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What is the collective trademark system and regional collective trademark system that can be used by certain organizations?
Unlike regular trademarks, there is a system called collective trademarks and regional collective trademarks, which are trademarks whose rights are held by a certain organization.
<Collective trademark system>
Organizations such as general incorporated associations and business cooperatives can register collective trademarks for trademarks used by their members (business operators) (Article 7, Paragraph 1 of the Trademark Law).
With ordinary trademarks, the applicant uses the trademark, but with certain organizations, the trademarks are actually used by the organization's member businesses, and the organization itself may not necessarily use the trademark. Therefore, the collective trademark system allows registration of trademarks that are not used by the organization itself but are used by its members.
Collective trademarks have the role of indicating the common characteristics of the goods and services handled by the members, and by mutual cooperation, group members can increase the credibility of the collective trademark and realize the purpose of the group, such as producing special products. It is hoped that this will contribute to achieving this goal.
<Regional collective trademark system>
Organizations such as business cooperatives, associations of commerce, chambers of commerce, and non-profit organizations can register regional collective trademarks under certain conditions for the trademarks they allow their members (business operators) to use (Trademark Law Article 7-2 Paragraph 1).
Traditionally, a word trademark that combines a regional name and a product (service) name could not be registered as a trademark unless it gained nationwide recognition as a result of use. Therefore, in order to protect regional brands, the Regional Collective Trademark System allows trademarks to be registered even if they are not nationally known.
Regional collective trademarks can be used to protect and develop regional brands, and are expected to further revitalize the region. In fact, since the system was established in 2006, a large number of regional collective trademarks have been registered and are being used for regional revitalization and regional economic revitalization, and are attracting a high level of interest.
The Japan Patent Office website provides information on registered regional collective trademarks in each region.
Advantages of trademark registration and characteristics of collective trademark system and regional collective trademark system
(1)Main benefits of trademark registration
Collective trademark registration/regional collective trademark registration has the same advantages as regular trademark registration, including the following.
- You can monopolize the use of a trademark for the goods and services specified when applying for trademark registration.
- If someone uses your information without permission, you will be able to request an injunction to stop its use or file a claim for damages.
(2)Main features of the collective trademark system
The collective trademark system has the following characteristics that are different from regular trademarks.
◆Eligible applicants
① General incorporated association, ② Business cooperative, etc.
*The term "incorporated association" here includes chambers of commerce, chambers of commerce, and specified non-profit corporations (NPOs) based on the Specified Non-profit Activities Promotion Act.
*Includes foreign corporations equivalent to these.
*Foundations, corporations, etc. cannot be applicants.
◆Target trademark
It must be a trademark that an organization allows its members to use.
◆Rights of members
- Once registered as a collective trademark, members of the organization have the right to use the registered trademark as determined by the organization, and no individual license is required.
- Members may not request an injunction to suspend use.
- A member's status (position) cannot be transferred to a third party.
(3) Main features of the regional collective trademark system
The regional collective trademark system has the following characteristics that are different from regular trademarks.
◆Eligible applicants
① Business cooperatives, ② Chambers of Commerce and Industry, ③ Specified non-profit corporations (NPO corporations) as stipulated in Article 2, Paragraph 2 of the Specified Non-profit Activities Promotion Act, etc.
*Includes foreign corporations equivalent to these.
*The law on the basis of the establishment of the above organization must allow members the freedom to join.
◆Target trademark
- It must be a trademark that an organization allows its members to use. *Same as collective trademark system.
- Being somewhat famous within a certain geographical area.
- Must consist of the characters "region name + product (service) name". *Example: ○○ apple, ○○ hot spring.
In addition, the region name must be closely related to the product (service).
◆Rights of members *Basically the same as a collective trademark
- Once registered as a regional collective trademark, members of the organization have the right to use the registered trademark as determined by the organization, and no individual license is required.
- Members may not request an injunction to suspend use.
- A member's status (position) cannot be transferred to a third party.
Initiatives after acquiring trademark rights
In addition to registering and securing trademark rights, it is also important to use registered trademarks appropriately and maintain and manage them appropriately. To this end, it is important to keep the following points in mind.
(1)Renewal of trademark rights
Unlike other industrial property rights such as patent rights and design rights, trademark rights can be maintained semi-permanently by renewing their duration. To do so, you must complete the renewal procedures within the specified period, and if you fail to do so, your rights will expire.
(2) Proper use and management of registered trademarks
- Cancellation due to non-use of trademark
Under the Trademark Law, if a registered trademark for designated goods (services) has not been used continuously for three years or more, the registration can be canceled upon request from a third party (Registration for non-use cancellation: Trademark Law Article 3) ), so please be careful. - Infringement of other registered trademarks
If the goods or services that actually use the registered trademark are not included in the designated goods (services), in addition to the problem of non-use mentioned above, it may also infringe on the rights of others. not. - Maintaining and improving brand image
① If unlimited use is permitted to members of an association, it may actually result in a decline in the brand image, so it is useful to create appropriate rules for the use of registered trademarks in order to maintain and improve the brand image. The Trademark Act also stipulates that members of an association should use the trademark in accordance with the rules established by the association (Article 31-2, Paragraph 1 of the Trademark Act).
② Conversely, brand image problems also arise if a registered trademark is used for inferior goods or inferior services by someone unrelated to the organization. In recent years, there have been cases where store names and product names that have become famous as B-class gourmet food are used without permission, leading to a decline in the brand image, so please be very careful about using registered trademarks without permission. You will need it.
Trademark registration overseas
Even if you have trademark rights in Japan, they are not valid overseas. Therefore, if you are aiming to expand overseas, or if you want to protect products that are already sold overseas, you will need to register your trademark in each country.
While this registration is neglected, troubles often arise in which a third party overseas files an application for the trademark first. Even for trademarks related to Japanese place names, there are cases where they are first applied for or registered overseas by a third party, as in the example of the trouble below. Once a trademark-related problem occurs, it takes a long time to resolve it. Since the trademark will not be available overseas for a period of several years, the resulting loss of brand development opportunities and the effort required to resolve disputes will be enormous.
Therefore, the following measures are effective as preventive measures to avoid such disadvantages.
- Trademark search overseas. For example, is it possible to register a word mark that includes a place name, and whether a similar trademark already exists?
- Trademark registration overseas based on the above investigation.
[Reference] Examples of troubles overseas (China)
- <Reference example 1: “Aomori” trademark case>
In the 15 "Aomori" trademark case, a third party had first applied for the "Aomori" trademark in China for use on products such as fruits and vegetables. In China, there is a three-month opposition period after an application is announced in the official gazette. By filing a complaint, we were ultimately able to block the registration. However, even though the opposition was filed in July 15, the notification of rejection of the application arrived from China in December 7, so it took a total of four years. Did. - <Reference example 2: "Imabari" trademark case>
The "Imabari" trademark case occurred when Imabari City, Ehime Prefecture and the Shikoku Towel Industry Association, which is made up of Imabari towel manufacturers, tried to apply for a trademark for "Imabari Towel" in China, but the "Imabari" trademark had already been acquired by a Chinese company. In this case as well, it took four years from the discovery of the problem in 22 to the time in 26 when a ruling was obtained disallowing the registration of the first-filed trademark.
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Our firm provides full support in a wide range of ways for general incorporated associations and business cooperatives, from domestic and international trademark searches and trademark registration applications to consultations regarding the use and management of trademarks after registration! Please use all means!