Ken1 Recent Developments of Japanese Trademark Practice October 29, 2003 Japan Trademark Association Kenichi Nakayama Matsubara, Muraki & Associates

Ken2 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

Ken3 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

Ken4 Amendments of Unfair Competition Law The 1996 revision –Strengthening protection of famous mark The 2001 revision –Measure against cyber-squatting

Ken5 Protection of well-known/famous marks1 Int’l conventions –Paris Convention Sec. 6bis –TRIPS Art. 16(2), (3) Trademark Law –Art –Art –Art (the 1996 amendment) –Defensive Mark Unfair Competition Law

Ken6 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

Ken7 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

Ken8 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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Ken11 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

Ken12 Protection of 3D Marks 3D Trademark Registration under Trademark Law Unfair Competition Law Art Art and 2

Ken13 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.

Ken14 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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Ken16 Maglight Case Plaintiff products –3D TM registration rejected in the JPO Defendant Products

Ken17 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

Ken amendments of Trademark Law (1) The amendments have been effective from Jan. 1, 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.

Ken amendments of Trademark Law (2) 2) Introduction of laid-open of pending applications 3) Post grant amendments 4)Examination time period

Ken20 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.

Ken21 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.

Ken22 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

Ken23 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

Ken24 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.

Ken25 The 2002 Amendments Effective from September 1, 2002 As to the definition of use of trademark(service mark)

Ken26 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

Ken27 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

Ken28 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

Ken29 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

Ken30 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

Ken31 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

Ken32 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))

Ken33 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.

Ken34 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.

Ken35 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

Ken36 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)

Ken37 Unfair Competition Law Protection of well-known product/business source identifier(Art ) Protection of famous or highly well-known product/business source identifier(Art )

Ken38 Art 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

Ken39 Art 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

Ken40 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

Ken41 JACCS Case (2) Issue –Whether the use of “jaccs.co.jp” as domain name and “JACCS” in website constitutes unfair competition

Ken42 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 of Unfair Competition Law

Ken43 J-PHONE Case Domain Name: j-phone.co.jp Plaintiff:Telecommunication company Defendant: Trading company (importer)

Ken44 J-PHONE Case (2) Issue –Whether the use of “j-phone.co.jp” as domain name and “J-PHONE” in website constitutes unfair competition

Ken45 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 of Unfair Competition Law

Ken46 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

Ken47 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

Ken48 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

Ken49 Arbitration (2) Arbitration before the Arbitration Center for Intellectual Property of Japan has been available since Oct. 19, 2000 Costs: –3 panelistsJP\ 360,000 –Sole panelistJP\ 180,000

Ken50 Arbitration (3) Statistics (as of October, 2003) –24 cases filed –3 cases withdrawn –17 cases for Complainant –2 cases pending

Ken51 Statistics The number of filed applications & registrations YearApplicationsRegistrations ,861123, ,668 94, ,755 93,548

Ken52 THANK YOU