JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
2.5 Trade Mark Rights and Limitations Trademark Act A registered trade mark confers on its owner the exclusive right to use the registered trade mark in connection with the designated goods and services covered by the registration. Typical defences and limitations under the Trademark Act include: • prior use, where the defendant used a mark that had already become well known prior to the filing of the trade mark at issue; • generic, descriptive or non-trade mark use, where the mark is used merely to indicate the contents, quality, origin, shape, materials or other character- istics of goods or services, or where the use does not function as an indicator of source or origin; • invalidity of the registration; • abuse of rights; • lack of substantive illegality, particularly in cases involving parallel imports of genuine goods; and • a three-year statute of limitations for damages claims from the time when the trade mark owner became aware of both the infringement and the identity of the infringer, subject to an overall 20-year limitation period from the infringing act. UCPA Well-known or famous indications of goods or busi- ness are protected against unauthorised use through remedies such as injunctions and damages. Typical defences and limitations under the UCPA include: • generic or customary use of indications of goods or business; • good-faith use of one’s own name; • prior use of an identical or similar indication before the relevant indication became well known or famous; and • use, without unfair purpose, of a registered trade mark in situations where identical or similar trade marks coexist as a result of registration under the Trademark Act.
2.6 Trade Mark Enforcement and Remedies Trademark Act Trade mark infringement requires satisfaction of the following elements: • identical or similar features between the registered trade mark and the accused mark; • identical or similar features between the desig- nated goods or services and the accused goods or services; and • use of the mark in the course of trade in a trade mark manner, namely as an indication of source or origin. The importation of goods by individual consumers in Japan from overseas generally does not constitute infringement, as such acts are not regarded as use “in the course of trade”. However, following recent amendments to the Trademark Act, acts by overseas business operators causing infringing products to be brought into Japan may constitute infringement. The Trademark Act also recognises indirect infringe- ment – for example, the manufacture or sale of goods used exclusively for affixing or reproducing infringing trade marks may constitute indirect infringement. Available remedies include injunctions, damages, destruction or disposal of infringing goods and manu- facturing equipment, and border enforcement meas- ures through Japan Customs. Criminal penalties may also apply. UCPA As discussed in 2.2 Requirements for Trade Mark Protection , Article 2, Paragraph 1, Items 1 and 2 of the UCPA prohibit certain uses of indications that are identical or similar to well-known or famous indica- tions. The following remedies are available to persons whose business interests are infringed or likely to be infringed by such unfair competition: • injunctions; • damages; • destruction or disposal of infringing goods and manufacturing equipment; and
160 CHAMBERS.COM
Powered by FlippingBook