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The development of IT technology has been remarkable, and it is no exaggeration to say that we all benefit from it every day. The market size of the IT industry is expanding year by year, with an average annual growth rate of 2014% from 2019 to 1.1, and the size of the domestic ICT market, which includes the domestic IT market and the telecommunications service business, is expected to be 2019 billion yen in 25.
Because of its scale, you probably use some kind of "name" for a large number of products and services and manage them. And with the development of IT technology, we can now see those "names" anytime, anywhere.
When conducting business, protecting the names of your company's products and services with trademark rights not only enables you to protect the business credibility that uses that "name," but also has the effect of benefiting consumers, in other words, making it clear to them who manufactured or provided a certain product or service and what its quality is.
We hope that all IT companies will understand the importance of trademark registration and use this page accordingly.
Designated goods and services in the IT industry
The IT industry is divided into four detailed industries: hardware, software, internet, and information processing services. Below, we will introduce examples of products/services for which trademarks may be used in each of the above industries.
- Hardware Industry
Class 9: Mobile phones, smartphones, notebook computers, storage batteries, semiconductors, etc.
Class 42: Advice on computer hardware design and development, Advice on information technology (IT), etc.
- Software Industry
Class 9: "downloadable computer software program", "computer program (stored)", "computer software (stored)", "computer operating program (stored)", etc.
Class 42"Advice on the design, creation and maintenance of computer software," "Design of computer software," "Maintenance of computer software," "Advice on information technology (IT)," etc.
- Internet Industry
Class 35: "Online advertising on computer networks," "Provision of business information via websites," "Provision of benefits to customers in the retail or wholesale business of printed matter via the Internet," etc.
Class 42: "Provision of search engines", "Advice on information technology (IT)", etc.
- Information processing services industry
Class 9: "Internet downloadable programs for mobile phones", "downloadable programs for smartphones and mobile information terminals", etc.
Class 35"Providing benefits to customers in the retail or wholesale business of downloadable videos and images," etc.
Class 38: "Telephone communication using the Internet," "Email communication," "Transmission and exchange of audio, video and text data," "Provision of Internet connection," etc.
Class 41"Providing images or videos of characters via the Internet or computer networks" etc.
Class 42"Construction of a social network system via electronic communication networks and optical communication networks," "design of computer systems," "provision of information on computer technology and computer programming via websites," "advice on website design," "advice on information technology (IT)," etc.
Class 45: "Providing online social networking services," "Introductions for socializing," "Creating social networks online," etc.
As mentioned above, goods/services may be similar even if they are in different industries. For example, "information technology (IT) advice" is classified in Class 42 and may be common to all industries. Since the industries are similar, obtaining a trademark right is very important to avoid unknowingly infringing on rights.
Next, we will explain in detail what you should pay attention to, using incidents and lawsuits in the IT industry as examples.
Recent incidents in the IT industry
① Chupa Chups Case (Intellectual Property High Court, February 24.2.14, 22 [Heisei 10076 (Ne) XNUMX])
In this case, an Italian company, which is the rights management entity, filed a lawsuit against Rakuten, the operator of the internet shopping mall Rakuten Ichiba, claiming that its trademark rights had been infringed when products bearing the Chupa Chups lollipop logo were sold without permission on the online shopping mall Rakuten Ichiba.
In the first instance, the Tokyo District Court ruled that "it was the seller who sold the product that infringed trademark rights, not the operator, Rakuten. Rakuten merely provided a "place" for sales, and this does not constitute trademark infringement." However, in a subsequent ruling by the Intellectual Property High Court, the court basically upheld the first instance ruling and rejected the request for an injunction or damages, but also suggested that to a certain extent it may constitute aiding and abetting violation of the Trademark Act. In this case, the seller was not found to have offered a trademark infringing product, and as the seller responded quickly by deleting the seller's page within eight days of becoming aware of it, it was not deemed to have aided and abetted.
In this way, online mall operators can also be held liable for trademark infringement.
Now let's look at some other examples.
② Sky trademark infringement lawsuit (July 25.7.31, XNUMX, settlement between Microsoft and BSkyB)


This is a case in which British Sky Broadcasting Group (commonly known as BSkyB), a company known for its paid satellite broadcasting service, sued Microsoft's SkyDrive for trademark infringement.
The "average user" may well understand that SkyDrive is a Microsoft service. However, the lawsuit cited many cases where SkyDrive was mistakenly thought to be a service by BSkyB. In the past, Microsoft had used the terms "Windows Live SkyDrive" and "Microsoft SkyDrive," but it had been using only "SkyDrive" for several years before the lawsuit, which is likely why confusion arose.
As a result, BSkyB won the case by allowing BSkyB to continue using the SkyDrive name only for the period necessary to transition to the new brand, on the condition that Microsoft would not appeal. As a result, Microsoft is now developing the service as "OneDrive" instead of "SkyDrive".
”HARAKENZO more" supports everyone in the IT industry
In recent years, the IT industry has been constantly growing, and as a result of this development, trademarks have become increasingly important as they protect the ever-expanding range of services and products and support brands.
”HARAKENZO more "We would like to be of service to those in the IT industry in protecting their intellectual property, so please feel free to contact us for any inquiries.