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Recent Developments of Japanese Trademark Practice

October 29, 2003

Japan Trademark Association

Kenichi Nakayama

nakayama@ip-mandm.com

Matsubara, Muraki & Associates

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• Intro.

• Protection of Well-known/famous marks

• Protection of three dimensional trademarks

• The 1999 Amendments of Trademark Law

• The 2002 Amendments of Trademark Law

• Possible Further Amendments

• Domain name issues

・ Statistics

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Amendments of TM Law• The 1996 revision

– Harmonization w/TLT– Post-grant opposition– Strengthening protection of famous marks– Intro. of 3D TM

• The 1999 revision- Harmonization w/Madrid Protocol

• The 2002 revision– Definition of use

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Amendments of Unfair Competition Law

• The 1996 revision

– Strengthening protection of famous mark

• The 2001 revision

– Measure against cyber-squatting

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Protection of well-known/famous marks1• Int’l conventions

– Paris Convention Sec. 6bis– TRIPS Art. 16(2), (3)

• Trademark Law– Art. 4-1-10– Art.4-1-15– Art. 4-1-19(the 1996 amendment)– Defensive Mark

• Unfair Competition Law

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Protection of well-known/famous marks under Exam.Guidelines

• Any mark combined with well-known/famous mark deemed as unregistrable.

• Publishing a list of well-kown/famous marks in the web HP of Patent Office

• Marks shown in the “Famous Marks in Japan” published by Japanese group of AIPPI deemed as well-known/famous marks

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Unfair Competition Law

• Protection of well-known product/business identifier

- Art. 2, Para.1, Item 1• Protection of famous product/business identifier

- Art. 2, Para. 1, Item 2• Prohibition of dead-copy of product configuration

- Art. 2, Para.1, Item 3

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Protection of Well-Known Product/Business Identifier

• Elements

- Using product/business identifier of other party or product/business identifier similar thereto- that is distinctive to indicate a certain source of product/business- and well-known among consumers- such use of product/business identifier of other is likely to cause confusion as to the source of products- business interests of πis injured or likely to be injured by the use of the product/business identifier

• Case – Issey Miyake Pleats Please case Apple iMac case

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Protection of Famous Product/Business Identifier

• Elements

- Using product/business identifier of other or product/business identifier similar thereto

- that is distinctive to indicate a certain source of product/business

- and famous among consumers

- business interests of πis injured or likely to be injured by the use of the product/business identifier

- NO requirement of likelihood of confusion

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Protection of 3D Marks

• 3D Trademark Registration under Trademark Law

• Unfair Competition Law

Art. 2-1-3

Art. 2-1-1 and 2

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Examination guidelines re: 3D marks (1)

• Even if applied for as a 3D mark in an application form, any mark not constituting such a 3D mark in view of drawing of the mark is unregistrable as a 3D mark.

• For example, a mark shown in drawing as one composed of 3D objective and characters totally separate therefrom is unregistrable as a 3D mark.

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Examination guidelines re: three-dimensional marks (2)

• A 3D mark must be inherently distinctive or have acquired secondary meaning through use.

• A 3D mark comprising 3D objective not inherently distinctive combined with distinctive characters and/or logos etc. may be registrable as a distinctive mark.

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Maglight Case

• Plaintiff products– 3D TM registration rejected in the JPO

• Defendant Products

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Prohibition of Dead-Copy• Elements

- Dead-copying other party’s product configuration

- within three years from the first sale of the product of other party (in Japan or any other country)

- Selling, importing etc. of dead-copy counterfeit

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1999 amendments of Trademark Law (1)

• The amendments have been effective from Jan. 1, 2000.

• The amendments are made on the ground of Japan’s joining Protocol relating to the Madrid Agreement.

• The following are the major items, among the amendments, not exclusively applicable to applications filed based on the Protocol . 1) Recovery of damages incurred prior to a trademark registration.

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1999 amendments of Trademark Law (2)

2) Introduction of laid-open of pending applications

3) Post grant amendments

4)Examination time period

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Recovery of damages incurred prior to registration(Art.13-2)(1)

• A warning or C&D letter including the filing particulars of a pending application.

• Recoverable monetary damages equivalent with any business loss incurred by any unlawful use of a mark applied for or a similar mark in connection with any goods/services mentioned in the application or those similar thereto after said letter.

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Recovery of damages incurred prior to registrations(Art.13-2)(2)• The “business loss” appears to mean any

loss suffered due to the applicant’s doing business. Thus, in order to enjoy this remedy the applicant appears to have to be doing business in connection with which a mark applied for is used.

• This remedy is only enforceable after the mark applied for is registered.

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Laid-open of pending applications(Art. 12bis)

• Publishing the following filing particulars of pending applications in an official gazettes.- Name and address of an applicant(s)- An application number and filing date- A mark applied for- Designated goods/services- Other matters, if necessary

・ Int’l applications published in English and they may also be published in Japanese

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Post grant amendments

• Possible to reduce the original numbers of classes of goods/services at the time of paying registration fees to avoid excessive payments.

• Expecting to reduce the numbers of unnecessary registrations

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Examination time period

• Shorten the time period of examination

- Within 18 months from the filing date (or the date of satisfying all formality requirements) an examiner shall issue a first office action regarding registrability.

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The 2002 Amendments

• Effective from September 1, 2002

• As to the definition of use of trademark(service mark)

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Background

• Rapid development and expansion of network business in recent years

• As a result, provision of commodities or services on the Internet has been promoted

• However, existing legislation (old law) was drawn up with trademarks attached to tangible items in mind

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Needs(1)

• In view of such rapid expansion of net business or provision of commodities or services via Internet sufficient protection for trademarks displayed on the screens of PCs and mobile phones of users is needed

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Needs(2)

• Under such circumstances, the amendments is intended to show clearly – Such activities as to use of trademarks by

displaying them on screens in conjunction with business activities such as commodity distribution, rendering of services, and advertising via networks

– Falls under the category of trademark infringement

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Particulars of Amendments(1)

• Art. 2, Para. 3, Item 2(amended)– Acts of assigning, delivering, displaying for the

purpose of assignment or delivery,(or )importing, or providing via telecommunication circuit, the goods on which or on the packaging of which a mark has been applied

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Particulars of Amendments(2)

• Id. Item 7(added)– In case of rendering services through screen by

utilizing electromagnetic methods (including electronic methods, magnetic methods, and other methods unrecognizable by human-being perception), acts of displaying a mark on the screen and rendering services

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Particulars of Amendments(3)

• Id. Item 8(amended)– Acts of displaying or distributing

advertisements relating to the goods or services, price list or business papers with respect to the goods or articles on which a mark has been applied, or providing, via the electromagnetic methods, information containing such advertisements, price list or business papers with applying a mark

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Other Amendments

• Amendment re:payment of official fees for applications filed based on the Protocol relating to the Madrid Agreement

– Fees payable in tow parts; filing fee and registration fee

• The above reflects the recent change of Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement effective from April 2002(Rule 34 (3))

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Possible Further Amendments(1)

• The Intellectual Property Policy Section of the Industrial Structure Council affiliated to Ministry of Economy, Trade and Industry (METI) is now studying the possible amendment of Japanese Trademark Law.

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Possible Further Amendments (2)• It is now discussing

– i) expansion of scope of registrable marks to cover, for example, sound mark and other non-traditional trademark

– ii) introduction of consent system or consent from a proprietor of prior mark to overcome rejection based on such a prior mark and reviewing the definition of use of mark.

• It is aiming amendment of the Trademark Law in 2005.

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Domain Names and Trademarks

• Both work as product/service origin identifier

• Both trademark registration system and domain name registration system adopts the first-to-file principle

• No cross-reference between the above two registration systems

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Major Vehicles for Domain Name Dispute Resolution

• Negotiation

• Arbitration before the Arbitration Center for Intellectual Property of Japan

• Legal Actions– Trademark Law– Unfair Competition Law– Torts (Sec.709 of Civil Law)

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Unfair Competition Law

• Protection of well-known product/business source identifier(Art. 2-1-1)

• Protection of famous or highly well-known product/business source identifier(Art. 2-1-2)

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Art. 2-1-1

• Elements– Using product/business source identifier

identical with or similar to that of other party – That is distinctive to indicate a certain source of

product/business– And well-known among consumers– Such use of product/business identifier of other

is likely to cause confusion as to the source of products/business

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Art. 2-1-2

• Elements– Using product/business source identifier

identical with or similar to that of other party – That is distinctive to indicate a certain source of

product/business– And famous or highly well-known among

consumers– NO requirement of likelihood of confusion

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JACCS Case

• The first case for Japanese courts to apply unfair competition law to domain name dispute

• Plaintiff: credit card company using trademark JACCS

• Defendant: company doing business of selling and leasing prefabricated toilet units

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JACCS Case (2)

• Issue– Whether the use of “jaccs.co.jp” as domain

name and “JACCS” in website constitutes unfair competition

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JACCS Case (3)

• Holding– Such use of the domain name has, together with

the use of “JACCS” in the website, function of product source identifier

– Thus, it constitutes violation of Art. 2-1-2 of Unfair Competition Law

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J-PHONE Case

• Domain Name: j-phone.co.jp

• Plaintiff: Telecommunication company

• Defendant: Trading company (importer)

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J-PHONE Case (2)

• Issue– Whether the use of “j-phone.co.jp” as domain

name and “J-PHONE” in website constitutes unfair competition

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J-PHONE Case (3)

• Holding– Such use of the domain name has, together with

the use of “JACCS” in the website, function of product source identifier

– Thus, it constitutes violation of Art. 2-1-2 of Unfair Competition Law

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J-PHONE Case (4)

• Reasoning– In case a domain name at issue comprises a specific

noun, Internet users generally think the person identified by such a specific noun is a holder of the domain name

– In case a website identified by a domain name at issue providing information as to sales of goods etc. or offering sales of goods, the domain name can have function as product source identifier for the said goods appearing in the website

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Revision of Unfair Competition Law in 2001

• Obtaining, holding or using a domain name • Such domain name is identical with or

similar to product/business source identifier such as trademark owned by another person

• Purpose of gaining unfair interests or causing damages to such another person

• Constituting unfair competition• Became effective in 2001

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Arbitration

• UDRP• Elements

– (1) The Domain Name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

– (2) The Respondent has no rights or legitimate interests in respect of the Domain Name

– (3) The Domain Name at issue is registered and is being used in bad faith

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Arbitration (2)

• Arbitration before the Arbitration Center for Intellectual Property of Japan has been available since Oct. 19, 2000

• Costs:– 3 panelists JP\ 360,000– Sole panelistJP\ 180,000

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Arbitration (3)

• Statistics (as of October, 2003)– 24 cases filed– 3 cases withdrawn– 17 cases for Complainant– 2 cases pending

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Statistics • The number of filed applications &

registrations 　Year Applications Registrations

1999 121,861 123,656

2000 145,668 94,493

2001 123,755 93,548

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THANK YOU