Newsletter
SERVICE MARKS CAN BE REGISTERED TO DEFEND TRADEMARKS
Article 22 Paragraph 2 of the Trademark Law provides that a person in whose name a trade-mark is registered may have the same mark reg-istered as a defensive trademark in respect of goods which are not identical or similar to those for which the principal mark is designated, but are of a related nature. In the case of a well-known trademark, such other goods are not limited to those of a related nature. According to the legislative intent of this provision, a defen-sive trademark does not need to be used in order to maintain its validity. Hence the registration of defensive trademarks is a highly effective, ap-propriate method for preventing plagiarism and other attempts to take improper advantage of another's trademark.
However, according to the past practice of the trademark authority, it only allowed trademarks to be defended against trademarks, or service marks against service marks. In other words, service marks could not be used to defend trademarks or vice versa. This was a real defi-ciency. Due to the growing connection between trademarks and service marks, for example in areas such as foodstuffs and catering services, computers and computer software design ser-vices, or communication products and commu-nication services, there is a genuine need to mutually defend trademarks and service marks. In consideration of this, the IPO decided at an internal meeting on 25 February 2000 to allow mutually defensive registration of trademarks for designated products and service marks for des-ignated services.
In view of the IPO's decision, trademark owners should now apply to register their marks defen-sively in respect of services associated with their goods. Such defensive registration may extend the scope of protection afforded to their trade-marks to cover related services and to prevent possible plagiarism or any other act of unfair competition. Owners of well-known trademarks may also consider applying for defensive regis-tration covering all types of services, so as to obtain the greatest possible protection.