Doshisha Oxford Lecture Series: Bad Faith Trademark Filings in Japan

Bad faith trademark filing is a type of trademark filing filed with a nefarious purpose by taking advantage of another person’s trademark that has not yet been registered in the country concerned.

Trademarks should not be registered based on such malicious filings, and this is a common issue all over the world. The Five Trademark Offices (China, Europe, Japan, Korea, United States) have been conducting a project together for survey, research, and making a report on the issue in 2014, which has since been revised in 2022.

In Japan, an unfair filing of another person’s well-known trademark can be rejected by some provisions, but it could be difficult to reject such a filing if the trademark is not yet known. In Europe, the legal treatment regarding the issue is different from that in Japan.

The lecture will firstly overview the trademark system in Japan comparatively to the UK. They seem relatively similar, despite the historical steps for development being different. Secondly, how the Trademark Act in Japan treats bad faith filing, compared with the UK.  The system of provisions is quite different between the UK and Japan. Whereas in the UK there is a wide range of the concerned provision, in Japan there is a much narrower one. We are now focusing on how to interpret provisions to improve Japanese law.  Finally, the lecture will look at a recent case law in Japan.      

Ryoko Iseki is a Professor of Law at Doshisha University in Kyoto, Japan.  She is a managing director for the Japan Association of Industrial Property Law.  She is a member of Intellectual Property Committee in Industrial Structure Council of Ministry of Economy, Trade and Industry.  She has written on aspects of intellectual property law, inter alia, patent law, and trademark law. She was a research scholar at the University of Michigan Law School in USA from 2005 to 2006.