In this column, we will discuss the importance of obtaining trademark rights in taking measures against counterfeit goods. In the course of business, it is common practice to register trademark rights to differentiate your products from those of other companies. However, it is important to note that trademark rights are only effective in the country where they are registered. You may want to consider obtaining trademark rights in the countries where you need them, not only for business differentiation, but also as a measure against counterfeit products.
NHK Spring Sales representative for anti-counterfeit products
What is a counterfeit product? What are trademark rights?
We will now consider how we should implement anti-counterfeiting measures.
First of all, let us consider what counterfeit products are in the first place. For the purposes of this column, however, since trademark infringing products account for the majority of IP infringing goods (*1), we will consider trademark infringing products to be counterfeit products.
Trademark right is an exclusive right granted to a trademark used for goods or services, and its effect extends not only to the same trademark, designated goods, etc., but also to a similar range. On the other hand, since trademark rights are effective only in the country where they are registered, a trademark right registered in Japan is effective only in Japan. In other words, if the counterfeit goods are found in Japan, you can seek redress based on your own trademark rights.
Reference:
1 Japan Patent Office, Ministry of Economy, Trade and Industry, “Necessity of Regulations on Cross-border Trade of Counterfeit Goods,” “Actual Import Injunctions by Intellectual Property and Smaller Lots of Infringing Goods” (2022-09-01)
Importance of acquiring trademark rights in areas where counterfeit goods are most often found.
Few counterfeit products are found in Japan. The majority of counterfeit damage occurs overseas. If you find your company's counterfeit products in foreign markets, how can you seek redress? The basic premise is whether or not you have trademark rights to your product in the country where the counterfeit product was found. If you have trademark rights, you can sue for trademark infringement. If the company has already entered the country, it may have trademark rights, but if the product is being sold in the country through unintentional parallel importation by a third party, the company may not have trademark rights in the country. However, since the product is so widely imported, it is likely to be in demand in that country, and as long as demand is expected, it may only be a matter of time before counterfeit damage occurs. At the very least, it will be very difficult to seek redress if you have not obtained trademark rights in the country concerned.
Obtaining trademark rights is an effective countermeasure against counterfeit products.
Have you ever heard of the term “trademark omission application (blasphemous trademark)”? Simply put, this is when a trademark is applied for and registered by someone else who does not have the right to use it. If this happens, not only will you not be able to obtain trademark rights in your home country, but you will also not be able to use your trademark in that country. Considering the acquisition of trademark rights in the country in which you intend to expand your business will help you to succeed in doing business in that country and will help you to fight counterfeit goods.
In my next column, I would like to share with you how to seek remedies if you find counterfeit products in a certain country.