Top What's TM ? Japanese Trademark System Trademark Search Japanese Trademark Application Refusal from the JPO via WIPO Management of Right Solution for Trouble Fees

Overview

The owner of a trademark right has the power to enforce his/her right against an infringer in the three following ways:

① by demanding an injunction
② by claiming financial damages
③ by demanding measures for the recovery of reputation

Further, as a general rule, it is possible to demand an injunction to the Customs regarding the importation of the product into Japan.

The scope of the trademark right is determined based on the contents of the items “Reproduction of the trademark” and “Designated goods (services)” on the Application document. Accordingly, the trademark right does not apply to even a totally identical trademark if the designated goods or services are different. In such a case, it is not possible to proceed to an enforcement of the trademark right as described above (it must be noted that in some situations, the trademark right can be enforced based on the Unfair Competition Prevention Law).
The effect of the trademark right applies not only to trademarks identical to the “Trademark” shown on the Application documents, but to similar trademarks as well. It also applies to goods or services similar to the “Designated goods (services)” shown on the Application documents.

　Measures to be taken by the owner of a trademark right in case of infringement
　Measures to be taken by the entity accused of infringing on a trademark right

Measures to be taken by the owner of a trademark right

< -1- Discovering a potential infringement of the trademark right> The starting point is the discovery of the use, without consent of the owner, of the registered trademark or of a trademark similar to the registered trademark in the same designated goods or services than the registered trademark or in similar designated goods or services. There is no specific method to make such a discovery; it should be the result of reasonable efforts, and may for instance happen thanks to information provided by the company’s employees or clients or found through an Internet search. In this case, it is important to make sure that the trademark right has not lapsed and that the trademark is currently being used. While finding that two trademarks are identical can be done in a glance, determining whether two trademarks are similar or non-similar is a delicate process. In some cases, trademarks that had been considered similar by the owner of the right are finally ruled as non-similar. Putting aside the case of identical trademarks, we therefore recommend the owner of the right to seek our assistance if there is even a slight difference between the two trademarks.

< -2- Gathering proof and essential information> Once the owner of the right has discovered that his/her trademark is being used without consent, it is necessary to gather evidence and information regarding the infringer, such as its name, address, products, producers, distribution route… In the case of a relatively inexpensive product, the purchase of the product itself, in order to proceed to first-hand verifications, can also be a valid method. Photographing the product may also prove useful, as photos can subsequently be used as valuable evidence. Since tracing the totality of the distribution route of the product may be difficult, a simple outline can be sufficient at first. If the said research proves that the product has been imported into Japan, measures at the Customs must be considered.

< -3- Negotiating with the other party> In the case that the owner of the right, based on the results of the above-described search and the advice of experts such as our firm, concludes that there is a strong possibility that his/her trademark right is being infringed, the next stage will be to enter into negotiations with the other party. The first contact is usually taken in written form ; in some situations it will be through a simple Inquiry form, while in others a letter detailing the contents of the case will directly be sent to the other party.At this stage, if the negotiation, be it in written form or during one or several meetings, makes it possible to bring the situation to a resolution, it is preferable to keep a written record of the details.On the other hand, if the negotiation does not lead to a positive result, abandoning the registered trademark is a solution. Another solution, however, is to file a lawsuit or to seek resolution of the conflict through a mediation.

Measures to be taken by the entity accused of infringing on a trademark right

It is not uncommon for companies or individuals who received a Warning letter regarding a potential infringement to be at a loss as to what to do next. In this situation, the most important thing is to contact us as soon as possible, since most Warning letters contain a deadline which must be respected at all costs.

When contacted for such a matter, our firm usually begins by looking into the following important points:

      1.Whether the other party’s trademark right is valid or not
      2.Comparison between the other party’s trademark and our client’s trademark
      3.Comparison between the designated goods and services for the other party’s trademark
        and the designated goods and services in which our client is using the trademark at issue
      4.Whether it is possible to change our client’s trademark or not
      5.The date since when our client’s trademark has been in use
      6.The nature of the relationship between our client and the owner of the trademark right

Based on the above verifications, we then proceed to examine whether the two trademarks and whether the designated goods and services are similar. This in turn allows us to provide advice to our client regarding the concrete steps that should be taken next – be it claiming non-similarity between the two trademarks, attempting to invalidate the other party’s trademark, changing our client’s trademark, requesting an extension of the use of the trademark and so on.

At this stage, if the negotiation, be it in written form or during one or several meetings, makes it possible to bring the situation to a resolution, it is preferable to keep a written record of the details.

On the other hand, if the negotiations do not lead to a positive result, the usual procedure is to take measures in order to respond to the other party’s actions. One possible measure is to solicit the opinion of the Japan Patent Office on whether or not the use of our client’s trademark belongs to the scope of the other party’s trademark. Alternatively, in the case that our client has confidence that their trademark is not infringing on the other party’s trademark right, another solution is to retaliate by filing a lawsuit against the other party.