2023.12.28
Review of Systems for Deployment of Brand Strategy Utilizing Trademarks
TRADEMARK
Review of Systems for Deployment of Brand Strategy Utilizing Trademarks
In June 2023, the "Act for Partial Revision of the Unfair Competition Prevention Act etc." was passed and enacted. In this Newsletter, we explain mainly revision of the Trademark Act included therein.
The subject revision includes the following two key points:
1. Relief of requirements for registration of trademarks containing the name of another person; and
2. Introduction of the "consent system."
1. Relief of Requirements for Registration of Trademarks Containing Name of Another Person
Under the current Trademark Act, in view of protection of moral interests of another person, trademarks containing the name of another person cannot be registered without obtaining approval of that person.
<Current Trademark Act, Article 4(1)(viii) >
•...if the trademark contains the portrait of another person, or the name, well-known pseudonym, professional name, or pen name of another person, or well-known abbreviation thereof (except those the registration of which has been approved by the person concerned) .
That is, under the current system, regardless of the field of goods or services for which the trademark is used, if there are two or more "other persons," the trademark cannot be registered without obtaining approval of all the "other persons" concerned. This provision is practiced strictly in Japan, resulting in a situation where even a well-known trademark as a brand name is not granted for trademark registration if it is impossible to obtain approval of all the "other persons" concerned.
Thus, it has been demanded to relieve the requirements under this provision, mainly in the fashion industry, where a founder's or designer's name is often used in the brand name.
Further, various foreign countries have an established system for registration of trademarks containing the name of another person, that requires the recognition of the name of that person, and thus, the provision should be reviewed in view of international harmonization.
Under the revised Trademark Act, even if there are two or more "other persons," it is sufficient to obtain the approval from only "another person" well-recognized in the field of the goods or services for which the trademark is used. It is believed that trademarks containing the name of another person will be granted for trademark registration more easily. It is expected that the required level of name recognition will be discussed in future.
<Revised Trademark Act, Article 4(1) (viii) >
•…if the trademark contains the portrait of another person, or ,the name, (limited to the name widely recognized among consumers in the field of the goods or services for which the trademark is used), well-known pseudonym, professional name or pen name of another person, or well-known abbreviation thereof (except those the registration of which has been approved by the person concerned), or if the trademark contains the name of another person and fails to comply with the requirements under Cabinet Order.
Further, under the subject revision, a trademark which contains "the name of another person" and "fails to comply with the requirements under Cabinet Order" is not granted for trademark registration.
This is a provision for taking into consideration circumstances surrounding the applicant (e.g., whether the application has justified reasons), aiming at prevention of abusive applications, such as applications in bad faith by an irrelevant party. Specific requirements under Cabinet Order are now under discussion, but this provision will come to make it easier to protect the applicant's benefits.
2. Introduction of Consent System
Under the current Trademark Act, trademarks identical or similar to another person's prior registered trademark to be used in connection with identical or similar designated goods or designated services are not granted for trademark registration.
•...trademark identical or similar to another person's registered trademark relevant to a trademark application prior to the filing of the trademark application concerned, which is to be used in connection with designated goods or designated services of that registered trademark or designated goods or designated services similar to those of that registered trademark…
That is, under the current provision, even if the applicant obtains consent of the right holder of the prior registration, any trademark that falls under the Article 4(1)(xi) is not granted for trademark registration, and the only measure is the so-called "assign-back" (which means that the trademark application is temporarily assigned to the right holder of the prior registered trademark and then assigned back to the applicant after it is accepted for registration, or vice versa).
However, foreign countries have the established consent system, which permits coexistence of identical or similar trademarks if the right holder of the prior registration agrees. Thus, this provision was expected to be reviewed in Japan in view of the international harmonization.
The subject revision has newly introduced Article 4(4) to permit registration of the identical or similar trademark, if the applicant obtains the consent of the right holder of the prior registration and if the identical or similar trademark is unlikely to cause any confusion of source, regardless of the provision of Article 4(1)(xi).
<Newly Introduced Article 4(4) >
•...the provision is not applied to a trademark which falls under Article 4(1)(xi), if the applicant of trademark application obtains the another person's consent for trademark registration under the provision and if the trademark is unlikely to cause any confusion between the goods or services of the applicant for which the trademark is used and the goods or services relevant to business of the holder of the trademark right, or exclusive or non-exclusive right to use of the another person's registered trademark under the provision.
We believe that this makes it easier to conclude a global agreement between companies on trademarks. However, because in Japan it is also required that the trademark is "unlikely to cause any confusion," there may be a situation where the trademark is not granted for registration even if the applicant obtains the consent of the right holder of the prior registration. The degree of "unlikeliness to cause any confusion" will be further discussed in future.
Further, in connection with the introduction of the consent system, the Unfair Competition Prevention Act has also been revised. In detail, regarding the relationship between the prior registered trademark and the later registered trademark, even if either of the registered trademarks becomes well-known or famous, the right holder of the well-known or famous trademark is not permitted to request injunction of the other one based on the Unfair Competition Prevention Act.
3. Conclusion
In the revised Trademark Act, the requirements for registration of trademarks containing the name of another person are relieved, and the consent system is newly introduced, in view of the international harmonization. We believe that this makes it easier to plan brand strategy in deployment of business in Japan under the Trademark Act. Note that the revised Trademark Act will be enforced on April 1, 2024.
Yudai FUKUNISHI, Patent Attorney
yudai.fukunishi@rc-iplaw.com
The subject revision includes the following two key points:
1. Relief of requirements for registration of trademarks containing the name of another person; and
2. Introduction of the "consent system."
1. Relief of Requirements for Registration of Trademarks Containing Name of Another Person
Under the current Trademark Act, in view of protection of moral interests of another person, trademarks containing the name of another person cannot be registered without obtaining approval of that person.
<Current Trademark Act, Article 4(1)(viii) >
•...if the trademark contains the portrait of another person, or the name, well-known pseudonym, professional name, or pen name of another person, or well-known abbreviation thereof (except those the registration of which has been approved by the person concerned) .
That is, under the current system, regardless of the field of goods or services for which the trademark is used, if there are two or more "other persons," the trademark cannot be registered without obtaining approval of all the "other persons" concerned. This provision is practiced strictly in Japan, resulting in a situation where even a well-known trademark as a brand name is not granted for trademark registration if it is impossible to obtain approval of all the "other persons" concerned.
Thus, it has been demanded to relieve the requirements under this provision, mainly in the fashion industry, where a founder's or designer's name is often used in the brand name.
Further, various foreign countries have an established system for registration of trademarks containing the name of another person, that requires the recognition of the name of that person, and thus, the provision should be reviewed in view of international harmonization.
Under the revised Trademark Act, even if there are two or more "other persons," it is sufficient to obtain the approval from only "another person" well-recognized in the field of the goods or services for which the trademark is used. It is believed that trademarks containing the name of another person will be granted for trademark registration more easily. It is expected that the required level of name recognition will be discussed in future.
<Revised Trademark Act, Article 4(1) (viii) >
•…if the trademark contains the portrait of another person, or ,the name, (limited to the name widely recognized among consumers in the field of the goods or services for which the trademark is used), well-known pseudonym, professional name or pen name of another person, or well-known abbreviation thereof (except those the registration of which has been approved by the person concerned), or if the trademark contains the name of another person and fails to comply with the requirements under Cabinet Order.
Further, under the subject revision, a trademark which contains "the name of another person" and "fails to comply with the requirements under Cabinet Order" is not granted for trademark registration.
This is a provision for taking into consideration circumstances surrounding the applicant (e.g., whether the application has justified reasons), aiming at prevention of abusive applications, such as applications in bad faith by an irrelevant party. Specific requirements under Cabinet Order are now under discussion, but this provision will come to make it easier to protect the applicant's benefits.
2. Introduction of Consent System
Under the current Trademark Act, trademarks identical or similar to another person's prior registered trademark to be used in connection with identical or similar designated goods or designated services are not granted for trademark registration.
•...trademark identical or similar to another person's registered trademark relevant to a trademark application prior to the filing of the trademark application concerned, which is to be used in connection with designated goods or designated services of that registered trademark or designated goods or designated services similar to those of that registered trademark…
That is, under the current provision, even if the applicant obtains consent of the right holder of the prior registration, any trademark that falls under the Article 4(1)(xi) is not granted for trademark registration, and the only measure is the so-called "assign-back" (which means that the trademark application is temporarily assigned to the right holder of the prior registered trademark and then assigned back to the applicant after it is accepted for registration, or vice versa).
However, foreign countries have the established consent system, which permits coexistence of identical or similar trademarks if the right holder of the prior registration agrees. Thus, this provision was expected to be reviewed in Japan in view of the international harmonization.
The subject revision has newly introduced Article 4(4) to permit registration of the identical or similar trademark, if the applicant obtains the consent of the right holder of the prior registration and if the identical or similar trademark is unlikely to cause any confusion of source, regardless of the provision of Article 4(1)(xi).
<Newly Introduced Article 4(4) >
•...the provision is not applied to a trademark which falls under Article 4(1)(xi), if the applicant of trademark application obtains the another person's consent for trademark registration under the provision and if the trademark is unlikely to cause any confusion between the goods or services of the applicant for which the trademark is used and the goods or services relevant to business of the holder of the trademark right, or exclusive or non-exclusive right to use of the another person's registered trademark under the provision.
We believe that this makes it easier to conclude a global agreement between companies on trademarks. However, because in Japan it is also required that the trademark is "unlikely to cause any confusion," there may be a situation where the trademark is not granted for registration even if the applicant obtains the consent of the right holder of the prior registration. The degree of "unlikeliness to cause any confusion" will be further discussed in future.
Further, in connection with the introduction of the consent system, the Unfair Competition Prevention Act has also been revised. In detail, regarding the relationship between the prior registered trademark and the later registered trademark, even if either of the registered trademarks becomes well-known or famous, the right holder of the well-known or famous trademark is not permitted to request injunction of the other one based on the Unfair Competition Prevention Act.
3. Conclusion
In the revised Trademark Act, the requirements for registration of trademarks containing the name of another person are relieved, and the consent system is newly introduced, in view of the international harmonization. We believe that this makes it easier to plan brand strategy in deployment of business in Japan under the Trademark Act. Note that the revised Trademark Act will be enforced on April 1, 2024.
Yudai FUKUNISHI, Patent Attorney
yudai.fukunishi@rc-iplaw.com
