Provider Liability Limitation Act
Guidelines Relating to Trademark Right

July 2005

Provider Liability Limitation Act Guidelines Review Council
Provider Liability Limitation Act Guidelines Relating to Trademark Right
Contents
I

Introduction - Purpose of the Guidelines

1

Objectives of the Guidelines

2

Concerning Infringement of Trademark Right by Distribution ofInformation

1

1

2

3

Status of the Guidelines

4

RevisionII

Scope of Application of the Guidelines

1

Actors of Notices

2

Modes of Covered Infringements of Rights

3

Information of Products Subject to Transmission Prevention

Measures

3

4
5

5
5

6

III

Processes, etc., of Notices

1

Procedures by the Trademark Right Holder. etc., at the Time of

Notice (Written Forms, etc.)277Procedures by the Online Auction Business Operator at the Time ofReceiving a Notice (Verification Items, etc.)

7

IV

Notice Verification Items and Methods Thereof

1

Identity, etc., of Notice Actors

2

Verification of Being the Trademark Right Holder, etc.

3

Specification of Infringing Information

4

Verification of Being Trademark Right, etc., Infringement

1

9

9
9

10

10
V

Notice Via a Reliability Verification Organization

12

1

Criteria, Scope, etc., of Reliability Verification Organizations
12

2

Verification by Reliability Verification Organizations

13

3

Response in Cases Where Error, etc., Has Occurred in the

Verification Procedures of the Reliability Verification Organization
14
VI

Response by Online Auction Business Operators, etc.

1

Cases Where the Notice and Verification Satisfy the Requirementsof These Guidelines
2

15

Cases Where the Notice and Verification Fail to Satisfy theRequirements of These Guidelines(Form)

15

15

16(Form in the Case of Making Notice Via a Reliability Verification
Organization)

18

p. 1
I

Introduction - Purpose of the Guidelines

1

Objectives of the Guidelines

The Act on the Limitation of Liability for Damages of Specified
Telecommunications Service Providers and the Right to Demand Disclosureof Identification Information of the Senders (Act No. 137 of 2001;
hereinafter referred to as "Provider Liability Limitation Act" or simply"Act") that came into effect in May 2002 provides for cases, etc., where
liability for damages of the sender is limited in cases where the provider,etc., takes measures such as deletion with respect to information
distributed through the Internet that infringes the rights of another, andthrough this, an environment was prepared that makes it possible forproviders, etc., to make an appropriate response based on their own
determination in cases where information that infringes the rights of2

another is distributed. In turn, this council as well has formulated andendeavored to make public Guidelines Relating to Defamation and Privacy
and Guidelines relating to Copyright with the objective of promoting
appropriate and proper response by providers, etc., to right-infringing
information distributed through the Internet and promoting smooth andsound use of the Internet.
In recent years, cases have been increasing in which right holders andright-holder organizations, alleging that display information publishedon an online auction (referring to conducting mediation of persons
attempting to buy or sell goods by auction methods through the Internet;
hereinafter the same shall apply) infringes trademark right, etc., makenotice to the online auction business operator (referring to the person
who administers or operates an online auction; hereinafter the same shallapply) to delete the information. In light of this context, the"Intellectual Property Strategic Program 2004" decided in May 2004 by thegovernment's Intellectual Property Strategy Headquarters also specifies
conducting broad review from the standpoint of protecting intellectual
property and the interests of consumers themselves with respect tofacilitating deletion, etc., by managers of Internet auction sites, etc.,from the site of displayed articles that infringe (omitted) rights.
In light of these circumstances, in cases where trademark right andexclusive right to use (hereinafter in this chapter referred to simply as"trademark right, etc.") have been infringed by distribution of
information pertaining to an article displayed in an online auction orother information on a web page, these guidelines shall take it as theirobjectives to make clear, within the possible scope at the present stage,cases in which taking transmission prevention measures such as prompt
deletion is possible even when not the case that the online auction business
operator, etc., contacted the sender and no objection was received after
seven days (article 3 paragraph (2) item (ii) of the Act), and along with
this, to clarify the standard of behavior of the right holder and the online
auction business operator, etc., in responding to a particular case, by
making possible prompt and appropriate response when formal determination
is made as to whether the guidelines have been followed, instead of theonline auction business operator, etc., making a determination according3

to particular circumstances, and to promote prompt and appropriate
response by the online auction business operator, etc., with respect todistribution of information via a specified telecommunications service
provider(referring

to

the

"specified

telecommunications

serviceprovider" of article 2 item (i) of the Act; the same shall apply
hereinafter) that infringes trademark right, and thereby promote smoothand sound use of the Internet. These guidelines shall cover the specified
telecommunications service providers referred to in article 2 item (iii)of the Act, but due to the nature of the information covered here, because
chiefly persons, etc., who administer or operate online auction business
operators or virtual shopping malls and who fall under the specified
telecommunications service providers are what is in mind, specified
telecommunications service providers are referred to as online auction
business operators, etc.

p. 2
N.B.:

Trademarks

are

said

to

have

the

three

functionsof1)source-indication function, 2) quality-assurance function, and 3)
advertisement and publicity function, and it is necessary to keep in mind
that for trademark right, which makes protection of the interests ofconsumers and maintenance of trust in the course of business its objectives,
the nature of the right differs from copyright, which covers protectionof works that have creatively expressed thought or emotion. (For example,
whereas in cases where a file in which a work has been copied verbatim has
been uploaded to the Internet, the right of public transmission and rightto make transmittable are infringed by merely that, trademark right cannot
be said to be infringed immediately by having displayed a so-called
counterfeit product in an Internet auction.)
2

Concerning Infringement of Trademark Right by Distribution ofInformation(a)

The act wherein a person who produces, certifies, or assigns(hereinafter referred to as "assignment, etc.") goods in the course of
trade "uses" a mark identical or similar to a registered trademark withrespect to specified goods or goods similar thereto falls under4

infringement of trademark right, and(b)according to the revised Trademark Act of 2002 (in effect from 1

September 2002), the act of affixing a trademark to information whose
content comprises advertisement materials, etc., relating to goods orservices and making this available by electromagnetic means, that is tosay, the act of advertising, etc., relating to goods or services over a
network, is clarified as constituting use of a trademark (article 2paragraph (3) item (viii) of the Trademark Act),and therefore, for the purpose of interpretation of the Trademark Act,(c)in selling counterfeit branded goods (referring to goods identicalor similar to specified goods or goods similar thereto pertaining totrademark registration of a trademark right holder [including persons
which have received permission therefor; hereinafter in this chapter thesame shall apply], which are goods to which is affixed a trademark identicalor similar to said trademark without the permission of the trademark rightholder; hereinafter the same shall apply) using the Internet, such as bydisplay, etc., in an Internet auction, the act of publishing on a web page
photographsorimages,etc.

(hereinafterreferredtosimplyas"photographs") of goods to which is affixed a mark identical or similar
to a registered trademark is believed to fall under "use" of a mark provided
for in article 2 paragraph (3) item (ii) of the Trademark Act as an actof displaying, for the purpose of assignment, goods or packages of goods
to which a mark is affixed.
Additionally,(d)in conducting advertisement relating to counterfeit brand goods,

etc., on an auction site or other web page, the act of displaying a trademark
identical or similar to a registered trademark advertisement material,etc., relating to goods is believed to fall under "use" of a trademark as
provided for in article 2 paragraph (3) item (viii) of the Trademark Act
as an act of distributing advertisement materials, etc., relating to goods
to which a mark is affixed, or to provide information on such content, towhich a mark is affixed by an electromagnetic device. Accordingly, it isbelieved that such acts, in cases where committed by persons who assign,etc., goods in the course of trade (cases of repeated or continuous display,cases of display in large volume, etc.), fall under use of trademark, andinfringement of trademark right is established.
Predicated on this interpretation,5

1)[the act of 3) below being committed] by a person who assigns, etc.,

goods in the course of trade,2)

with respect to specified goods or goods similar thereto

pertaining to trademark registration of a trademark right holder,p. 3-43)

the act of publishing on a web page photographs of goods to whichis affixed a mark identical or similar to a registered trademark, or theact of displaying on a web page a trademark (affixed to information whose
content comprises advertisement materials, etc.) identical or similar toa registered trademark is believed to have infringed trademark right.
The "infringement of [...] rights through distribution of information" as
used in the Provider Liability Limitation Act signifies cases where arelationship of adequate causation exists between "distribution of
information" and "right infringement," and cases whether it is determinedthat a relationship of adequate causation exists in a particular case canbe decided by general laws such as the Civil Code, but for 3), it is believedthat "distribution of information" directly causes "right infringement."
N.B.:

For the foregoing opinion, refer to "Collection of Cases Relating

to Private Import and Internet Transactions of Counterfeit Goods"(February 2005, Japan Patent Office).
http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/jirei/pdf/inet_trans_jirei/001.pdf
N.B.:

At the present point in time, in displaying goods in an Internet

auction, although no judicial precedent exists as to whether cases suchas where a brand name has been entered as the display title or the nameof the goods constitute affixing a trademark to information whose content
comprises advertisement materials, etc., relating to goods, it isconceivable that some cases fall under "use" in article 2 paragraph (3)item (viii) of the Trademark Act.
3

Status of the Guidelines

Whether rights were actually infringed by the distribution of information,
and as a result, whether the online auction business operator, etc., incurs

6liability by mistakenly deleting information or allowing it to stand, will
ultimately be decided in the court. Consequently, in individual cases, evenwhen response conforming to drafted guidelines has been conducted, nodetermination based solely thereon is made even by the court that a"reasonable ground" in article 3 of the Act exists, but in cases where thecontent of guidelines and the procedure of their drafting have grounds
securing their reliability, and the trademark right holder, etc., andonline auction business operator, etc., respond appropriately in keepingwith the high-reliability guidelines, it is expected that the "reasonableground" of article 3 will then be determined even by a court to exist, andthe online auction business operator, etc., will be deemed to incur noliability. From such a standpoint, these guidelines do not just simply
describe notification procedures and matters ancillary thereto, but are
intended to describe the way of thinking behind them as well.
Further, similarly to the way of thinking of the Provider Liability
Limitation Act, these guidelines clarify, within the possible scope, theresponses which online auction business operators, etc., are thought tobe able to make without incurring liability, and do not set forth the
obligations of online auction business operators, etc. However, in cases
where a online auction business operator, etc., has conducted handling inaccordance with at least these guidelines, it is expected that the online
auction business operator, etc., will be determined to incur no liability
in court decision proceedings as well, and so on the occasion of voluntary
response by the online auction business operator, etc., the handling inthese guidelines is thought to be an important guideline, and it is expectedthat online auction business operators, etc., will ordinarily makeresponses in line with these guidelines.
These guidelines also exert no influence with respect to any cases otherthan those specified by these guidelines, and even in cases that are notspecified in these guidelines or that do not satisfy the requirements set
forth these guidelines, cases may exist that are applicable to the"reasonable ground" in article 3 of the Provider Liability Limitation Act.
Additionally, these guidelines have been drafted by persons who areparticipating in this council, but after all, the Internet is open, andbecause civil liability relating to information distribution on theInternet does not become an issue solely between participants in this7

council, it is expected that these guidelines will also be utilized bypersons other than the participants of this council.
4

Revision

For these guidelines, appropriate revision according to advances in
information and communications technology, the status of practices, andthe like is thought to be necessary. Further, infringement of intellectual
property rights via the Internet is not limited to trademark right. For
example, cases where information pertaining to goods displayed in an online
auction or other information distributed via web page can be determined
relatively easily to be in violation of the Unfair Competition Prevention
Act or the like are also conceivable. Accordingly, even after theestablishment of these guidelines, examination by this council shall be
continued, and improvement and expansion of the guidelines shall be
conducted.

p. 5-6
II

Scope of Application of the Guidelines

1

Actors of Notices

Ultimately, determination of whether information relating to goods
displayed in an online auction or other information on goods distributed
though the Internet is information of authentic goods (referring to goods
to which the trademark right holder or a person licensed by the trademark
right holder has affixed a registered trademark; hereinafter the same shallapply) cannot be conducted by a person other than the right holder, andalso, if a notice from the right holder exists, it is expected thatappropriate grounds sufficient for determining the presence or absence oftrademark right infringement are presented, and so the actor of the noticeof transmission prevention measures in these guidelines shall be the rightholder. Specifically, these are as follows(1)The person issuing a notice of transmission prevention measures

shall be the principal person alleging infringement of trademark right or
exclusive right to use, or an agent thereof.

8

(2)

In (1) above, "person alleging infringement of trademark right or

exclusive right to use" shall, in addition to trademark right holders andholders of exclusive right to use, include persons (hereinafter referred
to as "trademark right holders, etc.") who can be equated with these.
2

Modes of Covered Infringements of Rights

These guidelines cover cases where trademark right is infringed throughthe distribution of information through a specified telecommunications
service.
As stated in I 2, for the purpose of interpretation of the Trademark Act,with respect to specified goods or goods similar thereto pertaining totrademark registration of a trademark right holder, the act of publishingon a web page photographs of goods to which is affixed a mark identicalor similar to a registered trademark, or the act of displaying on a web
page a trademark (affixed to information whose content comprises
advertisement materials, etc.) identical or similar to a registeredtrademark by a person who assigns, etc., goods in the course of trade, isbelieved to have infringed trademark right.
Consequently, in cases where, with respect to specified goods or goods
similar thereto, a person who assigns, etc., goods in the course of trade
displays on a web page photographs of goods to which a trademark is affixed
for the purpose of assigning goods, or in cases where a trademark (affixed
to information whose content comprises advertisement materials, etc.)
identical or similar to a registered trademark is displayed on a web page,
trademark right can be said to have been infringed through distributionof information via a specified telecommunications service. Specifically,
the following cases are conceivable(1)Displays of counterfeit branded goods, etc., in online auctions;(2)

Displays of counterfeit branded goods, etc., in shopping malls;(3)

Advertisement materials intended to assign counterfeit branded

goods, etc., on any other websites.
N.B.:

In the foregoing (1), (2), and (3), cases where photographs ofgoods to which trademarks are affixed are published on a web page fall underarticle 2 paragraph (3) item (ii) of the Trademark Act ("to [...] display
for the purpose of assignment or delivery [...] goods or packages of goods

9

to which a mark is affixed"), and can constitute trademark use. Also, evenin cases where photographs of goods to which trademarks are affixed are
not published, some cases where a brand name has been entered as the display
title or the name of the goods fall under article 2 paragraph (3) item (viii)of the Trademark Act ("to display or distribute advertisement materials[...] relating to goods or services to which a mark is affixed, or to provide
information on such content, to which a mark is affixed by anelectromagnetic

device").

Additionally,

becausethedisplayofcounterfeit branded goods, etc., in the online auctions and shopping mallsof (1) and (2) above is publication of information for describing goods
to unspecified persons to induce purchase by unspecified persons, it isthought to be advertisement of goods. Of course, even in cases ordinarily
regarded as advertisement materials, some cases cannot be termed trademark
use, such as cases merely of use simply to describe the content of the goods,
where the use of brand names in display information is not to indicate thesource of the displayed goods, and cases obviously not intended to misleador cause confusion among consumers.
3

Information of Products Subject to Transmission Prevention

Measures
Because transmission prevention measures for information by online auction
business operators, etc., are a direct restriction on the expressive actsof the sender, it is desirable that information be covered for which
probability of right infringement is high and it can easily be determinedthat the trademark of another have been unjustly infringed by a online
auction business operator, etc., so that, where possible, incorrect
measures are not taken, and also for the purpose of security for the
reliability of guidelines.
Accordingly, in these guidelines, information of goods that falls undereither of the two criteria below shall be subject to transmission
prevention measures. Cases other than these also shall be added as requiredin cases where agreement is obtained through ongoing deliberation of thiscouncil, while taking into account the status of practices.
(1)

Information relating to goods actually displayed on a web page canbe determined not to pertain to authentic goods
Information of goods that falls under any of the following, in the absence10

of special circumstances otherwise suggesting it to be information ofauthentic goods, may be determined not to be information of authentic
goods(a)Goods which the sender of the information admits not to beauthentic(b)

Goods of a type not manufactured by the trademark right holder,

etc.
(c)

Goods which the trademark right holder, etc., showing reasonablegrounds, claims not to be authentic (excluding those that fall under (b))(2)

Determination of being trademark infringement can be madeFor information comprising advertisement materials, etc., of goods under(1) above, in cases where all items listed below can be verified, theprobability that the information comprising advertisement materials, etc.,of the goods has infringed trademark right is determined to be high.
(a)

The sender of the information of advertisement materials, etc.,

assigns, etc., goods in the course of trade.
(b)

The goods are identical or similar to specified goods of aregistered trademark.
(c)

A trademark identical or similar to a registered trademark of therelevant trademark right holder, etc., is affixed to the information
comprising advertisement materials, etc., of the goods.

p. 7-8
III

Processes, etc., of Notices

1

Procedures by the Trademark Right Holder. etc., at the Time of

Notice (Written Forms, etc.)(1)

Notice procedures in accordance with these guidelines shall be

conducted with the following processes(a)A person (including persons who can be equated thereto, and agents;

hereinafter the same shall apply) alleging that his or her own trademark
right or exclusive right to use has been infringed by distribution of
information

througha

specified

telecommunications

service,whenrequesting that the concerned online auction business operator, etc.,
prevent distribution of information infringing the relevant trademark

11right, shall enter the required items on a notice form and submit the noticeform and other necessary documents to the online auction business operator,
etc.
(b)

With respect to a trademark right holder, etc., pertaining to theinfringement of the relevant trademark right, in a case where there is areliability verification organization in a specific relationship with thenotice sender the notice submitter can submit the notice form and othernecessary documents via the reliability verification organization. In suchcases,

thereliability

verification

organization

shallconduct

verification appropriately in accordance with IV with respect to theentered particulars, etc., of the notice form, draft a verification form
to the effect that the verification was performed, and submit it together
with the notice form to the online auction business operator, etc.
(2)

As a general rule, notice procedures shall be conducted in writing.

Provided, however, that because there are cases where promptly taking
transmission prevention measures is demanded, in certain cases, notice bymeans of electronic mail, facsimile, or other electromagnetic means as
required shall be permitted. Cases where notice by means of electronic mail,facsimile, etc., is permitted are the following(a)Cases where a certain ongoing relationship of mutual trust between

the online auction business operator, etc., and the notice submitter isrecognized, such as in cases of ongoing exchange, and wherein further thenotice submitter, etc., after notice by means of electronic mail, facsimile,etc., promptly submits in writing a notice form of identical content as
the notice by means of electronic mail, facsimile, etc. Additionally, incases where the online auction business operator, etc., and the noticesubmitter, etc., have both agreed, omitting subsequent documentation
submission shall be possible.
(b)

In cases where the online auction business operator, etc., andnotice submitter, etc., have both priorly agreed, cases of taking themeasure of an official electronic signature or an electronic signature
certified by an accredited certification business operator of the Act on
Electronic Signatures and Certification Business (Act No. 102 of 2000;
referred to hereinafter as the "Electronic Signatures Act") in theelectronic mail making notice, and wherein further an electronic
certificate pertaining to the electronic signature is attached to theelectronic mail.

12

N.B.:

Because verifying the identity of the notice is necessary, andleaving a record of notice having been made and of its content is also
necessary, notice by telephone is not recognized.
2

Procedures by the Online Auction Business Operator at the Time ofReceiving a Notice (Verification Items, Etc.)(1)

The online auction business operator, etc., which has received thenotice form (and verification form) in 1 above, shall, with respect to thenotice form, etc., verify that for each item described in IV of theseguidelines, the required items are entered, the required documents areattached, and the entered contents are appropriate.
(2)

The online auction business operator, etc., shall, after verifying

the contents of the notice, carry out response as in VI of these guidelines.

p. 9-10
IV

Notice Verification Items and Methods Thereof

1

Identity, etc., of Notice Actors

In cases of submission in accordance with these guidelines, the online
auction business operator, etc., is to take smooth and prompt transmission
prevention measures against the information. On the other hand, such may
even create detriment for the sender, and in some cases, it is conceivablethat a lawsuit could be instituted. Consequently, verifying who has madethe notice and that the notice was made by said person is necessary, andrequesting submission of documents, etc., from the notice submitter forverification is necessary.
(1)Cases of submission in writing

Verification of the identity of the notice submitter is performed by anyof the following methods(a)In cases where notice is made directly to the online auction

business operator, etc., in cases where the notice submitter is a juridical
person, the name of the juridical person's representative (including aperson who has been assigned authority from a representative) and a seal
employing an official seal or a seal which the representative uses in13

routine duties shall be affixed to the notice form, and along with this,material that allows certification of identity, such as a copy of a
Certificate of Registered Matters, shall be attached. Provided, however,that in cases where the existence of the juridical person is thought tobe easily recognized under ordinary circumstances, omitting attachment ofmaterial allowing certification of identity is also possible. Conversely,
in cases where the notice submitter is an individual, the notice submittershall affix name and seal to the notice form, together with attachingmaterial that allows certification of identity, such as a copy of a driver's
license, passport, or other such official certificate, and the online
auction business operator, etc., shall verify identity by means of theattached materials, etc. Additionally, in cases where a certain ongoing
relationship of mutual trust between the provider, etc., and the noticesubmitter is recognized, such as in cases of ongoing exchange, attachmentof material allowing certification of identity can be omitted.
(b)

For notices from overseas persons, a signature can substitute forname and seal.
(2)

Cases of notice by electronic mail, etc.

In cases of notice by electronic mail, etc., identity is verified by thefollowing methods(a)In the case of III 1 (2) a), identity shall be determined to havebeen appropriately verified by means of the notice submitter making
indication in electronic mail, etc., of being the principal.
(b)

In cases where the online auction business operator, etc., andnotice submitter, etc., have both priorly agreed, in cases of taking themeasure of an official electronic signature or an electronic signature
certified by an accredited certification business operator of theElectronic Signatures Act in the electronic mail making notice, when an
electronic certificate pertaining to the electronic signature is attachedto the electronic mail, the online auction business operator, etc., shallverify identity by the electronic signature and electronic certificate.
2

Verification of being the Trademark Right Holder, etc.

Next, it is necessary to verify that the person who has made notice is thetrademark right holder, etc. (that the relevant person holds the trademark
right, etc.). In Japan, registration is a requirement for trademark right14

and exclusive right to use, and because information on the right holder,etc., relating to these rights is open to the public, verification of being
the trademark right and holder of exclusive right to use is thought to beeasy. Additionally, in cases of submission from a person equated thereto,
it is necessary that evidence that can certify that standing be submitted.
Accordingly, in the notice, evidence such as the following shall bepresented, and the online auction business operator, etc., shall verify
thereby that the notice submitter is the trademark right holder, etc.
Additionally, in cases where other appropriate items arise in the future,they shall be added as needed.
(1)

Trademark registry, and a copy of the trademark bulletin or a copyof search results for information relating to the trademark on the web pageof the Industrial Property Digital Library provided by the National Center
for Industrial Property Information and Training(2)

Documentation proving a person to be able to be equated with thetrademark right holder or holder of exclusive right to use
N.B.:

URL

of

the

Industrial

Property

DigitalLibrary:

http://www.ipdl.inpit.go.jp/homepg.ipdl
3

Specification of Infringing Information

The distributed amount of information on the Internet is enormous, and evenwhen notice has been made that distribution of information alleged to haveinfringed rights has occurred, often the description is imprecise and theonline auction business operator, etc., cannot know what information is
actually taken to be at issue. (Because of such circumstances, it isspecified in article 3 paragraph (1) item (ii) of the Act that when the
online auction business operator, etc., had no knowledge of distributionof information alleged to have infringed rights, liability with respect
to the right holder is limited.) Because of this, from the standpoint of
encouraging appropriate and prompt response by the online auction business
operator, etc., in cases of a notice from a trademark right holder, etc.,
alleging that rights have been infringed, it is necessary that the
information alleged to have infringed rights be specified.
Accordingly, the notice submitter shall specify the infringing informationby the following methods when making notice-

15

(1)

With respect to information in questions, the notice submittershall record in the notice form its URL (Universal Resource Locator) andinformation reasonably sufficient for specifying the information inquestion as seen by the online auction business operator, etc. (goods name,identification information of the sender [ID, etc.], publication date andtime, characteristics, etc.).
(2)

The notice submitter shall, in cases where possible, makeillustrations, etc., in a hard copy of the information in question.
(3)

In cases where a online auction business operator, etc., that hasreceived a notice cannot accomplish specification of right infringing
using only the stated information, when additional information forcorrecting the notice form has been requested, the information requestedby the online auction business operator, etc., shall be presented.
(4)

In cases where the notice submitter fails to perform correction

promptly, the online auction business operator, etc., shall communicate
to the notice submitter that taking transmission prevention measures isdifficult because of the inadequacy of the documents.
4

Verification of being Trademark Right, etc., Infringement

Even when a notice identifying infringing information has been made froma trademark right holder, etc., for the online auction business operator,etc., to take transmission prevention measures on the basis that right
infringement has occurred, it is necessary to be able to determine that
trademark right unquestionably was infringed by the distribution of
information.
For this reason, it is necessary that the following content be indicatedin the notice, and the online auction business operator, etc., shall verify
whether it is recorded on the notice form.

p. 11
(1)

Verification of existence of trademark right infringement coveredby the guidelines(a)Statement that trademark right has been infringed

The notice submitter shall record on the notice form that trademark rightwasinfringed(including

information

16

onregisteredtrademark,registration number and reference, designated goods, etc.)(b)

Reason for alleging that trademark right has been infringed

The notice submitter shall record on the notice form that the goods
pertaining to the infringing information are not manufactured, and so on(2)

Verification that the mode of right infringement is covered bythese guidelines
On a basis of the information, etc., in the recorded on the notice form,
the online auction business operator, etc., shall verify the mode of therelevant right infringement is a mode of right infringement covered bythese guidelines (II 2), and also that it is information of goods subject
to transmission prevention measures.
(3)

Verification of not being licensed

The notice submitter shall record on the notice submitter a statement thatno license has been granted to the sender of the information. (In cases
where the notice submitter is the exclusive holder of nonexclusive rightto use, the notice submitter shall record that the original right holderof the trademark right pertaining to the notice has granted no license toanyone other than the exclusive holder of nonexclusive right to use.) The
online auction business operator, etc., shall verify that the statement
has been recorded.

p.12-13
V

Notice through a Reliability Verification Organization

1

Criteria, Scope, etc., of Reliability Verification Organizations

In notices according to these guidelines, in cases where another credible
third party verifies particular evidence by specified credible procedures,without the notice submitter being compelled to present it, verificationof the identity, etc., of the notice submitter can be considered, whenviewed from a social standpoint as well, to have been accomplished.
Specifically, in cases where an organization in a specific relationshipto the notice submitter which satisfies the criteria provided for in 1 (1)of this chapter V (hereinafter referred to as a "reliability verification
organization"), acting on behalf of the online auction business operator,etc., verifies the matters in IV 1, 2, and 4 (identity, being the trademark

17right holder, etc., and being trademark right infringement) in accordancewith the procedures in 2 of this chapter V and attaches documentation, etc.,
to the notice form that this verification was done, it is considered thatthe online auction business operator, etc., can be determined to have been
appropriately verified by verifying the documentation, etc.
(1)

Reliability verification organizations

It is necessary that reliability verification organizations be capable ofappropriately verifying the matters in IV 1, 2, and 4 (identity, being the
copyright holder, etc., and being trademark right infringement) on behalfof the online auction business operator, etc. Accordingly, it is necessarythat reliability verification organizations satisfy the following
requirements.
(a)

Be a juridical person (including organizations not having

juridical personality in which having a representative is provided)(b)

Be capable of appropriately verifying the contents of the rights

held by the notice submitter(c)

Have an adequate record extending over a reasonable period andexpert knowledge relating to trademark right, etc.
(d)

Be capable of appropriately conducting the verification, etc.,

provided for in 2 (1) through (3) in this chapter V
Additionally, organizations that make protection of the rights oftrademarkright,

etc.,

their

principal

objective

are

among

the

organizations specifically postulated as those satisfying requirements(a) through (c) above, but are not limited to these, and also, in order
to be reliability verification organizations, even organizations that makeprotection of the rights of trademark right, etc., their principal
objective must satisfy requirements (a) through (d).
(2)

Explanations, etc. of reliability verification organizations

When sending a verification form to individual online auction business
operators, etc., for the first time, a reliability verification
organization shall communicate its own organization and procedures ofverification, etc., with respect to verification items permitted of theorganization by these guidelines, and in cases where any change thereof
has occurred, shall promptly notify the individual online auction business
operators, etc., regarding the change as well.
Online auction business operators, etc., can request of the reliability
verification organization an explanation of procedures of verification,18

etc., with respect to the verification items permitted of the organizationby these guidelines.
(3)

Certification of reliability verification organizations

For the actual implementation of these guidelines, it is conceivable thata structure be created to conduct examination with respect to reliability
verification

organizations,andpersons

certified

to

fall

under

requirements of (1) (a) through (d) uniformly be treated as reliability
verification organizations of these guidelines. At this time, tocontribute to simple and prompt handling for online auction business
operators, etc., a reliability verification organization list shall be
attached to these guidelines.
(4)

Other

Even in cases of notice from trademark right holders, etc., in cases whereverification of being trademark right infringement, etc., of the trademark
right holder, etc., can be believed sufficient for trusting, judging from
response systems of the trademark right holders, etc., expert knowledge
and record relating to and trademark right, etc., response, etc., at thetime of past notices at individual online auction business operators, etc.,
handling can be similar to cases where verification by an reliability
verification organization exists.
2

Verification by Reliability Verification Organizations

For the items provided for in 1, 2, and 4 of IV (verification, being the
copyright holder, etc., and being trademark right infringement), thereliability

verification

organization

shallrespectively

makeverification by means of the methods of (1) to (3) hereinafter, and recordon the verification form (form D) that the verification was conducted. On
the documentation, the name of the representative of the reliability
verification organization shall be inscribed and a seal shall be affixedusing an official seal, etc. Through this, the online auction business
operator,

etc.,

shall

determinethatverification

wasconducted

appropriately for each item.
(1)

Verification of the identity of the notice submitter (items of IV

1)
Verification shall be done by the following methods(a)Method of identity verification

19

Whether the notice submitter is the person who entrusted his or her own
exercise of rights or whether he or she is his or her own member is verified
by the name and seal on the notice form.
(b)

Handling of electronic mailIn cases by electronic mail bearing an official electronic signature oran electronic signature certified by an accredited certification business
operator under the Electronic Signatures Act, verification is throughinspection of the electronic signature.
In cases of being a member and an ongoing relationship has existed frompreviously, in cases where certain verification by an ordinarily usedelectronic mail address or the like is possible, verification is conductedby another appropriate method.
(2)

Verification that the notice submitter is the trademark rightholder, etc. (items of IV 2)
Verification shall be done by the following methods(a)Verification by the trademark registry, trademark bulletin, orother documentation proving ownership of trademark right(b)

Verification by documentation proving identity as the holder of

exclusive right to use or exclusive holder of nonexclusive right to use(3)

Verification of being infringement of trademark right (items of

IV 4)
Verification shall be done by the following methodsWhen the mode of right infringement is a mode of infringement of trademark
right covered by these guidelines, the notice submitter enters on thenotice form the reason for alleging that trademark right, etc., has been
infringed, the mode of the trademark right infringement, and a method
capable of verifying that trademark right infringement occurred, and on
the basis of this information, etc., the reliability verification
organization verifies that trademark right infringement exists, that themode of trademark right infringement is covered by these guidelines, andthat the information of the these guidelines is subject to transmission
prevention measures.

p. 14
3

Response in Cases where Error, etc., has Occurred in the

Verification Procedures of the Reliability Verification Organization

20

With respect to notices purported to have been made by conducting theverification procedures specified in V of these guidelines, in cases where
the reliability verification organization does not adhere to theverification procedures or an error has occurred in the verification
procedures that causes trust therein to be lost, the reliability of theverification procedures by that reliability verification organization islost. Accordingly, in these cases, until it can be verified that thereliability verification organization has improved the verification
procedures, notice forms from that reliability verification organization
shall not be treated as adhering to procedures pursuant to these guidelines.
Note, however, that regarding the treatment of that reliability
verification organization, this shall not apply in cases where as a resultof examination in the setup for performing examination in 1 (4) it has beenverified that no risk of incorrect procedures being taken again and that
applying these guidelines to the reliability verification organization
hereafter is appropriate.

p. 15
VI

Response by Online Auction Business Operators, etc.

1

Cases where the Notice and Verification Satisfy the Requirementsof these Guidelines(1)

In cases where the notice satisfies the requirements of theseguidelines, the online auction business operator, etc., shall promptly andwithin the limit necessary take measures of deletion, etc., in order toprevent transmission of the infringing information.
(2)

Before taking or after taking transmission prevention measures,the online auction business operator, etc., can notify the sender of theinformation and notice submitter that transmission prevention measures forthe infringing information will be taken or have been taken. In cases where
this notification is made, with respect to the notification to the noticesubmitter, in cases where notice was conducted through a reliability
verification organization, the online auction business operator, etc.,
shallnotifythereliability

verification

21

organization,

and

the

reliability verification organization that has received the notification
shall notify the notice submitter.
(3)

With respect to taking or having taken transmission prevention

measures, in cases where a complaint, inquiry, etc., from the sender has
been made, the online auction business operator, etc., can request
necessary cooperation of the notice submitter or reliability verification
organization.
2

Cases where the Notice and Verification Fail to Satisfy theRequirements of these Guidelines(1)

In cases where a notice fails to satisfy the requirements of theseguidelines, when correction of the notice form, verification form, etc.,
is believed possible, the online auction business operator, etc., canrequest the notice submitter to resubmit or additionally submit necessary
documents, etc. In this case, the notice submitter can resubmit the noticeform or additionally submit necessary documents, etc., in response to therequest from the online auction business operator, etc.
(2)

In cases where the online auction business operator, etc.,

requests resubmission or additional submission of necessary documents,
etc., and where notice was conducted through an reliability verification
organization, the online auction business operator, etc., shall contactthereliability

verification

organization,

and

the

reliability

verification organization that has received the contact shall contact thenotice submitter or the like and resubmit the notice form or additionallysubmit necessary documents, etc.
(3)

In

cases

where

the

noticesubmitterorthereliability

verification organization fails to promptly perform correction, it isdesirable that the online auction business operator, etc., communicate to
the notice submitter that taking transmission prevention measures isdifficult because of inadequate documents.
END

p. 16-17(Form)
Heisei ○○ year ○○ month ○○ day

22

To: [○○ K.K.]
Name or appellation: ○○ ○○seal

Concerning Notice for Measures to Prevent Transmission of Trademark
Information Infringing Trademark Right
Because distribution of the following information published at the URL[http://] administered by your company infringes the trademark right heldby [○○○○ (name or appellation of trademark right holder, etc.)], as
indicated following, based on the "Provider Liability Limitation Act
Guidelines Relating to Copyright," I request that your company takemeasures to prevent transmission of the information as follows-

1.

Address of the notice submitter

2.

Name of the notice submitter

3.

Contact information of the notice submitter

Telephone number
E-mail address
4.

Information for specifying the infringing information

URL
Type or name of the goods
Other characteristic[In the case of display in an online auction,

information such as the displayer ID, date and time of display, etc.]
5.

Right claimed to have been infringed

Trademark right[Enter information helping to specify the trademark right, such as
trademark, registration number, designated goods, etc.]
6.

Reason, etc., for claiming that trademark right has been infringed[Reason for claiming that trademark right has been infringed][□□□□ is my (this company's) registered trademark. I (this company)
have given no permission whatsoever to △△△△ with respect to using the□□□□ registered trademark. Further, although the product information(advertisement material) pertaining to the infringing information is for23

goods similar to goods manufactured by me (this company), the productpertaining to the infringing information is not manufactured by thiscompany.][Statement that the mode of right infringement is covered by the
Guidelines]
The infringing information specified in 4 falls under each of thefollowing(a)For the reasons below, the goods are not authentic.

(i)

The sender of the information admits the goods are not authentic.

(Grounds thereof: )(ii)

The goods are of a type not manufactured by me (this company).

(iii)[Enter reasonable grounds.](b)

For the reason below, this matter falls under acts conducted in

the course of trade.
[Enter the reason for falling under the "course of trade" requirement.](c)

The goods pertaining to the infringing information are identicalor similar to the designated goods of the registered trademark.
(d)

A trademark identical or similar the registered trademark is

affixed to the infringing information.
7.

Case of mode of right infringement not covered by the Guidelines(State the mode of right infringement appropriately and in detail.)
8.

Other matters for reference

Of the foregoing content, documentary evidence is attached for items [5and 6].
Further, the foregoing content is affirmed to be factually correct.

p. 18(Form in the Case of Making Notice through a Reliability Verification
Organization)
Heisei

year

month

day

To: [○○ K.K. (Customer Service Manager)]
Name of the juridical person: ◇◇◇◇

24

Representative ○○ ○○ (name)seal

Concerning Notice for Measures to Prevent Transmission of Trademark
Information Infringing Trademark Right
We, a reliability verification organization under V 1 (1) of the "Provider
Liability Limitation Act Guidelines Relating to Trademark Right," hereby
affirm that, with respect to the content of the notice of measures toprevent transmission of a goods information infringing trademark right,
etc., that [☆☆ K.K.], a member of our organization, made to your company
on the date of Heisei ○○ year ○○ month ○○ day based on the same
Guidelines, verification in accordance with V of the Guidelines was
conducted appropriately with respect to the following items-

1.

Notice submitter ☆☆ K.K. is a member of this organization.

2.

This notice definitely was conducted by ☆☆ K.K.

3.

Notice submitter ☆☆ K.K. is the (hereinafter trademark rightholder, etc., the goods information "☆☆☆☆" on the notice form submitted
to your company. [TRANSLATOR'S NOTE: ENGLISH TRANSLATION IS UNINTELLIGIBLE
DUE TO APPARENT MISSING TEXT IN ORIGINAL JAPANESE]
4.

The trademark right, etc. pertaining to the goods information has

been infringed.
5.

The mode of infringement of the trademark right, etc. in 4 iscovered by the Guidelines.
It is affirmed that the foregoing content is factually correct.
N.B.:

Attach other necessary materials.

END

25