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Ｂａｄ Ｆａｉｔｈ

ＪＴＡ. Ｂａｄ Ｆａｉｔｈ. Ａｐｒｉｌ　 8, 　２０１３ Fumihiko HIROSE ＨＩＲＯＳＥ Ｉｎｔ‘ｌ ＰＡＴ ＆ ＴＭ. How to Deal with Bad Faith Application. ＊　 Procedure to Attack （ a ） - （ ｃ ） Evidence to show Bad Will What is Effective Evidence ＊　 Contact to Assign Back. Way to Attack in Japan.

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Ｂａｄ Ｆａｉｔｈ

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  1. ＪＴＡ Ｂａｄ Ｆａｉｔｈ Ａｐｒｉｌ　8,　２０１３ Fumihiko HIROSE ＨＩＲＯＳＥＩｎｔ‘ｌ ＰＡＴ ＆ ＴＭ

  2. How to Deal with Bad Faith Application ＊　Procedure toAttack （a）-（ｃ） Evidence to show Bad Will What is Effective Evidence ＊　Contact to Assign Back

  3. Way to Attack in Japan (a) Invalidation Trial (1) – (4)＋（５） • Against Any Registration (b) Opposition • Against New Registration (c) Information Disclosure • During Examination of Application (non-use cancellation)

  4. Reason(s) for Invalidation (1) Well-known in Japan (4-1-10) (2) Well-known in Japan but in other field (4-1-15) (3) Well-known outside Japan (4-1-19) (4) Breach of Public Order (4-1-7) (5) Agent registered without authorization (53-2) Paris Convention 6-7septies

  5. What is “ Bad Faith “? Definition not written in law: “Unfair Intention” Establishing Bad Faith requires that the marks be identical or similar, but also establishing that party acted to mislead or deceive others. Most commonly : 1. Marks stolen by trademark brokers 2. Agents or licensees assuming rights not granted them: without permission 3. Insiders profiting from company

  6. Well-Known among consumers in Japan(4-1-10)(4-1-15) Goods or Services are Similar 4 – 1 - 10 Goods or Services are Dissimilar likelihood of confusion 4 – 1 – 15 May not be demanded after 5 (five) years from registration No limitation if Unfair Intention established

  7. Well-known outside Japan but not famous in Japan(4-1-19) 1 Well known in Japan or abroad 2 Marks be identical or similar 3 “Unfair Intention” : Intension to gain unfair profit, intention to cause damage to another person, other unfair intention

  8. Breach of Public OrderJapan Trademark Law§4-1-7 §３ Any person may obtain registration to be used in respect of goods/serves in connection with their business ＊Purpose of Filing 3-1 ＊Breach of Public Order (in Japan) Trademark Law 4-1-7 Trademark liable to contravene public order

  9. Establishing Bad Faith (1) 1. Establish similarity of marks - identical or closely similar 2. Evidence of a prior relationship between the legitimate owner and the applicant or registrant - e.g. Employee, Licensee, Agent, Stuff

  10. Establishing Bad Faith (2) 3. History of Application - No Application exist - Different classes - News of New Brand 4.Evidence that Applicant is Involved in Questionable Business - Trademark Broker - Many other applications or registrations by the same person, Address, Company name

  11. Establishing Bad Faith (3) 5. Demonstrate how Mark is legitimately used in home country - Amount of sales - Exports, especially to Japan - Mark is well known in home country 6. Communication from Registrant - Aggressive “warning” letters, - unreasonable compensation demands - threats of obstruction or interference

  12. Establishing Bad Faith (4) 7. Demonstrate how legitimate Owner try to protect the Mark - Applications in other countries - Requesting protection in many different classes

  13. Example cases in Japan 1. DUCERAM(High Court Hei 10(Gyo-ke)No.185) Artificial Dental Materials by Agent 2. HOROHATA (母衣旗) (High Court Hei 10(Gyo-ke)No. 18) geographic name in Fukushima 3. ECO-LINE (Trial 2006-89054) by Franchisee 4. ASROCK v ASRock New Brand byBroker (High Court Hei 22(Gyo-ke)No. 10297)

  14. Example cases in Japan 5. Showa Daibutsu (昭和大仏) (Trial Hei 60-18883) Name of Buddha Statue by one of stuff 6. Yuushoku (有職)(Trial 2006-89125) Famous Sushi Omelet by Friend 7. Kyokushinkai (極真会) K-1 (High Court Hei 21(Gyo-ke)No. 10032) by One of grand master 8. Kranzle (High Court Hei 17(ke)No.10668) High Pressure Washer by Kranzle Jpn

  15. Countermeasures(summary) File a trademark application first. - Before beginning business in a new jurisdiction. - To reserve registration in a country or jurisdiction where there is a potential risk.

  16. Thank You Fumihiko HIROSE HIROSE Int’l Patent & Trademark patent.hirose@nifty.com

  17. Similarity vs. Confusion Under consideration: scope of similarity would become narrower, but criteria are unclear Introducing Consent system is more effective than amending unclear similarity criteria, which is not used effectively up until now

  18. THANK YOU Fumihiko HIROSE HIROSE Int’l Patent & Trademark

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