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PROTECTION OF FAMOUS AND WELL-KNOWN TRADEMARKS IN JAPAN October 29, 2003 Washington, D.C. U.S.A.

PROTECTION OF FAMOUS AND WELL-KNOWN TRADEMARKS IN JAPAN October 29, 2003 Washington, D.C. U.S.A. Hiroki Matsui Patent Attorney matsui@aipat.jp Ai Association of Patent and Trademark Attorneys Kinyukoko-Sumisei Bldg. 5-20, Minamihommachi 4-chome, Chuo-ku, Osaka 541-0054, JAPAN

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PROTECTION OF FAMOUS AND WELL-KNOWN TRADEMARKS IN JAPAN October 29, 2003 Washington, D.C. U.S.A.

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  1. PROTECTION OF FAMOUS AND WELL-KNOWN TRADEMARKS IN JAPANOctober 29, 2003 Washington, D.C. U.S.A. Hiroki Matsui Patent Attorney matsui@aipat.jp Ai Association of Patent and Trademark Attorneys Kinyukoko-Sumisei Bldg. 5-20, Minamihommachi 4-chome, Chuo-ku, Osaka 541-0054, JAPAN Tel +81-6-6245-0211 Fax +81-6-6245-2266

  2. THE PROVISIONS OF PROTECTION OFFAMOUS AND WELL-KNOWN TRADEMARKS IN JAPAN Japanese laws (a) Trademark Law (b) Unfair Competition Prevention Law ◎ Obtaining a trademark registration is a basic and preferable way to protect a trademark, even if the trademark is famous or well-known in Japan.

  3. Trademark Law Prohibition against third party's usage I. Trademark registration II. Defensive trademark registration

  4. I. Trademark registration Range of prohibition against third party's usage (ARTICLE 25 and 37 ) (a) Trademark Law

  5. (a) Trademark Law I. Trademark registration Main requirements to register a trademark 〇　Distinctiveness (Article 3) 〇　No existence of identical or similar prior trademark registration in respect to identical or similar goods or services (Article 4 (1) 11) 〇 No existence of identical or similar unregistered famous or well-known trademarks (Article 4 (1) 10,15 and 19) …etc.

  6. II. Defensive trademark registration Range of prohibition against third party's usage (ARTICLE 67) (a) Trademark Law ◎compared to the original trademark registration

  7. (a) Trademark Law II. Defensive trademark registration Main requirements to register a defensive trademark (Article 64) Applicant : The owner of a famous registered trademark Trademark : Identical with the above registered trademark Designated goods or services : Dissimilar to the originally designated goods or services Condition of registration : When the third party uses an identical trademark with the registered famous trademark in respect tothe above dissimilar goods or services, it causes consumers the likelihood of confusion between the two origins of goods or services.

  8. (a) Trademark Law Relief by trademark registration or defensive trademark registration. ARTICLE 36 Right to demand an injunction (including request for preliminary injunction) ARTICLE 38 Demand for damages ARTICLE 39 Trust restorative measures (placing a notice of apology in newspapers) ARTICLE 78 Criminal penalty (imprisonment of more than 5 years and/or a fine of no more than 5 million yen) ARTICLE 82 Criminal penalty (fine of no more than 150 million yen in the cases of corporations involved in a crime)

  9. (a) Trademark Law Prohibition against third party's trademark registration I. UNREGISTRABLE TRADEMARK (ARTICLE 4 (1) 10, 15 and 19) ◎ specifically to protect unregistered famous or well-known trademarks

  10. (a) Trademark Law ARTICLE 4 (UNREGISTRABLE TRADEMARK) Trademark registration shall not be affected in the cases of the following trademarks: (10) trademarks which are well known among consumers as indicating the goods or services as being connected with another person's business, and trademarks similar thereto, and which are used in respect of such goods or services or similar goods or services; This provision does not only apply to famous trademarks but also to well-known trademarks which have reputations only in a specific region of Japan. The famous or well-known trademark must have already become a famous or well-known trademark on the filing date of the third party's application.

  11. (a) Trademark Law 4 (1) 10 Examination Guideline The materials proving the foreign trademark is well-known, or the foreign trademark's exporting history or services in several countries are examined well to approve the foreign trademark is well-known in Japan.

  12. (a) Trademark Law ARTICLE 4 (UNREGISTRABLE TRADEMARK) Trademark registration shall not be affected in the cases of the following trademarks: (15) trademarks which are liable to cause confusion with goods or services connected with another person's business (below omitted); This provision is applicable only for famous trademarks and is not applicable for well-known trademarks. The provision is also applicable for the trademarks which are recognized as famous in foreign countries by Japanese traders. And it is required that the trademark has become a famous trademark on the filing date of the third party's application to apply for this provision.

  13. (a) Trademark Law 4 (1) 15 Examination Guideline The following matters are comprehensively considered in determining whether or not a trademark is liable to cause confusion with goods or services in connection with another person's business: (1) the extent to which the other person's trademark is well-known (degrees of public notice or advertisement, propaganda or popularity); (2) whether or not the other person's trademark is a creative mark; (3) whether or not the other person's trademark is a house mark. (4) the possibility of diversified management of a company. (5) relation between goods, services, and goods and services.

  14. (a) Trademark Law ARTICLE 4 (UNREGISTRABLE TRADEMARK) Trademark registration shall not be affected in the cases of the following trademarks: (19) trademarks which are well known among consumers in Japan or abroad as indicating the goods or services as being connected with another person's business, and trademarks identical with or similar thereto, and which are used by the applicant for unfair intention (intention to gain an unfair profit, intention to cause damage to such another person and other unfair intentions- hereinafter the same)(-omitted-) in respect of such goods or services. This provision is effective in cases of piracy of very well-known trademarks in foreign countries and in cases when the Japan Patent Office does not have the information regarding the existence of a trademark owned by foreign trademark owner.

  15. (a) Trademark Law 4 (1) 19 Examination Guideline For example, the following are applied in this provision: . (1) to file a prior trademark application to be purchased later for a considerable price, by taking advantage of the fact that a trademark identical or similar to that of others which are well-known in foreign countries has not been registered in Japan; (2) to file an application in respect of a trademark which is identical with, or similar to, a trademark which is well-known throughout Japan for the purpose of, if not causing confusion, causing dilution of the function of indication an origin, or undermining the reputation of such a well-known trademark.

  16. (b) Unfair Competition Prevention Law Prohibition against third party's usage Definitions of unfair competition(Article 2(1)1and 2)

  17. (b) Unfair Competition Prevention Law ARTICLE 2 (DEFINITIONS) The term "Unfair Competition" as used in this Law means any one of the following: • The act of using an indication of goods, which is identical with or similar to another person‘s indication of goods, (meaning the indication of goods or business such as a name, trade name, mark, and goods container or package related to a person’s business; hereinafter the same) which is widely recognized among users, or act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, importing goods on which such indication of goods, etc. is used, and thereby causing one‘s goods or business to be confounded with another person’s goods or business. The degree of well-known here is not required to be "nationwide" and that the degree of well-known here in a region of Japan is sufficient.

  18. (b) Unfair Competition Prevention Law ARTICLE 2 (DEFINITIONS) The term "Unfair Competition" as used in this Law means any one of the following: (2) The act of using, as one's indication of goods, etc., an indication of goods, etc. which is identical with or similar to another person's well-known indication of goods, etc., or act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, or importing goods on which such indication of goods, etc. is used; The owner of a well-known trademark must prove that his own trademark is recognized to be famous all over Japan.

  19. (b) Unfair Competition Prevention Law Relief by applied the article 2(1)1 and 2 ARTICLE 3 Right to demand an injunction (including request for preliminary injunction) ARTICLE 4 Demand for damages ARTICLE 7 Trust restorative measures (placing a notice of apology in newspapers) ARTICLE 14 Criminal penalty (imprisonment of more than 3 years and/or fine of no more than 3 million yen) ARTICLE 15 Criminal penalty (fine of 300 million yen in cases of corporation involved in a crime)

  20. Thank you for your attention. Japan Trademark Association

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