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Old 25th June 2007, 04:16 AM
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Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Can the katakana equivalent of a generic kanji be made into a trademark? Recently, i acquired a big term katakana equivalent of a kanji that is used by an established japanese website and company.

Without revealing the name, say take example, the word for "insurance". The hiragana form is ほけん, and the katakana form is ホケン, can an insurance company call itself "ホケン.com Insurance Co. Ltd.", and if i got ホケン.com, they can claim my name?? They own the romaji.com, e.g. hoken.com (example only).

I'm now deciding on monetization, and ironically, i'm hesitant to use the generic term because of that website/company, although i am very tempted to - the jp ovt for kana runs into hundreds of thousands.

Any advise from our japan resident friends?

Last edited by touchring; 25th June 2007 at 04:27 AM..
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Old 25th June 2007, 04:26 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

I think you need to look at exactly how they represent the name of their company brand.
Like for example
I own 派遣.com (temp job)
this is a really big generic
But if a company branded themselves as ハケン.com (in the logo or actual company name) & owned haken.com but I only had the katakana version. I would think they would have some right to it. The katakana version is not the main version & more like a brand if normally people use only kanji to write the term.
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Old 25th June 2007, 04:30 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Thks. Well, i guess i got to put a pic of a vegetable on my website. My kana translates into a vegetable also!! I guess you would have guess the word by now. What top kanji also translates into a vegetable. :p

Btw, there are also a few other websites that use the kana in their website names. E.g. china insurance - 中国ホケン.com, and not related to ホケン.com, but i guess i shouldn't take the chance for now.

I know that URDP is very particular about contextual infringement - as long as the topic is different, it is harder for them to prove mischief.
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Old 25th June 2007, 05:42 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Under normal circumstances a trademark is a visual representation. If it is not visually confusingly similar then there is not a problem.

Japanese law seems to be quite bizarre, but even in the West any dictionary word can be TM'ed where it is used in an arbitrary context. Apple for example. You cannot, however, register Apple as a TM for a food business. TM's are only valid in the context in which they are used, and dot Com's cannot be trademarked unless you own them. These normal rules do not seem to be applied in Japan.

I don't think using Kana equivalents of Kanji are going to get you into more trouble than anything else in Japan. Dot JP seems to be a bit of a risk in this respect, period, but only time will really tell. Much will depend on you willingness and ability to defend any aggressive legal actions. This is one of the main reasons dot Com will remain popular. If you were talking a dot com registered in the US, and you are not resident in Japan, you could pretty much tell them to sling their hook.
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Old 25th June 2007, 06:14 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Other Japan locals would have to give their opinion but it's not about jp or com.
A generic that is usually in kanji, & the company uses the term in katakana & owns the latin version, it's more of branding if they have a trademark with the katakana version.
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Old 25th June 2007, 06:30 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Quote:
Originally Posted by Olney
Other Japan locals would have to give their opinion but it's not about jp or com.
A generic that is usually in kanji, & the company uses the term in katakana & owns the latin version, it's more of branding if they have a trademark with the katakana version.

I agree, it will not be worth the risk, even for a dot com. I think i'll talk about vegetables.
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Old 25th June 2007, 06:31 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Quote:
Originally Posted by Olney
Other Japan locals would have to give their opinion but it's not about jp or com.
A generic that is usually in kanji, & the company uses the term in katakana & owns the latin version, it's more of branding if they have a trademark with the katakana version.
Sorry Olney, but it is very much so, as it comes down to legal jurisdiction and the way the law would be applied in each case.

In the West in theory at least, and particularly if you have the resources to defend, no claim can reasonable made against you for registering a dictionary word, unless you also have blatantly used that domain for infringing somebody else's TM.

As Edwin so eloquently argued, if you have to face the music under Japanese jurisdiction, then things are clearly a lot more complicated. This will apply specifically to dot JP and Japanese Residents.
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Old 25th June 2007, 07:01 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

How come both situations contain dot coms but it affects registering dot jps?
Both me & Edwin are Japan residents we both have to abide by Japanese law this has nothing to do with jp or com. Some people also say things in private areas for reasons. Anyone can go through a WIPO.

Touch asked if the katakana version is the same as using the kanji in terms of it being a generic...
The answer in my view is no, not in all cases. There are some terms that are widely used in kanji, hiragana, & katakana & many that are only mainly used in kanji.
It's not the Wild west over here. You can't hear part of one situation & apply it to a domain extension.

If it's your opinion about jps then it's that... Things that can happen here can also happen in the west.
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Old 25th June 2007, 07:21 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

If a Japanese firm uses the katakana version of a kanji for its corporate brand. And that katakana version has no common usage besides the reference to that firm. You are pretty much hosed. In my non-legal opinion.

Q: Do you register domains you don't know the meaning of?
A:No, well, sometimes but eventually I know what they mean....

Q:How about in this case, did you know it is the name of a large Japanese company?
A: Well, now I know. I didn't then.

Q:So do you believe that you have a right to continue holding the domain name that is a trademark of a Japanese company?
A: Well it has other meanings too.

Q: No actually, it does not. It has no other meanings. There are sounds out in space that sound the same that have other meanings. Your domain names spelling has no other reference.
A: Hmmm.
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Old 25th June 2007, 07:36 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Well, that case, to be on the safe side, the answer should be yes. Thks everyone for your comments.
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Old 25th June 2007, 08:43 AM
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Lightbulb Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

This is an interesting question which has been raised.

I would have thought everyone is to a degree is correct.

a) The word could be used as a brand - as long as it is not for Japanese swords.
b) This means that a lot of companies could have this word as a brand (and I suspect it is used for everything from insurance to noodles and is one of the most common brands in Japan - guessing of course).

Interesting point will be how does the registrar and do the courts feel on this one.
I think if you had a real product or service associated / attached to this name - you would be in a stronger position (assuming that you choose something where a trademark is not already held for the name).
E.g. ホケン califlowers (can't imagine it is used for this) or perhaps even Japanese swords would be safer.

However Rubberduck does also have a very good point - at some point a legal challenge can be taken (always can)... and at that point it will help to be located in the country where the domain is registered (as that way you could lower the discussion costs - also if Japanese courts are biased to locals (this I am not sure on if they are or not)... I know other courts in Asia have shown this tendency... but this each needs to judge for themselves).

But if things go to court - we know that it can get very expensive and a "point of law" will be the deciding factor (and I am sure we all have no idea what obsure points of law could be pulled out in something like Japanese law - as we have not studied precedence etc. in that area).
Therefore the position I always take really with branding & trademarks, is do you have the financial ability to defend against a trademark attack, once this IDN is valuable enough for someone to want to use legal force to claim it?
If not, then, do you have a valid precedence where you were the first company to use the brand - namely is there proof of product packaging etc. going back 10 years prior to anyone else's trademark in the same area.

If the answer is no to both - most likely you would lose it in court if it is pushed to an expensive legal battle.

However I have one question....
Saying all this I understood from brief reading of some registrar rules that a lot of ccTLD have a limited period in which claims due to trademarks can be made - isn't this true? (I thought I saw it for .hk domains is why raise this question).

Has anyone looked at the rules for the main IDN ccTLDs and gTLD and made a list of what the length of time before claims can't be made for trademark reasons is?

What is the thoughts on the courts overturning what is a clear registrar rule?
Namely are those rules where they exist, not protective, as they can be over-ridden by the courts anyway?

Comment & discussion would be good - cheers, Asiaplay

PS: personally I would never use a dictionary word as a trademark for this very issue - it gets into a grey area (and I believe that those who win in the courts are ultimately generally those with the most money to spend or in some other countries in Asia, the connections or local presence to sway court opinion - opps controversial but true in some other Asian & countries with developing legal systems).
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Old 25th June 2007, 09:08 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Nice, there are many consideration but in the end, unlike you are as rich as Swartz or Shilling (damn i can't get the german surnames right!), what we will not do in the end is to spend money on a lawyer to defend a $10 IDN with minimal PPC.

From my experience thus far, the best thing to do is to carefully consider what to do with the domains. To park or not to park or to develop a minisite.

If there's a similar trademark, the most stupid thing to do is to use the same topic as the trademark website. Then, in that case, you will need a berry to defend for you!
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Old 25th June 2007, 06:04 PM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

No one said Japan was the Wild West but TM law is clearly different than in the West, and it is also highly likely that a dispute over a dot jp would be arbitrated by a Japanese panel, which would have a different perspective on matters than a US panel, whether or not local bias was shown.

If you have a dot com registered in the US, that is where the jurisdiction would be regardless of language. Language doesn't imply sovereignty. Nation states don't own languages.

Quote:
Originally Posted by Olney
How come both situations contain dot coms but it affects registering dot jps?
Both me & Edwin are Japan residents we both have to abide by Japanese law this has nothing to do with jp or com. Some people also say things in private areas for reasons. Anyone can go through a WIPO.

Touch asked if the katakana version is the same as using the kanji in terms of it being a generic...
The answer in my view is no, not in all cases. There are some terms that are widely used in kanji, hiragana, & katakana & many that are only mainly used in kanji.
It's not the Wild west over here. You can't hear part of one situation & apply it to a domain extension.

If it's your opinion about jps then it's that... Things that can happen here can also happen in the west.
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Old 26th June 2007, 05:39 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

the TM laws are different in Japan, but this doesn't mean that the TM law doesn't apply for .com. It is still possible to lose a generic if the owner can be proved to be cybersquatting on a confusingly similar website that has TM.

Yes, Swartz or was it Dicker? managed to get away with elephant.com, but few IDNs can justify a BlueBerry.

Last edited by touchring; 26th June 2007 at 05:59 AM..
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Old 26th June 2007, 07:19 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

If it's a .com, a UDRP assault will be done in the language of the legal agreement you agreed to during registration.

If the name is worth defending, you go for a 3 person panel.

If it's still worth defending after a UDRP loss, the complainant agreed to the jurisdiction of the home state/country that the Registrar resides in when they decided to go for UDRP (the registrar is only legally required to stop the UDRP-ordered name transfer from a local court order).

So moral of the story is pick a registrar for your Japanese com/net's that is in a jurisdiction that isn't abusive to registrant's right. Canada is probably a good choice

This, of course, does not apply to Japanese residents - they're screwed for a different reason.
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Old 26th June 2007, 08:14 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Quote:
Originally Posted by Drewbert
If it's a .com, a UDRP assault will be done in the language of the legal agreement you agreed to during registration.

Damn, should have registered in chinese. Is there a way to change the registration agreement?
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Old 26th June 2007, 08:18 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Nope.

Unless you transfer it to another registrar, and use a chinese language agreement there when you submit the transfer request.
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Old 26th June 2007, 08:32 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

Quote:
Originally Posted by Drewbert
Nope.

Unless you transfer it to another registrar, and use a chinese language agreement there when you submit the transfer request.

Are you very sure that the UDRP assault will be done in the language of the legal agreement you agreed to during registration?

I can transfer to ename.cn. How about if they decide to use WIPO? Sorry, if i sound silly, not really familiar with these domain legal stuff.
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Old 26th June 2007, 08:59 AM
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Re: Legal Q: Can the katakana equivalent of a generic kanji be made into a trademark?

http://www.wipo.int/amc/en/domains/d...2005-0870.html

6. Discussion and Findings

A. Language of the Proceedings

The Complaint was filed in the English language. On August 24, 2005, the Center sent a notification to the Complainant concerning the Language of Proceeding. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed Domain Name is Chinese. Accordingly, the Center requested the Complainant to provide the Center with satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English.

In response to the Center’s notification, the Complainant submitted a Chinese translation of the Complaint on September 1, 2005 to the Center.

Pursunant to the Rules, paragraph 11, and after considering the circumstances of the present case, the Panel decides that the proceeding should be conducted in the English language and should proceed henceforth in the English language.

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the attention of the Respondent. In particular, the Panel notes that the Complainant has promptly submitted a Chinese translation of the Complaint to the Center within the stipulated time frame. The Respondent has then been notified of the Complaint and its contents in the Chinese language. In the Complaint, the Complainant has alleged that the Respondent has no legitimate rights to the disputed Domain Name which is confusingly similar to the Complainant’s registered trademark and that the Respondent has registered and used the domain name in bad faith. However, the Respondent has failed to respond to the Complainant’s contentions. The Panel finds that the Respondent’s failure to respond to the Complaint might not be the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response to the allegations contained in the Complaint lodged by the Complainant.
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