Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Operators of online auction business or shopping malls have been trying to avoid trademark infringement on their sites by providing information to goods sellers.  However, unfortunately, quite a bit of trademark infringements can still be found on the sites.  And trademark right holders sometimes face difficulty in negotiating or communicating with the sellers.  Then, what specific measures (besides enforcing a trademark right directly on a seller) can be taken in Japanese online markets? 
Here are some tips on this issue.

Deletion of display information

(1) Transmission prevention measures under Provider Liability Limitation Act

If a seller dares not delete his display information on an auction site or a virtual shopping mall site disregarding the request from a trademark right holder, etc., Provider Liability Limitation Act can be applied.  Under the act, if there was a reasonable ground for an operator to believe that the right of a trademark right holder, etc. was infringed without due cause by the information distribution by a seller, the operator shall promptly delete the display information. 
“Provider Liability Limitation Act Guidelines Review Council” provides the guideline that shows a pragmatic procedure of deletion of display information by an operator.

Detail information is provided in the pdf below:
http://www.telesa.or.jp/consortium/provider/pdf/guidelines_trademark.pdf


(2) Sending a written warning or a complaint to operators

A contract between an operator and a seller usually includes a stipulation that a dispute concerning a trademark right shall be resolved between the parties concerned.  However, the IP high court affirmed liability of an operator for a trademark infringement on their site.
The court indicated in H22 (ne) 10076 (an infringement lawsuit) that in the situation where i ) an operator finds a trademark infringement or there is a reasonable ground for the operator to believe that the trademark right is infringed without due cause, and 2) the infringing information has not been deleted within a reasonable period of time, the operator should accept liability of the infringement.  In other words, if a right holder sends a written warning or a complaint to the operator, they will be compelled to delete the infringing information from their site to avoid being served injunction or liability for damages.

Disclosure of ID information of an infringer

The information which displays an infringing product on an auction site or a virtual shopping mall site is often from an unnamed source.  If the infringement of the right is very obvious with a picture uploaded on the site, a trademark right holder, etc. can demand an operator disclosure of ID information of the seller under Provider Liability Limitation Act.
However, in many cases, operators reject demands by right holders on basis of lack of obviousness of the infringement; enforcement of the right to demand disclosure of ID information has not been easy under the current act.

Please refer the following pdf. for further information:
http://www.telesa.or.jp/consortium/provider/pdf/guidelines_senderinformation.pdf


End of report

HIROTA, Miho
AIGI Intellectual Property Law Firm