How to prevent trademark hijacking, whether domestic or foreign?

A word or a brand logo that has become a nationwide boom has been registered as a trademark by another party without our knowledge”… This is a topic that sometimes comes up in the news. It is not uncommon for one’s trademark to be registered before a third party.

Yes, it is. In addition, the third party who has applied for your company’s trademark without your permission may not necessarily be from the same country as you.
There are cases where your company’s trademark has been applied for and hijacked in a foreign country without your permission.

A trademark in Japan is filed in a foreign country without permission…. I might not be aware of trademark hijacking in a foreign country….
I’d like to know the countermeasures.

This paper summarizes domestic and international measures against the filing of trademark applications by third parties (so-called “hijacking”).

Happens around us all the time! Trademark “hijacking”

Company A invented a trademark, but Company B applied for it first.
We have all seen and heard news like this from time to time, haven’t we?
The target of such incidents varies from the name of a Youtube channel to a catchphrase that has become a booming business, but the cases are not rare.

Trademark “hijacking” is a problem outside of Japan as well.

Companies doing business outside of Japan also suffer from trademark hijacking.
Many companies have reported that their trademarks have been used by other companies on certain products without their permission.

Companies that have acquired a large number of registered trademarks outside of Japan may not be able to keep track of which trademarks they have applied for in which countries.
In such cases, it is difficult to realize that your company’s trademark has been hijacked.

How can I take measures to prevent this?

Basically, filing a trademark application in every country in which you use (or plan to use) your trademark is the way to deal with trademark “hijacking.

The reason for this is that trademark protection is based on the worldwide principle of territoriality (protection only within the scope of the country in which the trademark is used).

Therefore, the following points should be noted.

Even if a trademark is registered in Japan, use of the trademark in a foreign country may infringe upon the trademark rights existing in that country.
Even if the trademark is well-known in Japan, this fact does not prevent others from registering the trademark in a foreign country.

The possibility that your own trademark may be preempted by others in a foreign country is increasing due to the active collection of information on the Internet.
To avoid obstacles to foreign expansion, do not forget to obtain rights in foreign countries.

It is also necessary to regularly search for applications for the same trademark as your own in foreign countries.

Note that even if you have already registered your trademark in a foreign country

Even if you have already registered your trademark in a foreign country, please carefully check your company’s registered trademark in the foreign country for the following points

1) Do the designated goods/services include goods/services for which you plan to develop business in the future?

Company A’s trademark that was applied for and registered in a certain country.

(Classification of designated goods: Class 25 (clothing, shoes, etc.), Class 28 (toys, sports equipment, etc.))

On the other hand, Company B, a local company unrelated to Company A, applies for the same trademark as Company A and as a result, the trademark is registered.

(Classification of designated goods: class 16 (e.g., stationery, etc.))

Subsequently, Company A started selling stationery in Country X. However, Company B warned Company A that it would no longer be able to use its trademark on the stationery.

In order to avoid problems like the above, you should carefully check your registered trademark against your business prospects in the country.

2) Does the description of the same goods and services as in Japan cover the same scope of rights in other countries as in Japan?

There is a possibility that designated goods/services that are similar in Japan are not similar in other countries.
Please check whether the scope of your desired designated goods or services is covered in the foreign country as well.

One way to check is, for example, to find documents showing the similarity of goods and services between Japan and Korea, and between Japan and Taiwan.
Please refer to this document, which can be found on the JPO website.

If you plan to use a trademark abroad, file a trademark application in that country as soon as possible. Even if you have done this, you cannot rest assured.
In particular, I am concerned about whether the designated goods and services are covered by the foreign trademark as well.

Depending on the type of goods or services, it may be advisable to inquire with the local agent as to whether they are recognized as similar to each other. It may be a good idea to consult with a Japanese expert who has connections with the local agent.

I see. If you’re worried, I guess I’d better turn to the experts.

summary

In this issue, we have explained the precautions to be taken regarding the “hijacking” of trademarks in Japan and abroad.
Some of you may have already applied for a trademark in a foreign country, but are concerned about whether a trademark that appropriately covers the designated goods and services has been registered in that country.
If this is the case, please feel free to contact us.
We will work with local representatives in each country to confirm the foreign registered trademarks that your company has acquired.

Amazing DX also handles applications to foreign countries! Upon request, we will provide you with a preliminary estimate according to the country of application you specify.

Feel free to consult a patent attorney!

Are you worried about your trademark all by yourself?

If you have any problems, please contact our experienced trademark attorneys!