WHAT'S NEW

1. Under the Japan Trademark Law, a trademark that is identical to or similar to another person's well-known trademark and is used with unfair intent by the applicant will be rejected [Article 4-1-19.] However, the provision of 4-1-19 does not provide for the rejection of a trademark application that is identical to or similar to other well-known things even if the trademark is used by the applicant with unfair intention. For examples of well-known things could be titles or characters in well-known novels or comic books, names of painters and authors of great literary works.

2. Recent court cases reveal that such trademark applications filed with unfair intention should be refused as contravening public order or morality [Article 4-1-7.]

The case betweenSullivan Entertainment International Inc., a film distributor (hereinafter referred to as Sullivan), and the provincial government of Prince Edward Island in Canada (hereinafter referred to as PEI) for a trademark of "Anne of Green Gables" is one example.

The Intellectual Property High Court affirmed the decision of the Trademark Trial Appeal Board of the Japan Patent Office to cancel the "Anne of Green Gables" trademark. Since the literary work "Anne of Green Gables" is one of the cultural assets in Canada, the application filed by Sullivan without prior agreement of Anne of Green Gables Licensing Authority Inc.violates the doctrine of good faith. Moreover,?the exclusive use of the title by one company, which has no relationship with the literary work whatsoever, is not appropriate: and the registration of the trademark in Japan might harm the cordial relation between the two countries.

Other examples are a name of celebrated painter, Salvador Dali. The Intellectual Property High Court decided that allowing the exclusive use of a trademark "DARI with Katakana" which is similar to "DALI" by one company, which has not relationship with the painter, is not appropriate: and that the registration of the trademark might dishonor a specific people or harm a fair trade practice. Therefore, a registration for "DARI with Katakana" canceled based on contravention of public order morality.

3. The Japan Patent Office is considering revision of the examination guidelines to clarify standards of public order or morality [Article 4-1-7,] so that examiners will enable to reject applications filed with an unfair intention without difficulty.