1. It is not permitted for the adverse party to a
trademark right infringement case to claim a defense under the provisions of
Article 104-3, paragraph (1) of the Patent Act as applied mutatis mutandis in
Article 39 of the Trademark Act on the grounds that the applicability of
Article 4, paragraph (1), item (x) of the Trademark Act to the registered
trademarks constitutes a reason for invalidating the trademark registrations,
after a lapse of five years following the dates of registration of the
establishment of the trademark rights without filing a request for a trial for
invalidation of the trademark registrations by reason of the applicability of
the said item, unless the trademark registrations were obtained for unfair
competition purposes.
2. It is permitted for the adverse party to a
trademark right infringement case to claim a defense of abuse of rights against
the exercise of the trademark rights against such party, on the grounds that
the relevant registered trademarks fall under Article 4, paragraph (1), item
(x) of the Trademark Act because they are identical with, or similar to, such
party’s trademarks which are well known among consumers as indicating goods or
services involved in the party’s business at the time of application for
registration of the trademarks, even after a lapse of five years following the
dates of registration of the establishment of the trademark rights without
filing a request for a trial for invalidation of the trademark registrations by
reason of the applicability of the said item and whether or not the trademark
registrations were obtained for unfair competition purposes.