Trademark Act Article 64: Requirements for Defensive Mark Registration
This article begins the provisions regarding the defensive mark system. This article stipulates the registration requirements for defensive marks.
The defensive mark system is a system that protects a registered trademark by extending the prohibitive effect of the trademark right of a well-known registered trademark to dissimilar goods, etc..
A similar system is the regulation under Article 2, Paragraph 1, Item 2 of the Unfair Competition Prevention Act (act of misappropriating a well-known indication). When using the defensive mark system, you can file an injunction against a trademark infringer, so a more rapid response is possible than when using the Unfair Competition Prevention Act. In addition, while there is no application of criminal penalties under Article 2, Paragraph 1, Item 2 of the Unfair Competition Prevention Act, there is an application of criminal penalties for defensive mark infringement.
Since damage caused by dead copies of trademarks continues to be frequent even today, it is believed that the defensive mark system still has utility value.
The defensive mark system can be used by trademark holders (Trademark Act Article 64, Paragraph 1).
Furthermore, defensive mark registration can be obtained for (i) a mark that is "identical" to the registered trademark, and (ii) cases where there is a risk of confusion if another person uses the registered trademark. Specifically, when using the defensive mark system, it is necessary that (i) the registered trademark is widely recognized among consumers as indicating the designated goods, etc., pertaining to one's own business, and (ii) there is a risk of confusion if another person uses the registered trademark for the designated goods, etc., pertaining to the registered trademark. Note that in the case of a regional collective trademark, it is necessary that the registered trademark is widely recognized among consumers as indicating the designated goods, etc., pertaining to the business of "oneself or one's members" (Trademark Act Article 64, Paragraph 3).
The defensive mark system aims to "prevent the use" of a trademark within the scope of the defensive mark registration. For this reason, a defensive mark is registered even if it does not satisfy general registration requirements, and defensive mark registration is not subject to a trial for cancellation for non-use.
・Trademark Act Article 64
(Requirements for Defensive Mark Registration)
Article 64: Where a registered trademark pertaining to goods is widely recognized among consumers as indicating the designated goods pertaining to the business of the trademark holder, and where there is a risk that confusion will arise between the goods or services and the designated goods pertaining to the business of the trademark holder if another person uses the registered trademark for goods other than the designated goods pertaining to the registered trademark and goods similar thereto, or for services other than services similar to the designated goods, the trademark holder may obtain defensive mark registration for a mark identical to the registered trademark for the goods or services for which there is such a risk.
2: Where a registered trademark pertaining to services is widely recognized among consumers as indicating the designated services pertaining to the business of the trademark holder, and where there is a risk that confusion will arise between the services or goods and the designated services pertaining to the business of the trademark holder if another person uses the registered trademark for services other than the designated services pertaining to the registered trademark and services similar thereto, or for goods other than goods similar to the designated services, the trademark holder may obtain defensive mark registration for a mark identical to the registered trademark for the services or goods for which there is such a risk.
3: Regarding the application of the preceding two paragraphs to defensive mark registration pertaining to a trademark right for a regional collective trademark, the term "oneself" in these provisions shall be read as "oneself or one's members."
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