Defensive mark system
In principle, a trademark right can be enforced only against the use of a trademark identical or similar to the registered trademark in Designated goods or services identical or similar to the registered trademark’s goods or services. However, in the case of very famous trademarks, a risk of confusion exists even with trademarks in dissimilar goods or services, which can result in damages to the goodwill of the owner of the trademark.
Japanese Trademark Law has therefore implemented the Defensive mark system, designed to protect the goodwill of the owner of a famous trademark by extending, under certain conditions, the scope of the trademark right to dissimilar goods or services as well.
It must be noted that the fees related to filing and registration are slightly different in the case of an application for a defensive mark.
Japanese Trademark Registration No. 4372691(extract from the JPO Report on famous Japanese trademarks)
Japanese Trademark Registration No. 4372691 Defensive mark No. 1
Trademarks belonging to the members of a business group, being collectively used by the said members and indicating the common nature of the goods or services related to the business activities of the group are called “collective trademarks”.
Due to their specificity compared to other trademarks, special conditions must be met in order to obtain the registration of a trademark application as a collective trademark. For example, organizations such as foundations and corporations are not eligible for the registration of collective trademarks.
Regional collective trademarks
Trademarks based on a place name or a product or service name and having reached a certain level of fame in a distinct area can, under certain conditions, be registered by groups as “regional collective trademarks”.
The registration of a “regional collective trademark” makes it possible to take measures against counterfeit goods or companies trying to take advantage of the notoriety of the trademark. It is also a good way to make both the product (or the service) and the region better known to the public and more attractive, while emphasizing the distinct features of the product against similar products.
Retail and wholesale service trademarks
On April 1, 2007, the Japan Patent Office introduced a new class of Designated services related to the sale of goods, thus enabling retailers and wholesalers (hereafter referred to as “retailers”) to register the trademarks they use in their business activity.
Retailers can therefore protect under the “Retailer and wholesaler service trademark system” the trademarks that they use for example on shop signs, shopping carts, shopping bags, salesclerks’ name tags, receipts, advertising material and so on.
Thanks to this system, businesses active in domains that until now could not enjoy a satisfactory protection of their trademark rights, such as distribution, mail-order selling or Internet selling, can obtain trademarks rights in this specific domain and thus protect their goodwill at a low cost.
Supervisor of this article
Osaka Legal Strategy Department General Manager
Specially Qualified Attorney For Infringement Litigation