It is vital for an open source project to properly register and maintain its trademarks. As long as the trademarks are properly registered and maintained, everyone including developers and its users can feel secure to use the project name and marks. For example, a Linux distribution vendor can differentiate its services and products to build its brand by properly registering and maintaining its trademarks regarding its distribution.
On the other hand, there have been many cases of open source projects that suffered a situation in which their trademarks were improperly registered or used. For example, we have seen many people emerge around the world including Japan, who tried to register “Linux” as their trademark to monopolize. It is said that the open source community ended up spending tens of millions of yen to deal with this problem properly. Even in recent years, disputes often arise when the name of a well-known project gets registered as a trademark by an inappropriate third party.
Also, some open source licenses restrict the use of trademarks when distributing modified software, and in such a case, it is hard to say that there is a unified understanding of what is allowed in order to prove that it is a modification of open-source software. As this shows, registering and maintaining trademarks is a critical and inevitable issue for the development of free and fair open source trademark use. However, trademark-related rights, unlike copyrights, do not arise automatically from the creation of the work, but instead, the trademark needs to be applied for and registered at the Patent Office in each country. It is not a simple task for the project administrators to register and subsequently manage the trademarks themselves. In order to carry this out properly, it requires a suitably qualified lawyer or attorney to handle. Moreover, the project may have to pay a significant amount of money until the registration and possibly more so for the maintenance afterward. On top of that, the trademark rights system grants the right holders an enormous right to exclusively and monopolistically use the trademarks, and therefore trademark maintenance and management demand legal expertise.
On that account, Open Source Group Japan has launched Open Source TradeMark Initiative (OTMI) with the participation of patent attorneys and lawyers, as a project that provides support to open source projects on registering and properly maintaining their trademarks. Our aim is to create a better environment in which all parties can feel secure to use trademarks freely and fairly. Open Source TradeMark Initiative will undertake the following initiatives.
1. Provide support, including financial support, for raising awareness of and registering trademarks
We will conduct awareness activities on trademark acquisition for open source projects and provide assistance to help them acquire trademarks in Japan and overseas.
2. Create standard trademark licensing guidelines for the community
We will create and make available to the public the standard trademark licensing guidelines that ensure everyone, from developers to users involved in open source projects, that they can freely and fairly use the software, and the guidelines will also clarify that the protection for common names and marks is given to projects.
3. Actively intervene in disputes
We will proactively provide information to the Patent office on cases of improper trademark applications that seem likely to be derived from the name of an open source project. In addition, if we determine that such registered trademark is inflicting disadvantage or can possibly be detrimental to open source activities, we will investigate the legitimacy of the trademark, and in some cases, depending on the findings, we may consider filing an opposition or an invalidation trial against the registered trademark to the Patent Office, in cooperation with the open-source project,
4. Acquire, maintain, and manage trademarks commissioned and donated by the community
If commissioned by the open source community or requested by business entities, Open Source Group Japan will register project names or marks in Japan and overseas on behalf of the projects and will work together with the projects to create trademark licensing guidelines to promote free use of trademarks by the community as a whole.
- Hideo Ogura (Attorney)
- Kiyoshi Kurihara (Patent attorney)