Overview of the defensive mark system
The defensive mark system is a product or service that may cause confusion when a well-known registered trademark is used by another person to the extent that it is dissimilar to the designated product or service of the registered trademark. , It is a system that can be registered as a defensive mark (Article 64 of the Trademark Law).
Once registered as a defensive mark, if another person uses the same mark as the registered defensive mark within the same range as the designated goods and services of the registered defensive mark, it will be considered as an infringement of the trademark right ( Article 67 of the Trademark Law).
So to speak, it is an expansion of trademark prohibition rights.
Protective marks are not used by trademark owners and are intended to exclude the use of others.
Article
Article 64 of the Trademark Law
1. When the registered trademark related to the product is widely recognized by consumers as indicating the designated product related to its own business, the trademark right holder shall use the designated product related to the registered trademark and similar products. If there is a risk that the product or service may be confused with the designated product related to one's own business due to the use of the registered trademark by another person for the service other than the service other than the product or the designated product. A certain goods or services can be registered as a defensive mark for the same mark as the registered trademark.
2. The trademark right holder shall, when the registered trademark related to the service is widely recognized among consumers as indicating the designated service related to his / her own business, the designated service related to the registered trademark and similar services. If there is a risk that the service or product may be confused with the designated service related to one's own business due to the use of the registered trademark by another person for the product other than the service other than the service or the product similar to the designated service. A service or goods may be registered as a defensive mark for the same mark as its registered trademark.
Article 67 of the Trademark Law
The following acts shall be deemed to infringe the trademark right or exclusive use right.
(1) Use of registered protection marks for designated goods or designated services
(Ii) The act of transferring, delivering or exporting a designated product with a registered protection mark on the product or the packaging of the product.
(Iii) The act of possessing or importing a designated service with a registered protection mark attached to the item to be used by the person who receives the designated service in order to provide the designated service.
(Iv) In providing the designated service, the item to be used by the person who receives the designated service with the registered protection mark is transferred, delivered, or transferred or delivered in order to provide the designated service using the mark. The act of possessing or importing
(V) The act of possessing an object that displays the registered protection mark in order to use the registered protection mark for designated goods or designated services.
(Vi) The act of transferring, delivering, or possessing for the transfer or delivery of a designated product or designated service that displays the registered protection mark in order to use the registered protection mark.
(Vii) The act of manufacturing or importing a product that displays the registered protection mark in order to use or use the registered protection mark for designated goods or designated services.
Requirements for being registered as a defensive mark
① The trademark owner of the registered trademark must apply
Unless the trademark owner of the registered trademark is the applicant, it cannot be registered as a defensive mark.
Not to mention a third party different from the applicant of the registered trademark, even if the exclusive licensee or the non-exclusive licensee of the registered trademark applies for the defensive mark, it cannot be registered.
② Apply for the same mark as the registered trademark
Unless it is the same mark as the registered trademark, it will not be registered as a defensive mark.
Marks similar to registered trademarks cannot be registered as defensive marks.
(3) The registered trademark is well-known (widely recognized among consumers)
If the registered trademark is not well-known, the defensive mark will not be registered.
The screening criteria set the criteria for prominence (widely recognized among consumers) as follows.
(1) "Widely recognized among consumers" means that the source of the self (original registered trademark right holder) is recognized nationwide among consumers of the goods or services. say.
(2) Whether or not it is "widely recognized among consumers" is comprehensively judged by considering the following (a) to (d).
(a) Facts regarding the usage status of the registered trademark (hereinafter referred to as the "original registered trademark") pertaining to the application for registration of the defensive mark, such as the start time, period of use, area of use, range of products used or services used, etc.
(b) Degree or spread of advertising, promotion, etc. of the original registered trademark
(c) Relationship between the company size of the original registered trademark right holder, business relations (production or sales status, etc.), items handled by the company, etc. with goods or services
(d) It is a remarkable fact in the JPO that the original registered trademark is prominent, such as being recognized in a trial decision or judgment.
④ There is a risk of confusion when used by others.
The defensive mark will not be registered unless there is a risk of confusion when used by others.
The examination criteria set the following criteria that may cause confusion when used by others.
(1) Only when there is a risk that the consumer of the product, etc. may be confused about the source of the product, etc. by misidentifying it as a product or service related to the business of the original registered trademark right holder (hereinafter referred to as "product, etc."). Instead, it may be misunderstood that the product is related to the business of a person who has some economic or organizational relationship with the original registered trademark right holder, and the consumer of the product may be confused about the source of the product.
Also refers to the case.
(2) Reasons for consideration
Whether or not it falls under "when there is a risk of confusion" is determined by comprehensively considering, for example, the following facts.
① Familiarity of the original registered trademark
(2) Whether the originally registered trademark is a coined word or has a distinctive structural feature.
③ Is the original registered trademark a house mark?
④ Possibility of diversified management in a company
⑤ Relationship between products, services, or between products and services
⑥ Commonality of consumers such as products and other actual conditions of transactions
