Exclusive and Prohibition Rights
When the trademark is registered through the trademark application, the applicant acquires the trademark right. Once you have acquired the trademark right, you will be able to use the registered trademark exclusively. Specifically, the trademark owner will have the exclusive and prohibited rights described below.
What is an exclusive right?
Article 25 of the Trademark Law states that “Trademark owners have the exclusive right to use registered trademarks for designated goods or designated services.” Based on this provision, it is the essential effect of the trademark right that the trademark owner has the right to use the trademark exclusively.Exclusive rightsIs called.
If a third party uses a registered trademark for goods or services designated at the time of filing (hereinafter referred to as “designated goods, etc.”), the trademark owner will injunction the use of the trademark as an infringement of the trademark right (Article 36, 1 of the Trademark Law). Paragraph) and compensation for damages (Article 709 of the Civil Code) can also be sought.
The exclusive right is effective only when the trademark “same” as the registered trademark is used for the designated products “same”. The following cases are outside the scope of the exclusive right.
- Use a trademark similar to a registered trademark (hereinafter referred to as “similar trademark”) for designated products, etc.
- Use the registered trademark for products and services similar to designated products (hereinafter referred to as “similar products”)
- Using similar trademarks for similar products, etc.
What is a prohibition right?
However, even in cases such as (1) to (3) above, there is still the risk that the business credibility of the trademark owner may be damaged due to confusion between the sources of the products. for that reason,The Trademark Law considers cases (1) to (3) above to be infringement of trademark rights (Trademark Law, Article 37, No. 1), and is subject to injunction and compensation for damages... This is because it prohibits the use of registered trademarks and similar trademarks by third parties.Prohibition rightIs called.
In the example, if the product name α is registered as a trademark, it will not be possible for a third party to use the product name α or a product name similar to α such as α’for the designated product and similar products. increase.
This protects the credibility and brand power built up under the product name α.
Relationship between exclusive rights and prohibition rights
Exclusive rights and prohibition rights are common in that, in certain cases, an injunction against the use of a trademark or a claim for damages can be granted to a third party. Whereas exclusive rights are the inherent effect of trademark rights, prohibition rights differ in that the Trademark Law extends the scope of protection specifically for the protection of trademark rights.
The chart below shows the relationship between exclusive rights and prohibited rights.
|Registered trademark||Similar trademarks|
|Designated products, etc.||Exclusive rights||Prohibition right|
|Similar products, etc.||Prohibition right||Prohibition right|
The exclusive right is a positive right to use the trademark by oneself, while the prohibition right can only prohibit the use of the trademark by a third party. Therefore, when a trademark (α’) similar to its own registered trademark (α) is used by itself, it is designated that such a trademark is also similar to a third party’s registered trademark (alpha dash). As long as the products, etc. are the same or similar, the effect of a third party’s trademark right as a prohibition right extends to a trademark similar to its own registered trademark.
As a result, even if the trademark is in the same range as your registered trademark, you will not be able to use it. Even if the prohibited right is effective, as long as the prohibited right of the registered trademark of a third party can be extended, even similar trademarks cannot be used virtually exclusively.
Coordination with the rights of others under Article 29 of the Trademark Law
Restrictions on exclusive rights
Article 25 of the Trademark Law grants trademark owners the exclusive right to use a registered trademark, but it does not mean that the trademark can be used without any restrictions in any case.
If the trademark right conflicts with the patent right, etc. filed before the application for trademark registration, or if the trademark right conflicts with the copyright, etc. of another person that occurred before the application for trademark registration, it is limited to the conflict. You will not be able to use the registered trademarkIn the form ofLimited effect of exclusive rights(Article 29 of the Trademark Law).
There is also Article 26 of the Trademark Law as a provision that limits the effect of trademark rights. In practice, it seems that Article 26 is more problematic in many cases, but in this commentary, we will focus on Article 29, which has a problem with the relationship between exclusive rights and prohibition rights.
An example of a conflict between a patent right and a trademark right is when a patent right has been set and registered for an invention, and another person has registered a three-dimensional trademark for the specific structure of the patented invention. .. In this case, using a three-dimensional trademark also infringes the patent right, so Article 29 of the Trademark Law limits the exclusive right of the trademark right (Reference: “What is the case where a three-dimensional trademark can be registered?“).
An example of a conflict between copyright and trademark rights is when registering a trademark for an illustration of a character created by another person. In this case, the use of the trademark also infringes the reproduction right (Article 21 of the Copyright Law) owned by the copyright holder of the illustration, so the exclusive right of the trademark right is also restricted.
Restriction of prohibition rights
Article 29 of the Trademark Law stipulates that when a trademark right conflicts with another person’s design right, etc., the exclusive right part of the effect of the trademark right is restricted, but the prohibited right part is directly in the article. There is no rule. What should you think about the prohibition right?
The reference here isPopeye muffler case((Osaka District Court Judgment on February 28, 1984・ Intangible Collection Vol. 16, No. 1, p. 138,Osaka High Court decision on September 26, 1985・ Intangible Collection Vol. 17, No. 3, p. 411,Supreme Court decision on July 20, 1990・ Minshu Vol. 44, No. 5, p. 876).
In the Popeye muffler case, the plaintiff has the letters “POPEYE” written horizontally at the top and the letters “Popeye” at the bottom, and has a combined trademark of letters and figures with the Popeye character drawn between the two letters. was doing. On the other hand, the defendant purchased and sold a muffler manufactured by a manufacturing company licensed by Popeye’s copyright holder. The word “POPEYE” is written horizontally in one corner of the muffler, and the character Popeye is drawn on the tag, although it is drawn differently from the plaintiff’s trademark, and it rises diagonally to the right at the bottom of the illustration. The letters “POPEYE” were written. Therefore, the plaintiff requested the defendant to suspend the sale of the muffler and compensate for damages based on his trademark right.
The Osaka District Court of the first instanceThe copyright prohibited right does not extend to the copyright that occurred before the trademark application, and it is not possible to claim infringement of the trademark right and seek an injunction against the act of copying the work by the copyright holder.I decided. The reason is that the provision of Article 29 of the Trademark Law is to limit not only the exclusive right but also the prohibition right of the trademark right when the trademark right conflicts with the copyright of another person that occurred before the trademark application. It states.
And the Osaka High Court of AppealsIf the effect of a trademark right is restricted by Article 29 of the Trademark Law while maintaining the judgment of the trial court, such restriction of effect can be claimed by the copyright holder or the copyright holder legally, etc. Not limited to licensed right holdersI showed the judgment.
From the standpoint of the Osaka High Court, if a third party uses a work created before filing a trademark application as a trademark, the trademark owner who has been registered for the trademark is the third party. Even if you are not the copyright holder of the work, you will not be able to make any claims.
As shown in the relationship diagram above, it should be noted that the defendant in this case may be considered to be in a different position from a completely unrighteous person in that he was a person who legally distributes licensed products.
The Supreme Court of Appeals only stated that the interpretation of Article 29 of the Trademark Law would not allow it to be used as a trademark or to request an injunction. Therefore, the Supreme Court’s view has not yet been expressed as to who can claim the limitation of effect under Article 29 of the Trademark Law.