8

Expanding the Protection of Famous Trademarks

In the course of the globalization of economic activities and diversification of business lines inrecent years, there is an increasing risk that the proprietary nature of trademarks, particularly
famous trademarks, could be damaged. In the United States and major European countries, if aregistered trademark is widely known or if its reputation is damaged, that trademark is protected
while the relevant acts are deemed to constitute a trademark infringement, beyond the scope of theregistered goods or services. The need to consider a desirable trademark system in Japan –including the expansion of the prohibitive effects of trademark rights and the significance of the
defensive mark registration system – has been pointed out.
Against such a backdrop, in this study, the significance of the existence of the defensive markregistration system was redefined with regard to expanding the protection of famous trademarks.
Surveys on the legal systems, etc. of countries/regions that have recently abolished or still maintaina defensive mark registration system were also conducted with regard to the questions of whether
the prohibitive effects of registered trademark rights should be expanded to dissimilar goods orservices that are likely to cause confusion, and how the problem of dilution of trademarks should be
handled. A comparative study between Japan and these countries/regions was then conducted.
Moreover, taking up the problem of trademarks on the Internet, an ideal form of Japanese legal
system was examined by examining the legal systems of the United States and European countries,
as well as court cases in which trademarks specifically became an issue.

I

Introduction

1

Background of This Study

Mainly in the United States andEuropean countries, there are growing moves
toward expanding the scope of the effects ofprotection of trademarks that have become
well-known and famous and have achieved aproprietary nature and credibility which
attract consumers. In response to this, moves
to consider an ideal form of protection of
famoustrademarks
have
also
been
proceeding in Japan.
This study aims to conduct a comparative
study on the protection systems for famous
trademarks in other countries, mainly
countries that maintain a defensive markregistration system or have maintained one
until recently, and specifically to discuss anideal form of protection of famous
trademarks in Japan. In this study, thesignificance of the existence of the defensive
mark registration system is redefined, andthe following questions are considered:●

IIP Bulletin 2008

whether the prohibitive effects of registeredtrademark rights should be expanded todissimilar goods or services that are likely tocause confusion, and what protection ispossible in cases where the distinctiveness or
reputation of a trademark is used withoutauthorization or is damaged (dilution of the
trademark).
In addition, the use of marks on theInternet is cited as an area in which anincrease in the number of conflicts pertaining
to famous trademarks has been noted.
Information on the Internet is accessible
from around the world, and there is always
the risk that a mark used on the Internet will
conflict with a registered trademark inanother country where the mark is available
for inspection. This study examines example
cases in the United States and major
European countries in which the use of a
trademark on the Internet developed into a
lawsuit, and cases where a person was
accused of trademark infringement.

58 ●

2

Study Method

In this study, interview surveys wereconducted with domestic companies in orderto understand the need for expanded
protection of famous trademarks andprotection of trademarks on the Internet. In
addition, to compare the trademark systemsof other countries, surveys on the protectionof famous trademarks were conducted inAustralia, New Zealand and Taiwan, andsurveys on the protection of trademarks on
the Internet were conducted in the UnitedStates, the United Kingdom, Germany andFrance. Both surveys were conducted byasking law firms in those countries forcooperation. Moreover, with regard to thesubject items of this study, interview surveys
were conducted with persons of learning andexperience who have rich knowledge about
these issues, while relevant documents andcourt precedents in Japan and abroad werealso studied. The results were used as a basis
for consideration in this study.

II

Regarding
ExpansionoftheProtection of Famous Trademarks

1

Identification of the Problem

Under the Japanese Trademark Act, theeffects of a trademark right extend togoods/services that are identical with thedesignated goods/services (Article 25 of theTrademark Act), and protection is provided
with respect to goods/services that are
similar to the designated goods/services,
based on the concept of acts deemed toconstitute infringement (Article 37(i) of said
Act). However, many acts of free riding that
harm a famous trademark’s capacity to
attract consumers also occur in area that are
not similar to the goods or services
designated by a registered trademark. For
this reason, the Japanese Trademark Act
establishes a registration system, in which amark that is widely recognized among
consumers is recognized as a defensive markand its use by other persons is prohibited incases where the use of the mark for●goods/services that are dissimilar to thedesignated goods or services of the mark islikely to cause confusion over their source.
Moreover, the Japanese Unfair Competition
Prevention Act (hereinafter called the“Unfair Competition Prevention Act”) also
contains
provisions
protecting
well-known/famous trademarks.
In the course of the globalization of
economic activities and diversification ofbusiness lines in recent years, there is anincreasing risk that the proprietary nature of
trademarks, particularly famous trademarks,
could be damaged. Thus, moves toward
expanding the effects of a trademark rightare apparent in other countries. In response
to such circumstances, the Trademark
System Subcommittee (June 2003 to January2006) in the Intellectual Property Policy
Committee of the Industrial Structure
Council made a recommendation to the effectthat it is necessary to consider expanding theeffects of a trademark right. This study aims
to develop more specific discussions on theideal form of protection of famous
trademarks in Japan, in response to thatrecommendation.
This
study
presents
measures for possible new protection systems
in light of trends in the protection of famous
trademarks in other countries in theinternational community, as well as requests
from Japanese companies.

2

Protection of Famous Trademarks in
Other Countries(1) Protection of famous trademarks in the
United States, Europe and China
In the United States, Europe (European
Community, the United Kingdom, Germany
and France) and China, each jurisdiction
does not adopt a system for the protection of
famous trademarks in which rights are
granted through advance registration of
famousness. Therefore, under the systems ofthese countries, proof of reputation or being
well known is required in order to receive
protection
from
use
for
dissimilar
goods/services.
Trademarks
subject
toprotection include those that have acquired
59 ●IIP Bulletin 2008

distinctiveness through use. In addition,even if a registered trademark is used forgoods/services that are dissimilar to thedesignated goods/services of the registeredtrademark, if the registered trademark is
widely known or has a reputation, the effectsof the trademark right are expanded while
the registered trademark is deemed a famous
trademark. At the same time, if the
distinctive feature or reputation of a
trademark is used without authorization or isdamaged, the trademark is protected while
the relevant acts are deemed to constitutetrademark infringement, even with respect togoods/services that are not similar to thedesignated goods/services.
(2) Protection of famous trademarks inAustralia, New Zealand and Taiwan
In this study, three countries – Australia,
New Zealand and Taiwan – were used as thetargets of the overseas survey.
Both Taiwan and New Zealand had
adopted a system equivalent to Japan’s
defensive mark registration system. However,
New Zealand abolished this system through arevision of the Trade Marks Act in 2002,
while Taiwan did so through a revision of theTrademark Act in 2003. These countries took
separate measures to expand the protectionof famous trademarks. Through a revision of
the Trade Marks Act in 2003, Australia
introduced provisions that expand theprotection of famous trademarks while
maintaining the defensive mark registration
system. The overseas survey was conductedwith a focus on the mechanism of protectionof famous/well-known trademarks in eachcountry – particularly the existence of asystem to prevent dilution of trademarks –and the history and current situation
concerning the maintenance or abolition of
the defensive mark registration system.
This survey revealed that New Zealandand Taiwan abolished the defensive markregistration
systemandestablishedprovisions that prevent dilution as a new
system that is an alternative to the defensive
mark registration system, conforming withthe trend in the United States and European●

IIP Bulletin 2008

countries. Although the effects of the reformof the system are unclear, since not muchtime has passed since the legal revisions, theabolition of the defensive mark registration
system has not caused any problems.
However, in contrast with the Japanese
defensive mark registration system, which
protects famous trademarks, Taiwan’s
defensive mark registration system was asystem that did not just protect famous
trademarks. Therefore, some people wonder
if trademarks that are not famous are
sufficiently protected after the abolition ofsaid system.
On the other hand, in its Trade Marks
Act,
Australia
establishes
provisions
recognizing the effects of a trademark rightto the extent that it is “unrelated ” to thedesignated goods or services with respect towell-known trademarks, while maintaining adefensive mark registration system that is
the same as Japan’s in terms of content. In
cases where the use of a well-known
trademark has an adverse effect on theholder of the relevant trademark right, saiduseisrecognizedasconstituting
infringement of the trademark right only
when unrelated goods or services are deemed
to have a relationship with the holder of the
trademark right. It has not been establishedby court precedents or theories whether thisprovision can deal with the problem of
dilution of trademarks. However, it was
revealed that there was a possibility that aprovision more clearly aimed at protecting
famous trademarks would be introduced inanswer to future trends relating to theinfringement of trademark rights.
The defensive mark registration system
in Australia is to prevent the use of a
trademark by another person from indicatinga relationship with the holder of the relevant
trademark right. The prevention of such false
recognition as to the relationship with theholder of the trademark right is considered tooverlap, in some part, with the prohibition ofacts creating confusion under Article 2(1)(i)of the Japanese Unfair Competition
Prevention Act.

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3

Trends Among Domestic Companies

In this study, interview surveys wereconducted with domestic companies withwide-ranging types of business, with the aimof understanding the current status ofoperation of the defensive mark registration
system and examples of infringement of
famous trademarks. The main questions
were on the following three points:(i) Does your company use the current
defensive mark registration system?
What are the advantages of the defensive
mark registration system? What would
be the points to keep in mind if the
defensive mark registration system wasabolished?
(ii) What improvements do you request withregard to the current defensive markregistration system?
(iii) Has your company ever sufferedinfringement of a trademark right that
could not be dealt with, or could not be
sufficiently dealt with, under the current
trademark system? What problems willarise if the scope of protection of famous
trademarks is expanded in the future?
Regarding the first point, there were nocompanies that were making active efforts toobtain defensive marks. However, many
companies that had obtained defensive
marks in the past emphasized that, under thecurrent law, the defensive mark registration
system provides the only means of legallyasserting the famousness of trademarks, andthus should be maintained in the future.
With regard to proof of famousness, it ispossible to assert famousness based on
various indicators, including sales activities
andadvertising
activities.
However,considerable labor is required to get all thematerials that are considered necessary. On
the other hand, although reasonable costs are
required to obtain a defensive mark, once it isobtained, it can serve as an effective meansby which a right can be exercised as a famous
trademark for ten years. The majority
opinion of the companies interviewed wasthat there was no need to bother abolishing
the system that has been used, and that if it●

is abolished, it will probably be necessary toestablish a system that can make up for theeffectiveness of defensive marks – that is,making famousness legally known. On theother hand, in response to the current
situation where fewer countries maintain adefensive mark registration system, somecompanies think that the abolition of thesystem is unavoidable, while others point out
that, in some regions, trademarks that are
not famous are protected based on theobtainment of defensive mark registrations
and that protection can be far removed fromthe realities in cases where a trademark that
was a big hit at the time of its registration
has lost famousness during the following
decade.
Regarding the second point, many
companies pointed out the substantial costs
required to obtain and manage multiple
defensive marks. In addition, some raised thefollowing point as a problem: although amark is required to meet requirements suchas famousness and the likelihood that
confusion will arise, in order to be registered,
the scope of effects is limited to marks
identical with the registered trademark anddoes not extend to similar marks. On theother hand, there is an opinion that the effect– recognition of the famousness of a
trademark is increased because a defensive
mark was obtained – must not be missed, andthus that the requirements should not bediminished without careful consideration.
Regarding the third point, at present,
many companies deal with each such case of
infringement of a trademark right by sending
a letter of warning or through prosecution,etc. based on the Unfair Competition
Prevention Act. However, amid an increase in
the number of trademark right infringements
due to the inflow of counterfeit goods andexpansion of commodity transactions via theInternet, it is necessary to incorporate areas
for which the advisability of protection is
unclear under the current system – including
the prevention of dilution – into theTrademark Act in the future. Manycompanies think that there is no problem
even if the scope of protection under the
61 ●IIP Bulletin 2008

Trademark Act overlaps with that under thecurrent Unfair Competition Prevention Act.

4

Comparative Study Between Japanand Other Countries Concerning theProtection of Famous Trademarks(1) Frameworksofwell-known/famous
trademarks in other countries
The provisions on the effects of a
trademark right are divided into two groups:
those in which the scope of the right isdelimited without considering confusion as arequirement under the letter of the law, andthose in which the scope of the right isdelimited considering the likelihood ofconfusion as a requirement under the letterof the law.
The Japanese Trademark Act and someprovisions of the trademark laws of European
countries (the likelihood of confusion arising
is not required in cases where the trademark
and subject goods/services of a registeredtrademark and another trademark are thesame) belong to the former group. Under thislegal system, emphasis is placed onprotecting the formal scope of the right, andit may sometimes be difficult to respond toacts creating confusion that arise beyond thescope of protection.
For the latter group, the scope of a rightis delimited in consideration of individual
and specific circumstances, under therequirement of likelihood of confusion overthe source of goods or services. The Japanese
Unfair Competition Prevention Act, U.S.
trademark law, and some provisions of the
trademark laws of European countries (thosethat stipulate as a requirement that
confusion arises in cases where thetrademark and subject goods/services of aregistered trademark and another trademark
are within the scope of similarity) are
included in the latter group. In addition,
Australia, New Zealand and Taiwan, which
are subject to the current survey, are also
said to adopt provisions of this type. It is
possible to protect the source-indicating
function – the essential function of a
trademark – in consideration of individual●

IIP Bulletin 2008

and specific circumstances. Therefore, thelatter group is said to be a legal system thatstraightforwardly protects the goodwill
which trademarks have.
(2) Ideal
form
of
protection
where
confusion over the source is likely to
arise
The
Japanesetrademarksystemintroduces the concept of similarity withregard to trademarks and goods/services. The
scope of similarity is understood as the scopeof confusion over the source. Therefore,
although it is effective to understand thescope of similarity uniformly in advance atthe point of examination for registration, thescope of confusion over the source canactually change according to the famousnessof a registered trademark. If a registeredtrademark becomes famous, confusion overthe source may arise beyond the scope ofsimilarity.
Therefore,
the
use
and
registration of famous trademarks by persons
other than the right holders are prohibited byrecognizing the prohibitive effects oftrademarkrightsfordissimilar
goods/services as well, through clarifying in
advance the scope in which confusion overthe source may arise by establishment of the
defensive mark system. However, the scope towhich the effects of defensive markregistration extend is limited to those of aform identical with the registered defensivemark.
In recent years, the numbers ofapplications for and registrations ofdefensive marks have been limited comparedto the numbers of applications for andregistrations of ordinary trademarks. In
addition, there have been no court cases inwhich a right was exercised based on a
defensive mark registration. Court cases inwhich provisions on defensive markregistration became a point of contention
have been limited to those in which the levelof well-knownness or determination ofidentity of the relevant mark was disputed.
Lookingatthedefensivemarkregistration system in Japan from theperspective of protecting famous trademarks,
62 ●the scope of effects of a defensive mark islimited to marks identical with the registeredmark, meaning that the system is notconvenient. It is thus pointed out thatprohibiting the use of an identical mark is
insufficient to prohibit acts that are likely tocause confusion. In addition, it is also pointed
out that it is rigid to set the duration of aright uniformly as ten years, despite
variations in the period for which a
trademark remains famous. On the other
hand, there is another opinion that theadvantage of the current defensive markregistration system is to prevent conflicts
between companies by clarifying prohibited
mattersinadvance,
and
that
the
effectiveness of the system is proven by thefact that there are no conflicts concerning
defensive mark registrations.
In order to proceed to discussions onwhether the right to prohibit trademarksthat are likely to cause confusion over thesource should be expanded, it is firstnecessary to clearly organize the concepts of“similarity” of goods or services and“confusion” over the source. In this regard,
the court appears to consider that thesimilarity of goods/services should bedetermined, both at the point of examinationand the point of infringement of a trademark
right, based on whether or not goods/services
are similar to the extent of causing confusion
over the source.
In Japan, when considering expanding
the effects of a famous trademark under the
Trademark Act, the legal system adopted in
the United States and European countries –in which the scope of the effects of a
trademark right is delimited based on the“likelihood of confusion” – also seems to be
sufficiently informative. Under this legal
system, the scope of the effects ofgoods/services
changesdependingonfamousness/being well known, and thesimilarity of the trademark used. Therefore,
even if the goods/services of a business ownerand those of another person are unlikely to
mislead or cause confusion, the similarity ofthese goods/services can be affirmed if thegoods/services of another person are likely to●

be falsely recognized as
goods/services
pertaining to manufacture or sales by saidbusiness owner when a trademark that is
identical or similar to a trademark used forthe goods/services of the business owner isused for the goods/services of another person.
It is necessary to hold discussions in
sufficient consideration of the impact, etc. ofthese points on actual practice.
(3) Desirable protection where confusion
over the source is unlikely to arise
Provisions preventing the dilution of a
trademark – by which the connection
between a famous trademark and its original
owner, or distinction function, is diminished– are introduced in trademark laws in all of
the jurisdictions subject to the survey, withthe exception of Australia. The provisions
grant protection from acts that prejudice thevalue of a registered trademark. For example,
if a trademark for which an image of hightechnology/quality/services
has
been
establishedwithrespect
toelectric
appliances, etc. is used by another person forgoods/services in fields other than electric
appliances, the original image of the relevant
famous trademark will be diluted as a whole,and the trademark’s capacity to attract
consumers will deteriorate. In this case,dilution of the trademark occurs. Provisions
preventing dilution implement regulations
focusing on such modes of use of a trademark.
In the case of the United States, dilution
is divided into two categories: “blurring,” inwhich the distinction function is lost due tothe use of a certain trademark, and“tarnishment,” in which a famous trademark
is
used
for
inferior
orunpleasantgoods/services. On the other hand, in Europe,
dilution is stipulated as cases where aregistered trademark has a reputation in amember country and the distinctiveness(dilution) or reputation of the trademark isused without authorization or is damaged(tarnishment) without justifiable reason,
irrespectiveofthesimilarityof
goods/services.
In Japan, the provision of Article 2(1)(ii)of the Unfair Competition Prevention Act was
63 ●IIP Bulletin 2008

introduced in response to this issue. However,in reality, almost no lawsuits have been filed
based solely on item (ii), and in most cases
the ground for action is established intandem with item (i) of said Act. However,even in cases based on the Unfair
Competition Prevention Act, the sameproblem arises as for use as a trademark
under the Trademark Act – that is, use by athird party has to be use for “indication of
goods, etc.”
In the future, it is furthermore necessary
to specifically consider the issue of whether
the Trademark Act should go beyond
protecting trademarks’ source-indicating
function, or whether the Trademark Act
should be made into a self-contained legal
system through protecting trademarks asproperty rights.

III Protection of Trademark Rights on
the Internet
1

Identification of the Problem

Marks used on the Internet are
simultaneously and immediately accessible,
irrespective of the domain. Therefore, they
are highly likely to cause conflicts withtrademarks registered in other countries,
and the need has thus arisen to solve theproblem of use of trademarks beyond
national borders. With regard to the famous
trademarks considered in the previous
chapter, in interviews, companies pointed out
an increase in the number of cases ofinfringement in terms of use of trademarkson the Internet.
From an international standpoint, the“Recommendation Concerning the Protectionof Marks, and Other Industrial Property
Rights in Signs, on the Internet” was adopted
at the Assembly of the Paris Union for theProtection of Industrial Property and theGeneral Assembly of the World Intellectual
Property Organization (WIPO) in 2001.
Although this recommendation is not legallybinding,itattempts
toformulateinternational guidelines for solving the
problem of conflicts with trademark rights,●

IIP Bulletin 2008

and other problems that arise from theterritoriality of trademark laws and theglobal nature of the Internet.
In addition, along with the increase in
the number of cases of infringement, thenumber of court cases in which the
infringement of trademark rights on theInternet is straightforwardly dealt with has
been increasing in foreign countries. In
Japan, efforts to protect trademarks on theInternet have also been launched. For
example, the Ministry of Internal Affairs andCommunications formulated the “Guidelines
for the Provider Liability Limitation Act with
Respect to Trademark Rights,” in cooperation
with telecommunications carrier associations,etc.
In response to these moves, this study
examines the types of legal action that othercountries are taking in response to the
problem of protection of trademarks on theInternet and how said problem is interpretedin actual court cases, and also studies thecurrent status of infringement cases inJapan.

2

Modes of Use of Trademarks on theInternet and Trends Among Domestic
Companies

With regard to the use of marks on theInternet, there are diverse modes of using
them as trademarks. The main modes include
use for a domain name, metatags, banneradvertising, keyword buying, linking andflaming, though there are problems that arecommon to some of these. Out of these, fordomainnames,
dispute-settlement
procedures are being arranged in eachcountry, and thus this study does not deal
with the issue much. For other modes of use,
problems in terms of the Trademark Act andcourt precedents are examined in this study.
Incidentally,
this
study
aims
to
understandtheactualconditionsoftrademark infringement on the Internet by
conducting interview surveys with domestic
companies. Example uses of trademarks on
the Internet that become problems include
the placement of a site that looks like the64 ●original site by a business operator with norelationship with the company relating to theoriginal site, displaying a logo in which thename of a famous company is incorporated,
and the use of the name of a company as aparody. Such cases have become more
complicated with the development of Internet
technology, and there have been some cases
in which the use of a trademark that is
peculiar to the Internet has become aproblem, including the establishment of alink to a website and the use of a registeredtrademark in banner advertising.
There are some proactive companies that
conduct regular monitoring to discoverproblematic cases. Many companies raised
the problem that the image and credibility
that companies have achieved with effort
could be harmed because it is technicallyeasy to reproduce trademarks on theInternet.
However, with regard to the infringementof trademark rights on the Internet, many
Japanese companies say that they hesitate tosolve it by bringing a lawsuit. The following
reasons are cited for this: (i) in many cases,
the infringer deletes the relevant site if theright holder gives him/her a warning, and (ii)the scale of real damage caused byproblematic transmission of information on
the Internet is unclear and is hard to prove.
In addition, many raised the point that it isvery difficult to investigate the whereabouts
of infringers, since it is easy to move homeservers.
It appears that trademark infringementcases closely focused on Japanese companies
have not been rapidly increasing with the
spread of the Internet, although there arecases in which trademark rights have been
infringed in the transmission of informationfrom overseas servers. At this stage, it cannot
be said that the problem of Internet-based
infringement of trademark rights beyond
national borders, and the issue of jurisdictionthat is important in dealing with such
infringement, has arisen for Japanesecompanies. However, many companies areconcerned
thattheinfringementoftrademark rights via the Internet will●

expand in the future.

3

Comparative Study Between Japanand Other Countries Concerning
Rules for Trademarks on the Internet

The Japanese Trademark Act does not
set any special rules for the protection of
trademark rights on the Internet. However,
Article 2 of the Trademark Act prescribes use
as a trademark, from the perspective ofclarifying that the use of a trademark in
distributing goods, providing services oradvertising on the Internet falls under “useof a trademark” under the Trademark Act.
The same holds for the countries subject tothe overseas survey. There are no countries
that set special rules for the protection of
trademarks on the Internet, and the rules of
the current trademark law are to be extended
to the protection of trademarks on theInternet.
However, in other countries, there aremany court precedents concerning peculiar
modes of use that occur on the Internet, suchas use for metatags, keyword buying, linking,flaming and popup advertising, althoughcountries are divided in terms of decisions
regarding the protection of trademarks withrespect to each mode of use.
Regarding metatags, there are court
precedents in the United States andEuropean countries in which the court foundinfringement of a trademark right or the
possibility of infringement of a trademark
right. In particular, many such court
precedents exist in the United States. The
Brookfield case by the United States Court ofAppeals for the Ninth Circuit is cited as arepresentative court precedent affirming
infringement of the relevant trademark right.
In relation to infringement of a trademark
right, metatags become a problem mostly inthe sense that they are not visible to users, as
they are not indicated on websites inordinary use.
Under the Japanese Trademark Act,invisibility does not necessarily mean
exemption from liability for infringement of a
trademark right. The Kuruma no110 ban
65 ●IIP Bulletin 2008

case is cited as a court case in which theconstitution of infringement of a trademark
right was straightforwardly disputed withregard to the use of a trademark similar toanother person’s trademark as a metatag. In
this case, the use of the trademark as ametatag
was
found
to
constituteinfringement of the trademark right, in
consideration of the point that theadvertisement was displayed to consumers.
Use for keyword buying is divided into
cases in which the purchaser of a keyword
uses the keyword for a metatag or banneradvertising, etc., as mentioned above, andcases in which the operator of a search engine
sells a specific keyword. For the latter, aproblem will not arise as long as the keyword
sold is a common noun. However, a problem
will arise if an operator sells a keyword
identical to a famous trademark to a person
who has no relationship with the holder ofthe famous trademark and the user of the
keyword commits an act infringing therelevant trademark right. In this regard,
there are no court precedents finding
infringement of a trademark right by a sellerof a keyword.
In the case of banner advertising andpopup advertising, there is the problem ofuse of a keyword as advertising – that is, theactofunjustly
attractingusers(bait-and-switch advertising) – in addition to
the aforementioned problems incidental to
keyword buying. In addition, linking andflaming are often conducted as a free ride onanother person’s content; therefore, in somecases they may cause problems, such as false
recognition or confusion over the source anddilution of a trademark. Court precedents
finding infringement of a trademark rightwith regard to these modes of use exist onlyin the United States.
In the United States and European
countries, court precedents have been
accumulated that actively find dilution due tothe use of a famous trademark by a person
other than the right holder with respect tothe use of trademarks on the Internet. In
particular, in the United States, theprovisions of Section 43(c) of the U.S.
●IIP Bulletin 2008

trademark law concerning prevention ofdilution are actively applied to the use of
trademarks on the Internet. In most cases,
dilution in relation to infringement of a
trademark right is found based on “blurring.”
However, with regard to the protection of
trademarks on the Internet, there is a court
precedent in which dilution due to“tarnishment” was found. In addition to theactive application of provisions concerning
dilution, of special note regarding the court
precedents in the United States is the active
utilization of the “initial interest confusion”
doctrine. Under this doctrine, confusion isrecognized in the sense that consumer
interest is created when they see a website,even if there is no confusion over the sourceof the relevant goods at the time of purchase.
Opinion is divided about this interpretationin U.S. courts and theories.
European countries also apply their own
provisions protecting famous trademarks –set pursuant to the provisions of Article 5(2)of the EC Directive – to the dilution of
trademarks on the Internet, in the samemanner as to general modes of transaction.
The number of court precedents finding
dilution of a trademark is also increasing.
The “initial interest confusion” doctrine
developing in the United States has not been
established as a doctrine in European
countries.
However,
there
are
court
precedents in which the court ruled against
judging the existence of confusion among
consumers only at the time of purchasing
goods in terms of determining trademark
infringement on the Internet. Thus, aninterpretation similar to the initial interest
confusion doctrine exists in European
countries.
Industrial property rights, including
trademark rights, are based on the principleof territoriality. However, in the world of theInternet, where information is distributed
irrespective of national borders, multiple
countries are involved in a certain trademark
right, and the problem of conflict withtrademarkrightsarises.
The
WIPO
recommendation in 2001 attracted attention
as a recommendation giving guidelines for66 ●solving the problem of conflict withtrademarks on the Internet.
In the United States, it does not matter
whether the source of information exists in or
outside the United States, and if it isdetermined that Internet users have accessto the relevant information from within the
United States, the case is dealt with as aproblem within the United States. Whether
U.S. trademark law is applicable isdetermined based on whether the relevant
act falls under “use” of a trademark undersaid law. In addition, the Brussels Regulation,
which provides for jurisdiction within the EC,
clearly
stipulates
theprinciple
thatjurisdiction is granted to the place where
damages occurred, and European countries
conform to this principle. Therefore, it isstandard
todetermineatrademarkinfringement on the Internet based on theoccurrence of damages in each country,irrespective of the geographical source of
information.
That is, although neither the UnitedStates nor European countries have taken
fresh legislative action in response to the
WIPO recommendation, there are court
precedents in each country showinginterpretations that conform with the content
of said recommendation. Thus, trademark
infringement is now determined from thesubstantive
perspective, including theexistence of damages due to the relevanttransmission of information, irrespective ofthe location of the server that is the source of
information.
As mentioned above, with regard to theprotection of trademarks on the Internet,
more cases have been accumulated anddiscussion has proceeded further in the
United States and European countries thanin Japan. It is also expected that the numberof cases in which trademark infringement on
the Internet becomes an issue will further
increase in Japan, too. Therefore, it isconsiderednecessary
tocontinuetocomprehend and examine the actual
situation in the future.
(Researcher: Momoko NISHIMURA)●

67 ●IIP Bulletin 2008