Common Cause of Action for Trademark Infringement in Japan
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Common Cause of Action for Trademark Infringement in Japan
Trademark infringement often leads to severe financial losses as infringers profit from unauthorized products. It can even cause reputational damage to your brand as consumers associate it with the lower quality and unethical practices of the infringers.
This article will discuss some of the common causes of action for infringement in Japan to help you determine whether your trademark rights have been violated and protect your brand from infringers.
1. What are the Common Causes of Action for Trademark Infringement in Japan?
According to Article 37 of the Japanese Trademark Act trademark infringement primarily occurs from the unauthorized use of a trademark that is similar or identical to a registered mark, particularly in relation to designated goods or services. It can occur in the form of direct infringement or indirect infringement.
1.1. Direct Infringement
Direct infringement is straightforward and typically involves clear instances where consumer confusion might arise. This includes:
Unauthorized Commercial Use
The infringer may have displayed a similar or identical trademark on product packaging, advertisements, or any other related item intended to be used for sales or services without authorization.
Possession for Distribution
Holding products marked with a registered trademark or a similar version for purposes such as sale, delivery, or export, without permission from the trademark owner, constitutes infringement. This act of infringement is still valid even if the trademark is altered or removed from the product, as seen in the SUNTORY RESERVE Criminal Case (Osaka High Court Judgment of September 20, 1988) where the defendant was convicted for transferring possession of bottles of fake whiskey after partially removing trademarks.
Importation of Infringing Goods
Bringing into Japan goods bearing unauthorized marks that are intended for sale or provision of services also falls under infringement. Even if the goods themselves are genuine, if the trademark used is unauthorized or misleading, it can mislead consumers and harm the reputation of the legitimate brand owner.
Manufacturing without Consent
The production of unauthorized trademarked goods can result in legal consequences. This may include third-party actions like packaging, refilling, and repacking goods bearing a registered trademark, since this could compromise the trademark’s distinctiveness and quality control over the goods, as seen in the VANHOUTEN Case (Fukuoka High Court, March 4, 1966) and STP Case (Osaka District Court, August 4, 1976) where the original products were altered, causing the deteriorated quality to affect the public’s perception of the brands.
1.2. Indirect Infringement
Indirect infringement involves preparatory acts that facilitate the unauthorized use of trademarks and contribute to indirect liability, which would still undermine the rights of the trademark owner as outlined by Article 37(ii)-(viii) of the Japanese Trademark Law.
For instance, keeping goods marked with a registered trademark for future use with the intent to commercialize or distribute them through assignment, delivery, or export can be considered an infringing act if done without the consent of the trademark owner.
2. How Does the Japanese Law Determine the Similarity of Trademark?
The Japan Patent Office (JPO) has a classification system with "similarity group codes" for goods and services. It helps the judge determine similarity but doesn't guarantee the final decision during a lawsuit. The judge will further assess the likelihood of confusion for consumers if both trademarks are used on similar goods or services, with a focus on three factors, including the appearance, pronunciation, and concept of the trademarks. If the trademarks are determined to be identical or similar, then they may be covered by the effects of trademark rights in Japan.
3. How Does the Japanese Law Protect Your Trademark Rights from Infringement?
When your trademark is infringed in Japan, it's crucial to act swiftly and decisively. You can explore various options, such as issuing a warning, pursuing legal action, or seeking arbitration. With this, the Japanese court may offer legal remedies for the trademark owner and even impose criminal punishments on the offender.
3.1. Legal Relief
The legal relief offered by the Japanese court includes injunctions, damages claims, and credit recovery.
- Injunctions: A court order that stops the infringer from producing or distributing the unauthorized goods, and also requires them to dispose of any related products, manufacturing equipment, and advertisements.
- Damages Claim: Financial compensation for losses caused by the infringement, such as lost profits or damage to brand reputation.
- Credit Recovery: Measures to restore your trademark's reputation, like requiring the infringer to publish a corrective advertisement.
3.2. Criminal Punishment
In severe cases, trademark infringement can be considered a criminal offense in Japan, so the infringer may face imprisonment and/or fines. The specific prison term and amount will depend on the severity of the infringement.
You can read the article below to learn more about the legal remedies and actions that can be taken when faced with trademark infringement:
4. Consult WPTO and Protect Your Trademark Rights
It's advisable to consult with a legal professional experienced in Japanese trademark law to understand your specific options and navigate the legal process effectively. While trademark infringement issues in Japan may be complex, it is still important to exercise your rights.
By reaching out to WPTO for assistance, the process can be so much simpler. With over 70 years of experience in providing comprehensive IP services, our team of expert attorneys, IP agents, patent engineers, and consultants is dedicated to ensuring the effective protection of your trademark rights in Japan.
Our experts, knowledgeable in various fields from electronics to biotech, have successfully secured numerous trademarks. Rely on WPTO's extensive experience and technical proficiency to ensure your intellectual property is well-protected.
Don't let the complexities of the Japanese trademark regulations deter you. Contact WPTO today to exercise your rights and safeguard your intellection property against trademark infringement.
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