Trademark trouble consultation

Introducing cases of troubles related to trademarks

HARAKENZO WORLD PATENT & TRADEMARKBy preventing the following troubles through trademark registration, we contribute to the development of a healthy social economy, which is the purpose of the Trademark Law.

 

Q. I used it without applying and when it became popular, it was copied. What should I do.

A. If you do not register your trademark, you will not be able to stop imitations (request for an injunction to stop infringing acts), claim compensation for damages, request for return of unjust enrichment, or request measures to restore trust. Furthermore, unless your trademark is recognized as well-known or well-known, you may be required to pay damages or be forced to change your product name.Trademarks are also one of your most important assets. To protect your intellectual property, we recommend filing as soon as possible.

*Prior use rights may be granted in exceptional cases, but only if the property has been used continuously in good faith and has become well known.

*Please note that if the other party's actions cause confusion with "display of well-known/famous products, etc.", it may be a violation of the Unfair Competition Prevention Act. However, it is difficult to prove that it is well known or famous.

Trademark Explanation Corner 1 - What is a trademark? ~

[What is trademark right]

○What is a trademark?
A symbol or mark used to distinguish one's products or services from others.

○What is trademark right?
The right to use the trademark exclusively.

○The purpose of trademark law is
By protecting trademarks, we protect the trust of businesses and the safety of consumers. (Article 1 of the Trademark Law)

○What kind of trademarks are there?
There are word trademarks, symbol trademarks, figure trademarks, three-dimensional trademarks, combination trademarks, etc.

Q. I came up with the name myself, but when I used it, I was told it was an infringement.

A. Even if you come up with the name yourself, you cannot continue to use it legitimately unless you register it as a trademark.
(This is called registration principle). Also, not just any name can be registered, but only those that have the intention to use it and have the ability to identify it. Furthermore, trademarks that may cause misunderstanding, are similar to well-known trademarks, or violate public order and morals cannot be registered.Please be aware that even if you think about it and use it yourself, like the person who consulted, the person who applied and registered it first may claim that it is a copyright infringement.

Trademark Explanation Corner 2 - What is trademark registration? ~

[What is trademark registration?]

○Trademark application
The mark and designated product are set together.

○ One trademark, one application principle
Only one trademark can be applied for in one application.

○Registration principle
Since it is difficult to judge whether or not it has been used as a requirement for registration, the basis of Japanese trademark law is that it can be registered if the requirements are met (However, from a usage-based standpoint, such as the non-use cancellation system, (Some things have been corrected.)

<About registration requirements>

Not just any mark can be registered.

The substantive examination will examine whether the registration requirements are met.

① There is an intention to use it (Article 3 of the Trademark Law)

② Must have the ability to distinguish one's own products from others (power to indicate source) (Article 3 of the Trademark Law)

Confusing trademarks such as common names, commonly used trademarks, descriptive trademarks, extremely simple and common trademarks cannot be registered because they lack the ability to distinguish one's own products from others.

③ There are no grounds for non-registration (Article 4, Paragraph 1 of the Trademark Act)

○Example of absolute reasons for non-registration

Trademarks that are against the public interest cannot be registered (similarity to official marks, misidentification of quality or origin, etc.).

○Example of relative non-registration reasons

From the perspective of protecting private interests, trademarks that can be confused with other people's registered trademarks (first-filed trademarks, used trademarks, names and portraits of others) cannot be registered.

○First-to-file principle

The Japan Patent Office does not allow registration of identical or similar trademarks for identical or similar goods or services.

Therefore, it is necessary to apply for a trademark before it is registered by someone else.

○ Written principle

Goods and services must be listed in the application based on trademark law.

The selection of specified products is very important, so please feel free to contact us.

○Differences in system from patent

There is no system for requesting patent examination, and examination will be conducted without a request.

There is also an application publication system.

<Reference>

*Denial of trademark use
It is not an infringement unless someone else's trademark is used on a product ``as a trademark'' in a way that impairs the ability to distinguish the source.

*What are the countermeasures to continue using the name that was used without trademark registration?
There are defenses of usage rights, defenses of abuse of rights, etc.

Q. My registered trademark was canceled when I changed it inappropriately and used it. Is it prohibited to use a registered trademark with even the slightest change?

A. It is acceptable if the trademark is the same as the registered trademark in terms of social convention.(Article 50 of the Trademark Law)
(Ex)
Changes in typeface, changes to hiragana, katakana, and romaji (although they have the same name and concept), figures that are considered the same in appearance, etc.

Please note that non-use for 3 years will result in a cancellation request.
Make sure to keep evidence of your use of the trademark.

Trademark Explanation Corner 3 ~Trademark Law System~

[Efficacy of trademark rights]

The trademark owner has the right toExclusive rightright to prohibitis given.

○ Exclusive right: the right to monopolize the use of a registered trademark for designated goods (or services) (Article 25 of the Trademark Law)

○Right to prohibit: the right to exclude others from using similar areas (Article 37 of the Trademark Law)

<Scope of trademark rights>

 Designated goods/services
SameSimilardissimilar
商標SameExclusive rightright to prohibit×
Similarright to prohibitright to prohibit×
dissimilar×××

Trademark rights do not apply to items marked with an x.
(Exclusive rights may be referred to as exclusive use rights, or usage rights depending on the book.)

*However, the scope of trademark rights does not apply.
These include the use of own names, common names, descriptive trademarks, commonly used trademarks, etc.

*Japanese trademark rights do not extend to foreign countries, so when doing business in a foreign country, it is important to obtain rights in that country. Please refer to the page about foreign trademarks.

<What are the criteria for determining similarity? >

Whether there is a risk of source confusion is mainly determined based on whether the name (pronunciation), concept (meaning), and appearance are confusing. (Specific transaction circumstances will be taken into consideration.)

[Measures that can be taken if trademark rights are infringed]
・Right to request an injunction
・Right to claim compensation for damages
・Right to claim return of unjust enrichment
・Right to request credit recovery measures
・Pursuit of criminal liability

[Measures you can take if you receive a warning of trademark infringement]
·I object
・Invalidation trial
・Request for cancellation of non-use
・Request for cancellation of unauthorized use

[Examples of risks that may occur if a trademark is unregistered]

- If a trademark is used without being registered, it becomes difficult to receive protection from acts of unfair competition and infringement.

⇒You may infringe on another company's trademark rights and have to pay compensation.

-If your trademark is applied for and registered by someone else first, you will no longer be able to use your trademark unless the right of prior use is granted.

⇒You will be forced to change your company's trademark.

<Reference>

*What is prior user right?
As an exception, even if the trademark is unregistered, it is allowed to continue to be used in good faith (not for the purpose of unfair competition), continued use (from before another person's application), and well-known (famous to some extent among consumers) trademarks.

*What is the Unfair Competition Prevention Act?
It stipulates protection provisions for unregistered but well-known and well-known trademarks.

(Source: Japan Patent Office Trademark Examination Practice Study Group, Basic Knowledge of Trademark Practice and Japan Patent Office HP)

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