Protecting Foreign Brands: Article 4(1)(xix) and the Fight Against Bad Faith

Japan’s primary defence against trade mark squatters targeting foreign brands is Article 4(1)(xix) of the Trademark Act. This provision refuses registration to marks that are identical or similar to a well-known foreign mark when the applicant has “unfair purposes” — such as free-riding on the foreign brand’s reputation, blocking the legitimate owner’s entry into the Japanese market, or extracting a purchase price for transferring the registration. Crucially, this article protects marks that are well-known abroad, even if they are not yet known in Japan.

The Legal Basis

Article 4(1)(xix) provides: “No trademark shall be registered if the trademark is identical with, or similar to, a trademark which is well-known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of another person, if such trademark is used for unfair purposes.”

The statute defines “unfair purposes” as the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes.

The “Well-Known Abroad” Standard

One of the most powerful features of Article 4(1)(xix) is that it protects marks that are well-known in even one foreign country, without requiring fame in Japan itself. According to the JPO’s Examination Guidelines, the mark must be well-known in at least one country other than Japan, but it is not required to be known worldwide.

This makes Article 4(1)(xix) significantly more accessible to foreign brand owners than provisions that require domestic fame. A brand that is well-known in its home market can invoke this article even if it has no presence in Japan.

Proving “Unfair Purposes”

The foreign brand owner must demonstrate that the Japanese applicant filed with unfair intent. Evidence may include:

• Knowledge of the foreign mark: Evidence that the applicant was aware of the foreign brand, such as prior business dealings, industry exposure, or the mark’s international fame.
• No legitimate commercial reason: The applicant has no independent business justification for the mark and no connection to the relevant industry.
• Pattern of targeting foreign brands: A history of filing marks that copy multiple well-known international brands.
• Demands for payment: Evidence that the applicant has offered to sell or transfer the registration to the foreign brand owner.
• Filing for related goods or services: Choosing goods or services closely connected to the foreign brand’s business, suggesting an intent to exploit the brand’s reputation.

Article 4(1)(xix) in Practice

This provision is used in both opposition and invalidation proceedings:

• Opposition: Filed within two months of the mark’s publication in the Official Gazette. The JPO conducts a documentary examination.
• Invalidation: Filed after registration. For Article 4(1)(xix) grounds, the invalidation request must generally be filed within five years of the initial registration date.

The Beyond Meat case illustrates the provision’s application. A Japanese individual filed the Katakana version of “Beyond Meat Burger” for meat products. The JPO cancelled the registration under Article 4(1)(xix), finding that the applicant’s initial designation of meat products — the very goods associated with the American plant-based meat company — demonstrated an intention to free-ride on Beyond Meat’s goodwill.

Interaction with Other Anti-Squatting Provisions

Article 4(1)(xix) operates alongside other provisions that combat bad faith:

• Article 4(1)(x): Refuses marks similar to another person’s well-known mark in Japan (requires domestic fame, broader scope of protection).
• Article 4(1)(xv): Refuses marks likely to cause confusion with another person’s business (broader confusion test).
• Article 4(1)(vii): Refuses marks likely to cause damage to public order or morality (occasionally used for egregious bad faith).
• Unfair Competition Prevention Act: Provides civil remedies against use of marks that are identical or similar to well-known or famous indications.

Strategic Recommendations

• File proactively: The best defence against squatting is to register your mark in Japan before entering the market. Japan’s first-to-file system rewards early action.
• Monitor the JPO Gazette: Watch for conflicting applications during the two-month opposition window.
• Document your international fame: Maintain organised evidence of your mark’s reputation in your home market and internationally. This evidence is essential for Article 4(1)(xix) proceedings.
• Register your Katakana mark: Squatters often target the Katakana version of foreign brands. Register it yourself to close this avenue.

Common Mistakes

• Assuming you need Japanese fame: Article 4(1)(xix) protects marks known in even one foreign country. Domestic fame is not required.
• Waiting until market entry: By then, a squatter may have already registered the mark. File early.
• Failing to gather evidence of the applicant’s intent: Unfair purposes must be proven. Collect evidence of the applicant’s background, filing history, and any contact or demands.
• Relying solely on Article 4(1)(xix): Combine this provision with other grounds where available, such as Article 4(1)(x) if the mark is also well-known in Japan, or Article 4(1)(xv) for broader confusion arguments.

Evidence Preparation for Foreign Brand Owners

To successfully invoke Article 4(1)(xix), foreign brand owners should maintain an organised evidence portfolio including: trade mark registration certificates from the home country and other jurisdictions, sales and export data showing the brand’s commercial reach, advertising materials and media coverage from the home market, evidence of international awards or recognition, and any communications with the Japanese applicant. The JPO and the courts evaluate the totality of the evidence, so a comprehensive package is far more persuasive than isolated documents.

Additionally, the Unfair Competition Prevention Act (UCPA) provides a complementary civil remedy. If a squatter actually uses the mark in Japan, the foreign brand owner may bring a civil action under the UCPA to stop the use and claim damages, provided the original mark qualifies as a “well-known goods or business indication.” This dual-track approach — using Article 4(1)(xix) at the JPO and the UCPA in court — provides comprehensive protection.

Key Takeaway

Article 4(1)(xix) is one of the most foreign-brand-friendly anti-squatting provisions in any major jurisdiction. By protecting marks that are well-known in even one foreign country, it offers a genuine defence for brands that have not yet entered Japan. However, prevention is always better than cure: proactive filing in Japan, including Katakana versions, remains the most reliable strategy against bad faith applicants.