Trademark Law

[GomiGirl]

Need some advice re Trademark registration.

I have localised and am republishing a software title from the US. The name of the product is registered in the US and was done so many years ago.

However, as I understand it, Japan doesn't automatically recognise trademarks registered in other countries and it is a "first to file" system.

Now the name is already registered in Japan to another company who makes software. (Class 9 registration)

I would like to also use this name in Japan so I think I need to ask them very nicely for a waiver to use the mark... Or I can register it in a different class...

Any advice would be appreciated. I do't particulaly want to hire a lawyer if we can do this all friendly like.

[GuyJean]

Need some advice re Trademark registration.

I don't really know much about trademarks, but I heard that it's possible to register the same trademark in a different prefecture than the existing mark.. Not really sure though.. I guess I didn't help much, but you might want to ask around about it..

Gambatte!

GJ

[bejiita]

However, as I understand it, Japan doesn't automatically recognise trademarks registered in other countries and it is a "first to file" system.

As my old boss would say "Zat's right." Patents/trademarks are only recognized/protected within each countries' borders. If you want protection in another country, you'll have to apply for protection in each country. Since it's already been a couple of years since you obtained US registration, you're no longer eligible to file a foreign priority application to obtain priority over other Japanese applicants. And yes, Japan is a first to file country.

I would like to also use this name in Japan so I think I need to ask them very nicely for a waiver to use the mark... Or I can register it in a different class...

Japan does allow for this. You can apply for the mark in another class as long as it has not been registered in that class. However, the JPO might deny your application if it finds the products too similar. Additionally, registration does not protect you from suit from the other mark owner. Even if you obtain registration, they can still file suit against you for trademark infringement or dilution.

Your other suggestion is a good one. The only harm in asking the mark owner for a license to use the mark is that they have notice of your possible infringement if they then deny you a license.

Although you said you would like to use the mark, if it's not possible, the easiest thing to do is to use a different mark. If you want to see if your particular mark has already been registered, check here:

http://www.ipdl.jpo.go.jp/homepg_e.ipdl

Any advice would be appreciated. I do't particulaly want to hire a lawyer if we can do this all friendly like.

Well you wouldn't have to hire a bengoshi, you can hire a benrishi (patent/trademark agent). From what I understood from my boss, most benrishi charge fixed fees. Additionally, the market is so competitive that the fees are a lot lower than US lawyers.

[Steve Bildermann]

GG - If you do decide to ask them for a waiver also include something (vague enough not to catch their eye) about *possibly* being willing to pay a small license fee to them should they not *be able* to give you a waiver.

If they do turn you down and start causing trouble that offer is a little legal ammunition for you.

'Well look your honor at the outset I offered to pay a license fee'

Nb
This from personal experience.
Note the phrase *not be able*

[GomiGirl]

The irony is that we were using the name in Japan before the other company registered it.

I wouldn't even know how to phrase a waiver request... any help would be appreciated.

[GomiGirl]

Well you wouldn't have to hire a bengoshi, you can hire a benrishi (patent/trademark agent). From what I understood from my boss, most benrishi charge fixed fees. Additionally, the market is so competitive that the fees are a lot lower than US lawyers.

Thanks for your comments Bejiita and Steve...

What is the going "Flat rate" for a benrishi? ball park.

[bejiita]

The irony is that we were using the name in Japan before the other company registered it.

Okay that's a different story. If you used the mark prior to the other party obtaining registration, under some circumstances, you can still continue to use the mark. Here's a link to the pertinent code:

http://www.jpo.go.jp/shoukaie/shohyo.htm#32rig

To prove whether your mark is well-known will probably require some market surveys.

I don't have any information regarding fees because I didn't deal with that aspect. If you'd like, I can e-mail you a name of a benrishi firm that specializes in trademarks. I can also e-mail you a trademark license form if you wish.

[GomiGirl]

Thank you for that great link. I was trying to navigate the JPO web-site and was having no luck at all.

[Taro Toporific]

Need some advice re Trademark registration.

Gambatte!

GJ

Patent, copyright reform eyed
Yomiuri Shimbun / May 23, 2003
In 2001, the average trial time for a civil lawsuit over intellectual property took 18 months at a district court and more than 10 months after an appeal was filed to a higher court. Rulings are always handed down based on different legal interpretations, resulting in business delays for many concerned companies. Because legal fees are high, small and midsize venture companies are reluctant to file complaints to protect their patents, Economy, Trade and Industry Ministry officials said...
However, some legal experts are reluctant to introduce judges with a deep knowledge of technology and lawyers specializing in intellectual property matters, as their existence would change the basic structure of the legal circle.
The Japan Federation of Bar Associations expressed its opposition to having lawyers specialize in the intellectual rights field on the grounds that it would rock the foundations of the legal system. ...
. . . 98.2 percent were infringements on trademarks...

[GomiGirl]

OK different product but new question on same subject..

has anybody registered a trademark? We have done it before but the person who did it is no longer with the company.

I need to make sure I have the right forms.. anyone care to share their experiences.. Taro, Steve?

As soon as it is registered I will share the information as this project goes live soon as is really really cool!!

[Steve Bildermann]

[GomiGirl]

I'm working on the 'get the info FREE or at LOW COST' principle first before saying go to see a lawyer <gasp>

If you like I'll look into it more this week.

Free and/or low cost is always the best. This is not for a company but rather a new product that we have developed and we need to register the trade mark and logo.

I have checked on the patent database and nobody has already registered the name. I have just shelled out for the domain names as well.

Unfortunately we are not considered to be a start up so can we use the Aoiro shinkokuka?

[ramchop]

Need some advice re Trademark registration.

Jumping on a populist bandwagon hoping to make a profit?

MDN Wai Wai August 12,2003

Trademark trading is now all the rage in Japan

Unfortunately GG, the trademark you're after is already taken

Ito Ham Corp. is the, perhaps surprising, owner of the "high schoolgirl" trademark.

[Steve Bildermann]

I'm working on the 'get the info FREE or at LOW COST' principle first before saying go to see a lawyer <gasp>

If you like I'll look into it more this week.

Unfortunately we are not considered to be a start up so can we use the Aoiro shinkokuka?

I'm following up on this tomorrow. Couldn't do much up to now because of the hols. I expect if you called the Aoiro shinkokukai as an individual they would be able to help you or at least point you in the right direction.

Anyway I'll have more for you by tomorrow afternoon.

[Taro Toporific]

Unfortunately we are not considered to be a start up so can we use the Aoiro shinkokuka?

I'm following up on this tomorrow.... be able to help you or at least point you in the right direction.
Anyway I'll have more for you by tomorrow afternoon.

KOOL! Actually I guess the 87,000yen for a trademark is one damn good way to protect an already registered domain name.