Australia
Japan
Trademarks
4. How does your legislation meet the requirements of Article 6bis of the Paris Convention, as expressed in Article 16 of the TRIPS Agreement, concerning well-known trademarks? What criteria are applied in determining what constitutes a well-known trademark?
(a) An application for registration of a trademark which is "well known among consumers as indicating the goods or services connected with another person's business, and of a trademark similar thereto, used with respect to such goods or services, or similar goods or services" shall be refused in accordance with sub-paragraph (x) of Article 4(1) of the Japanese Trademark Law. In case such a trademark is registered, the registration may be invalidated through appeal process, provided that such an appeal is requested within five years from the registration of that trademark. If such a trademark is registered in bad faith, however, such registration may be invalidated at any time. (b) Furthermore, an application for registration of a trademark which is "well known among consumers as indicating the goods or services connected with another person's business, and of a trademark similar thereto, used with respect to non-similar goods or services" shall be refused in accordance with sub-paragraph (xv) of Article 4(1) of the Law, if it is likely to cause confusion with goods or services connected with another person's business. In case such a trademark is registered, the registration may be invalidated through appeal process, provided that such an appeal is requested within five years from the registration of that trademark. If such a trademark is registered in bad faith, however, such registration may be invalidated at any time. (c) The Trademark Examination Guidelines provide that the following elements should be taken into account by authorities concerned in determining "whether or not a trademark is well known among consumers" as provided for in sub-paragraph (x) of Article 4(1) of the Law: (i)whether or not the trademark in question is actually used; the nature of goods or services for which the trademark is used; (ii)the starting date of the use; (iii)the period of the use; (iv)the area where the trademark, or the trademark goods or services have been used; (v)the volume of production or transaction of the goods or services; the number of certificates issued; (vi)the methods, frequency and contents of advertisement. (d) In addition to the protection by the Trademark Law, the Japanese Unfair Competition Prevention Law provides that the use of an indication of goods or business (including a trademark), which is identical with, or similar to, another person's indication as to be well known among consumers, is one of the types of unfair competition, provided that the use causes confusion with another person's goods or business. Any person whose business interests are infringed by the unfair competition is entitled to request an injunction under the Law (see Article 3 of the Japanese Trademark Law).