Trademark Act Article 29: Relationship with Others' Patent Rights, etc.

This article stipulates that if one's own trademark right conflicts with another person's prior application right, the registered trademark cannot be used in the area of conflict.

The determination of whether or not there is a conflict with another person's prior application right is made only regarding the exclusive right of the trademark right. This is because the scope of the right to prohibit is a buffer area to protect the exclusive right, and no provisions are established to ensure its use.

Furthermore, even if there is a conflict with another person's prior application right, how the registered trademark is used for the designated goods to cause a conflict differs depending on the content of the other person's right. For this reason, this article stipulates that "the registered trademark may not be used in the manner of such use for the part that conflicts." A specific example is the conflict between a three-dimensional trademark consisting of the shape of a product and a patent right (prior application) for the product shape. Another is the conflict between copyright (established earlier) such as an illustration and the case where that illustration is used as a trademark.

If a trademark right is a prior application, the trademark holder cannot work a later-applied patented invention, etc. Therefore, if a trademark holder works a later-applied patented invention, etc., they must obtain a license to work the later-applied patented invention. Also, for copyright established earlier, it is necessary to obtain a license for use.

Note that it is conceivable that there may be erroneous registrations of overlapping trademark rights, but in this case, the erroneously registered trademark right is considered valid until an invalidation trial decision becomes final. For this reason, the use of a registered trademark related to one's own trademark right may be restricted by an erroneously registered trademark right.

●Specific Example
I think there are times when you outsource the logo to be attached to a product that a company wants to sell on a large scale to an outside designer. In such outsourcing contracts, it is necessary to include a non-assertion of copyright agreement or the like. This is because, thinking from the provisions of Article 29 of the Trademark Act, one should consider that a trademark that uses another person's copyrighted work without permission cannot be used.

・Trademark Act Article 29

(Relationship with Others' Patent Rights, etc.)
Article 29: Where the use of a registered trademark for designated goods or designated services, in the manner of such use, conflicts with another person's patent right, utility model right, or design right for which an application was filed prior to the date of the trademark registration application, or with another person's copyright or neighboring right that arose prior to the date of the trademark registration application, the trademark holder, exclusive licensee, or non-exclusive licensee may not use the registered trademark in the manner of such use for the part of the designated goods or designated services that conflicts.

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