Q) I own a kitchen utensil design company based in Norway and I am about to sign an agreement to have a new product I have invented manufactured by a Japanese business partner. The product will be exported back to Europe but will not be sold in Japan. This being the case, should I worry about protecting my brand name in Japan, and are there any other IP-related issues I should be concerned about?
A) The short answer is 'yes'.
On the issue of your brand name, merely applying it to products manufactured in Japan for export purposes could well land you in trouble in certain circumstances. Even if the goods are not intended for sale in Japan, such use may still be deemed to infringe conflicting third-party rights on the Japanese trade mark register. As well as the risk of being sued for infringement, your goods could be seized by customs when you try to export them.
It is therefore important to check for potential infringement risks in Japan before proceeding. You should also urgently look to secure your own trade mark protection in Japan, particularly as this is a country where trade mark rights are granted on a 'first-to-file' rather than 'first-to-use' basis.
Taking these steps will be of additional benefit to you in forming an effective licence agreement with your Japanese business partner and in reassuring them that they are free to manufacture your goods without risk of being sued.
Much will depend on the nature of your brand name and whether it is inherently registrable as a trade mark in Japan. Similarly, whether there are any other IP concerns will largely depend on the nature of the product - for example, whether it incorporates any patentable features.
I suggest you urgently seek advice from a trade mark or patent attorney with relevant international experience. They should not only be able to assist you in relation to Japan, but also more generally.
Originally published in the Financial Times, July 2013
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.