Trademarks/Designs

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In recent years, trademarks have become increasingly important from the standpoint of differentiation from other companies and stability of profits through price premiums. Additionally, with the globalization of the market, it is desirable to establish a brand with a trademark that is unified throughout the world.

The value of a brand is recognized only when the rights are acquired, and unless the rights are acquired, it is currently difficult to eliminate unauthorized use of the brand by other companies and imitation products. If we do not eliminate unauthorized use, etc., we will not be able to differentiate ourselves from others and will lose the price premium that guarantees stable profits.

We have established a Legal Strategy Department that is in charge of trademarks, designs, copyrights, measures against counterfeit products, etc., and this department is made up of lawyers, patent attorneys, and specialized staff, and works closely with support offices in each country as appropriate. While doing so, we have established a system that can support the acquisition and utilization of your brand in Japan and abroad.

If you have any requests or inquiries regarding brand protection in Japan or abroad, please feel free to contact us. Our entire staff will respond quickly and appropriately.

 

troubleshooting

Trademark trouble

Once a trademark is registered and a trademark right arises, the trademark right holder has the right to protect against the infringer of the trademark right.

① Right to request an injunction
② Right to claim compensation for damages
③ Right to request credit recovery measures

Three types of claims are recognized:
Additionally, by completing certain procedures, you can request an import suspension at customs.

The scope of rights for a registered trademark is specified in the application."trademark""Designated goods or designated services"will be judged based on. Therefore, even if the trademarks are exactly the same, if the goods or services are completely different, trademark rights will not apply. Therefore, the above claims cannot be exercised against such acts (although there may be cases where the above claims can be exercised based on the Unfair Competition Prevention Act).
Furthermore, the effect of trademark rights extends not only to trademarks that are exactly the same as the "trademark" stated in the application, but also to similar trademarks. Furthermore, it also extends to goods or services similar to the "designated goods or designated services" stated in the application.

Measures to be taken by trademark right holders


The starting point is to discover that a registered trademark or a trademark similar to a registered trademark is being used for designated goods, designated services, or similar goods or services without the permission of the trademark owner. There is no special method for discovering such facts. Steady efforts are required, such as gathering information from employees and business partners, including customers, and searching the Internet. Also, please check whether the trademark rights have expired and whether they are actually being used.

Although it is obvious if the two are the same, it is often difficult to determine whether they are similar or not. In addition, even if you think that the products are similar, there are cases where the judgment or trial decision determines that the products are dissimilar. Therefore, apart from cases where the products are exactly the same, if there are any slight differences, please contact us.

▼ORDS


Once unauthorized use of a trademark is discovered, it is necessary to collect information and evidence about the other party. For example, the other party's address, name, and if the product is a product, its producer and distribution route. If the item is relatively inexpensive, one way is to purchase it and secure the actual item. If possible, take photos as they may be useful as evidence later. Also, it is quite difficult to completely elucidate the distribution route, so it is fine to understand as much as possible. However, if you follow the distribution route, you may find that it is an imported product. In that case, you will also need to consider procedures at customs.
▼ORDS


If we proceed with the above investigation and determine that there is a high possibility of trademark infringement based on the opinions of experts such as ourselves, we will negotiate with the other party. It will start with a written notice. Depending on the recipient, in some cases we start with a letter of inquiry, and in others we immediately send a certified mail.
After that, if the matter can be resolved through written negotiations, it would be desirable to create a "memorandum" or other document and put it in writing.
If negotiations break down, one way is to leave the matter alone, but if you decide to fight, the dispute will be resolved through litigation or arbitration.

 

What to do if you are accused of trademark infringement

When receiving documents such as certified mail from a trademark right owner, it is often difficult to know what to do. In such cases, please contact us as soon as possible. There is usually a deadline for responding written in the letter, so it is important to adhere to that deadline.

The main matters that we will check or confirm when we receive your consultation are as follows.

   ① Whether or not the other party's trademark rights remain valid.
   ② The other party's trademark and your company's trademark
   ③ The other party's designated goods or designated services and the goods or services for which your company uses the trademark
   ④ Whether or not it is possible to change your company's trademark in question
   ⑤ When did you start using your company's trademark?
   ⑥ What is the relationship between the trademark right holder and your company?

Based on the above considerations, we will consider whether the trademarks, goods or services are similar. How will you respond? In other words, will you respond that the trademark is dissimilar? Will you take steps to extinguish the trademark rights? Will you change the trademark? Or will you want the trademark to continue to be used? We will advise you on specific countermeasures.

If the matter can be resolved in writing or through face-to-face negotiations, it would be advisable to create a memorandum of understanding and put it in writing.

When negotiations break down, it is normal to take countermeasures depending on the other party's behavior. It is also possible to request a determination from the Japan Patent Office and obtain an opinion as to whether the use of your company's trademark falls within the scope of the other party's trademark rights. Furthermore, if you are certain that there is no infringement of trademark rights, one method is to file a lawsuit preemptively.

 

 

Design troubles

Once a design is registered and a design right is created, the design right holder has three types of claims against the infringer of the design right: (1) the right to seek an injunction, (2) the right to claim compensation for damages, and (3) the right to claim measures to restore credit. It is accepted. Additionally, by completing certain procedures, you can request an import suspension at customs.

The scope of rights to a registered design is determined based on the "name of the article" and "drawings" or their substitutes (photos, etc.) stated in the application. Therefore, even if the design (form) is exactly the same, if the name of the product is completely different, the effect of the design right will not apply. Therefore, the above claims cannot be exercised against such acts. Furthermore, the effect of a design right extends not only to designs that are exactly the same (form) as the "design" (form) stated in the application, but also to similar designs. Furthermore, it also extends to items similar to the "articles" listed in the application. Additionally, in the case of partial designs, the only issue that matters is whether the scope for which rights are sought is the same or similar.

Based on the above, below we will briefly explain the steps that should be taken to resolve problems from the standpoints of both the design right holder and the person who is accused of infringing the design right.

Measures to be taken by design right holders

 

The starting point is to discover that a registered design or a design similar to a registered design has been implemented without the permission of the design right holder. There is no special method for discovering such facts. Steady efforts are required, such as gathering information from employees and business partners, including customers, and searching the Internet. Also, please check whether the design right has been extinguished due to non-payment of pension, etc.

Although it is obvious if the two are the same, it is often difficult to determine whether they are similar or not. In addition, even if you think that the products are similar, there are cases where the judgment or trial decision determines that the products are dissimilar. Therefore, apart from cases where the items are exactly the same, if there is even a slight difference, we recommend that you consult with an expert such as us, as the scope of similarity often differs depending on the field of the item.

▼ORDS
 

Once these facts have been discovered, it is then necessary to gather information and evidence about the other party. For example, the address, name, producer, distribution route, etc. of the other party. If the item is relatively inexpensive, one way is to purchase it and secure the actual item. If possible, take photos as they may be useful as evidence later. Also, it is quite difficult to completely elucidate the distribution route, so it is fine to understand as much as possible. However, if you follow the distribution route, you may find that it is an imported product. In that case, you will also need to consider detention procedures at customs.

In parallel with this, it is advisable to check the validity of the design right to the extent possible. If the registered design or a design similar to it becomes publicly known not only in Japan but elsewhere in the world before the application for the registered design is filed, the design right will become invalid and the right will not be allowed to be exercised. At the very least, it is advisable to check the drawings published in patent publications and utility model publications.

▼ORDS
 

If we have proceeded with the investigation to this point and determined that there is a high possibility of infringement of the design right based on the validity of the design right and the opinions of experts such as ourselves, we will begin negotiations with the other party. . It will start with a written notice. Depending on the recipient, in some cases we start with a letter of inquiry, and in others we immediately send a certified mail.
After that, if the matter can be resolved in writing or through face-to-face negotiations, it would be advisable to create a memorandum of understanding and put it in writing.

If negotiations break down, one way is to leave the matter alone, but if you decide to fight, the dispute will be resolved through litigation or arbitration.

 

What to do if you are accused of infringing a design right

When receiving documents such as certified mail from a design right holder, it is often difficult to know what to do. In such cases, we recommend that you consult a specialist such as us as soon as possible. There is usually a deadline for responding written in the letter, so it is important to adhere to that deadline.
The main matters that experts such as us will check or confirm when you consult with us are as follows.

   ①Whether or not the other party's design right remains valid.
   ②The other party's design and your company's design
   ③Whether or not an investigation was conducted to invalidate the other party's design right.
   ④ Whether or not it is possible to change the design of your company in question
   ⑤What is the relationship between the design right holder and your company?

Based on the above considerations, we will consider whether the designs are similar or whether there are grounds for invalidation. Then, how do you respond? Do you respond by stating that the design is dissimilar? Do you take measures to extinguish the other party's design rights? Do you respond by changing the design? Or do you respond by saying that you would like to continue working the design? We will advise you on specific measures to take.
If the matter can be resolved in writing or through face-to-face negotiations, it would be advisable to create a memorandum of understanding and put it in writing.

When negotiations break down, it is normal to take countermeasures depending on the other party's behavior. It is also possible to request a determination from the Japan Patent Office and obtain an opinion as to whether the use of your company's design falls within the scope of the other party's registered design and its similar designs. Furthermore, if you are certain that there is no infringement of design rights, one way is to take a proactive approach and file a lawsuit.

Infringement assessment

When alleging that your company's design rights are being infringed

・In order to claim that your company's design rights are being infringed, it is useful to conduct an expert opinion before sending a warning letter to another company.
・You can submit an expert opinion report to the court as evidence.

If your company claims to be non-infringing

・If your company receives a warning letter regarding design rights infringement, you can use the expert opinion to argue that there is no infringement.
・You can try to resolve the dispute by presenting the appraisal report to the other party.
・You can submit an expert opinion report to the court as evidence.

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