The long term fellowship program under WIPO Funds in Trust/JPO
January 2003 – July 2003
A Comparative Study
on Japanese Trademark Protection System with
Iranian Trademark Protection System
Prepared by:
Zahra Bahraini Industrial Property Office of I.R. of Iran Tokyo-June 6, 2003
Acknowledgement
My deepest appreciation to the World Intellectual Property Organization (WIPO) and to the Government of Japan especially to the Japan Patent Office (JPO) and the Asia Pacific Industrial Property Center of Japan Institute of Invention and Innovation (JIII) for funding and organizing this Course;
My appreciation to the Registration Organization of Deeds and Properties of I.R. of Iran and Director General of Registration Office for Companies and Industrial Property for giving me this opportunity;
My special thanks to all the officers of JPO especially to Mr. Shinichiro Ota, Commissioner of JPO; Mr. Takashi Sakurai, Director of the International Affair Division; Mr. Yuji Okuma, Director of the Regional Policy Office of International Affair Division, Mr. Takaki Hiroo, Deputy Director of the International Affair Division, Ms. Yuka Tsukamoto, Ms. Ai Hamagishi, Ms. Yuriko Homma for warm welcome, assistance, patience, time and friendship;
My special, special thanks to dearest staff of APIC; Mr. Shingo Tsuji, Director General of APIC, Mr. Kitazawa, Mr. Sakai, Ms Kinoshita, Ms. Kozawa and many others for their warm welcome and providing me good conditions and assistance for carrying out the research work.
My gratitude to Mr. Kanji Kudo, for his advise and support in this research work and many others who are directly or indirectly involved in making this research possible.
My sincere thanks to my dearest colleagues in IP Office for their support and patience;
Zahra Bahraini I. R. of Iran
Table of Contents
Chapter I page
Introduction
Protection of Trademark in Japan and the relation with International Treaties 3 Legal system for protection of Trademark in Japan 3 History of changes in Japanese Trademark system 5 The Legal system for protection of Industrial Property in Iran 7 Functions of Trademark 9
Chapter II
1- Criteria for Protection
Definition of a trademark 10 Unregistrable trademarks 11
2- Requirements for trademark registration
Unity in application 14 First-to-file rule 14 Collective trademarks 15 Requirements for trademark application 16
3- Examination System
Principle of examination by examiner 18 Rejections 19 Decisions to Register 20
4-Trademark Rights
Effects of trademark right registration 21 Term of trademark right 22 Registration of Renewals 22 Transfer of trademark right 23 Transfer of Collective Trademark Right 24 Right of Exclusive Use 24 Right of Non-Exclusive Use 25 Prior use 25 Infringement and Injunction 27
5- Opposition System
Opposition to Registration 28 Opposition process 30
6- Trials System
Trail against examiner’s decision of refusal 32 Trail against ruling to decline amendment 32 Trail for invalidation of a trademark registration 33 Trail for cancellation of a trademark registration 34
7- Defensive marks
I. Registrability of defensive mark 35 II. Purpose of Defensive Mark Registration System 35
8- Publication
Trademark Gazette 36
9- Re- Classification System
I. Purpose of Registration of Re-Classification of Goods 38 II. Registration of Re-Classification 38
10- Protection of Well known and Famous Trademarks
Japanese Law 41 Criteria for Determining of Well known and Famous Trademarks 46 Distinction in Trademark Law and Unfair Competition Prevention Law 48 Registration or Actual use as a Condition for Protection 49
Chapter III
Administration Procedure of Japanese Trademark Registration System
Application 51 Publication of application 51 Formality Check 51 Substantive Examination 52 Decision of Registration 53 Opposition to the Granting of a Trademark Registration 53 Trial System 54 Procedure for the protocol Relating to the Madrid Agreement 55 Remedy against refusal 56
JPO Anti counterfeiting efforts 57
Computer System Use
1) Online Acceptance of Trademark Application 59 2) Real time trademark search and preparation of drafts using electronic data 59 3) On-line of draft documents to applications 59 4) On-line acceptance of demands for trail 60
Trademark Information Provision Services
I. Trademark Application Trends 60 II. International Trademark Application Trends 61 III. Trademark Examination 61 IV. Accelerated Examination 61 V. Examination Guidelines for Trademarks 62
Industrial Property Digital Library 63
Chapter IV
Differences between two Systems 65
1- Definition of Trademark 65 2- Requirements for Registration 66 3- Changes in Registered Marks 66 4- Prior Use 66 5- Opposition System 67 6- Trials System 68 7- Defensive Marks 68 8- Service Marks 69 9- Restoration of Trademark Rights 69 10- Re-Classification System 70 11- Compulsory registration 70 12- Publication 71
Other differences 71
Recommendations 72
Conclusion 76
“In the name of God”
Foreword
This research report consists of the comparative study of the major provision of Japanese Trademark Law 1999 (as amended on April 13, 1959, entry into force on April 1, 1960) and Iranian Trademark Law (1931) and its Regulations as amended in 1958.
The Protection of Trademarks in Japan is under Trademark Law and Unfair Competition Prevention Law. Japan is a party of various international treaties such as Paris Convention, Nice Agreement, Trademark Law Treaty, and etc… for protection of Trademark.
Iran is a party of Paris Convention for protection of Patents and Trademarks and also a member of Madrid Agreement at present. Other related treaties are under consideration. Protection of Trademarks in Iran is under the Trademark and Patent Registration Law and it’s Regulations.
The report outline the Introduction and historical development of Japanese Trademark Law as well as Legal System for Protection of Industrial Property in Iran.
The major part of the report consist of the comparison of the Japanese Trademark System with Iran Trademark System in all the procedures such as trademark application, the rules and standards required for determining a registrable mark, opposition systems and trails system and etc… as well as the variations between these two systems.
There could be a possibilities these related provisions be adopted in her country in moving towards harmonization and unification of the trademark systems but taking into account the diversity of social and cultural aspects. The researcher also looks into Trademark Computer System, a paperless Project by JPO focusing on the need to shorten in the period required in granting a right and increasing the efficiency of processing these rights by virtue of highly advanced information technology. Chapter I
Introduction :
The intellectual property system is one of the cornerstones of modern economic policy at the national level and a catalyst for development. It will increasingly become an important tool for sustainable development of developing countries, especially the least developed in the knowledge-based society of this millennium. Therefore, understanding the legal and economic foundations of the intellectual property system is a prerequisite for comprehending its increasing importance and role in national strategies for enhancing competitiveness and accelerating socio-economic development.
Intellectual property comprises of creations of the human mind, of the human intellect. It consists mainly of two branches, one being industrial property dealing with technological inventions, utility models, trademarks for goods and services, industrial designs, etc.; the other being copyright, which protects literary, musical, artistic, photographic and audiovisual works, films, computer programs and software, etc., as well as related rights, that is neighboring rights, namely the rights of performing artists, producers of phonograms and broadcasting organizations.
As far as trademarks are concerned, any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings shall be capable of constituting a trademark (Article 15-1 of the TRIPS Agreement), the same Article provides that such signs, in particular words including personal names, letters, numerals, figurative elements and combination of such signs, shall be eligible for registration as trademarks.
The trademark enables its owner or enterprise to build up a reputation for goods offered in relation to that trademark, and compels the owner of the mark to strive to maintain and improve the quality of goods or services offered under the mark. The exclusive right of the owner of a mark precludes others from using it. Marks have an increasingly important role in a country’s commerce and trade as they stimulate economic progress.
1 Nowadays, there is a growing awareness that intellectual property rights protection is a crucial part of the new global trading system. International trade in goods and services protected by intellectual property rights is increasing, and both developed and developing countries have recognized that it is in their interest to provide strong intellectual property rights protection in order to participate in the benefits of such trade.
Strong intellectual property protection with adequate and modernized legislation and its effective enforcement is essential for ensuring economic growth. Since the Japanese trademark jurisprudence is conceptually well-developed, fascinating body of law with a long and rich tradition, so it has been considered as a model for this research study.
2 Protection of Trademark in Japan and the relation with International Treaties:
Since it established its first legal system to protect trademarks in the Meiji era, Japan has carried out a series of revisions to its trademark law. From time to time, these revisions have been made as required to match domestic industrial developments calling for changes in the trademark protection system and to comply with requirements under various international treaties the country has acceded to.
Japan is a party of various international treaties such as Paris Convention, Nice Agreement, Trademark Law Treaty, Madrid Agreement for the Repression of False or Deceptive Indication of Source on Goods (Including Additional Made in Stockholm on July 14, 1967), Madrid Protocol Concerning the International Registration of Marks and also a member of TRIPS Agreement.
Legal system concerning Protection of Trademark
1-Trademark Law and Unfair Competition Prevention Law
The Protection of Trademarks in Japan is under Trademark Law and Unfair Competition Prevention Law. Although different in their purposes, the two laws are common in seeking to “establish economic order through the maintenance, etc, of the business reputation of persons using trademarks and contribute to the interests of consumers.”
2-Legal system for protection of Trademark
In principle, trademarks are protected under the Trademark Law in Japan. However, matters too specific or too technical to be stipulated in a law (for example simple procedural matters such as concrete ways of indication in an application, etc.) and matters requiring flexibility to execute prescribed matters as adequately as required are separately set forth in “cabinet orders” and “ministerial ordinances”
3 • Trademark Law Enforcement Sets forth “Classification of Goods and Services,” “Qualification of Examiners and Trail Examiners,” etc.
• Trademark Registration Order Sets forth “Matters to be Registered Concerning Trademarks,” “Procedures for Registration,” etc.
• Order on Fees Relating to the Patent Law, etc. Sets forth the specific amounts of fees, such as “Application Fee”, “Trail Demand Fee,” etc.
• Enforcement Orders related to the Exempted Procedures for IP Sets forth Application for Trademark Registration etc. as Specific Procedures which may be applied through electronic information processing Systems
• Regulations under the Trademark Law Sets forth “Form of Application for Registration of Trademark,” “Form of Request for Renewal Registration of the Term of the Trademark,”
• Trademark Registration Order Enforcement Regulations Sets forth “Method for Registration of Establishment of Trademark Right,” “Form of Request,” etc.
• Enforcement Regulations related to the Exempted Procedures for IP Sets forth “assignment of identification numbers,” “comprehensive proxy,” and “filing of deposits” etc. as exemptions of procedures related to industrial properties including trademarks.
• Ministerial Ordinance related to the Procedures for cash payments of IP fees Sets forth “Cases in which cash payments of the fees for industrial properties are allowed”, “Issuance of payment slips,” and “payments” in order to accept bank transfer payments of fees for industrial properties including trademarks
4 History of Changes in Japanese Trademark Protection System:
Since the “Trademark Ordinance” was adopted in 1884, the trademark protection system in Japan has been revised and amended many times with changes incorporated to comply with requirements under various international treaties and match the ever changing economic situation in Japan.
The history of the Japanese Trademark law is chronologically presented bellow:
Adoption of Trademark Ordinance of 1884 1) Adopted “principle of registration” “first to file rule” and “principle of examination by examiner” 2) Term of a trademark right set at 15 years from the date of registration in the Trademark Register 3) Transfer of trademark registered only allowed when executed together with the transfer of “good will”
Revision of Trademark Ordinance of 1888 1) Term of a trademark right set at 20 years from the date of registration in the Trademark Register 2) Transfer of a trademark right only allowed when executed together with the transfer of “business” 3) Demand for a retrial of a decision of refusal only allowed after re-examination by examiner
Revision of Trademark Law of 1899 1) A foreign registered trademark in Japan, valid for the duration of its original registration within a period not exceeding 20 years 2) Transfer of a registered trademark was prohibited with similar trademark of the same owner separated 3) Added Priority-related provisions, etc. to comply with requirements under the Paris Convention
5 Revision of Trademark law of 1909 1) introduced associated trademark System 2) allowed Divisional transfer of a trademark law 3) added Provision calling for a trademark to be “distinctive” to be registered,
Revision of Trademark law 1921 1) “Application Publication System” introduced 2) introduced Collective mark system 3) incorporated an trial for the cancellation of a trademark law 4) a change in the definition of an infringement from an offense prosecutable on complaint to an offense prosecutable without complaint
Revision of Trademark law 1959 1) Term of a trademark right set at 10 years from the date of registration in Trademark Register 2) All forms of transfer allowed only except for similar trademarks owner 3) abolished Collective mark system 4) allowed Licensing of a right to use a registered trademark 5) introduced Defensive mark system
Revision of Trademark law 1975 1) required Indication of “Business of Applicant” in an application 2) added A provision concerning examination of the status of use at the time of a renewal of the term of a registered trademark 3) placed Burden of proof in case of a trail for the cancellation of a registered trademark on its owner
Revision of Trademark law 1991 1) adopted Service marks system 2) adopted the International classification under the Nice Agreement
Revision of Trademark law 1994 New provisions added and revisions made to comply with requirements under the WTO TRIPS Agreement
6 Revision of Trademark law 1996 1) New provisions added and revisions made to comply with requirements under the Trademark Law Treaty 2) Abolished Associated trademark system 3) Allowed Transfer of similar trademarks of the same owner 4) Adopted Three-dimensional trademark system 5) Adopted “Standard Character” trademark system 6) Allowed an installment payment of the registration fee 7) Adopted “Re-classification” system
Revision of Trademark law 1998 1) Review of the method of calculating the amount of indemnity for damages caused by infringements 2) Issuance of trademark registration certificated and the defensive mark registration certificate
Revision of Trademark law 1999 1) New establishment of the pecuniary right of a claim based on a trademark prior to the registration of its establishment 2) Implementation of the Protocol relating to the Madrid Agreement concerning the international registration of Marks 3) New establishment of a prompt publication system for trademark registration applications 4) Acceptance of the restrictions and corrections related to classification at the time of payment of the registration fees
The Legal System for the protection of Industrial Property in Iran
The legal system for Protection of Industrial Property include Patents, Industrial designs, trademarks, service marks, trade names, appellation of origin and prevention of unfair competition.
The protection of industrial property enjoys a long and rich legislative history in Iran. This has given rise to an effective and wealthy jurisprudence in this respect.
7 This system is based on the following Laws and regulations:
I- The Constitution II- Various Provisions of the Civil Code III- Article 528 of Commercial Code concerning Trade Names IV- Trademark and Patent Registration Law (1931) V- The Regulations for Execution of the Trademarks and Patent Registration law, as amended in 1958 and its further amendments. VI- The Act on Mandatory Indication and Registration of Trademarks on Goods such as Pharmaceuticals, Foodstuff, and Cosmetics (1949). VII- The Law allowing accession of Government of Iran to the Paris Convention for Protection of Industrial Property (1959). VIII- The Law for Protection of Rights of Developers of Computer Software (2000). However, the rules of procedure for this law is yet to be adopted.
Iran is a member of Paris Convention for protection of Industrial Property as well as its revised version which was ratified in 1959 and 1998 respectively. It should be pointed out that according to article 9 of the Iranian Civil Code, this Convention and its revised version posses the force of Law.
Madrid Agreement concerning the International Registration of Marks in 2001 was accepted in the year 2001 and the bill suggesting acceptance of the Protocol and amendments of the Agreement have been presented to the Judiciary Power. It will be subsequently reviewed by Council of Ministers and submitted to the Islamic Consultative Assembly for final approval.
Having considered the above system and the fact that parts of the TRIPS Agreement relating to the protection of Industrial property is generally based on the Paris Convention, one could say that there is consistency, with few exceptions, between the protection of industrial property in Iran and the TRIPS Agreement. The provisions of Paris Convention concerning registration of trademarks, patents, geographical indications, issuance of compulsory license, rejection of registration of patents or trademarks for the reason of being contrary to morality or public order, the principle of national treatment, prevention of unfair competition, and confidentiality of trade
8 secrets are almost in conformity with the provisions of the industrial property rights system in Iran and those of TRIPS Agreement. In regard to trade names, it is worth mentioning that this issue is addressed in the article 28 of the Commercial Code whose procedure rules is yet to be adopted.
Functions of the trademark
1- Function to indicate the origin of goods
This function indicates that the goods provided with the mark and services using the identical trademark have always been provided by a certain manufacturer, seller or supplier. This function is the most essential and fundamental among the functions of the trademark, in consideration of its historical background that the importance of this function has been increasing as the economy grew, resulting in the creation of the trademark protection system.
2- Function to guarantee quality
This function guarantees the reliability of the marked goods and the services using the identical trademark, which always maintain a certain level of quality. It is also guarantees that the goods marked with a the services using the identical trademark maintain the quality required by business partners and customers, but it does not necessarily mean that they always maintain superior quality.
3- Function as an advertising device
This function motivates business partners and customers to purchase and use goods and services by letting them know that they are the goods and services of the certain company, through the use of a trademark as an advertising device.As the mass media have been developing in recent years, the importance of this function has also been increasing. Companies are able to enhance their corporate image by instilling their trademark, which represents their business credibility accumulated over the years, in the minds of their business partners and customers. Thus, it can be said that the function as an advertising device is very closely related to the nature of a trademark as property.
9 Chapter II
1- Criteria for Protection
Definition of a Trademark
According to a widely accepted interpretation, trademarks are “marks used by a business operation with respect to its goods or services to allow traders and consumers to distinguish his goods or services from those provided by other parties and to indicate the identification of the goods or services”.
A trademark protected in Japan as a mark under the Trademark Law in section 2(1) Defines “trademark” as characters, figures, signs, three-dimensional shapes or any combination thereof, or any combination thereof with colors and section 2(i) states that the marks used in respect of goods by a person who produces, certifies or assigns such goods in the course of trade; and section 2(ii) states that marks used in respect of services by a person who provides or certifies such services in the course of trade (other than as in (i)), also section 3 (1) states the distinctiveness as a requirement for trademark.
Iran trademark law in Article (1) provides that a trademark may be adopted to distinguish or specify the products of a group of farmers or industrialists, traders, or products of a city or a town, or a region of a country. According the definition in this law “a trademark is any type or form of marking composed of drawing, picture, number, letter, wording, seal, phrase, special wrapping, etc. which is adopted to distinguish or specify a particular industrial, commercial or agricultural product.”
* The common scope of the protection in both of the systems are character marks, figurative marks, signs marks and composite marks. One of the differences between these two definitions is that Iran trademark law dose not provide any explicit protection for three-dimensional shapes as well as any combinations thereof with colors, although the protection of pictures and wrappings is provided by this law. Numeral marks are not protectable in Japan. According the section 3(1)(v) of this law trademarks which consists solely of a very simple and commonplace mark are not registrable. Although the examination guidelines of trademarks provides that in the case of trademarks with more than two digits of numerals indicated by kana characters
10 representing their sounds where they are distinctive may be registered such as (one two three) while the trademarks with a digit or two digits of numerals considered as a trademark consists solely of a very simple mark which falls under the same provision.
Unregistrable Trademarks
In Japan, according the section (4) of trademark law the following trademarks shall not be eligible for registration:
(1) trademarks which are identical with, or similar to, the national flag, the imperial chrysanthemum crest, a decoration, a medal of merit, or a foreign national flag; (2) trademarks which are identical with or similar to, a State coat of arms or other emblem (other than a national flag) of a country party to the Paris Convention, a Member of WTO or a contracting party to the TLT which have been designated by the Minister of Economy, Trade and Industry; (3) trademarks which are identical with, or similar to, a mark indicating the United Nations or any other international organization and designated by the Minister of Economy, Trade and Industry; (4) trademarks which are identical with, or similar to, the Red Cross ensign on a white ground or the title Red Cross or Geneva Cross; (5) trademarks comprising a mark identical with, or similar to, an official seal or sign which indicates supervision or certification by the Government of Japan or by the Government of a country party to the Paris Convention or a Member of the WTO or a contracting party to the TLT, or by a local public entity and which has been designated by the Minister of Economy, Trade and Industry, which are used on goods or services identical with, or similar to, the goods or services in respect of which such seal or sign is used; (6) trademarks which are identical with, or similar to, a famous mark indicating a State or a local public entity or an agency thereof or a non-profit organization or enterprise working in the public interest; (7) trademarks liable to contravene public order or morality; (8) trademarks containing the portrait of another person or the name, famous pseudonym, professional name or pen name of another person or the famous abbreviation thereof ;
11 (9) trademarks comprising a mark which is identical with, or similar to, a prize awarded at an exhibition held by the Government or a local public entity or at one which is not held by the Government, etc. but has been designated by the Commissioner of the Patent Office or at an international exhibition held in a foreign country by its government, etc. or a person authorized thereby ; (10) trademarks which are well known among consumers as indicating the goods or services as being connected with another person's business, and trademarks similar thereto, and which are used in respect of such goods or services or similar goods or services; (11) trademarks which are identical with, or similar to, another person's registered trademark applied for prior to the filing date of the trademark application concerned and which are used on the designated goods or designated services; (12) trademarks which are identical with another person's registered defensive mark, and which are used on the designated goods or designated services covered by the defensive mark registration; (13) trademarks which are similar to or identical with trademarks registrations which have terminated less than one year prior to the subsequent Applicant’s application date and where such trademarks are used on the Identified Goods or Services or on similar goods and services. This provision shall not apply to registrations which had not been used for one year prior to the date the registration terminated. In the event a registration is cancelled or invalidated, all trademark rights shall cease on the date of the decision. (14) trademarks which are similar to or identical with the name of a variety registered under Section 18(1) of the Agricultural Seed and Seedlings Law (Law No. 83 to 1998), and which are used on the seeds or seedlings of the variety concerned or in respect of similar goods or services; (15) trademarks which may cause confusion regarding goods or services related with another person's business (other than the trademarks mentioned in paragraphs (10) to (14)); (16) trademarks which may cause a misconception regarding the quality of the goods or services; (17) trademarks which, as used on or in connection with wines or spirits, identify a place other than the origin of the goods either in Japan or in any member state of the WTO, if such conduct is prohibited in that country ;
12 (18) trademarks which are merely three-dimensional shapes of goods or their packaging and whose shapes are essential to the function of the product or their packaging; (19) trademarks which are well known among consumers in Japan or abroad as indicating the goods or services as being connected with another person's business, and trademarks identical with or similar thereto, and which are used by the applicant for unfair intention in respect of such goods or services.
In Iran, according the Article 5 of trademark law none of the following marks may be registered as a trademark or as an element of a trademark:
1- National flags of Iran or any other flag which the Government has banned its use as a trademark, The Red Crescent, signs and medals of the Government of Iran. 2- Words and expressions referring to authorities of Iran.
3- Signs and marks of official institutions, centers and foundations such as the Red Cross Society, The Red Crescent and the like. 4- Marks contrary to public order or morality.
Also the Article 9(2) of Iran Trademark Law and Article 5 of it’s Regulation provides that if the mark has already been registered in someone else's name, or if the similarity or resemblance between the mark under application and a mark that has been previously registered is to such an extent that it may confuse ordinary consumers and persons without specialized knowledge, and it may be considered with due regard to the appearance, pronunciation and meaning or any other characteristic likely to mislead the ordinary consumer or in the case of Generic terms or Geographical names likely to mislead the consumers as to the origin and quality of the goods shall not be granted registration as a distinctive mark.
* The prohibited indications embody in trademark law of almost every country member under Paris Convention. However, the Items (8), (9), (10), (12), (13), (14), (18) is not stipulated in Iran Trademark Law, since Iran is a member of Paris Union, so in many cases with referring to the Articles of Paris Convention such as Article 6bis for protection of Famous and Well-Known marks and Article 6ter regarding
13 prohibitions concerning State emblems, Official Hall marks and Emblems of International Organizations provides the necessary protection in the above cases if any.
The principle of protection of the public order or morality is the same, but the different nature and culture of two countries may finally affect the result of judging. Also Iran Trademark Law does not provide any protection for wines and alcoholic beverages because of Islamic assumption thereof, so there is no provision regarding Item 17 of the unregistrable marks, though according the Note (1) of Article 5 of the said Regulations the Geographical names likely to mislead the consumers as to the origin and quality of the goods shall not be granted registration as a distinctive mark.
2- Requirements for trademark registration
Unity in application
In Japan, an application for a trademark registration shall relate to a single trademark and shall designate one or more items of goods or services in respect of which the trademark is to be used according to the classes of the classification of goods and services, prescribed by Cabinet Order. (Section 6)
In Iran, according the Article 4 of Regulations of this Law anybody who simultaneously applying for several trademarks shall file a separate application for each of them in compliance with the rules set out in these Regulations.
First to File Rule
In Japan, according the Section 4(1)(11) and Section 8 of this Law in case where there are more than one application made for the registration of identical or similar trademarks used for identical or similar goods and/or services, an applicant who first made the application is granted the registration of a trademark under this rule.
Where two or more trademark applications relating to identical or similar trademarks which are to be used on identical or similar goods or services are filed on the same date, only one applicant, agreed upon after mutual consultation or chosen by the
14 drawing of lots conducted in fair and just manner among all the applicants, may obtain a trademark registration for the trademark. (Section 8(5))
In Iran, according the Articles 2 and 14 of this Law the first to register will enjoy exclusive use of the trademark. However if during the registration procedures or after registration it is proven to the court that a third party has had prior and continuous use of the trademark the mentioned mark will be cancelled and the third party can register trademark in his own name by court order. Although these are supporting evidences in such cases only, otherwise the party who first applies for registration can benefit the rights from the registration.
* According the provisions said above it is made easy to determine the relationship between an earlier–filed application and a later–filed application based on the filing dates of the applications. The difference is that in Iran in the case of the filing two or more trademark applications relating to identical or similar trademarks which are to be used on identical or similar goods or services on the same date, only one applicant whose application number is earliest may obtain the trademark registration, while in Japan this is agreed upon after mutual consultation or by the drawing of lots conducted in a fair and just manner among all the applicants, one applicant may obtain a trademark registration for the trademark.
Collective trademarks
In Japan, according the Section 7 of the Trademark Law an Aggregate corporation or industrial business corporative association and other associations established under the special law (excluding those which are not legal entities), or foreign legal entities corresponding thereto shall be entitled to obtain a collective trademark registration with respect of a trademark for use by their members. Any person desiring the registration of a collective trademark shall submit to the Commissioner of the Patent Office with respect to a trademark application under Section 5(1) a document proving that the applicant is a legal entity referred to Subsection (1) of the said law.
In Iran, according the Article 1 of the this Law and 2(5) of it’s Regulations for the collective marks intended to identify the products of a group of farmers or
15 industrialists, traders or produce of a society, a town or city, or a district of a country, a certificate issued by a competent authority attesting the right of use of the trade mark by the manufacturers of the goods covered by the mark shall be submitted (In Iran, the said competent authority whose certificate the Registrar shall accept as evidence of the facts referred to in this paragraph, shall be respectively):
. A trade union . The Chamber of Commerce or Industry . The Municipality . The Governorship
* According the above, it consider that in Japan being a legal entity is a basic rule for granting of a collective mark and in Iran the attesting the right of use of the collective mark should be approved by the above mentioned competent authorities.
Requirements for Registration of a Trademark
In Japan, a person desiring a trademark registration first needs to satisfy the formality requirements which is related to qualification of applicant, submission of application and registration fees in addition to satisfy the substantive requirements listed below:
1-A trademark of which the registration is sought needs to be distinctive to distinguish goods or services bearing it from those provided by other parties. 2- A trademark of which the registration is sought does not fall subject to reasons for unregistrability. 3- At the time of filing an application, goods or services with respect to which a trademark is to be used need to be designated according to the “Classification of Goods and Services.” 4- An application should be free from any violation of the “First to File Rule” provision.
Then the applicant shall submit a request to the Commissioner of the Patent Office includes the following Items; (section 5(1)):
16 i) the name and the domicile or residence of the applicant for a trademark registration; ii) the trademark for which registration is sought; iii) the designated goods or designated services and the class of goods or services as prescribed by Cabinet Order iv) any other necessary documents
In case where a person desires a trademark registration with respect of a trademark consisting of three-dimensional shapes or a trademark consisting of only “standard characters, the application needs to contain a statement to that effect (Section 5(2) and (3). In order to file a trademark application, a fee needs to be paid as prescribed (Section 76(2) and table fees thereof).
In Iran according the Article 1 of the Regulation of this Law, the application must be lodged in Persian, duly dated, signed and shall comprise the following points:
1- Name, address and nationality of the applicant and the headquarters of his enterprise. 2- Name and address of the applicant's attorney in Tehran if the application is made through an attorney. 3- The line of trade, or the type of industry of the owner of the mark. 4- Date, place and number of registration at the country of origin, if the mark has been registered outside Iran. 5- The residence in Tehran chosen by the owner of the mark. 6- The name and address of the person or persons in Tehran, who are competent to receive legal notices and warnings. 7- Specification of goods for distinction of which the mark is being used, with a mention of the requested classes, as per the Classification annexed Regulation. 8- A description of the Mark, and the special manner of its use, if any. 9- Amount of the registration fee collected. 10- A mention of the annexes.
Note: the name and address of applicants residing outside Iran must be written in Latin characters, besides Persian, and must be registered and published in the same characters.
17 The Article 2 of Regulation of this Law provides that the application must have the following annexes:
1- Original or a certified copy of the power of attorney, if the application is made through an attorney. 2- Ten specimen of the mark as it is used, plus additional specimen, to equal one specimen for each additional class requested for registration. 3- A printing block for printing the Trade Mark distinctly. If the Trade Mark is composed of one or several words, without a device or special stylized letters, then the applicant is not obliged to annex a printing block. 4- If the mark has been registered outside Iran, submission of a copy of the registration certificate, certified by the Office issuing it, in the original language together with it’s translation is imperative. 5- For the collective marks a certificate issued by a competent authority attesting the right of use of the trademark by the manufacturers of the goods covered by the mark shall be submitted.
* With due attention to the above provisions it is consider that the Article 2(4) of the Regulation of Iranian Law provides that in the case of the Registration of the Trademark in outside of Iran, the submission of a copy of the registration certificate, certified by the Office issuing it is imperative, while it is not applied by the Japanese Trademark Law. (This provision is provided by the Article 6quinquies of Paris Convention as well)
3- Examination System
Principle of examination by examiner
In Japan, according the Section 14 of Trademark Law an examiner decides to register a trademark based on a judgment reached through his examination to examine its registratrability.
In Iran the same provision is applied for examination by examiner on the Article 7 of Trademark Law.
18 Rejections
In Japan in the case of a trademark application falls into one or more of the following categories, the Examiner shall issue a rejection:
1- Trademarks which cannot be registered pursuant to the provisions of Section 3, Section 4-1, [Section 7-1, Section 7-3,] Section 8-2, Section 8-5, Section 51-2 (including its application in Section 52A-2), Section 53-2, or Section 25 of the patent law as applied in Section 77-3 here in. 2- Trademark which are not registerable pursuant to the provisions of treaty. 3- Trademarks which do not meet the requirements of provisions in Articles 6-1 and 6-2 regarding the unity in Application. 4- Trademarks which are the same as or similar to the trademarks owned by others in Paris Convention members or the WTO members and used on or in connection with the same goods or services or similar goods or services to that original trademark right owner if the trademark registration was filed, without reasonable justification, without the consent to the original trademark right owner either by his current or past agent or representative within one year of the original trademark application.
In Iran according the Article 9 of this Law the examiner may reject an application on the following grounds:
1. When the mark is contrary to the law, 2. If the mark has already been registered in someone else's name, or if the similarity or resemblance between the mark under application and a mark that has been previously registered is to such an extent that it may confuse ordinary consumers and persons without specialized knowledge. Similarity may be considered with due regard to the appearance, pronunciation and meaning or any other characteristic likely to mislead the ordinary consumer. According to the Note 1 of Article 5 the Regulation of this law the Generic terms or Geographical names likely to mislead the consumers as to the origin and quality of the goods shall not be granted registration as a distinctive mark. If, during a period of 15 days from the filing date of an application it is found that the application is not registerable, or that the applicant fails to complete the
19 application within the prescribed time limit, the Branch Office shall notify the rejection to the applicant in writing, stating the reasons for such rejection.
* As the grounds for rejection results from the provided Articles by Law, and the examiner after making a decision shall refer the related Articles thereof to refuse a trademark, so there are specified grounds for rejection of a trademark in both laws which are similar in some extent, but since Iran is not yet a member of a TLT and the other International Conventions, in some cases such as Item 2 of the above mentioned grounds for rejection of a trademark in Japan there is differences for rejection.
Decisions to Register
In Japan, when no reason to refuse a trademark application is discovered, the Examiner shall make a determination that the application should be registered. (Section16). Upon registration of a trademark the following particulars shall be published in the Trademark Gazette (Section 18(3)).
1- Name and domicile or residence of the owner of the trademark right 2- Number and date of the trademark application 3- Contents of the trademark stated in the request 4- the designated Goods or Services 5- Registration number and date of the registration of the establishment 6- other necessary particulars
Only within two months from the publication of the Gazette containing the trademark after registration any person may file with the Commissioner of the Patent Office an opposition to a trademark registration. Also during the said period, the Commissioner of the Patent Office shall allow public inspection of the application documents and attachments.
In Iran according the Article 7 of the Regulation of the this Law after the examination of trademark by the examiner where no reason found for refuse of the application the Branch Office of Registration shall publish a notice in the Official Gazette about any Trademark approved for registration in accordance with the
20 provisions of Article 5 of the Regulation of this Law, such notice shall include the name and address of the proprietor of the mark, a reproduction of the mark with all its distinctive elements and the specifications of the goods covered thereby. According Article 9 of the Regulation of this Law if no opposition is filed within thirty days as from the date of publication of the notice, the Branch Office of Registration shall register the mark.
* According the provisions provided in above, consider that in Iran the application will be published after the trademark approved by the examiner for grant of application while in Japan after registration of a trademark it will be published in trademark Gazette. It is worth mentioning that in Japan, after trademark application are filed, they are published as a general rule for a prior search of trademarks while in Iran there is no publication for unexamined applications. The other difference is that the time considered for opposition in Japan is 2 months from the publication of registered Trademark while in Iran it is provided 30 days after the Publication of Trademark in Official Gazette and if no opposition filed within the said time, the Registry shall register the mark.
4- Trademark Rights
Effects of Trademark Right Registration
In Japan a trademark right is a right to exclusively use a trademark with respect to its designated goods or designated services (Section 25) and it comes into force upon the registration of its establishment in the Trademark Register with respect to a trademark for which a registration fee is paid within a prescribed period after an examiner’s decision of registration. (Section 18)
In Iran, Article 2 and 14 of this Law provides that the right to use a trademark is recognized only for those who have registered their trademark. Registered trademarks will enjoy protection from the date of filing of the original application.
21 Term and Renewal
In Japan the term of a trademark right is 10 years from the date of the registration of its establishment and renewable upon a renewal request. (Section 19)
In Iran, Article 14 of the Trademark Law provides that the validity period of registration of a trademark is ten years. However, the holder of the registration may apply for renewal of this period. In this case the exclusive right to use the trademark shall belong to the owner for another such period of 10 years. In the same manner, each renewal will ensure the said right for another 10 years.
Registration of Renewals
In Japan, in order to renew a trademark registration, a renewal applicant shall file a renewal request Form which contains the following information with the Commissioner of the Patent Office. (Section 20)
1- Name and title and domicile or residence of the Applicant 2- Registration number of the registered trademark 3- other necessary particulars required by order of the Ministry of International Trade and Industry.
The renewal request shall be filed within six months before the expiration of the prior trademark registration. In the event the trademark registrant is unable to file for renewal within the time frame specified above, the registrant may still file for renewal within six months after the expiration of such time period. If the renewal application cannot be filed within the prescribed time period for reasons beyond the control of the Applicant, the application may still be filed within 14 days after those reasons have ceased to exist but not more than two months after the prescribed time period.
In the event the trademark registrant does not file for renewal within the time period prescribed above, the trademark right shall be deem to have terminated at the end of the initial registration term. Upon registration of the renewal the relevant information shall be published in the Trademark Official Gazette.
22 In Iran according the Article 20 of the Regulation of this Law up to six months after the expiry of the validity period of the registration, the owner of the registration or his legal representative may apply for renewal of the registration once every ten years. The application must be submitted in two copies, signed by the proprietor or his legal attorney and contain a print of the mark. Renewal of the registration shall be effect after payment of the renewal fees. The renewal shall be recorded on the pages of register reserved for the same mark and in continuation to the initial registration. Should there be any changes in the mark at the time it is renewed, the provisions on changes and amendments shall be fully complied in every aspect. No notice will be published on the renewal of registration of a mark remaining unchanged.
If the duration of the validity of the mark expires, registration of the same mark by its original owner or by others is subject to provisions and formalities of registration of trademarks.
* In Japan by the provision of Restoration of trademark right another chance is provided beyond the 6 months after expiration of Trademark time for the owner, if the renewal application cannot be filed within the prescribed time period for reasons beyond the control of the owner, while in Iran the renewal applicant only may apply up to six months after the expiry of the validity period of the registration. Also no notice will be published on the renewal of a mark remaining unchanged.
Transfer of trademark right
In Japan a trademark right may be transferred. In case where two or more items of goods or services are designated with respect to it, a trademark right may be divided and transferred with respect to each of them (Section 24bis). The transfer of a trademark right takes its effects upon its registration in the Trademark Register.
In Iran according the Article 12 of the this Law a trademark may be assigned to a third party, but such an assignment will be legally valid only when it is registered in accordance with the provisions of the said Law. Also, according the Article 18 of the regulation of this law a legally acceptable deed of the assignment, a power of
23 attorney, and the original Iranian certificate of registration must be annexed to the application (which will be returned to the new proprietor of the mark after the official endorsement is made on its reverse side).
Transfer of Collective Trademark Right
In Japan when a collective trademark right is transferred, the collective trademark shall be deemed to have been converted to an individual trademark right, except that the owner of a collective trademark desires to transfer his collective trademark right, he shall submit a statement to that effect and a document under Section 7(3) to the Commissioner of the Patent Office at the time of an application for registration of the transfer. (Section 24ter)
In Iran according the Article 1 of the said Law collective marks may be registered in Iran as such. But since the scope of protection, formalities and requirements for registration of a collective marks is the same manner as other trademarks or service marks, so the requirements and formalities regarding changes in ownership, including transfer of ownership, do not differ from that of the ordinary marks but if the assignee itself is an organization fulfilling the conditions of an owner of a collective mark must provide either a notarized certificate issued by the competent authorities attesting the right of use of mark by the manufacturers for the goods covered by the mark, certified by the issuing Office.
Right of Exclusive Use
In Japan the owner of a registered trademark is allowed to, in principal, grant a “right of exclusive use” with respect to the registered trademark (Section 30(1)). The owner of a right of exclusive use is entitled to exclusively use the registered trademark with respect to its designated goods or designated services within the scope of a contract granting the right (Section 30(2)). A right of exclusive use may be transferred only with the consent of the owner of the trademark right or in the case of inheritance or other general succession (Section 30(3)).
24 Right of Non-Exclusive Use
In Japan, the owner of a trademark right or the owner of a right of exclusive use with respect to a registered trademark can, in principal, grant a “right of non-exclusive” use (Section 30(4) and Section 77(4) of the Patent Law and Section 31(1)). The owner of a right of non-exclusive use may use the registered trademark with respect to its designated goods or designated services within the scope of a contract granting that right (Section 31(2)). A right of a non-exclusive use may be transferred only with the consent of the owner of the trademark right or in the case of inheritance or other general succession (Section 31(3)).
The grant and transfer of a non-exclusive right takes its effects without their registration, unlike a right of exclusive use.
In Iran according the Article 19 of the Regulation of this law the owner of the mark or his legal representative may grant another person the license to use the registered mark with respect to its designated goods or designated services within the scope of a contract granting the right, this license will be valid if the License Agreement has been officially recorded in Iran. Where the licensor and the licensee sign the Agreement, its registration will be effected as per a written request of the owner of the mark or his authorized representative or the licensee. A right of exclusive use may be transferred only with the consent of the owner of the trademark right or in the case of inheritance or other general succession.
Prior use
In Japan where, from a time prior to the filing by another person of a trademark application and without any intention of violating the rules of fair competition, a person has been using in Japan the trademark in the application or a similar trademark in respect of the designated goods or designated services in the application, or in respect of similar goods or services, and, as a result, the trademark has become well known among consumers as indicating the goods or services as being connected with his business at the time of filing of the trademark application, such person shall have a right to use the trademark in respect of said goods or services provided that he does so continuously. The same shall apply in the case of a person who has succeeded to the
25 business concerned. The owner of the trademark right or of a right of exclusive use may request the person having a right to use the trademark for his goods or services with a suitable indication so as to prevent any confusion between the goods or services connected with the owner's business and those connected with the other person's business. (Section 32)
It is notable that according the Section 4(1) (11) trademarks which are identical with, or similar to, another person's registered trademark applied for prior to the filing date of the trademark application concerned and which are used on the designated goods or designated services are not registrable in Japan. Where after registration, the registered trademark has become a trademark falling under the said Section a trail may be demanded for the invalidation of a trademark registration within 5 years and in the case of the expiration of the said period Section 32 will be applied.
In Iran according the Articles 16(2), 20 of this Law, in the event, from a time prior to the filing by another person of a trademark application, a person has been using in Iran the trademark or a similar trademark in the application in respect of the designated goods or designated services in the application, such person may file an opposition, must enclose certified copies of documents he uses as evidence to substantiate his claims, if the opposing party has not already registered the mark in his own name, at the time of submission of his opposition, he must apply for the registration of his mark and must pay all the registration and other associated fees in advance.
In the notice, explicit warning must be made if the applicant complies with the opposition, he must withdraw his application and in the case of the applicant dose not complies with it, the objector may take an action to the Tehran Public Court. If the objector proves his priority right to the mark for the reason of previous and continuous use of the same mark, the court will order the mark to be registered in the name of the opposing party. If the mark has already been registered in the name of the applicant at the Deeds Registration Department, the Court will order the registration to be annulled, and the mark registered in the name of the opposing party.
26 * With due attention to the above provisions, It is consider that the in Japan such a person shall have a right to use the trademark in respect of said goods or services provided that he does so continuously. The same shall apply in the case of a person who has succeeded to the business concerned. However, the owner of the trademark right may request the person having a right to use the trademark for his goods or services with a suitable indication so as to prevent any confusion between the goods or services connected with the owner's business and those connected with the other person's business. But according the Iran Trademark Law the person who has already used the Trademark with respect of designated goods and services continuously, for the reason of the previous and continues use shall have the right to register the trademark in his own name.
Infringement and Injunction
In Japan, the use of a trademark similar to the registered trademark by other parties with respect to the designated goods or designated services of the registered trademark is stipulated as an act “deemed to be an infringement” (Section 37) and the owner of a trademark right may require a person who is infringing or is likely to infringe his trademark right to discontinue or refrain from such infringement (Section 36). The owner is also entitled to claim damage and restoration of damaged business reputation. The owner of a trademark right or of a right of exclusive use who is acting under the preceding subsection may demand the destruction of the articles by which the act of infringement was committed, the removal of the facilities used for the act of infringement, or other measures necessary to prevent the infringement.
In Iran, according the Article 48 of this Law the Ministry of Justice shall regulate the procedures for the collection of evidence, the seizure of goods produced as a result of infringement of trademark; and Article 49 provides the payment of damages to the person whose rights have been infringed. Such damages may include the losses as well as the profits the person has been deprived of as a result of the said infringement. The Articles 63 and 64 of the Regulation of the said Law provides that the owner of any trademark may, upon order of the Magistrate of the Peace, take a detailed list of such goods that they claim to be contrary to their rights acquired from their Trademark registration. In litigations arising from the rights acquired by registering
27 trademarks, the claimant in civil actions or the plaintiff in penal actions may at any time request from the legal Authorities trying the case to issue injunction order for securing evidence or attachment of forged and imitated products or request to issue an interim injunction order prohibiting manufacture or sale or importation of forged or imitated products and the said Authorities shall comply with the said request.
* With regarding to the above mentioned articles it is consider that both systems has provided provisions for the protection of a trademarks against infringement and the owner of a trademark right or of a right of exclusive use may require a person who is infringing or is likely to infringe the trademark right or right of exclusive use to discontinue or refrain from such infringement. In Iran, laws and regulations concerning the execution and implementation of Industrial Property rights provide sanctions such as criminal as well as civil remedies of these rights. Regarding the infringement of Trademark, the criminal sanctions provided in Articles 525 to 529 of Islamic Penal Code. Both criminal and civil cases are taken in the public courts and in these cases the public court of Tehran adjudicates such proceedings. In Trademark Law no penalty is foreseen for the cases of infringing or counterfeiting industrial property rights, and the competent court shall adjudicate at its own discretion according to the nature of the crime committed. This may include imprisonment in addition to confiscation of the concerned products or goods.
5- Opposition System
Opposition to Registration
In Japan, only within two months from the publication of the Gazette containing the trademark after registration any person may file with the Commissioner of the Patent Office an opposition to a trademark registration on the grounds that the trademark registration falls under any of the under mentioned paragraphs. In such an event, if two or more items of designated goods or designated services are covered by the trademark registration, the opposition may be filed with respect to each of such designated goods or designated services:
28 (1) where the trademark registration has been effected in respect of a trademark which is not distinctive (Section 3(1)); (2) where the trademark registration has been effected in respect of a trademark which falls within one of the unregistrable reasons (Section 4(1)); (3) where the trademark registration has been effected in respect of a trademark which violates the first to file rule (Section 8); (4) where the trademark registration has been effected in respect in a trademark contrary to prohibition of re-registration in the cancellation of registration (Section 51, Section 52bis, Section53) (5) where the trademark registration has been effected contrary to the provisions for foreigners’ right (Section 25 and 26 of Patent Law) (6) where the trademark registration has been effected contrary to the provisions of a treaty.
The examination of an opposition is executed by a collegiate body composed of three or five trail examiners. Where a ground is found for the opposition a “ruling of the revocation of a registration” is made. Where no ground is found for the opposition, a “ruling of the maintenance of a registration” is made. Where a “ruling of the revocation of a registration” is made, an action may be taken against it to the Tokyo High Court.
In Iran according Article 16 of Trademark Law the following persons may file an opposition against an applied for or already registered mark:
1. Persons who consider the trade mark to be their own. 2. Persons whose marks are confusingly similar to the subject mark in a manner that it will confuse ordinary consumers. In either of the above two cases, if the opposing party has not already registered the mark in his own name, at the time of submission of his opposition, he must apply for the registration of his mark and must pay all the registration and other associated fees in advance.
According the Article 17 of this Law if the opposition is filed before registration of the mark, the opposition must be served upon the applicant in the manner and within the period specified in the said Law Regulations. If the applicant does not comply
29 with the opposition and does not withdraw his application the opposing party may refer the matter to the Lower Court of Tehran within the period of time specified in the said Regulations. In the case of the opposition is filed against a registered mark, the opposing party must directly file suit with the Tehran Lower Court and must request the cancellation of the registration.
Opposition process
In Japan, a person filing an opposition to a trademark registration shall submit a written opposition to the Commissioner of the Patent Office stating the following: (Section 43 quarter (1)) (i) the name and the domicile or residence of the opponent and his representative; (ii) an identification of the trademark registration concerned in the opposition; (iii) the grounds of the opposition and an indication of the supporting evidence. (2) An amendment of the written opposition submitted under the preceding subsection shall not change the gist thereof. However, this shall not apply to an amendment made to the matter prescribed in Paragraph (iii) of the preceding subsection before a lapse of 30 days after the expiration of the time limit prescribed in Section 43bis. (3) The Commissioner of the Patent Office may, for the benefit of a person residing in a place that is remote or difficult of access, extend upon request or ex officio the period prescribed in the preceding subsection. (4) The trial examiner-in-chief shall transmit a copy of the written opposition to the owner of the trademark right.
In Iran, according the Article 51 of the Regulation of this Law the Oppositions to marks which is not yet registered must be submitted in writing to The Branch Office include the following information:
1. His name, profession and address in Tehran; and 2. Indication of all the evidence and proof, according to which he deems himself justified in the opposition.
Whenever possible, the party filing the opposition must enclose certified copies of documents he uses as evidence to substantiate his claims. (Article 52 of Regulation)
30 Where the opposition is based on the right of ownership that the party filing the opposition claims on a trademark which is applied for by another person, without that trademark having been registered in Iran in his name, his opposition will only be accepted if he files an application for registration of the said trademark in accordance with the Trademark Law. (Article 53 of Regulation)
Within ten days after receipt of the letter of opposition, The Branch Office shall notify the same to the applicant. If the applicant complies with the opposition in writing his application shall be withdrawn and the same shall be communicated to the party filing the opposition in writing. (Article 54 of Regulation)
Sixty days from the date of serving of the notice of opposition to the applicant the party filing the opposition must refer to the Tehran Court unless within this period the applicant complies with the opposition in accordance with the previous Article. Tehran courts shall deal with all civil or criminal cases related to the registration of trademarks or patents even if in the case of criminal cases, the offence has taken place outside Tehran. (Article 46 of this Law)
If the party filing the opposition fails to refer to the Tehran Court within the period specified in the above article, The Branch Office shall take note of a statement made by the Tehran Court that no petition has been received from the party filing the opposition and will proceed with the registration of the trademark in the name of the applicant.
* To achieve its purpose to ensure the credibility of registration and protect public interests, the Japanese Trademark Law stipulates an opposition system allowing an opposition to a trademark after it is granted a trademark right. The post-grant opposition system is designed to allow any third party to file an opposition to a trademark right within a certain period of time after the registration of its establishment and, if such opposition is filed, the Patent Office to examine the adequacy of its disposal of registration and correct defects if any. The objective is to enhance trust and confidence in trademark registration for equitable public interest, whereby the Japanese Patent Office checks its own decisions on trademark registration and corrects itself. This system has been introduced to accelerate granting
31 of trademark rights, and supersedes the conventional pre-grant opposition system. While the Iran trademark law provides Administrative opposition and Legal opposition which administrative opposition related to the marks which is not registered yet and legal oppositions dealing with the registered marks and actions taken after administrative oppositions.
6-Trail System
1-Trial against examiner's decision of refusal
In Japan, a person who is dissatisfied with a decision of refusal may demand a trial within 30 days from the transmittal of the examiner's decision. The examination of a demand for a trial is conducted by a collegial body composed of three or five examiners. Where the ground is found, the trial examiners shall make a decision to registration, this trademark is to be registered. Where no ground found, the trial examiners shall make a decision for denying the demand. In the case of the applicant is dissatisfied with the decision may take an action to the Tokyo High Court. (Section 44)
In Iran according the Article 7 and 8 of this Law if the applicant is dissatisfied with the decision of refusal, he may file a petition with the Head of the Lower Court of Tehran within ten days from the date on which the rejection is served upon the applicant. The Court’s verdict is also subject to appeal. If the application for registration is approved by the officer in charge of the special branch, or if after rejection of the application, a final judgment for registration of the application is issued, the Tehran Department of Deeds Registration will be required to register the mark and issue an official registration certificate within 15 days as of receipt of a copy of the approval, or court’s verdict.
2-Trial against ruling to decline amendment
In Japan, A person who is dissatisfied with a ruling to decline an amendment under Section 16bis (1) may demand a trial thereon within 30 days from the transmittal of the ruling. The examination of a demand for a trial is conducted by a collegial body
32 composed of three or five examiners. Where the ground is found, the trial examiners shall make a ruling, this application is accepted. Where no ground is found, the trial examiners shall make a ruling declining amendment. Where a ruling declining amendment is made, in the case of the applicant is dissatisfied with it, can take an action to the Tokyo High Court. (Section 45)
In Iran, according the Article 8 of the Regulation of this Law any amendments made by the applicant after the publication of the first notice must be submitted through a separate application. This application shall be examined in the manner set out in Article 5 of the said law. If accepted by Trademark Office, the said amendment shall be brought to the public notice by the publication of a new notice. Otherwise, the Article 11 of this Law and 14 it’s Regulation provides that any change or alternation in the mark, or goods covered by the registered trademark may apply by the applicant, through separate application and will be examined separately. Therefore, no trial request on ruling to decline an amendment.
3-Trial for invalidation of trademark registration
In Japan, Any interested party may demand for the invalidation of a trademark registration. When a trademark right is effective or even after the extinguishment of a trademark right, the demand for trail to this trademark may be filed. In principle, the period of exclusion of the demand for this trial is five years from the date of establishment of registration. The examination of a demand for a trail is conducted by a collegial body composed of three or five examiners. Where the ground is found, the trial examiners shall make a decision of invalidation, this trademark registration is to be invalidated. Where no ground is found, the trial examiners shall make a decision denying demand. Where a decision denying demand is made, the applicant can take an action to the Tokyo High Court. (Section 46)
In Iran according the Article 22 of this Law those who have not filed an opposition against registration of a mark within three years as from the registration date of the mark, can not file such opposition after expiry of the said period unless they can prove that, on the date of registration, the applicant was aware that the mark had been continuously used by the opposing party, or by another person who has transferred the
33 trade mark to the opposing party. If the applicant can then prove that the opposing party was aware of the registration during the said three-year period, the opposition will be rejected.
4-Trial for cancellation of trademark registration
In Japan, any interested party may demand a trail for cancellation a trademark registration except for a trademark registration illegal made by an agent, etc. When a trademark right is effective, the demand for trial to this trademark may be filed. The trademark owner may demand a trial for cancellation of the trademark registration illegal made by an agent. Examination of a demand for a trial is conducted by a collegial body composed of three or five examiners. The reasons for cancellation are non-use for three years or more, due to illegal use by trademark owner of the right of exclusive use or non-exclusive use, due to illegal registration by representative, etc. where the ground is found, the trail examiners shall make a decision of cancellation, this trademark registration is to be cancelled. Where no ground is found, the trial examiners shall make a decision denying demand. Where the decision denying demand is made, the applicant can take an action to the Tokyo High Court. (Section 50, 51, 52bis, 53bis)
In Iran according the Article 13 of the Regulation of this Law if a trademark registered for products set forth for in Article 1 of this law is not commercially used in Iran or outside Iran either by the owner of the mark or his legal representative, without a plausible reason within three years from date of registration, any interested party can refer to the Court of First Instance for its cancellation. The Article 61 of the said Regulation stipulates that any person who wishes to request cancellation of registration of a trademark registered in Iran must lodge a petition at the Court of First Instance in Tehran. A cancellation action may be filed within a period of three years following the registration date of a trademark.
* A trademark application leads to a decision of registration or refusal through an examination or refusal through an examination conducted by an examiner. A decision which contains defects itself or becomes to constitute defects due to later arising factors (such as, non use or the illegal use of a registered trademark) runs counter to
34 the interests of applicants or the public interests if left untouched as it is. To cover such case, the Japanese Trademark Law provides for a trail system to allow a disposal with such defects and inadequate situation arising there from to be corrected and resolved, so as to protect the interests of applicants or the public interests.
7- Defensive Marks
I. Registrability of defensive mark
The owner of a trademark right may, when his registered trademark in respect of goods and services has become well-known among consumers as indicating the designated goods and services as being connected with his business and when the use of the registered trademark by any other person in respect of goods and services than the designated goods and services covered by the registered trademark and goods similar thereto or services similar to the designated goods and services is likely to cause confusion between such goods or services and the designated goods and services in connection with his business, obtain a defensive mark registration of a mark identical with the registered trademark with respect to goods or services for which such possibility of confusion exists.(Section 64(1), (2))
A right based on defensive mark which is dependent on its capital trademark is transferred together with the capital trademark when the latter is transferred. When its capital trademarks becomes extinguished or is divided, a right based on a defensive mark becomes extinguished. (Section 66)
II. Purpose of Defensive Mark Registration System
The defensive mark registration system allows the owner of a registered trademark well recognized among consumers to indicate goods or services connected with the trademark owner’s business to register a mark identical with the registered trademark with respect to goods or services not similar to the designated goods or designated services of the registered trademark, with respect to which the use of the trademark by other parties may cause confusion over the source of goods or services. Thus, the system is designated to protect the business reputation of the owner of a well-known
35 trademark. If the use of a well-known trademark by other parties is allowed simply because it does not constitute an infringement, it may damage the business reputation of the trademark owner who has built up it through great efforts.
It should be reminded that the system of defensive mark has enforced in Japan since 1960 and at the present it is unique in Japan. Although not completely impractical, the system of defensive mark has not been widely used. A peak was reached in 1982 with 513 registrations.
Iran Trademark Law dose not provide additional protection for defensive marks which a system is applied for a higher protection of well known marks. However according to this Law the owner of a trademark right may apply for registration of addition of classes or addition of goods or services to the same trademark in other classes which the use of them by other parties may cause confusion over the source of the goods or services. Nevertheless the procedure for registration of these marks is the same as regular marks in Iran. (Article 11 of the Law and 14 it’s Regulations)
8- Publication
Trademark Gazette
In Japan, when a trademark application has been filed, the Commissioner of Patent Office shall publish the application. (Section 12) Upon registration of a trademark the provided particulars in the said Law shall be published in the Trademark Gazette according Section 18(3). Also, Section 75 of this Law provides that the Patent Office shall publish the Trademark Gazette, which contains the following Items:
(i) a decision that a trademark application is to be refused, or a abandonment, withdrawal or declining of an application for trademark registration or for defensive mark registration, which is made after the applications having been laid open; (ii) succession to rights resulting from an application for trademark registration, which is gained after the application having been laid open; (iii) amendments for designated goods or designated services stated in an application or for trademarks for which trademark registrations are sought or marks for which
36 defensive mark registrations are sought, which are made after the applications having been laid open; (iv) extinguishment of a trademark right (excluding extinguishment due to the expiration of a term or falling under Section 41bis(4)); (v) an opposition to a trademark registration or a demand for a trial or a retrial or their withdrawal; (vi) final and conclusive ruling on an opposition to a trademark registration and final and conclusive decision of a trial or a retrial; (vii) a final judgment in an action under Section 63(1).
In Iran, according the Article 7 of the Regulation of this Law the Branch Office for Registration shall publish a notice in the Official Gazette about any trademark approved for registration in accordance with the provisions of Article 5 including the provided particulars in the said Article. Also, the Article 13 of this Law provides that the registration of a trademark, or alterations thereof, will be published in the Official Gazette within fifteen days from the date of registration.
Article 12 of the Regulation of this Law stipulates that after registration of each mark the Branch Office for Registration shall published all official notices containing all the particulars set forth in Article 11 of this law. All changes and Licenses are also published once, after the recordal is completed.
* The publication of application is made in the Trademark Gazette, in order to protect the trademarks during the period from application for trademark registration to the establishment of the trademarks as an early protection of trademarks. In principle, all the applications for trademark registration will be disclosed. Though the publication of application has no legal effects, it enables the provision of information regarding the applications and may be utilized as a document to be presented in case of warning pecuniary claims.
37 9- Re-Classification System
I. Purpose of Registration of Re-Classification of Goods
Since the classification based on the Trademark Law of 1899 to the present classification based on the International Classification, the Japanese classification of goods has been modified four times with five classifications now in effect.
With these different “classification” in effect, a search conducted by a person desiring a trademark application trademarks of other persons conflicting with his own trademark naturally widens in scope and increases a burden. Particularly, trademarks registered with respect to goods designated under “so-called comprehensive conception” have the scope of their rights vague to third party other than the owner of the trademark right and the Patent Office.
It is the “re-classification system” that has been adopted to reclassify the designated goods of trademarks registered under the indigenous Japanese classifications (Classification of Goods effective under the Trademark Laws of 1899, 1909, 1921 and 1959) into classes based on the international classification of goods (which is effective at the time of filing an application for the registration of re-classification) so as to resolve the problem as explained above and promote the smooth operation of the Japanese trademark system.
II. Registration of Re-Classification of Goods
The owner of a trademark right resulting from a trademark application filed before April 1, 1992 has to request the registration of a re-classification of the designated goods within a period from six months before the expiration of his trademark right to the end of one year after the expiration in accordance with a scope and the start of acceptance of requests designated by the Commissioner of the Patent Office after the enforcement of a law concerning the re-classification of designated goods (April 1, 1998). With regard to an application for the registration of re-classification of the goods of which the formal examination has been completed, an examiner examines whether or
38 not the application satisfies the substantive requirement; the designated goods to be registered for re-classification have not been substantively beyond the scope of the designated goods of trademark right related to the application and the goods have been designated in accordance with the classification of goods and services as of the date of filing the application.
Where a reason for refusal is found as a result of the examination, the examiner notifies the reason for refusal to the requestor and give him an opportunity to submit arguments, designating an adequate time limit. Where a statement of arguments is not submitted or the reason for refusal not overcome by a statement of arguments submitted, a decision of refusal is made. Where no reason for refusal is found, a decision of the registration of a re-classification is made.
Where a decision of the registration of a re-classification is made, the re-classification of designated goods with respect to a registered trademark right is registered, taking its effects upon that registration. When the registration of a re-classification of goods is made, the prescribed matters concerning the trademark right is published in the Trademark Gazette.
In Iran, the applied domestic classification is under the annexed Table of Goods and Services provided by the Regulation of the Trademark Law as amended in 1958, which includes 36 classifications. In this classification from class 1-34 is reserved for goods that follows International classification system, class 35 is reserved for services and can be prepared to the applicant’s particular needs and class 36 is reserved for goods which is not mentioned in other classes. The classification used before the present, was a national one which comprised 80 classes. It was a part of Iranian Trademark Act dated 21st June 1931. However, the new classification (8th version of Nice Classification) has just been approved by the Judiciary Power and will soon come into force. Nevertheless, the IP Office re-classify the goods and services of the marks, at the time of renewals request for trademarks according to the Article 21 of the Regulation of the said Law. The trademarks automatically re-classify based on the designated goods and services when recording the renewal of a prior registration amending the class or classes covered accordingly both in Register and the Certificate of renewal registration of trademark.
39 10- Protection of Well-Known and Famous Trademarks
A list of the top ten ranked trademarks with respect to brand value was published in the September 1997 in the economic journal, “Financial World”. According to this list, “COCA-COLA” and “MARLBORO”, “IBM” and “SONY” are globally famous trademarks recognized by people around the world since their goods and services are distributed throughout the world.
In recent years, social and economic structures have become increasingly global. The well-known “CNN”, a 24-hour television broadcasting station and “DHL”, the package delivery service that appeared accompanying these changes and have become famous throughout the world, represent trademarks that have become deeply etched in the minds of people everywhere. In the field of computers that has rapidly expanded the range of users, it is no exaggeration to say that “MICROSOFT”, “INTEL”, “UNIX” and other well-known software trademarks have become famous trademarks on a global scale.
In addition, the trademarks of sponsors that are prominently displayed at global sporting events such as the Olympics and Asian Games are at times seen by billions of people, while the various trademarks advertised through global communication networks such as “CNN” and Internet rapidly attain popularity accompanying supply of their goods or services, enabling them to become well-known of famous trademarks.
The majority of these trademarks surpass the boundary of a trademark known in only a single country as their markets continue to expand, eventually being recognized as internationally well-known trademarks having the entire world as a single market. On the other hand, in contrast to these trademarks, trademarks that continue to provide numerous consumers with high-quality goods or services over the course of many years while continuing to maintain deep-rooted trust become well-known of famous trademarks within a fixed range of geographical area.
40 Japanese Law
Within the laws of Japan, In particular the Trademark Law, its related laws and regulations and the Unfair Competition Prevention Law have been enacted with respect to protection of well-known and famous trademarks. The Trademark Law was revised in 1993 and 1996, and is already considered to be completely compatible with the TRIPS Agreement. In addition, the Unfair Competition Prevention Law was completely revised in 1994, and its complete accommodation of the TRIPS Agreement has also been completed.
(a) Trademark Law
Provisions which relate to protection of well-known and famous trademarks have existed in the Trademark Law since long ago in Japan (Such provisions have been in existence since the 1921 law which were to prohibit a registration of identical or similar trademark by an unauthorized third party. Such provisions are believed to have already been existed in Japanese Trademark Law before or around 1925 when the Hague text of the Paris Convention was introduced) and the requirements for adopting these provisions were interpreted rather flexible so as to achieve the very purpose to prohibit any unfair practice in this field so that they would be used more effectively until they reached their present form.
“Section 4 (Unregistrable trademarks)
Notwithstanding the preceding section, trademark registration shall not be effected in the case of the following trademarks:
(x) trademarks which are well known among consumers as indicating the goods or services as being connected with another person's business, and trademarks similar thereto, and which are used in respect of such goods or services or similar goods or services; (xv) trademarks which are liable to cause confusion with goods or services connected with another person’s business (other than the trademarks mentioned in paragraphs (x) to (xiv));
41 (xix) trademarks which are well known among consumers in Japan or abroad as indicating the goods or services as being connected with another person’s business, and trademarks identical with or similar thereto, and which are used by the applicant for unfair intention (intention to gain an unfair profit, intention to cause damage to such another person and other unfair intentions - hereinafter the same) (other than the trademarks mentioned in each of the preceding paragraphs) in respect of such goods or services.”
“Section 64 (Registrability of defensive marks)
(1) the owner of a trademark right may, when his registered trademark in respect of goods has become well-known among consumers as indicating the designated goods as being connected with his business and when the use of the registered trademark by any other person in respect of goods other than the designated goods covered by the registered trademark and goods similar thereto or services similar to the designated goods is likely to cause confusion between such goods or services and the designated goods in connection with his business, obtain a defensive mark registration of a mark identical with the registered trademark with respect to goods or services for which such possibility of confusion exists.
(2) the owner of a trademark right may, when his registered trademark in respect of services has become well known among consumers as indicating the designated services as being connected with his business and when the use of the registered trademark by any other person in respect of services other than the designated services covered by the registered trademark and services similar thereto or goods similar to the designated services is likely to cause confusion between such services or goods and designated services in connection with his business, obtain a defensive mark registration of a mark identical with the registered trademark with respect to services or goods for which such possibility of confusion exists.”
The provision of Article 4-1-19 in particular is newly introduced at the time of the 1996 revision of Japanese Trademark Law. It is considered to be the most progressive provision in this field throughout the world with respect to decreasing troublesome requirements and conditions for the true owners of such well-known and famous
42 trademark rights. In other words, even in cases where there is little awareness in Japan, of such trademark that has actually been recognized as well-known and famous trademarks in several overseas countries, the said provision serves to protect these trademarks as well. This revision is extremely effective in cases of piracy of well- known of famous trademark overseas and in cases when the Patent Office and other authority do not have the information regarding the existence of such kind of well- known or famous trademark owned by foreign trademark owner.
The provision of Article 4-1-10 serves to reject a third party’s unauthorized application of copied trademark and invalidate its registration in case that the covered goods are identical or similar to goods or services to which the well-known trademark has been used by its true owner. This Article 4-1-19 is similar to Article 6bis of the Paris Convention, but Japanese provision does not require that a well-knownness of the trademark be established in Japan. Similar to the recognition in the court decisions for the “Maxim de Paris” restaurant cases in the United States and Ireland, this is because if the trademark for goods or services has been recognized as well-known or famous overseas, even though it may not be used actively in Japan, there are cases in which the same trademark has been recognized as being substantially well-known in Japan as well through travelers or medias of newspapers and magazines.
The provision of Article 4-1-15 attempts to protect well-known and famous trademarks over a broader scope of goods or services than those of Article 4-1-10. It resembles the provision stipulated in Article 16(3) of the TRIPS Agreement in that the scope of goods or service is not required to fall within a mutually identical or similar scope. In other words, the purport of this provision is not to register or protect trademark for which there is a risk of mutual confusion even in the case of trademark relating to dissimilar goods or services. This provision is applicable to famous trademark and extremely well-known trademark, and there is naturally no need for famous or well-known trademark to already be registered in Japan with respect to said goods or services.
As was previously explained, the provision of Article 4-1-19 which was introduced in the revision of 1996 is applicable for the protection of well-known or famous trademark if the owner of this trademark succeed to prove the well-knownness or
43 famousness recognized either in Japan or among several countries overseas outside of Japan. However, when applying this provision, it is also necessary to prove that the third party’s application should have been filed with a bad faith with intention to receiving unlawful interests, intention to inflict damages on another person or other unlawful objectives.
According to the provision of Article 64, the owner of a registered trademark right may, when his registered trademark (for instance, the automobile manufacturer registered a mark in respect of automobile) has become well-known among consumers in respect of the covered goods, obtain a defensive trademark registration of a mark identical other the basic trademark in respect of goods or services for which there is possibility of confusion, and a registration of the defensive trademark shall not have sanctions to be cancelled with the ground of non-use.
The merit of this registration is firstly that it is possible to surmise that the basic trademark should have been recognized as a well-known or famous trademark in Japan, and secondary, once it is registered, there is no obligation to use it, so a third party’s application or use of an identical or extremely similar trademark shall be blocked or prohibited as far as the trademark is in conflict and the goods or services are also in conflict with the goods or services covered by the defensive registration. In this sense, this system exists for the purpose of protecting well-known and famous trademarks.
It should be noted that in the case, for example an automobile manufacturer has registered a basic trademark relating to clothing as a defensive trademark, the basic trademark of that automobile manufacturer is protected with respect to clothing as well. Accordingly, it is said that in the case a third party commences the use of a trademark that is identical or extremely similar to the registered defensive trademark covering the clothing, the owner of defensive trademark take an action for injunction against the third party’s unauthorized use as an infringement of the defensive trademark registration.
On the other hand, if the owner has not registered the basic trademark as defensive trademark, he can not take such an infringement action but may take action for
44 injunction under the Unfair Competition Prevention Law, if it is applicable to such individual case.
(b) Unfair Competition Prevention Law
In the current Unfair Competition Prevention Law, Article 2-1-1 and Article 2-1-2 are extremely effective for protection of well-known and famous trademarks. Normally, in order to enjoy a protection of trademark (widely known or well-known trademark), a trademark owner shall register his trademark under the Trademark Law, then he can take such an action against an infringement for an injunction, demand compensation for damages or other actions or take action for criminal prosecution as an infringement of registered trademark right under the Trademark Law, but in the case that a registered right to trademark does not exist, it is not possible or almost impossible to rely on the Trademark Law, then in that latter case, the owner of trademark can rely on the Unfair Competition Prevention Law.
“Article 2. (Definitions)
The term “unfair competition” as used in this Law means any one of the following:
(1) The act of using an indication of goods, etc. which is identical with or similar to another person's indication of goods, etc. (meaning the indication of goods or business such as a name, trade name, mark, and goods container or package related to a person's business; hereinafter the same) which is widely recognized among users, or act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, importing goods on which such indication of goods, etc. is used, and thereby causing one's goods or business to be confounded with another person's;
(2) The act of using, as one's indication of goods, etc., an indication of goods, etc. which is identical with or similar to another person's well-known indication of goods, etc., or act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, or importing goods on which such indication of goods, etc. is used;”
45 Acts falling under the provision of Article 2-1-1 are prohibited as unfair competitive acts under the Unfair Competition Prevention Law, then the well-known trademark and famous trademark are protected in accordance with the relief provisions stipulated in the Unfair Competition Prevention Law.
The subject to be protected by applying this provision is the owner of the well- recognized indications of goods or services; i.e. a well-known trademark, trade name or the like. Requirements for receiving relief as stipulated in this Law consist of having prove that (1) the trademark or other indication of goods or services must be recognized as a well-known among the consumers and (2) a confusion has occurred or there is a risk of confusion occurring.
The provision of Article 2-1-2 stipulates that an owner of a famous trademark or other famous indication of goods or services is eligible to receive the same relief as in the case of Article 2-1-1 in the case that another person has used without consent, a famous indication of goods or services (including famous trademark) or any confusingly similar indication thereto.
The provision of Article 2-1-2 attempts to provide broad protection for famous trademark, or other famous indication, and is also applied to prevent so-called “free rides” and “dilution”. Further it is noted that a famous trademark is also protected under Article 2-1-2 when it has been recognized only in overseas countries, but even a famous trademark recognized only in small part of region in Japan, it is not protected under this provision. Owner of famous trademark attempting to receive relief based on this provision must prove that his own trademark (or indication of goods or services) is recognized to be famous. However, in applying this provision, there is no need to prove that confusion has occurred of there is a risk of confusion occurring.
Criteria for Determining Well-known and Famous Trademarks
Evaluation Standards
There are also no provisions in Japanese Law that indicate specific evaluation standards. On the other hand, as was previously mentioned, it can be considered to
46 distinguish between the terms “well-known” and “famous”, which is not definitely affirmed. In comprehensively looking over practices reflected from the Patent Office and Court decisions, practices on this issue in Japan are considered to be as indicated below:
Whether or not a trademark is well-known should be evaluated comprehensively according to the type of goods or services, the actual trade channel of transactions, the trade practices, the modes of advertising and promoting activities and the modes of trademark use and so forth. Further breaking down the substantial contents and looking at them with the view of analysis hereinafter.
With respect to the geographical jurisdiction, it seems not always necessary that a trademark be well-known throughout the entire country, but it only need be proven that the trademark recognized as well-known in at least a part of the country. However, in the case of famous trademarks, a trademark must be very well-known throughout entire Japan, in principle, but in some special instances, a trademark is able to be protected, for example, under Article 4-1-19, in other words, a trademark does not always have to be famous in Japan, but it is required to be recognized famous or very well-known globally overseas. It is generally thought that it is not sufficient if the famousness of trademark is limited to only one region even if that region is in Japan.
Nextly, there is no fixed standard with respect to the term of use as well, but it is naturally desirable that use for a somewhat long period of time as well as extensive publicity activities or the like are necessary. However, since there are cases in which the goods as well as the trademark may become popular and demanded in a short period of time such as in the case of “Rubic Cube”, which temporarily was extremely popular and had a short life cycle, whereby, in the same way, the goods (or services) bearing a particular trademark will be sold in large volume for a short time or the goods (or services) can be marketed through large scale publicity in a short time, accordingly, it is not easy to stipulate standards pertaining to the term of a trademark use that can be applied comprehensively.
47 Next, the time of determining whether or not a trademark becomes well-known is the time when a final decision is rendered for an examination of a defensive mark application, for opposition case or trial for invalidation case and so forth. The time for determining in the course of a legal action (law suit) is the time when the bearing is completed in the civil procedure for the injunction cases, and with respect to a legal action demanding for damages, is the time when the subject tort was committed.
Finally, examples of evidential materials for the purpose include materials showing marketing activities (sales volume, monetary sales amount, etc.), business scale (company size, number of employees, number of stores, annual turnover etc.), distribution of posters, advertising through newspaper, magazine or television, results of storefront surveys, a fact of receiving a recommendation from superior goods recommendation association and so forth, and a certificate of the fact by a public organization. In not only the case of a famous trademark, but in normal cases as well, there are many times when a vast amount of evidence is required to show advertising activities, marketing status and so forth (Note 3).
Whether a mark is distinctive and famous, a court way consider the factors such as:
(1) the degree of inherent or acquired distinctiveness of the mark; (2) the duration and extent of use of the mark in connection with the goods or services (3) the duration and extent of advertising and publicity of the mark; (4) the geographical extent of the trading area in which the mark is used; (5) the channels of trade for the goods or services with which the mark is used; (6) the degree of recognition of the mark in the trading areas and channels of trade of the mark’s owner and the person against whom the injunction is sought; (7) the nature and extent of use of the same or similar marks by third parties; and (8) the existence of a registration
Distinction in the Trademark Law and Unfair Competition Prevention Law
The Japanese Trademark Law and Unfair Competition Prevention Law can be considered to distinguish between “well-known trademarks” and “famous
48 trademarks” although used terms are note clearly distinguished therein. For example, Article 4-1-10 of the Trademark Law is targeting a protection of “well-known trademarks”. Even in the case that confusion with a “well-known trademark” is occurred within the scope of same or similar goods or services, it is naturally occurable with a “famous trademarks”, indeed, within the same or similar scope of goods or services.
On the other hand, in the case of Article 4-1-15, the object of this provision is to protect the “famous trademark” from confusion with third party’s trademark occurred in the scope of dissimilar goods or services and the target of this item should be “famous trademarks”. Moreover, based on the same purport, since the defensive marks of Article 64 are also based on the supposition of confusion occurable in the scope of dissimilar goods or services, this is also believed to be targeted at “famous trademarks”.
Registration or Actual Use as a Condition for Protection
The Paris Convention and TRIPS Agreement as well as national trademark laws in common law countries and advanced countries including Japan have already recognized the importance of suitable protection of well-known and famous trademarks. The specific conditions for the protection of trademarks are not expressly stipulated, but it is generally recognized that these well-known and famous trademarks must be protected even if they are not registered.
According to Japanese Law, there is no express indication, but it has been interpreted that the existence of trademark registration is note necessary and as far as the actual use is concerned, it is considered that the actual use of trademark is to be essential to establish well-knowness or famousness of the trademark in principle, so an actual use at least in anywhere should be necessary but the evaluation on the popularity of trademark shall be conducted on a case-by-case basis.
According to the interpretation of Article 4-1-19, for example, the trademark which has been actually used and also recognized as a well-known or famous trademark in several countries other than Japan, even though it has not used in Japan yet, can be
49 protected as a well-known or famous trademark under Japanese Trademark Law. Therefore, it would be noted that an actual use within Japanese jurisdiction is not an absolute requirement under Japanese Trademark Law.
Under the Unfair Competition Prevention Law in Japan, there is no express provision regarding this matter as well, but it is believed that this point shall be evaluated and determined on a case-by-case basis in the same manner as the Trademark Law.
At present, more than 600 well-known and famous trademarks in Japan have been listed up in both Japanese and English. These are consisting of the well-known or famous trademarks duly recognized in the decisions or judgments of past opposition cases, trial case and court cases as well as the registered defensive trademarks all of which been selected by the Examiners and Trial Examiners at the Patent Office, therefore these selected well-known or famous trademarks may be considered to be reliable reference materials. Name Protection
50 Chapter III
Administration Procedure of Japanese Trademark Registration System
Application
Those who desire the grant of trademark registration are required to submit an application to the Commissioner of the Patent Office using online or in writing. Payment of an application fee is required according the table of fees.
Those who do not have domicile or residence or an establishment in the case of legal entity in Japan must undertake the procedure through a trademark agent having the domicile in Japan.
Publication of application
After trademark applications are filed, they are published as a general rule and gazette is issued on CD-ROM. Publication of application are used for search of prior trademarks as well as information provision about trademark application by other parties. The gazette can also be used as a written statement submitted as warning to a party suspect of regarding infringement, one of the requirements for demand of payment to damages.
Formality Check
When an application is filed and any other necessary documents, namely amendments in writing and opinion statements, are submitted, they are checked as to whether they satisfy the formality requirements stipulated by Trademark Law. If the formality requirements are satisfied, the date when the application is submitted to the Commissioner of the Patent Office will be approved as the filing date. If formality requirements are not satisfied, an invitation to amend will be sent to the applicant. If the correction is made in writing, the date when the correction is submitted will be approved as the filing date. On the other hand, if no correction is made, the application will be dismissed.
51 Substantive examination
An examiner examines whether a trademark application satisfies requirements stipulated in the trademark Law. To register a trademark, the trademark Law stipulates satisfying the formality requirements as above mentioned as well as substantive requirements as below:
1- A trademark shall have distinctiveness
Trademarks such as trademarks indicating goods or services with their common names or indicating the place of sale or use of goods and the quality or place of provision of services are unregistrable as trademarks lacking in distinctiveness to distinguish goods or services from those provided.
2- A trademark shall not fall under the grounds for unregistrability
A trademark which is identical with or similar to a national flag, a trademark that is liable to contravene public order and morality and a trademark identical with or similar to a registered trademark of other parties used with respect to identical or similar goods or services and liable to cause confusion over goods or services connected with the business of other parties are not registrable to protect the public interests and self-profit.
3- Designation of Goods and Services
To file an application for registration of a trademark, an applicant needs to designate one or more items of goods or services with respect to which the trademark is to be used in accordance with the “classification of goods and services”.(Class 1 - 45)
4- First Application
Under the Japanese Trademark Law employing the “First to File Rule”, the first file application is entitled to have its trademark registered in case where two or more applications are filed for identical or similar trademarks designating identical or
52 similar goods or services. If such trademark applications are filed on the same day, the applicants need to consult with each other to pick up an “applicant eligible to have a trademark registration”.
In case where no agreement is reached through such mutual consultations among the applicants, an eligible applicant may be chosen by the drawing of lots conducted in a fair and just manner by Commissioner of Patent Office.
Decision of Registration
After substantive examination, if there is no reason for refusal, the examiner allows registration, within the period specified by Cabinet Order.(As a general rule 18 months from filing date).
Parties receiving decisions of registration must pay the registration fee within the specified period and can choose to either pay lump-sum or two installments.
When the specified registration fee is paid, registration of establishment of the trademark right is made, and the trademark is registered in Trademark Register kept in the Patent Office.
Also, certification of trademark registration is delivered to the new right holder and gazette containing the trademark is issued on CD-ROM. If no registration fee is paid, the application is dismissed.
The term of trademark right is ten years from the date of registration of establishment. The term may be renewed by requirement for registration of renewal from the trademark right holder.
Opposition to the Granting of a Trademark Registration
Post grant opposition is admitted in Japan. When the establishment of a trademark right is registered, the registered trademark, the designated goods or services are inserted in a gazette containing the trademark. Any parties objecting to the registration
53 may file an opposition with the Commissioner of the Patent Office within two months from the date of issue of the gazette.
When an opposition to a trademark registration is filed, a collegial body composed of three or five trail examiners conducts a trail. When there are the reasons for oppositions to be revoked, it notifies the reasons for revocation and gives an opportunity to submit an opinion statement. If the reason for revocation is not resolved, the collegial body rules the registration. Any parties to the ruling to revoke may file an appeal with the Tokyo High Court.
When the collegial body determines that the reason for revocation is solved by the opinion statement, or that there is no reason for opposition, the registration is maintained.
Trail System
Decision of granting or refusal regarding trademark applications are rendered by examiners. However, if there are improper processing and a deficiency brought about due to later reasons, or if there are improper conditions such as non-use or unfair use of a registered trademark, leaving such conditions impairs the interests of the applicant and the general public.
Therefore, Japanese Trademark Law provides for a trail system to correct improper processing after registration of the trademark. When a trail is demanded, a collegial body composed of three or five trail examiners oversees the trail taking semi-judicial procedures. The types of trails are as follows:
1- Trail against a decision of refusal 2- Trail against ruling to decline amendment 3- T rail for invalidation of a trademark registration 4- Trail for cancellation of a trademark registration
A party having an objection to verdict may file an appeal with the Tokyo High Court.
54 Procedures for the protocol Relating to the Madrid Agreement
The protocol relating to the Madrid Agreement Concerning the International Registration of Marks has been effective since 14, 2000 in Japan. Upon conclusion of the Protocol, Japan issued a declaration calling for 18 months time limit for transmission of rejection and payment of the individual fee instead of the fee stipulated in the Protocol about the international application and international registration. Also, Japan has selected English as the Language for international application and correspondence.
Procedures in relation to the request for territory extension designating Japan
When the International Bureau informs the request for territory extension designating Japan based in the international registration, the request for territory extension is deemed as a regular trademark application in Japan, and the stipulations of the Trademark Law is applied to the subsequent international registration procedures.
Procedures to which Japanese Trademark Law does not apply as the result of the administrative restrictions in the international register, such as the restrictions on procedures for divisional applications or amendment, are exempted from application of the Trademark Law.
After the publication of Notification of Designation by JPO, the Substantive Examination of International Application will be carried out at the Madrid Protocol Division based on following Items:
1- Checks on the goods and/or services with using of computer software support (the Macro soft Excel based). The goods and services are examined in order to understand what the goods and services are and what category of goods and services they belong to, as well as specify search codes. (the similarity codes) It worth mentioning that the classification of the goods and services has already determined by International Bureau.
55 2- Trademark search
1) Absolute ground for refusal • A preliminary search report to be done by an out source contractor (JAPIO) under Books, Magazines, etc. • G-search engines (news paper) • The Internet for mark search, domain name, famous marks
2) Relative ground for refusal • To be retrieved by cross-search (domestic trademark applications/ registration) • JPO trademark search system (pronunciation and devices mark)
3- Drafting 1) Grant of protection 2) Notification for provisional refusal 3) Refusal (confirmation of refusal)
Remedy against refusal
The request for territory extension designating Japan is deemed as a regular trademark application in Japan. As the result, for procedures to inform refusal to the request for territory extension deemed as a trademark application or for demands for trail or retrial, as a general rule procedures identical with those for regular trademark applications and trademarks can be taken.
Also, the Trademark Law stipulates the requirements for application to Japan in case of loss of protection of international registration by “the Central Attack” stipulated in Section 6(3) in the Protocol and in case of denunciation of the Protocol by contracting states of Protocol other than Japan.
56 JPO Anti-Counterfeiting Efforts
Considering the increasing seriousness counterfeits, the JPO has been taking various countermeasures.
1) Collection of Information on Counterfeit Damage
In order to clarify damage suffered by Japanese Companies abroad, the JPO carries out an annual Survey of Counterfeit Damages using questionnaires. Through offices of related associations located in Beijing, Shanghai, Hong Kong, Seoul, Bangkok and other cities, the JPO also investigates enforcement and operation aspects of local legal systems. The results of these surveys and investigations are available on the JPO website.
2) Provision of Information and Consultation to Japanese Companies
In 1998, the Counterfeiting Hotline was established within JPO to give advice to Japanese corporations. The JPO also develops pamphlets addressing individual countries in which counterfeit damages are caused and holds seminars for Japanese companies in these countries in order to provide necessary anti-counterfeiting know- how. Furthermore, the JPO will strengthen support for measures taken by Japanese industry, in cooperation with the International Intellectual Property Protection Forum.
3) Approaches toward Infringing Countries
As approaches toward countries and regions including China, the Republic of Korea and Taiwan, where counterfeit damages is serious, the JPO requests the government of these infringing countries and regions to reinforce their crack down of counterfeits through bilateral negotiations such as meetings of the heads of patent Offices and high-level economic conferences. Also, within multi-regional frameworks such as the WTO Council for TRIPS, the WIPO Advisory Committee on Enforcement of IPR, the IPR Expert Meetings of APEC, and Meeting of the Intellectual Property Offices of ASEAN with 3 Countries, the JPO requests that the governments of infringing
57 countries reinforce anti-counterfeit measures, emphasizing the importance of such measures.
4) Support for infringing Countries
In order to improve the enforcement ability of countries and regions producing counterfeits, the JPO provides support for developing human resources in the local authorities concerned, such as customs and police officers and court officials. The JPO also accepts trainees from other Asian countries every year. In 2001, the JPO invited trainees to seminars in the Republic of Korea and Singapore.
5) Cooperation with Japanese Enforcement Authorities
With the aim of preventing the production and distribution of counterfeits in Japan, the JPO makes efforts to cooperate with Japanese enforcement authorities such as customs and police by responding to inquires on infringements from such authorities. With more counterfeits coming into Japan from the Asian region, it will be necessary to continue to reinforce such cooperation in the future.
6) Promotion of Public Awareness
In order to prevent innocent consumers from suffering harm due to counterfeits, the JPO provides information on counterfeit distribution. The JPO also stresses the importance of the protection of intellectual property with the aim of preventing the consumers from intentionally buying counterfeits. In fiscal year 2001, the JPO opened a site called “Fake Town” on its homepage.
58 Computer System Use
The Patent Office has digitized processes of application acceptance, formality examination, substantive examination, registration and demand for a trail for the purpose of a shorter examination period because of better trademark information service and more efficient clerical work. This computer system is called “Paperless System”.
1) Online Acceptance of Trademark Application
The Patent Office accepts trademark applications by using online system connecting applicants and the Patent Office. On-line applications are filed using “personal computer application soft-ware” given free of charge to applicants who wish to file in this manner. On-line acceptance of trademark applications started in January 2000. As of the end of 2000, approximately 80% of trademark applications were filed using this on-line service.
2) Real time trademark search and preparation of drafts using electronic data
a) Real time prior trademark search is carried out on computers using trademark information data. The way of reading the trademark and the characters making up the trademark are used as a trademark keys.
b) Decisions of registration, notifications of reasons for refusal and decisions of refusal, are preparing electronic data.
c) Electronic data is also used for preparation of the Trademark Register and issuance of trademark gazettes.
3) On-line sending of draft documents to applications
Draft documents are sent on-line to the applicant if so desired.
59 4) On-line acceptance of demands for trail
Trails against a decision of refusal of a trademark application can be demanded on- line. The Patent Office is scheduled to develop an on-line acceptance system of demands for trails for invalidation and cancellation of trademark registration, and is continuously making efforts to expand its computer system for the purpose of accelerated and stable assignment of rights in the trademark field.
Trademark Information Provision Services
Since March 31, 1999, The Patent Office has been providing Industrial Property Rights Information though the Industrial Property Digital Library (IPDL) on its home page.
Using this service, information on industrial property rights can be obtained free of charge from every corner of the world.
In order to support foreign corporations in obtaining a trademark rights in Japan, the Patent Office provides information on registered trademarks as well as pending trademarks. Information on well-known trademarks in Japan is also provided on home page.
I. Trademark Application Trends
The number of trademark application decreased in 1998, started to increase in 1999 and reached 143,093 in 2000 an increase of 17% over the previous year. In 2001, the number decreased by about 18% over the previous year to 118,046.
On the other hand, the number of trademark registration has been gradually decreasing due to an increase in the average number of classes designated per application resulting from introduction of the multi-class application system in April 1997.
60 II. International Trademark Application Trends
1- Applications for International Registration (filed from Japan to overseas)
In 2001, both the number of applications for international registration and the number of designated countries in creased. In 2002, the number of applications was 20 per month and the number of designated countries was about 180 per month. China and European countries were most frequently designated, with some applications designating all Member countries without exception.
2- Applications for International trademark registration (filed from overseas to) Japan
The number of application increased in 2001 then decreased to about 430 per month in 2002. Applications were filed from Germany, France, Switzerland and Italy.
III. Trademark Examination
The first action period (FA period) in trademark examination was 21 months at the end of 1997. Due to measures taken to reduce the examination period, the FA period was reduced to 10 months at the end of 1999.
Subsequently, despite the increase in the number of applications in 1999 and 2000, the FA period remained at 11 months at the end of 2001.
IV. Accelerated Examination
In response to the needs for early examination of applications which are involved in counterfeit and infringement cases and along with the globalization of economic activities, the JPO implements the accelerated examination system in which the examination process is accelerated when there is an urgent need for granting application and a third party uses the trademark without the applicant’s consent.
Accelerated examination shall apply to trademark applications that satisfy the following two requirements:
61
1- The applicant himself/herself or licensee has already started to use the trademark in the application or made preparation for using it to a significant degree for the designated goods or services. 2- There is an urgent need for granting a right (such as usage of trademark by a third party and…)
V. Examination Guidelines for Trademarks
On January 1, 2002, the Eight Edition of the International Classification under the “Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks” entered into force. Along with this, the First Attached Table of the Trademark Law Enforcement Order and the Attached Table of Regulations under the Trademark Law, both of which stipulate classifications for goods and services and goods and services assigned thereto, were revised and put into force on the same day.
Accordingly, the JPO revised the Examination Guidelines for Similar Goods or Services which stipulate goods or services deemed to be similar.
The major revisions are follows:
(1) Services assigned to class 42 were divided into four new classes
(i) Class 42 for Design and development of computer programs or software (ii) Class 43 for Provision of food and beverages and temporary accommodation (iii) Class 44 for Medical treatment, veterinary services, beauty salons (iv) Class 45 for Ceremonial services, other services provided in response to demand of individuals
62 Industrial Property Digital Library
Industrial Property information constitutes the latest technological information as well as information that defines the scope of right. For this reason, it is important to promote its positive use in corporate R&D and investment strategy for the commercialization of R&D results.
In light of this, the JPO opened the Industrial Property Digital Library on its website in March 1999 to increase access to industrial property information.
By accessing the IPDL, users can search 48 million of industrial property-related documents such as gazettes concerning patents, Utility models, designs and trademarks published since 1885 using document numbers and various classifications. Additionally, users can also access related information such as the legal status of applications, registrations, and appeals/trails as well as laws and guidelines. All information is available free of charge.
In January 2000, the JPO installed dedicated terminals in public inspection facilities including the NCIPI as well as its local inspection rooms and intellectual property centers, and started to provide information via higher-speed and higher-definition screens via dedicated lines, in addition to provision through Internet.
Since March 2000, the JPO has been providing search services (patents, utility models, designs, and trademarks) for patent information beginners. For foreign users, the JPO provides automatic English language translation for publications of unexamined/ examined patent applications in addition to providing patent Abstracts of Japan (PAJ).
In March 2001, the JPO started to provide FI and F-term search services in English and expanded the scope of PAJ available publications to include those published since 1976. In March 2002, the JPO also started to provide number search services in English. The JPO is currently working on disclosure of a database for patent examination (CSDB) by the end of FY 2002.
63 The IPDL services will encourage the use of industrial property information in identifying application and R&D trends of competitors, preventing overlapping investment, and avoiding unnecessary disputes when deciding product designs or names.
The number of hits to the IPDL per month rapidly increased, due to the enhancement of services, from about 1 million in April 1999 immediately after the services started to 3 million in April 2002. Patent and utility model searches were the most frequently used, accounting for about 60% of the total hits, followed by trademark searches with 20% and searches for beginners with 10%, these three types of searches accounting for 90% of the total.
64 Chapter IV
Differences Between These Two Systems:
The legislations for protecting a trademark, trade name, design etc., in each country are respectively based on the proper legal system, so the current law system in each country is different from each other. The protection of Trademarks enjoys a long and rich legislative history in Iran, and it has given rise to an effective and wealthy jurisprudence in this respect, It’s worth mentioning that Iran Trademark Law and its Regulations as amended in 1958 were not revised during the recent years, in spite of the changes and developments in protection and harmonization of Intellectual Property Rights in compliance with International Treaties and Conventions. In contrast, the Japanese Trademark Law has been frequently amended to meet the needed requirements of the international treaties and conventions where the Japan is a signatory to the major of these international treaties and conventions. Comparing these two systems the basic rules thereof; principle of registration, first to file rule and principle of examination by examiner are common but there are some variations to be considered between these two systems that the most important ones are as follows:
1- Definition of Trademark
As far as the definition of trademark is concerned, Iran trademark law does not stipulate the protection of three-dimensional shapes and combination thereof with colors. However in this definition the registration of pictures and wrapping as a trademark is provided but it is not explicit whether or not the two-dimensional pictures shall be deemed as a three-dimensional mark. Although based on this definition the IP Office in practice recently started to accept the pictures of three- dimensional marks and examine the said pictures of different sides and angles with rely on this definition. The Japanese Trademark Law provides the protection for three- dimensional shapes as well as any combination thereof with colors. But colors itself and the numeral marks are not protectable in Japan according the said definition. Although the examination guidelines of trademarks provides that in the case of trademarks with more than two digits of numerals indicated by kana characters representing their sounds where they are distinctive may be registered such as (one two three).
65 2- Requirements for Registration
Regarding the requirements for registration according to Article 2(4) of the Regulation of Iran Trademark Law in case of the registration of the trademark in outside of Iran, the submission of a copy of the registration certificate, certified by the issuing Office is imperative, while submission of such a document is not applied by the Japanese Trademark Law.
3- Changes in Registered Marks
According to Article 11of Iran Trademark Law and 14 of it’s Regulation an applicant may apply for any kind of changes or alternation in the mark, or addition in the class of goods covered by the registered trademark, but in Japan after registration a mark the request for such changes in Mark or addition of classes or goods is not possible, therefore, in the case of changes of trademarks the applicants should file the application separately.
4- Prior use
Regarding the right to use trademark by virtue of prior use the Japanese Trademark Law provides that such a person shall have a right to use the trademark in respect of said goods or services provided that he does so continuously. The same shall apply in the case of a person who has succeeded to the business concerned. However, the owner of the trademark right may request the person having a right to use the trademark for his goods or services with a suitable indication so as to prevent any confusion between the goods or services connected with the owner's business and those connected with the other person's business. But according to the Iran Trademark Law the person who has already used the Trademark with respect to designated goods and services continuously, so on the reason of the previous and continues use, he shall have the right to register the trademark in his own name. The Articles 16 and 20 of this law constitute sufficient grounds for an opposition and cancellation action in this regard.
66 It is notable that the registration of trademarks which are identical with, or similar to, another person’s registered trademarks applied for prior to filling date of the trademark application concerned and which are used on the designated goods or designated services is prohibited in Japan. Where after registration, the registered trademark has become a trademark falling under the said provision a trail may be demanded for the invalidation of a trademark registration within prescribed period by the law. The difference is that in Japan in the case of the expiration of 5 years, the owner of the mark may request the person who used the trademark in prior for using a suitable indication to prevent any confusion thereof, while in Iran according the Article 22 of this law an opposition may be filed even after the expiration of 3 years after registration of trademark if proving that the registrant was aware of the using of the trademark by opposer on the date of registration.
5- Opposition System
Iran has opposition system after advertisement procedures, either against an applied or an already registered mark that they are called administrative opposition and legal opposition: In administrative opposition, any body who considers that a trademark covered by an application is confusingly similar to his own mark, within 30 days after the date of the publication, may file an opposition with the IP Office.
In the event that the applicant does not comply with the opposition and does not withdraw his application, the opposing party may refer the matter to the Lower Court of Tehran within the period of time specified in the said Regulations, otherwise it would proceed to registration. In the case of opposition against a registered mark, the opposing party must directly file suit with the Tehran Lower Court and must request the cancellation of the registration.
Japanese Trademark Law stipulates an opposition system allowing an opposition to a trademark after it is granted a trademark right. The post-grant opposition system is designed to allow any third party to file an opposition to a trademark right within a certain period of time after the registration of its establishment and, if such opposition is filed, the Patent Office to examine the adequacy of its disposal of registration and
67 correct defects if any. The objective is to enhance trust and confidence in trademark registration for equitable public interest, whereby the Japanese Patent Office checks its own decisions on trademark registration and corrects itself. This system has been introduced to accelerate granting of trademark rights, and supersedes the conventional pre-grant opposition system.
6- Trials System
In Iran all the requests for trials such as trial against examiner’s decision of refusal, trial for invalidation of a trademark and trial for cancellation of a trademark, conducts by the courts of Tehran. Any interested party may file a petition or demand for invalidation or cancellation of a trademark in the courts and all the litigations arising from the rights acquired by registering trademark will be dealing with by the courts of Iran. But the Japanese Trademark Law provides for a trial system to allow a disposal with such defects and inadequate situation arising there from to be corrected and resolved, so as to protect the interests of applicants or the public interests. The difference is that in Iran all the trials should be conducted by the courts of Tehran, while Japanese system allows trials for every levels of decision made through JPO. In Japan, a trial on the trademark registration may not be demanded in principle after five years of the establishment of the trademark right while in Iran an action for cancellation or invalidation of a trademark in principle may be filed within a period of three years following the registration date of a trademark.
However according the Article 22 of this Law those who failed to file an opposition against a mark within three years from registration date of the mark, can file such an opposition after expiry of the said period by proving that on the date of registration, the registrant was aware that the mark had been continuously used by the opposing party, or by another person who has transferred the trade mark to him.
7- Defensive Marks
Iran Trademark Law does not provide additional protection for defensive marks which is a system applied for a higher protection of well known marks. However according to this Law the owner of a trademark right may apply for registration of addition of
68 classes or addition of goods to the registered trademark in the other classes in order to prevent the use of the registered trademark by other parties wherein it may cause confusion over the source of the goods or services. The said application will be examined by the IP Office. If there is no reason to refuse the application for the addition of classes or addition of goods or services, it will proceed to registration regardless the trademark owner’s business. Nevertheless the procedure for registration of these applications is the same as regular marks. (Article 11 of this Law and 14 Regulations)
8- Service Marks
The amendment of Japanese Trademark Law in 1991 includes express recognition for service marks. Rather than define the word “service mark” itself, the statute was simply amended so that all trademarks could be registered for services in addition to being registered for goods. The statute, therefore, does not expressly define service marks rather it allows marks to be registered for services. Service marks are all marks that are used on services rather than on goods. The definition of service is broader than the ordinary use of the term. It includes any intangible offerings made by companies which are either purchased or capable of purchase by consumers. In Iran service marks enjoy the same type of protection as the trademarks, since this law is provides the registration and protection of Marks and no explicit recognition for service marks. However, the service marks protected in Iran according to the Article 1(2) of the Paris Convention.
9- Restoration of Trademark Right
In Japan by the provision of Restoration of trademark right another chance is provided beyond the 6 months after expiration of trademark time for the owner, if the renewal application cannot be filed within the prescribed time period for reasons beyond the control of the owner, he may make such request within 14 days (where he is a resident abroad, two months) from the date on which the reasons ceased to be applicable but not later than six months following the expiration of said time limit, while in Iran the renewal applicant only may apply up to six months after the expiration of the validity
69 period of the registration and no provision for restoration of trademark right. Also no notice will be published on the renewal of a mark remaining unchanged.
10- Re-Classification System
In Japan the “re-classification system” has been adopted to reclassify the designated goods of trademarks registered under the indigenous Japanese classifications into classes based on the international classification of goods so as to resolve the problem caused by revision and promote the smooth operation of the Japanese trademark system. Therefore, the owner of a trademark right resulting from a trademark application filed before April 1, 1992 has to request the registration of a re- classification within a period provided by the Trademark Law. The said application for the registration of re-classification of the goods of which the formal examination has been completed, will examined by an examiner and where a decision of the registration of a re-classification is made, the re-classification of designated goods with respect to a registered trademark right is registered, taking its effects upon that registration. In Iran since the first classification of goods and services under the Iranian Trademark Act dated 1931 was amended in 1958, the Article 21 of the Regulation of the said Law provides that the Branch Office shall apply the new classification when recording the renewal of a prior registration amending the class or classes covered accordingly both in Register and the Certificate of renewal registration of trademark. Therefore, the trademarks at the time of renewals request automatically re-classify based on the designated goods and services without any request for re-classification and the new classification will be applied.
11- Compulsory registration:
In Iran according the Article 1 of this Law the right to have a trademark is optional, unless the Government declares it compulsory. Nevertheless under the Act on Mandatory Indication and Registration of Trademarks on Goods such as Pharmaceuticals, Foodstuff, and Cosmetics (1949) Pharmaceutical, medicinal, veterinary and toilet preparations, packaged foodstuffs and beverages, must bear registration number, public health permit number (in case of pharmaceuticals) the name and address of manufacturer and country of origin. The purpose of this Act is to
70 facilitate the supervision on the source and producing of the goods that are directly used or applied on the body and in order to prevent any infringement and imitation of the said products. While in Japan having a Trademark is optional.
12- Publication
In Japan, after trademark application are filed, they are published as general rule and a gazette is issued on CD-ROM. Publication of application are used for search of prior trademarks as well as information provision about trademark applications by other parties. The gazette can also be used as a written statement submitted as a warning to a party suspect of regarding infringement. After establishment of Trademark right, the information regarding the registered mark would be published in Trademark Gazette. While in Iran there is no publication of application. Two notices are published in the Official Gazette, before grant and the after registration. According this Law the IP Office shall publish a notice in the Official Gazette about any trademark approved for registration and if no opposition is filed within 30 days as from the date of publication of notice, the IP Office shall register the mark. Then second notice will be published in the Official Gazette within 15 days from the date of Registration.
One of the advantages of the publication of application in the Trademark Gazette is that to protect the trademarks during the period from application for trademark registration to the establishment of the trademarks (early protection of trademarks). In principle, all the applications for trademark registration will be disclosed. Though the publication of application has no legal effects, it enables the provision of information regarding the applications and may be utilized as a document to be presented in case of warning pecuniary claims.
Other differences:
Iran Trademark Law does not provide any provisions regarding the division of application, conversion of application, priority claim declared as governed by the Paris Convention, pledges of the trademark rights, protection of well know marks, and penal provisions as well as special provisions for the requirements of Madrid System.
71 Recommendations:
As far as the trademark registration is concerned the core work in examining the application is conducting search on the work as to determining on the first to file procedure. Secondly as to determine the mark whether it is registrable or not is very subjective, depends on the mark applied and other supplementary information provided during the process of examination. Thirdly is the classification of goods and services.
Though, the protection of trademark enjoys from an old and rich law in Iran as well as the provisions of Paris Convention the necessary protection for trademarks at present is provided but it needs to be updated and revised with changes incorporated to comply with requirements under various international conventions such as Protocol and Madrid Agreement. Based on this comparative study and survey between these two systems the matters notable to be considered in the revision of this law as well as the procedures thereof which are as follows:
As far as the scope of definition of trademark are concerned to clear the registrability of the three-dimensional marks, whether two dimensional picture as a three dimensional mark is registrable, since the registration of the pictures and wrapping as a trademark is provided by the current law, as well as considering the protection scope for color marks is a matter of importance.
Since a trademark which already registered or continue to use may have of a great value and enable it’s owner to build up business reputation with respect of the goods and services which is registered, therefore, providing precise provisions regarding substantive and formality rules as well as the manners of in heritance or other general succession of assignment and license needs to be considered.
The necessity of clearance regarding the protection criteria whether it is based on goods and services or based on classification thereof. In the case of protection based on goods and services the provisions for addition of goods and services shall be cancelled and in the case of protection based on classification, the addition of goods and services may be registered.
72 Providing special provisions regarding the registration of defensive marks which is a system designated to protect the business reputation of the owners of the well-known marks and higher protection of this marks.
The clearance and specify of the concepts of collective marks and certificate marks, for the matter that the registration of these marks for the countries having traditional and handicraft products is a subject of the importance rather than trademarks.
Service marks are all marks that are used on services rather than on goods. The definition of service is broader than the ordinary use of the term. It includes any intangible offerings made by companies which are either purchased or capable of purchase by consumers. In Iran service marks enjoy the same type of protection as the trademarks, since this law is provides the registration and protection of Marks and no explicit recognition for protection of service marks. As the trademark and service marks basically are different in function, so that the recognition of service marks is a matter of importance.
Revising the domestic classification of goods and services in compliance with Nice classification which is an international classification includes 45 classes for goods and services while the domestic classification includes 36 classes. Also establishment of a re-classification system in order to solve various problems caused by revision of classification such as the complexity in retrieving and searching prior registered trademarks, and a vagueness concerning the scope of the right, the owners of the trademarks obliged to substitute the designated goods of their registered trademark with classes of goods pursuant to International Classification of Goods and Services to unify the classes of the designated goods.
Provisions regarding priority claim declared as governed by the Paris Convention in Article 4 which is not mentioned in the current Act, as well as Special provisions for applications under the Protocol of the Madrid Agreement is imperative.
In order to accelerate the procedures of the administrative oppositions and requests for trails against examiner’s decision, provisions regarding authorization of the IP Office as a sub-branch of the Judiciary for examination and pending to the administrative
73 oppositions and trails against examiner’s decision may take into consideration, and in the case of dissatisfaction can be taken an action through the Court.
Establishment of a special industrial property service for publication of an official periodical journal to the public including the reproductions of registered trademarks according the article 12 of Paris Convention may take into consideration.
Apart from the above-mentioned matters, in order to ensure the smooth operation of the Trademark Law and prompt and precise examinations, preparation an Examination Guidelines is deemed necessary for the IP Office. Although, the Trademark Law and its Regulations sets forth requirements for the registration of trademarks and reasons for unregistrability, but since the principle of an examination by an examiner adopted, the law allows an examiner to take an independent action to register a trademark or refuse a trademark application. So with respect to a decision of registration or a decision of refusal of a trademark, a judgment, a decision, etc. is independently made by an individual examiner.
Therefore, it is practically required to prevent the Trademark Law from being interpreted and executed differently from one examiner to another and ensure fair judgments and decisions. The Examination Guidelines will deal with the handling of trademark applications, requirements for registration, reasons for unregistrability, examination procedures, etc. among matters stipulated in Trademark Law. With respect to provisions difficult to understand and liable to cause different interpretations, the guidelines offer an unified interpretation. With respect to abstractive provisions, the guidelines present standard guidelines and handling manners with specific examples given. In some sections, the guidelines standardize procedures which applicants are required to take under the Regulations under the Trademark Law. In Japan the Examination Guidelines for Trademarks were adopted in 1921, as an internal standards worked out at the Office to enable examiners to interpret and apply the Trademark Law on a uniform basis but not anything legal without any binding power. The Guidelines were made public in 1971, in order to let applicants know how their applications may judge by Patent Office and prior knowledge on registration of trademarks in Japan.
74 The researcher hopes that the above recommendations especially on the fully computerization and practical work of Information Center as well as training program will be reviewed and more steps to be taken to utilized all the facilities that the Intellectual Property Office has to foster human resources in performing the business activities with due attention to increasing the number of applications in the recent years with the acquired advanced expertise of the system in the future.
75 Conclusion
While legislation concerning intellectual property rights needs to be constantly updated and modernized in order to be harmonized with International Standards and keep in step with the new technologies, they are also needs to be efficiently administered and effectively enforced.
Effective protection of intellectual property rights is essential since it provides the necessary incentives for fair competition, as otherwise it could be freely used. Development of skills and competence in the administration and management of intellectual property rights needs greater attention and focus in view of the increasingly global dominance of the knowledge based economy.
Governments need to be made aware of the considerable economic value of ensuring effective intellectual property protection and the consequent socio-economic benefits through enhancement of qualitative competitiveness in trade and commerce, and greater possibilities of technological advancement in the process of moving from the industrial to the information age. Towards this end, knowledge promotion, education and training, integration of technology and industrial policy with the necessary infrastructure development, as well as concurrent promotion of social justice are essential factors to be considered for effective implementation.
Most importantly, at the national level, there needs to be a political will to adopt or adapt the intellectual property system, and to administer it effectively, in order to benefit optimally form its economic value.
National intellectual property legislations should be modernized, constantly updated and refined to keep apace with international developments and the needs of emerging technologies. They should provide for stern penal provisions against infringements and against piracy and counterfeiting. Their strict enforcement should be ensured. The ultimate test of the efficacy of a modern legislation lies largely in its effective enforcement through strengthening of the enforcement mechanisms. Strong
76 intellectual property protection with adequate and modernized legislation and its effective enforcement is essential for ensuring economic growth.
The importance and role of Intellectual Property Rights, in its broadest sense, in economic and social development programs is undeniably unquestionable. Also, in terms of social and economic welfare, each country needs a strong and efficient Intellectual Property system. Serious and fundamental protection of owners of Intellectual Property Rights, shall flourish creative and innovative talents and, while creating the required legislative safety and providing stable environment, it shall attract the confidence and trust of the owners of Intellectual Property Rights. The importance and significance of this matter in the increasing growth of economy, science, technology and investment is so clear and obvious.
In view of the above, and considering the importance and magnitude of Intellectual Property Rights for the socio-economic development and bearing in mind the necessity of presence in the world markets and facilitating investment, technology transfer and also the efforts exerted by countries and international communities for alignment and standardization of the Intellectual Property Laws, and above all, in view of the Exports Expansion and Development Policy and the Trade-based Economic Growth Policy of developing countries and the necessity of membership in International Trade Organizations such as World Trade Organization, Islamic Republic of Iran, in accordance with International Conventions and Treaties, and considering international trade and legal standards, norms and arrangements, is trying to prepare and revise national laws. In the meantime, through modernization of those organizations, offices and institutions involved with Intellectual Property matters on the basis of updated standards and norms, and emphasizing on training of experts and other human resources involved with Intellectual Property matters, is ultimately going to establish a strong and efficient system for adequate protection of Intellectual Property Rights in the country.
77 Appendix A Trademark Procedures in Iran (from Application to Registration)
Trademark Application
Payment of Application fee Formality Check
Formality No problem in imperfection formality check
Notification for Amendment
Substantive Examination Amendment No Amendment
A reason for refusal No reason for refusal
Dismissal of Application Notification of Rejection Publication of Application
30 days opposition period Appeal to the Court
No opposition Opposition
Payment of Registration fee Notify to Applicant
Registration of Trademark Comply with opposition No comply with Opposition
Withdrawal the Refer of opposer to the Publication in Official Gazette Application Court within 60 days
78 Appendix B
79 Appendix C
• Statistical Appendices for 5 years
A- Statistics of Trademarks in I.R. of Iran
Trademark Application Trademark Registration
1998 6,278 2,528 1999 9,494 3,796 2000 10,220 3,750 2001 11,082 4,437 2002 13,023 4,488
B- Statistics of Trademark in Japan
Trademark Application Trademark Registration
1998 112,469 132,066 1999 121,861 123,656 2000 145,668 94,369 2001 123,755 93,548 2002 117,406 105,114
Looking through the enclosed tables, the number of trademarks registered in Iran, has endorsed a substantial growth which is a clear evidence proving the excessive efforts of Iran exerted in Intellectual Property Rights in the course of the recent years. It is worth mentioning that the system of Trademark Application has been Multi-classes per application from first.
On the other hand in Japan, the number of trademark registration has been gradually decreasing due to an increase in the average number of classes designated per application resulting from introduction of the multi-class application system in April 1997.
It is notable that in Japan the number of registrations include the number of renewal registrations and defensive mark registrations.
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Research References
1. Supplementary Textbook of Japan Patent Office
1.1- Japanese Trademark Law
1.2- Japanese Trademark Jurisprudence
1.3- Examination Guidelines for Trademark in Japan
1.4- Examination Standards for Similar Goods and Services
1.5- Global Protection of Industrial Property Rights
1.6- Outline of Intellectual Property Law
1.7- Outline of Intellectual Property
1.8- Outline of Trademark System
1.9- Outline of Trademark Law in Japan
1.10- Outline of Trademark Trail and Opposition System
1.11- Protection of Trademarks and Prevention Unfair Competition
1.12- Protection of Well Known and Famous Trademark
1.13- Counterfeiting Problem Countermeasure Against Counterfeits
1.14- Famous and Well known Marks
1.15- Protection of Well known Marks in Asia
2. Other materials
2.1- Annual Report of 2002 2.2- Outline of Japanese Trademark System 2001
3. Study Visit and Discussion
3.1- Trademark Division Of Japan Patent Office and discussion with related officers
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