the distributor filed its application, without an intent to engage in unfair competition, and whether, at the time of that application, the mark was widely recognized among relevant consumers in Japan as identifying goods from the manufacturer's business. For sales through a distributor, we consider whether the sales can be treated as use of the mark by the manufacturer and which business consumers associated the goods with, taking into account the markings on the products and in advertising and the sales arrangements. Sales in Japan alone do not necessarily establish that the manufacturer has a right based on prior use. Where the manufacturer has such a right, the new distributor's import and sale of the manufacturer's goods may fall within its scope. We compare the products, markings, and sales methods before and after the change. A change of distributor cannot, by itself, be treated as a succession to the business.

We also review existing licenses: who granted permission, to whom, and for which activities. A license from the manufacturer to the former distributor does not, by itself, mean that the manufacturer or the new distributor has permission to use the mark under the Japanese trademark right held in the former distributor's name. We also review the terms to check whether permission extends beyond termination of the agreement or a change of distributor.

If Japan Customs sends a notice concerning imported goods, we check the type of notice and the deadline. If the importer contests the alleged infringement, it needs to submit the relevant objections, arguments, and evidence by the applicable deadlines. Filing a request with the Japan Patent Office to cancel the registration does not, by itself, permit importation of the goods concerned.

We distinguish transactions supported by the legal grounds we have confirmed from those requiring an additional agreement or other measures. For the latter, we consider shipments in the meantime together with the timing of the change of distributor.

4 Coordinating transfer and use agreements with the change of distributor

When seeking a transfer of the trademark right, we distinguish what may be claimed under the existing contract from what requires a new agreement. We check whether the distribution agreement contains provisions on the treatment of the trademark when the agreement ends or on its transfer to the manufacturer. If the validity or effect of those provisions is disputed, we consider the grounds for seeking a transfer and the other party's arguments. Where it is difficult to pursue a contractual claim, we negotiate a new transfer agreement.

A transfer of a Japanese trademark right by assignment takes effect upon registration of the transfer. The parties need to decide who may use the mark, and on what basis, from signing the assignment agreement until registration of the transfer is completed. One option is to obtain permission to use the mark from the current right holder. The assignment agreement may also include a license that takes effect when the agreement is signed.

The license should specify whose activities are permitted: those of the manufacturer, the Japanese company, or the new distributor, depending on who will actually import or sell the goods. It should also specify the trademark, the goods, and the permitted activities, such as importing, selling, and advertising. Its term should cover the period from signing the agreement through registration of the transfer. The parties should also agree on the conditions for continued use if registration is delayed and on what happens if the assignment is not completed. The license may be granted directly to the new distributor, or the permission given to the manufacturer may cover the new distributor's activities. If the arrangement involves sublicensing, we also check whether the party granting the sublicense has authority to do so. The parties also need to settle the terms of use with the company acquiring the trademark right so that the new distributor may continue importing and selling after registration of the transfer.

If the dispute is to be resolved by a transfer, we coordinate the handling of the cancellation procedure with completion of the transfer. The parties also need to decide on the timing of inventory sales, changes to markings, and the transition of sales channels.

The legal grounds for challenging the registration and for continuing sales need to be checked separately, and the steps and timing need to be coordinated with agreements on transfer or use. We offer consultations on individual matters involving assessing and pursuing cancellation proceedings before the Japan Patent Office, negotiating transfer and use terms with distributors, and handling licensing arrangements and customs procedures relating to continued imports and sales.

For a discussion of the scope of licenses and use after a contract ends, see Disputes over intellectual property licenses.

Key legislation and official sources

English translations of legislation are provided for reference. The Japanese texts are authoritative.

Article topic	Legislation or official source	Source type and English version reviewed
Sections 1–4: registration, cancellation, prior use, and licensing	Trademark Act — Japanese text: e-Gov; English text: Japanese Law Translation	The linked sources are Japanese legislation and an English translation (earlier version). The English translation identifies its amendment version as Act No. 51 of 2023.
Section 2: whether the distributor qualifies as an agent or representative (the approach taken by the court)	Intellectual Property High Court, judgment of September 12, 2022, 2019 (Gyo-Ke) No. 10157 — Japanese judgment	Court judgment. Japanese original; no English translation relied on.
Section 3: customs notices and procedures concerning imported goods	Customs Act — Japanese text: e-Gov; English text: Japanese Law Translation	The linked sources are Japanese legislation and an English translation (earlier version). The English translation identifies its amendment version as Act No. 16 of 2018.
Section 3: responding to customs notices	Japan Customs, Flow of identification procedures — Official procedural information in Japanese	Administrative procedural information. Japanese source; not a legislative translation.
Section 4: when a transfer takes legal effect	Patent Act, as applied to trademark rights under the Trademark Act — Japanese text: e-Gov; English text: Japanese Law Translation	The linked sources are Japanese legislation and an English translation (earlier version). The English translation identifies its amendment version as Act No. 48 of 2024.

The English translations linked above are earlier versions and do not reflect all amendments in force on the review date.

Legal information reviewed: September 27, 2026

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This article is provided for general informational purposes only and does not constitute legal advice on any specific matter. Please consult us regarding your specific situation. The content is based on the laws and regulations in effect as of the date of the last update.