Trademark Act Article 4, Paragraph 1, Item 19: Trademarks That Cannot Be Registered

This item stipulates that a trademark cannot be registered if it is filed with an unfair intent for a trademark that is well-known in Japan or abroad.

Unfair intent refers to the purpose of obtaining unfair profits (including the purpose of unfair competition), the purpose of causing damage to others, etc. Here, causing damage to others refers to the purpose of causing financial damage, loss of credibility, or other tangible or intangible damage.

In this item, it is referred to as "unfair intent" rather than "purpose of unfair competition." This is because even if an application is made by a person who does not have a competitive relationship in business, an application made with an intent contrary to the principle of good faith should not be granted registration.

Specific examples of unfair intent include: (i) plagiaristic applications of famous foreign trademarks, (ii) applications intended to prevent the owner of a famous foreign trademark from entering the Japanese market, and (iii) applications intended to force a Japanese distributorship agreement on the owner of a famous foreign trademark.

● Examples where unfair intent may be claimed
There are also cases where someone else files and registers a trademark that you are using without your permission. In such cases, it is conceivable that they may demand a large sum of money during transfer negotiations after the trademark registration has been completed.
If a large sum of money is demanded, it is considered possible to claim that the application was made for the purpose of resale (application with unfair intent) when filing an opposition to the registration.

・Trademark Act Article 4, Paragraph 1, Item 19

(Trademarks that cannot be registered)
Article 4: Notwithstanding the provisions of the preceding Article, the following trademarks may not be registered as trademarks.
19. A trademark that is identical with, or similar to, a trademark that is well-known among consumers in Japan or abroad as indicating goods or services pertaining to the business of another person, and that is used with an unfair intent (meaning the intent to obtain unfair profits, the intent to cause damage to others, or any other unfair intent; the same applies hereinafter) (excluding those listed in the preceding items).

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