Chapter 3: Comparison Tables

- Tables summarizing comparisons of systems and

practices in each Office

I. General

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

1. Definition of bad faith underthe legal system No definition No definition No definition No definition No definition

2. Timing when bad faith istaken up

①Examination (by ex officio)②Opposition, trial③Counterclaim in nationalinfringement case

①Examination (by ex officio)②Opposition, trial

①Cancellation afterregistration② Counterclaim in nationalinfringement case

①Opposition, trial(invalidation)

①Opposition, trial(cancellation)

3.(1). The earliest stage whenbad faith is taken up Stage of examination Stage of examination After registration of mark Opposition Opposition

(2). Is there any time limit toclaim bad faith ? No time limit No time limit No time limit

5 years, However, no timerestriction for owner offamous trademark in China

At onset of a proceeding, orafter discovery conducted.

4. What is an important timepoint when bad faith is legallyidentified ?

At time of application (alsonecessary at decision) At time of application At time of application At time of application

At time of application of intentto use application, or at time ofadoption of mark

5. Does a subjective elementthat applicant has an awarenessof bad faith relate to judgment

It does It does It does It does It does

6. Rules on burden of proof(1). Who bears

OpponentDemandant

OpponentDemandant

Cancellation applicantDemandant

OpponentDemandant

OpponentDemandant

(2). Presumption It is inferred in considerationof circumstantial evidence.

It is inferred in considerationof circumstantial evidence.

Good faith is presumed unlesscancellationapplicant/demandant

Bad faith is inferred by somefactual actions.

Bad faith may be considered asa factor in a likelihood ofconfusion analysis.

7. Existence of checklist forestablishing bad faith Not exist

Not exist(There are a certainguidelines.)

Not exist Not exist Not exist

Chapter 3: Comparison TablesEach office’s system and practice concerning bad faith filings was compared and summarized in a table.

45

Chapter 3: Comparison Tables

II. Details

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

Does lack of intention of usebecome a reason for rejection orinvalidation ?

YesIt is possible to refuse orinvalidate regardless of badfaith if there is no intention ofuse.

YesIt is possible to refuse orinvalidate regardless of badfaith if there is no intention ofuse.

NoHowever, an indication ofdishonest intention could be, ifbecomes apparent, subsequently,that sole objective of owner wasto prevent third party fromentering the market (CJ judgmentC-529/07 of 11 June 2009, “LindtGoldhase”, Item 44).

No (There’s no provision to excludeapplication with no intention ofuse.)

YesA verified statement of bonafide intent to use must be filed.Examiner will not evaluateintent and will not make aninquiry unless evidence ofrecord clearly indicates that theapplicant does not have a bonafide intention to use the mark incommerce. May be challengedby third party.

i) Text Principal Paragraph of Article3(1) Article 3 Article 52(1)(b) Not applicable

Article 1 (b)Article 44Article 66（a）

ii)At time of judgment standard At time of decision At time of decisionAssessment whether bad faith waspresent back when registeredmark was applied for

Not applicable At time of application

iii)Examination by ex officio oropposition, trial

(1)Examination (by ex officio)(2)Opposition, trial

(1)Examination (by ex officio)(2)Opposition, trial Cancellation (invalidity) trial Not applicable

(1)Examination if no verifiedstatement of intention to use isfiled(2)Opposition, trial(cancellation)

iv)Burden of proof (1)(2)Applicant, right owner (1)(2)Applicant, right ownerParty claiming that other side wasin bad faith, i.e. invalidityapplicant

Not applicable(1)Not applicable toexamination(2)Opponent, Petitioner

1. From The View of “Intent to Use”

46

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

v)Examination standardTrademark ExaminationGuideline, Principal Paragraphof Article 3(1)

Trademark ExaminationGuideline Article 42-2

Guidelines for examination, PartD, Section 2, Sub-heading 3.3 Not applicable

TMEP818（Article1(b) orArticle 44）

TMEP1904.01(c)（Article66(a)）

vi)Specific judgment method

Example 1) Evidence demonstratinguse in cancellation for non-use

Documents allowing to clearlyconfirm trademark user, usingproducts, using trademark anduse period (such as catalog,newspaper advertisements)(Article 50)

Evidential materials showingthat a mark, which issubstantially identical to theregistered one, has been used ongoods/services, which are alsosubstantially identical to thegoods/service of registeredmark within 3 years from thedate when a cancellation actionis filed.

Cancellation of registered markfor non-use is separate action (notbad faith related), which can beraised at end of 5 year graceperiod (CTMR, 51(1)(a)). Badfaith cancellation challengecannot be based on non-use assuch as there is no requirement ofintention to use. However, anindication of dishonest intentioncould be, if it becomes apparent,subsequently, that sole objectiveof owner was to prevent thirdparty from entering the market.

Cancellation of registered mark fornon-use is separate action (not badfaith related), which can be raised 3years after registration of atrademark.

Elements taken intoconsideration for bona fide useof mark in the ordinary courseof trade:・Amount of use・Nature or quality of trade・Typical use in particularindustry・Any other probative facts

Example 2) Whether the followingfacts and situations ((1)～(7)) aretaken into consideration whenintention of use of trademark isjudged

(1)Applicant designates a broadrange of goods and services.

Principal Paragraph of Article3(1) is applied as there’s arational doubt in use oftrademark or its use intention.

The examiner can consider thatthere is a rational doubt aboutwhether an applicant has used amark or had a intention to use.

Intention to use not required byCTM system. No bad faith basedon the length of the list of goodsand services designated .

No answer

It is necessary to submit averifed statement of intention touse each good or service. Maybe refused if no statement isfiled, see answer above.

47

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(2)Applicant applied for a largenumber of unregistered trademarksof other person.

There’s a judgment thatapplicant was not identified touse the trademark or to haveany intention to use. “RCTAVERN” case judgment(Intellectual Property HighCourt, 2012 (Gyo Ke) No.10019)

(Article 42-2, TrademarkExamination Guideline)When a KIPO examiner has adoubt that the applicantion wasfiled for the purpose of prioroccupation and/or interferingwith a third party’s trademarkregistration without theintention of use, the examinercan issue a provisional refusal.In this case, the examiner canpresume the subjective intentionsuch as prior occupation byreferring to not only thepertinent application, but alsothe history of the applicant’strademark applications and/orregistration and/or the scope ofthe applicant’s current business.

Intention to use not required byCTM system. However, largenumber of applications for trademarks of others can be a strongindication that owner of registeredCTM had dishonest intentionwhen applying for it.

An element to be considered in badfaith.

An examiner will not evaluatethe good faith intention to use.Third party may challengebased on lack of intent to use ingood faith. Judges have foundpattern of filing for other'sparties marks shows lack ofintent to use.

(3)Individual person applied forgoods and services which requiredlarge scale facilities such as generalmerchandise store.

Principal Paragraph of Article3(1) is applied as there’s arational doubt in use oftrademark or its use intention.

(Article 42-2, TrademarkExamination Guideline)A KIPO examiner can issue aprovisional refusal. In this case,the examiner should considerthe nature of goods/services,market situation, etc. as awhole; however, the examinershould not regard the scope ofthe possible business conductedby individual person toonarrowly.

Intention to use not required byCTM system. However, anindication of dishonest intentioncould be, if it becomes apparent,subsequently, that sole objectiveof owner was to prevent thirdparty from entering the market.

No answer

An examiner will not evaluatethe good faith intention to use.There’s a case example that lackof intention of use in good faithwas identified (HONDA case).

48

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(4)When services etc. prohibited bylaws are designated

Principal Paragraph of Article3(1)　is applied as there’s arational doubt in use oftrademark or its use intention.

(Article 42-2, TrademarkExamination Guideline)A KIPO examiner can issue aprovisional refusal on acondition that an individualfiles an application for morethan two non-closely relatedservices such as hospitalservices and legal services, forwhich law requires licenses.

Intention to use not required byCTM system. However, anindication of dishonest intentioncould be, if it becomes apparent,subsequently, that sole objectiveof owner was to prevent thirdparty from entering the market.

No answerThis may be a factor to supportlack of intention to use in goodfaith.

(5)When intention to interfere withmarket is clear

This may be a factor to be takeninto consideration.

The intention of marketinterference can be consideredto determine whether there isbad-faith or not on thecondition that the intention ofmarket interference includesfiling a trademark applicationfor the purpose of prioroccupation and/or interferingwith a third party’s trademarkregistration without theintention of use.

Intention to use not required byCTM system. However, anindication of dishonest intentioncould be, if it becomes apparent,subsequently, that sole objectiveof owner was to prevent thirdparty from entering the market.

No answerThis may be a factor to supportlack of intention to use in goodfaith.

49

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(6)When trademark registration wascancelled due to non-use

Insufficient to identify badfaith.

Insufficient to identify badfaith.

Insufficient, in itself, to find forbad faith. Insufficient to identify bad faith. Insufficient to identify bad

faith.

(7)Others Nothing, in particular Nothing, in particular

Repetition of application of samemark to prevent cancellation fornon-use may suggest dishonestintention of CTM owner.

(1)-(6)are totally condideredtogether with other elements toidentify bad-faith

Each case is fact specific, and ajudge would weigh evidencecarefully.

vii)Examination example, decisionexample, judgment example

There’s “RC TAVERN” casejudgment (Intellectual PropertyHigh Court, 2012 (Gyo Ke) No.10019).

istar logitics case (Case No.2010Heo4397, rendered by thePatent Court on Oct. 7, 2010)

There are, inter alia, the followingjudgments.・「Lindt Goldhase」（CJ judgmentof 11/06/2009, C-529/07）

・「Pollo Tropical CHICKEN ONTHE GRILL」（GC judgment of01/02/2012, T-291/09）

・「BIGAB」（GC judgment of14/02/2012, T-33/11）

・「Pelikan」（GC judgment of13/02/2012, T-136/11）

Not applicable

The following are someexamples of judgments.・Honda Motor Co. , Ltd.Versus Friedrich Winkelmann,90USPQ2d1660 (TTAB2009)・Nintendo of America VersusAdar Golad, OppositionNo.91178130,2011WL2360099(TTABMay 31,2011) [notprecendential]

50

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

Is there any legislation for refusingan application (or invaliding theregistration) on the basis of unfairintention?

Yes Yes

Dishonest intention of CTMowner is an element of particularrelevance in the overallassessment.

Yes

Bad faith is an element toconsider in a likelihood ofconfusion analysis. Bad faithmay also be considered in aclaim of misrepresentation ofsource claim under Section14(3).

i) TextArticle 4(1)(xix)Article 4(1)(vii)

Article 7(1)(xii)Article 7(1)(xviii)Article 23(1)(iii)

Article 52(1)(b) Article 32

Case law （In re E.I.DuPontDeNemours & Co., 476 F.2d1357 (CCPA 1973); PolaroidCorp. v. Polarad Elecs.Corp.,287 F.2d 492(2d Cir. 1961)

ii)At time of judgment standard

At time of decision (Article4(1)(vii))At time of application anddecision (Article 4(1)(xix))

At time of application [Article7(1)(xii)]At time of decision [Article7(1)(xviii) and 23(1)(iii)]

Assessment whether bad faith waspresent back when registeredmark was applied for

At time of application At time of application

iii)Examination by ex officio oropposition, trial

(1)Examination (by ex officio)(2)Opposition, trial

(1)Examination (by ex officio)(2)Opposition, trial Article23(1)(iii) shall apply onlywhere an opposition has beenfiled by the owner, orinformation has been provided

Cancellation (invalidity) trial Opposition, trial Opposition, trial forcancellation

iv)Burden of proof Burden of proof is on the sidewho insist on unfair purpose.

Burden of proof is on the sideto insist on unfair purpose.

Party claiming that other side wasin bad faith, i.e. invalidityapplicant

Burden of proof is on the side whoinsist on unfair purpose.

Party claiming bad faithOnce burden established, shiftsto Applicant or registrant.

2. From The View of “Unfair Intention”.

51

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

v)Examination standardTrademark ExaminationGuideline, Article 4(1)(vii) and(xix)

There are some standards.（Article 26 and Article 42)

Guidelines for examination, PartD, Section 2, Sub-heading 3.3 There are some standards. No standard

vi)Specific judgment method

Whether the following facts andsituations ((1)～(5)) may be takeninto consideration to judge unfairpurpose of trademark

(1)Business cooperation and somerelations such as purchase request

This is taken into considerationwhen a bad faith is identified.

A relation between applicantand trademark right owner isone element to identify badfaith.

A relationship between the partiesbefore application is one relevantelement when assessing bad faith.Compensation request, in itself,and in the absence of otherfactors, does not establish badfaith.

This is one element to identify a badfaith.

This is taken into considerationwhen assessing bad faith.

(2)Applicant designates a broadrange of goods and services.

This is taken into considerationwhen a bad faith is identified.

One element to identify a badfaith according to the judgment(Case No. 2007Heo2626)

No bad faith based on the lengthof the list of goods and servicesdesignated .

No answerThis may be evidence of badfaith or lack of bona fide intentto use.

52

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(3)Applicant applied for a largenumber of unregistered trademarksof other person.

This is taken into considerationwhen a bad faith is identified.

This may be one element whenthe Patent Court identifies a badfaith.

A large number of applications fortrade marks of others can be astrong indication that owner ofregistered CTM had dishonestintention when applying for it.

This is one element to identify a badfaith.

This may be an evidence of badfaith.

(4)Others

・Well-Known of other person’strademark・Creativity of well-knowntrademark・Preparation state of businessof well-known trademark owner・Concern to impair credibility,reputation and customerattraction of well-knowntrademark

・Famousness of well-knownand famous trademark・Creativity of well-knowntrademark・Preparation state of businessof applicant・Whether designated goods andservices are same or similar, orpresence/absence of economicrelation

Repetition of application of samemark to prevent cancellation fornon-use may suggest dishonestintention of CTM owner.

・Commonality of sales route ofgoods and services and businessareas of both of applicant and rightowner・Presence/absence of previous otherdispute between applicant andtrademark right owner・Presence/absence of recognition ofprior user’s trademark・Presence/absence of previousexchange of (organizational)internal personnel betweenapplicant and trademark right ownerof dispute trademark・Presence/absence of whetherapplicant of trademark has apurpose to obtain unjust profit afterregistration・Advertisement causingmisunderstanding・Presence/absence of strongcreativity by other person’strademark

The TTAB or a court has broaddiscretion to consider anynumber of factors that couldprovide circumstantial evidenceof bad faith, such as bad faith indisclosure of evidence duringdiscovery.

53

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(5)Is any relationship between theoriginal owner of the trademark andapplicant required?

This is not essential, but takeninto consideration when unfairpurpose is identified.

This is not necessary, but ifthere’s any relation between theboth, a bad faith may be highlyrecognized.

This is not a condition for afinding of bad faith, but a relevantfactor to be taken intoconsideration in the assessment

One factor to identify a bad faith.This is not a requirement, butmay be a factor to consider indetermining bad faith.

vii)Examination example, decisionexample, judgment example

There are the followingjudgments.・Asrock case (IntellectualProperty High Court, 2009(Gyo Ke) No. 10297)・KYOKUSHIN case（Intellectual Property HighCourt, 2008 (Gyo Ke) No.10032）

・DUCERAM case(1998 (Gyo Ke) No. 185)・Kranzle case(2005 (Gyo Ke) No. 10668)

There is the followingjudgment.・「TOM & JERRY」（Case No.2007Heo2626）

・「LVY」（Case No.2013Hu2484）

・「BarbieQueen」（Case No.2013Hu1986）

There are, inter alia, the followingjudgments.・「Lindt Goldhase」（CJ judgmentof 11/06/2009, C-529/07）

・「Pollo Tropical CHICKEN ONTHE GRILL」（GC judgment of01/02/2012, T-291/09）

・「BIGAB」（GC judgment of14/02/2012, T-33/11）

・「Pelikan」（GC judgment of13/02/2012, T-136/11）

There are the following judgments.①“黑面蔡” Trademark oppositioncase (No. 1611206)②KUREYON Shinchan Figuretrademark dispute case (No.1033444)③“ERE” Trademark oppositioncase (No. 4809737)

There are the followingexamples:・Estrada v. Telefonos deMexico, 447F.App'x197(Fed.Cir.2011)・Carr v. Garnes,OppositionNo.91171220,2010WL4780321(TTAB Nov. 8, 2010 [notprecedential]

54

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

Are trademark application in badfaith rejected or invalidate byprotection of well-known andfamous trademarks?

Yes Yes

There’s no separate law. But,level of distinctiveness, reputationof mark of cancellation(invalidity) applicant and CTMright owner is taken intoconsideration when bad faith isidentified.

Yes Yes

i)Text

Article 4(1)(x)Article 4(1)(xv)Article 4(1)(xix) Article 7 (1)(xii) Article 52 (1)(b) Article 13

False Association：Article 2(a)Article 43 (a)Likelihood of confusion：Article2(d)Dilution：Article 43 (C)Misrepresentation of Source14(3)

ii)At time of judgment standard At time of application anddecision At time of application

Assessment whether bad faith waspresent back when registeredmark was applied for

At time of application At time of application

iii)Examination by ex officio oropposition, trial

(1)Examination (by ex officio)(2)Opposition, trial

(1)Examination (by ex officio)(2)Opposition, trial Cancellation (invalidity) trial Opposition, trial Trial for opposition and

cancellation

3. From The View of “Protecting Well-Known/Famous”

55

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

iv)Burden of proof

Burden of proof is on the sideto claim that the applicationfalls under Article 4(1)(x), (xv)or (xix).

Burden of proof is on the rightowner of well-known andfamous trademark.

Party claiming that other side wasin bad faith, i.e. invalidityapplicant

Burden of proof is on the rightowner of trademark.

Opposer, challengerTrial demandant (Challenger)

v)Examination standardTrademark ExaminationGuideline, Article 4(1)(x),(xv)and (xix).

There are some standards.（Section26)

Guidelines for examination, PartD, Section 2, Sub-heading 3.3

Trademark Law, Article 14Regualations for theImplementation of the TrademarkLaw, Article 3

No standard

vi))Specific judgment method

Whether the following facts andsituations ((1)～(11)) are taken intoconsideration in judging elements ofwell-known and famous trademarks.

(1)Definitions of “well-known”,“famous” and “reputation”Standard and evidence of well-known famousness

・No definition of each phrase・For “well-known” and“famous”, facts ofadvertisement activities andtrademark use period are totallytaken into consideration.

・No definition of each phrase・For “well-known” and“famous”, facts ofadvertisement activities andtrademark use period are totallytaken into consideration.

・“Well-known” (CTMR 8(2)(c))is same as Paris, Article 6 bis."Reputation" (CTMR 8(5)).・Kindred notions. Threshold forestablishing "well-knowncharacter" or "reputation" is, inpractical terms, usually the same.・Level of distinctiveness,reputation is taken intoconsideration when bad faith isassessed, but is not a prerequisitefor a finding of bad faith.

It is stipulated that facts ofadvertisement activities andtrademark use period are totallytaken into consideration onexamination standard.

・ “Well-known” is identifiedwhen likelihood of confusion isjudged. “Famous” is identifiedwhen dilution is judged (widelyrecognized by generalconsuming public).・There’s no specific standard of“Reputation”・For “well-known”, amongother factors, advertisementactivities and trademark useperiod are taken intoconsideration

56

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(2)If well-known trademark isregistered in areas where applicationin bad faith is made, but is not usedfor some periods, are someprovisions of bad faith applied ?

May be refused due to similaritywith original trademark.

May be refused due to similaritywith original trademark.

Potentially yes; see GC judgmentof 8 May 2014, T-327/12,"Simca"

Likely to be refused due tosimilarity with original trademark

If any mark is registered withthe USPTO and not used forthree years in the United States,there is a presumption that themark has been abandoned;therefore, the registration maybe subject to cancellation ongrounds of abandonment.However, in certain limitedcircumstances where a markretains “residual” goodwill afternon-use, courts are unlikely tofind in favor of a new userwhose intent was to confuseconsumers by capitalizing onthe previous owner’s reputation.

(3)Laws for trademarks which arewell-known and famous only inforeign countries

Article 4(1)(xix) Article 7(1)(xii) No specific law for foreignfamous marks. No laws No law or no practice

(4)Judgment and evidence of “Well-known” and “famous” of trademarkswhich are well-known and famousonly in foreign countries

Trademark ExaminationGuideline, Article 4(1)(xix)

・Article 7 (1)(xii) was revised(“easily” is deleted) and thestandard of famousness wasrelaxed.・There’s a decision by SupremeCourt that judgment torecognize famousness oftrademark in foreign countryshould be respected (case No.2008Hu3131）

It is necessary for cancellation(invalidity) applicant todemonstrate that CTM rightowner knew or must have knownabout the existence of thecancellation applicant's markoutside the EU. "Well-known"character may help to establishthis, depending on the specificcirucmstances of the case.

No laws No law or no practice

57

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(5)Do well-known and famoustrademarks protect up to non-similargoods and services ?

They are protected if anylikellyhood of confusion(Article 4(1)(xv)) or unfairpurpose (Article 4(1)(xix)) arerecognized.

There are some cases in whichwell-known and famoustrademarks are protected up tonon-similar goods and services,such as「LVY」（Case No.2013Hu2484）or「BarbieQueen」（Case No.2013Hu1986）

In addition to the situation ofsimilar or identical goods andservices, a finding of bad faithmay also be justified if the CTMwas applied for in respect ofgoods and services, which,although dissimilar, belong to aneighbouring market.

Yes.Paragraph 3 of Article 13provides protection on non-identical or dissimilargoods/services for well-knowntrademarks that are registered inChina.

Under Section 2(d), protected ifthere is a likelihood ofconfusion. The higher thefame, the higher the likelihoodof confusion. Under dilution,there may be tarnishment ordilution if no similarity ofgoods or services.

(6)Co-relation between extent ofrecognition of trademark and burdenof proof in bad faith

・Bad faith unnecessary (Article4(1)(x),(xv))・There’s any relation betweenwell-known and unfair purpose(necessary to prove unfairpurpose) (Article 4(1)(xix))

Extent of famousness oftrademark is one element toevaluate bad faith.

Extent of recognition of mark isjust one element in theassessment. Proving recognitiondoes not relieve the cancellation(invalidity) applicant of hisburden of proof as regards badfaith in general.

Together with otherelements,depending on the claim

To determine likelihood ofconfusion, bad faith or fame isnot necessary.But if present, both are factors ajudge will weigh in a likelihoodof confusion analysis.

(7)Level of distinctive character oftrademark (such as coined word)

One element to take intoconsideration when likelihoodof confusion or bad faith isjudged

One element to evaluate a badfaith

One element in the evaluation ofbad faith. One element to consider

Taken in consideration whenthe likelihood of confusion isdetermined, and becomescircumstantial evidence whenjudging bad faith.

(8)When identical or similar tohouse mark of other person

This is one element to take intoconsideration when bad faith isidentified.

This is one element to take intoconsideration when bad faith isidentified.

One element that might be takeninto consideration in theevaluation of bad faith.

No answerPossible to be an element ofconsideration when determiningbad faith.

(9)Presence/absence of exclusionperiod to claim bad faith No period No period No period 5 years, but no time restriction for

well-known trademark.

A likelihood of confusionclaim, with an assertion of badfaith, may be brought within 5years of registration. There isno time limit for a claimbrought on fraud or falseassociation.

58

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

(10)If a mark which is claimed to beapplied in a bad faith acquires well-known characteristic or reputation,is there any relation ?

NoTime of judgment standard istime of decision or trialdecision, therefore, if well-Known or reputation is lateracquired, there’s no relationwith invalidation trial request.

YesWARAWARA case （Case No.2012Hu672）cited Yes No answer

No, the fame of the trademarkthat is alleged to have been filedin bad faith is not relevant.

(11)Other reasons No reason No reason No reason No reasonFame of prior trademark plays adominant role in a case oflikelihood of confusion.

vii) Examination example, decisionexample, judgment example

There are the followingjudgments.4-1-10 case example・Computer world judgment（Tokyo Supreme Court 1991(Gyo Ke) No. 29）

4-1-15 case example・L’Air du Temps judgment（Supreme Court 1998 (Gyo Hi)No. 85）

4-1-19 case example・iOffice 2000 judgment（Tokyo Supreme Court 2001(Gyo Ke) No. 205）

・S design judgment（Intellectual High Court 2009(Gyo Ke) No. 10220）

・MARIE FRANCE trialdecision（1995 Trial No. 25958）

・M.A.C・MAKEUP ARTCOLLECTION Oppositiondecision（1998 Opposition No. 92239）

There is the followingjudgment.・「TOM & JERRY」（Case No.2007Heo2626）

・「LVY」（Case No.2013Hu2484）

・「BarbieQueen」（Case No.2013Hu1986）

There is, inter alia, the followingjudgment.・「Lindt Goldhase」（CJ judgmentC-529/07 of June 11, 2009）

There are the following judgments.② 「金灶」（金竈）Trademarkopposition case (No. 4481864）②「雅虎YAHOO」Trademarkopposition re-examination（rejection decision dissatisfactiontrial） case（No. 1649903）③“神州三号”Trademarkopposition case (No. 3217926）

The following is one example:・L’Oreal S.A. v. Marcon,102USPQ2d1434 (TTAB2012)

59

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

Is there any legislation for refusingan unfair application (or invalidingthe registration) filed by agent orrepresentative(related to Aricle 6 section of theParis convention)

Yes

KIPO has no such a law.However, if such an applicationis considered to be filed underthe bad-faith, such as free-rideon the fame of a third party, theapplication can be rejected.

Yes Yes Yes

i)Text Article 53 -2 Article 8 (3) CTMRArticle 53(1)(b) CTMR Article 15

Article １ (a)(1),Article 1(b), Article 44, 37C.F.R. Section 11.18

ii)At time of judgment standard At time of application anddecision At time of application At time of application Application date

iii)Examination by ex officio oropposition, trial Cancellation trial －

①Opposition against application②Cancellation/Invalidity againstregistered mark

Opposition or trial

①Examination (ex parte) ifownership contradicted in therecord.②Opposition or cancellation

4. Unfair Application filed by Agent or Representative

60

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

iv)Burden of proof Burden of proof is in principleon demandant. －

Opponent or invalidity applicant.For "negative facts", burden ofproof reversed, e.g. agent toproove that he had ownersconsent

Burden of proof is on trademarkright owner.（Opponent, demandant）

Opponent, demandant

v)Examination standard No standard －Guidelines for examination, PartC, Section 3 There are some standards TMEP1201.06(a)

vi)Specific judgment method See vii) －See OHIM Guidelines forexamination, Part C, Section 3

Refer to the examination standard inv) See TMEP1201.06(a)

vii)Examination example, decisionexample, judgment example

There is the followingjudgment.・Chromax case

－See OHIM Guidelines forexamination, Part C, Section 3

There are the following judgments.② 「BRUNO MANETTI」Trademark opposition case (No.3083605）②“头包西灵Toubaoxilin”Trademark opposition case (No.3304260）③“安盟SecurID” Trademarkopposition re-examination（No.

The following is one example.・Lipman v. Dickinson,174F.3d 1363,1372(Fed.Cir.1999)

61

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

Is there any legislation for refusingan application (or invaliding theregistration) as bad-faith on thebasis of certain factors?(such as copyright)

・Name of other person No

・Reasons forinvalidity/cancellation (CTMR53(2))・Different invalidity ground fromthat of bad faith (CTMR52(1)(b))

Yes

Copyright or right of publicity:not a ground for opposition orcancellation;party may file a civil lawsuit ongrounds of copyrightinfringement or right ofpublicity;trade name:possible to file anopposition, cancellation, orlawsuit; Right to a name or likeness(false association): ex parte,opposition, cancellation.Refusal ex parte if name of aliving individual and no consentprovided.

i)TextArticle 4(1)(viii)（Reference）Article 29 Article 7(1)6

(Reference) Article 53 Article 53 (2) CTMR Article 32 Article 2(a)Article 2(c)

ii)At time of judgment standard At time of application anddecision At time of application In principle, any time after

registration of the CTM. At time of application Application date

iii)Examination by ex officio oropposition, trial

(1)Examination (by ex officio)(2)Opposition, trial

(1)Examination (by ex officio)(2)Opposition, trial Invalidity/cancellation action Opposition, trial (1)Examination (ex parte)

(2)Opposition, cancellation

iv)Burden of proofBurden of proof is on the sidewho claims that the applicationfalls under the Article 4(1)(viii).

Burden of proof is on therightful owner of well-known

and famous works of copyright,person's name and trade name

Invalidity applicant Burden of proof is on the side oftrademark right owner.

(1)Examiner(2)Demandant

5. From The View of The Relationship with Other Rights

62

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

v)Examination standard Trademark ExaminationGuideline, Article 4(1)(viii)

Trademark ExaminationGuideline Article 20

Guidelines for examination, PartD, Section 2, Sub-heading 4.3 onArticle 53(2) CTMR

There’s a standard in Article 32.See aboveTMEP Setion 813, TMEPSection 1203.03(c).

vi))Specific judgment method See v) Same as aboveGuidelines for examination, PartD, Section 2, Sub-heading 4.3 onArticle 53(2) CTMR

See the answer in v) Same as above

vii)Examination example, decisionexample, judgment example

There is the followingjudgment.・SONYAN case

There is the followingjudgment.

・「2NE1」（Case No.2012Hu1033）

・「KT」（Case No.2009Heo1705）

Guidelines for examination, PartD, Section 2, Sub-heading 4.3 onArticle 53(2) CTMR

There are the following judgments.①「季世家1915」FigureTrademark opposition case(No. 7968391）②“Figure”Trademark oppositioncase (No. 1563706）③「洪河」Trademark oppositioncase (No. 1965652）④「余進華ＹＵＪＩＮＨＵＡ」

Trademark opposition case (No.3266232）⑤FigureTrademark opposition case(No. 3308372）⑥「易建联」商標係争案件

（ No. 3517447）⑦Figure商標異議復審案件（No. 1004698）

The following are caseexamples.・In re Richard M. Hoefflin,97USPQ2d 1174(TTAB2010)・In re Jackson Int’l TradingCo., 103USPQ2d 1417(TTAB2012)

Viewpoints other than the above None － None None None

6. Any other views except for 1.- 5.

63

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

III. ProceduresＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

1. Information submission system

i)Means that any person other thanan applicant offers information to anexaminer

Information provision system(Trademark Act, Ordinance,Article 19)

Allowed to offer informationand oppose.

Bad faith is a reason for invalidityand not related to procedure forexamination or opposition (exceptfor specific opposition rulesagainst mark registered by anagent of the owner withoutowner's consent, Article 8(3)CTMR).

There’s no provision to offerinformation. However, it is allowedto submit documents.

"Letter of protest" may besubmitted. If accepted, it willbe forwarded to examiner.

ii)Handling of Information by anexaminer

Reasons for refusal may benoticed based on informationproviding fact.

Reasons for refusal may benoticed based on informationoffering fact. Further, KIPOhas strengthened its efforts toprevent the bad-faith filingapplication from beingregistered since August 2013,indicating that the bad-faithfiling application could berejected by ex officioexamination even withoutinformation provided by a thirdparty.

Same as above

It can be referred as work of theTrademark office, however,reception of this kind of documentis not a legal procedure.

There’s no provision to offerinformation. However, it ispossible to submit documents."Letter of protest" is unofficialprocedure. It may be taken intoconsideration at discretion ofexaminer.

2. Integration of procedures inopposition, trial

They are integrated (Patent Act,Article 154(1) shall apply toTrademark Act, Article 56(1),and Article 43-10(1))

They are integrated (TrademarkAct, 77-23)

They may be treated as relatedcases. They are integrated. They are integrated.

64

ＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

IV. OthersＪＰＯ ＫＩＰＯ ＯＨＩＭ ＳＡＩＣ ＵＳＰＴＯ

Other special instructions No other special instruction No answer No other special instruction No answer

・Judgment by defaultRefer to Trademark TrialAppeal Board Manual (TBMP)Article 312.01

・Suspension of applicationpending resolution ofopposition or cancellation.37C.F.R. Article 2.83(c).In reDirect AccessCommunications(M.C.G)Inc,30USPQ2d 1393(ComerPats.1993)

65