Trademark Act Article 26: Scope to which Trademark Rights Do Not Extend
This article stipulates the scope (acts) to which the effects of trademark rights do not extend.
Basically, since a trademark right is an exclusive right, only the trademark holder and others can lawfully use a registered trademark on designated goods, etc., within the scope of the trademark right. Here, it is possible that common names of goods, etc., or personal names, etc., may be registered as trademarks. In such cases, it can be said that the registration was erroneous, so one means of dealing with this is to respond through a trademark opposition or an invalidation trial. However, if, unfortunately, the trademark holder exercises their rights (Article 36, etc., of the Trademark Act) after the exclusion period (Article 47 of the Trademark Act) has passed, the party against whom the rights are exercised cannot respond with an invalidation trial (Article 46 of the Trademark Act). This article is established particularly for the purpose of providing relief to third parties in cases where such erroneous registrations have been overlooked.
However, since there is no need to protect users who act with the purpose of unfair competition (the purpose of obtaining unjust profits by utilizing the credit of others), it is considered an exception to the application if there is a purpose of unfair competition (Article 26, Paragraph 2 of the Trademark Act).
Also, Article 26, Paragraph 1 states, (including those that are part of other trademarks), but this takes into account trademarks that combine non-distinctive characters, etc., with distinctive trademarks such as house marks. Such trademarks can be registered if the applicant is the trademark holder of the house mark. However, this provision clearly states that the effects of the trademark right do not extend to the 'non-distinctive parts' of the trademark. This is to prevent third parties from hesitating to use characters, etc., that lack distinctiveness, and to prevent unfair exercise of rights against third parties who use such characters, etc.
・Trademark Act Article 26
(Scope to which trademark rights do not extend)
Article 26 The effects of a trademark right do not extend to the following trademarks (including those that are part of other trademarks).
(i) A trademark that displays one's own portrait, or one's own name, title, or famous pseudonym, stage name, or pen name, or a famous abbreviation thereof, in a manner commonly used.
(ii) A trademark that displays, in a manner commonly used, the common name, place of origin, place of sale, quality, raw materials, efficacy, use, quantity, or price of the designated goods or goods similar thereto, or the common name, place of provision, quality, articles used for provision, efficacy, use, mode, method or time of provision, or other characteristics, quantity, or price of services similar to the designated goods.
(iii) A trademark that displays, in a manner commonly used, the common name, place of provision, quality, articles used for provision, efficacy, use, mode, method or time of provision, or other characteristics, quantity, or price of the designated services or services similar thereto, or the common name, place of origin, place of sale, quality, raw materials, efficacy, use, shape, method or time of production or use, or other characteristics, quantity, or price of goods similar to the designated services.
(iv) A trademark that is commonly used for the designated goods or designated services or goods or services similar thereto.
(v) A trademark consisting solely of characteristics that goods, etc., naturally possess, as specified by Cabinet Order.
(vi) In addition to those listed in the preceding items, a trademark that is not used in a manner that allows consumers to recognize it as goods or services pertaining to the business of any person.
(2) The provisions of item (i) of the preceding paragraph do not apply if one's own portrait, or one's own name, title, or famous pseudonym, stage name, or pen name, or a famous abbreviation thereof, is used for the purpose of unfair competition after the registration of the establishment of the trademark right.
(3) The effects of a trademark right do not extend to the following acts; provided, however, that this is limited to cases where the act is not performed for the purpose of unfair competition.
(i) The act of affixing a geographical indication (referred to as "geographical indication" in the following item and item (iii)) as prescribed in Article 2, Paragraph 3 of the Act on Protection of the Names of Specific Agricultural, Forestry and Fishery Products (Act No. 84 of 2014; hereinafter referred to as the "Act on Protection of Specific Agricultural, Forestry and Fishery Product Names" in this paragraph) to specific agricultural, forestry and fishery products (including agricultural, forestry and fishery products as prescribed in Article 2, Paragraph 1 of the same Act that are manufactured or processed using the specific agricultural, forestry and fishery products related to the registration as the main raw materials or ingredients; referred to as "specific agricultural, forestry and fishery products related to the registration" in the following item and item (iii)) as prescribed in Article 2, Paragraph 2 of the Act on Protection of Specific Agricultural, Forestry and Fishery Product Names related to the registration under Article 6 of the Act on Protection of Specific Agricultural, Forestry and Fishery Product Names, or to their packaging, pursuant to the provisions of Article 3, Paragraph 1 of the Act on Protection of Specific Agricultural, Forestry and Fishery Product Names (including cases where it is applied by replacing the terms pursuant to Article 30 of the Act on Protection of Specific Agricultural, Forestry and Fishery Product Names; the same applies in the following item and item (iii)).
(ii) The act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, or importing specific agricultural, forestry and fishery products related to the registration or their packaging to which a geographical indication has been affixed pursuant to the provisions of Article 3, Paragraph 1 of the Act on Protection of Specific Agricultural, Forestry and Fishery Product Names.
(iii) The act of displaying or distributing advertisements, price lists, or business documents related to specific agricultural, forestry and fishery products related to the registration with a geographical indication affixed thereto, or providing information containing these by electromagnetic means with a geographical indication affixed thereto, pursuant to the provisions of Article 3, Paragraph 1 of the Act on Protection of Specific Agricultural, Forestry and Fishery Product Names.
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