There are three main sources of law in Japan which protect the source indication component of commercial identities. They are: the Shouhyou hou (Trademark Law), the Fusei kyousou boushi hou (Unfair Competition Prevention Law), and the provisions of the Commercial Code which relate to the registration of trade names. The protections provided by these three sources of law are not entirely exclusive of each other. Used effectively, the dual objectives of obtaining prospective protection of newly introduced source indications and of preventing the erosion of the goodwill associated with pre-existing ones can be achieved.

The Trademark Law
Trademarks are perhaps the most commonly used indications of commercial source. They are addressed in detail by the Trademark Law. Unless indicated otherwise, the word "trademark" as it is used herein will also refer to service marks. Under the Trademark Law a trademark may take the form of "characters, signs, three-dimensional shapes or any combination thereof, or any combination thereof with color" which are or are to be used with goods or services in the course of trade.⁽¹⁾

Obtaining Protection of Trademarks:
Time priority in seeking registration is the major factor which enables one to exclude other potential users of a trademark in Japan. In terms of the time frame for actually obtaining registration, an application will typically be approved in two to three years from the date of filing if it is not contested. Electronic filing procedures have been created to streamline the application process. Neither current use nor the intention to make future use of a mark in commerce is a requirement for obtaining registration.

The following (among other) information must be included in any application for registration of a trademark in Japan:⁽²⁾

(a) The applicant's name (and, for companies, the representative's name), address and place of incorporation;

(b) The specific "International Class(es)" in which registration of the trademark is desired. Also, the subclasses of goods and/or services in relation to which use is to be registered must be designated, including any desired limitation to specific goods and/or services contained in a subclass.

The Japanese Patent Office has implemented its own version of the International Classification System of Goods and Services provided for under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957). This classification system consists of 45 classes. Japan abolished what is now referred to as its Former Japanese Classification System (which consisted of the 34 Former Japanese Classes) on April 1, 1992. These are two distinct classification systems and marks sought to be registered in relation to particular goods and/or services in a particular Class in the International Classification System not infrequently require searches and/or examination in relation to goods and/or services in a number of different Former Classes.

In actuality, there have been four previous classification systems under the Trademark Law. They were implemented in 1899, 1909, 1921 and 1959, respectively. Trademark registration holders who filed applications before March 31,1992 have been required to apply for reclassification of the goods and/or services designated in those registrations. If a registration is renewed subsequent to the appropriate reclassification date, it will be valid for the next ten years without being reclassified, however, it may not be renewed again.⁽³⁾

As a result of 1996 harmonizing amendments, it is not necessary to file a separate application if registration is sought in more than one International Class. There are, however, additional fees for each Class beyond the first in the application.

In terms of registering a mark for use in relation to retail or other so-called "sales services", the Japanese Patent Office has stated a view that sales services may not be designated in an application. Instead, a trademark should be registered for use in relation to the specific goods to be sold by its user. An application for registration of a service mark for use in relation to retail or other general sales services will not be granted registration;

and

(c) Prints of the trademark sought to be registered. It is not possible to amend the form of a mark once an application has been submitted to the Patent Office.

Rights Based on Registration:
The holder of the rights in a registered mark has the right to preclude the use in Japan of identical or similar trademarks in relation to goods and/or services which are the same as or similar to those designated in the registration, unless another party makes at least one of a number of specified showings.⁽⁴⁾ This assumes (to the extent that a subsequent application has been filed) that the date of filing for the application containing the registered trademark is before the date of filing for the application containing the trademark of a party precluded from use. Of course, priority is assessed the same way between two applications (Trademark Law art. 8[1]).⁽⁵⁾

The criteria for obtaining registration of a mark, assuming procedural compliance, are negative rather than positive. That is, all trademarks are eligible to receive registration, unless they satisfy one or more disqualifying criteria. For this reason, registrability is discussed in the following section in the context of the grounds for successfully opposing registration.

Generally speaking, similarity of goods and/or services is rather narrowly assessed. For the most part, their scope of similarity is limited to the literal wording of their designations in registrations and/or applications. That is, the similarity of two given marks will usually come into issue only if identical goods and/or services have been designated. Thus, a carefully selected designation of goods and/or services in an application can sometimes allow a mark to gain registration where it would otherwise be unregistrable because of its similarity to another registered mark.

Mere use of a mark in commerce without any attempt to register can establish time priority and rights to use. However, the mark must either become widely known,⁽⁶⁾ be such that confusion would result if another party's mark were registered (This, however, would likely require that the mark precluding registration be widely known),⁽⁷⁾ or fall under the protection of the "anti-free-ride" provision discussed below.

Defensive Measures:
A party may oppose the registration of a trademark (in relation to some or all of the designated goods and/or services) within two months of its publication in the Patent Office's Official Gazette.⁽⁸⁾ Trademarks are published subsequent to being approved for registration. As stated above, grounds for successfully opposing a trademark's registration are essentially the same as those available to the Patent Office for denying it registration.

The criteria which prohibit registration include non-distinctiveness (however, distinctiveness may be acquired through use),⁽⁹⁾ similarity to governmental or other official symbols, similarity to a pre-existing widely known mark, similarity to a previously registered mark, likelihood of misleading or confusion, unregistrability for other technical reasons,⁽¹⁰⁾ similarity to a previously applied for mark,⁽¹¹⁾ prior cancellation for misleading use of the mark⁽¹²⁾ and the applicability of Patent Law article 25 (Enjoyment of rights by aliens).⁽¹³⁾

Subsequent to the opposition period, along with several other grounds, a party may seek invalidation of a trademark on fundamentally the same grounds allowed for successfully opposing it.⁽¹⁴⁾ Invalidation must be sought within five years for grounds under Article 3, some grounds under Article 4(1), and grounds under Article 8(1)(2) and (5).⁽¹⁵⁾

In obtaining registration, opposition and cancellation proceedings, and actions for infringement, issues relating to similarity of trademarks frequently arise. Similarity of trademarks is assessed based on their overall appearance and their pronunciation in Japanese.

With regard to appearance, the prominence of a component of a composite trademark can be emphasized to favorably tip the scales in the making of a determination on the issue of similarity. Color in and of itself can also be an important factor in assessing the similarity of the appearance of trademarks. On this subject, article 70, paragraph 1 of the Trademark Law provides:

The references to "registered trademark" in Articles 25, 29, 30(2), 31(2), 34(1), 38(2), 50, 52bis(1), 59(i), 64, 73 and 74 shall include trademarks which are similar to the registered trademark and would be considered identical if they had the same coloring.

The listed articles are titled: (Effects of trademark right), (Relationship with another's patent right, etc.), (Rights of exclusive use), (Rights of non-exclusive use), (Pledges), (Presumption, etc. of amount of damage), (Trial for cancellation of trademark registration), (Trial for cancellation of trademark registration), (Restriction on effects of trademark right restored by retrial), (Registrability of defensive marks), (Indication of existence of trademark registration) and (Prohibition of false marking), respectively. Yet, one must also consider that paragraph 3 of this same article provides:

The references to "trademark similar to the registered trademark" in Articles 37(i) and 51(1) shall not include trademarks which are similar to the registered trademarks and would be considered identical if they had the same coloring.

The two referenced articles are titled (Acts deemed to be infringement) and (Trial for cancellation of trademark registration due to misuse).

These two paragraphs of article 70 appear to be in conflict. The conflict can, perhaps, be explained away to some extent as a differentiation under the Trademark Law of the affirmative rights relating to a registrant's own use of its registered trademark from a registrant's prescriptive rights limiting others' use of its registered trademark or similar trademarks. Yet, this conceptualization is workable only if applied rather loosely.

The established interpretation apparently is that if color is sufficient to render two otherwise similar trademarks readily distinguishable, then article 70 does not apply to eliminate color as a consideration. For simpler designs, color may be sufficiently distinguishing. Conversely, if a design is complex, a difference in color alone would not be determinative in judging similarity.

In terms of similarity determinations based on sound, an example might serve to explain best. A Roman alphabet mark applied for as "RANCH HOUSE" would likely have a scope of similarity dictated by the Japanese syllabary reading "RAN-CHI-HA-U-SU". Proper anticipation of the Japanese syllabary reading to be assigned a Roman alphabet mark by the Patent Office can be problematic. To obviate the category of issues which can arise, the Patent Office will not necessarily apply the syllabary reading suggested by a syllabary component of a composite trademark when that syllabary component is intended to correspond to a more prominent Roman alphabet component.

One ground for unregistrability which is set out in article 4(1) may be of particular interest to companies foreign to Japan. It is the comparatively new anti-free-ride provision. It was the result of a 1996 amendment to the Japanese Trademark Law which became effective on April 1, 1997.

That article currently allows action to be taken against a registration where it has been obtained for unfair purposes, such as to misappropriate a widely known foreign trademark, to create a barrier to entry in Japan for the owners of a widely known trademark or to free-ride on the commercial recognition of a widely known foreign trademark.⁽¹⁶⁾ The party seeking relief bears the burden of establishing the occurrence of one of these prohibited acts. This approach does not apply to marks whose applications were filed before the effective date of the amendment.

In pursuing defensive action under article 4(1)(xix), if it can be shown that the allegedly injured party's mark is "widely known" (generally taken in Japan domestically to be slightly greater than a 50% recognition level among the relevant market, although application of this standard will differ in an international context) in the United States or elsewhere on a national (or, perhaps, in the case of the U.S., a regional) level, the holder of the rights in the original mark will seemingly have the exclusive right to the use (registered or otherwise) and the preclusion of use in Japan of all marks similar thereto. This entitlement would arise from the date on which the original mark became widely or "well-" known.

Any required showing of being "widely known", whether in the context of anti-free-riding or otherwise, is subjectively assessed by the Patent Office. It can be made with consumer or retailer marketing surveys, advertising programs and materials, photographs and other documentary evidence establishing the extent of the mark's foreign or domestic renown.

Success in an anti-free-ride action, of course, depends a great deal on the amount of and weight (in the context of the Japanese marketplace) which can be given to the evidence produced. In spite of the wording of the provision, the greater the presence the petitioner's mark has had in Japan, the greater the chance of success will be. In effect, if there has been no public awareness whatsoever of the mark in Japan, a sufficient showing will likely be more difficult to make.

Yet, another defensive measure which can be taken against an offending mark is cancellation. Cancellation of another party's registration is available on the following two grounds, among others:

1. Non-use: After a party's mark has been registered for three years, a demand for cancellation based on non-use may be filed. A demandant may seek partial cancellation (down to the level of individual sub-Classes within each single International Class) in relation to specific goods and/or services in a registration.

   If the holder of the registration has not used its mark in relation to the goods and/or services for which cancellation is sought within the three years preceding the demand, then the registration will be cancelled in relation to those goods and/or services. The holder of the registration has the burden of proof to establish commercial use within the relevant three year period.⁽¹⁷⁾

   Given that these are the criteria for cancellation, it should be noted that applicants ought to strategically consider the preservation of their rights in a mark in preparing their designations of goods and/or services in applications. However, if there is any doubt about use in relation to the goods and/or services in a particular International Class, an applicant will generally benefit by being overly rather than underly broad in making designations at the sub-Class level in applications. An overly broad designation's conflict with a pre-existing application or registration is then the more immediate risk for applicants in this regard.

2. Intentional Infringement: A demand for cancellation may be filed where there is intentional infringement, particularly where such infringement is designed to be misleading as to the quality of goods or to create confusion as to their source.⁽¹⁸⁾ Cancellation under this provision results in a five year ban on registration of the same or similar marks by the intentionally infringing party.

Remedies and Sanctions:
Counterfeiting is not distinguished as a separate form of infringement.⁽¹⁹⁾ Orders are available to abate infringing conduct.⁽²⁰⁾

A party whose trademark rights have been infringed will also have the right to a civil action for damages. If infringement of trademark rights is found by a court to have occurred, the trademark registration holder's damages will be presumed to be the amount of profits derived by the infringing party through its infringement.⁽²¹⁾

In lieu of presumed damages, an infringed party may seek the difference in his actual income and the amount of income he would have received from the use of the mark but for the infringement.⁽²²⁾ Damages in excess of either of the two preceding types may also be sought.⁽²³⁾

In addition, although rarely invoked, there are criminal sanctions under the Trademark Law. Under article 78, infringement by a natural person may be punished by a fine of up to 5,000,000 yen or up to five years imprisonment with labor. Article 79 makes fraud by a natural person in obtaining a trademark registration punishable by a fine of up to 3,000,000 yen or up to three years of imprisonment with labor. Article 80 allows for the imposition of these same penalties where a trademark has been falsely identified as being registered. For infringement, legal persons may be subject, in accordance with article 82, to penalties additional to those imposed on the responsible natural persons of up to 150,000,000 yen. For the other violations discussed in this paragraph, a second imposition of monetary sanctions up to 100,000,000 yen is available, again, in addition to the sanctions applied to the natural persons who carried out the conduct involved.

The Unfair Competition Prevention Law
The protection afforded the source identification component of commercial identities by Japan's Unfair Competition Prevention Law is broader in scope than that of the Trademark Law. Various forms of misrepresentation as to the source, origin or nature of goods and/or services are prohibited by this law. Trade names, the appearance of packaging etc., and product configurations, as well as trademarks themselves, are protected (Unfair Competition Prevention Law arts. 2[1], 2[2], 2[3]). Where trademarks are involved, a trademark registrant's rights in the use of its registered trademark cannot be superseded by a party making the required showings for an act of unfair competition under the Unfair Competition Prevention Law.

With regard to "indications of goods etc." (a term that includes names, trade names, marks, containers and packaging), in order to receive protection against another party making commercial use of an identical or similar indication, a claimant's indication must be "widely known" among consumers inside Japan and confusion among consumers must be a result of the unremedied violative conduct.⁽²⁴⁾ If the violator uses a famous, rather than widely known, indication of another as its own, consumer confusion need not be proven.⁽²⁵⁾

Internet domain names and Web site content can be treated as "indications of goods etc." under the two provisions of the Unfair Competition Prevention Law mentioned in the preceding paragraph.⁽²⁶⁾ Widely known or famous domain names, their variants, and Web site content are seen as capable of being used to commercially identify a business and, thus, are subject to the protections of articles 2(1) and 2(2).

Product configurations can be protected as an aspect of commercial identities, as well. During the first three years of sale, the imitation of distinctive product configurations for commercial use by a competitor is prohibited.⁽²⁸⁾

For companies not yet established in Japan, it may be useful to note that article 2(10) of the Unfair Competition Prevention Law includes within the definition of unfair competition the making of an indication in relation to goods which is likely to mislead as to, among other things, their quality or content. Services are also protected, but in relation to slightly different characteristics.⁽²⁹⁾ In addition, article 2(10) includes within the definition of unfair competition wording which results in a prohibition on the import or export of goods (or the offering of services) bearing such a misleading indication.⁽³⁰⁾ As applied within the statute, this is without regard to the renown, either inside or outside of Japan, of the claimant, its name, mark, goods (or services). These restrictions are applied fairly narrowly and decisions can be quite fact-sensitive.

Lastly, unauthorized commercial use in Japan by the agent or recent former agent of the owner of a mark similar or identical to one protected as a trademark in a treaty state is actionable as unfair competition.⁽³¹⁾

Remedies available based on the foregoing protections include orders for the abatement of current or future violations,⁽³²⁾ the destruction of violating or likely to violate articles and seizure of their means of production,⁽³³⁾ and the award of actual damages caused by intentional or negligent infringement.⁽³⁴⁾ With regard to determination of monetary damages, injured parties, with the exception of those making claims under article 2(10), may elect a type of "going-rate" damages.⁽³⁵⁾ These are damages in an amount typical for the type of claim which has been made.

As mentioned above, a company which does not do business in Japan prior to the filing of an unfair competition prevention claim may, in certain circumstances, still be able to recover monetary damages. The profits attributable to a defendant's violation of the Unfair Competition Prevention Law will be the presumed damages of a party whose interests are protected by this statute (Unfair Competition Prevention Law art. 5).⁽³⁶⁾ The relatively new article 5, however, is not retroactive in its application, so, if the violative conduct occurred prior to its effective date in 1999, it is necessary for a party to demonstrate lost sales in order to obtain any recovery. Thus, the potential for recovery by a party yet to do business in Japan would be very slight.

The Unfair Competition Prevention Law provides for criminal sanctions, as well. Source-indication-related violations (assuming no outright misappropriation) occurring because of conduct with an "unjust purpose" and all article 2(10) violations may result in the imposition of a criminal sentence of imprisonment for up to three years or a fine of up to 3,000,000 yen.⁽³⁷⁾ In addition to the penalty imposed on a natural person responsible for violative conduct, legal persons may be fined up to 100 million yen for these same violations.⁽³⁸⁾

The foregoing remedies and sanctions are subject to certain limitations. Where product service indications are involved, the use of commonly descriptive terms,⁽³⁹⁾ the good faith use of one's own name,⁽⁴⁰⁾ and good faith use originating prior to the claimant's indication becoming widely known⁽⁴¹⁾ cannot serve as the basis for the award of a monetary remedy or the imposition of a criminal sanction. Only the first two of these bases for limitation apply with regard to treaty state trademarks.⁽⁴²⁾ For article 2(10) claims, only the first applies.⁽⁴³⁾ Also, unknowing receipt of goods which violate the prohibition on imitation of product configuration will not give rise to civil or criminal liability.⁽⁴⁴⁾ Where the second or third of the foregoing limitations apply to violative conduct, the damaged party may require the use of an indication to prevent current or future consumer confusion.⁽⁴⁵⁾

The Registration of Trade Names
To the extent trade names also represent indications of commercial source, the registration of trade names affords some very limited protection for the source indication component of commercial identities. For what had been practical reasons, this protection has been confined to a local level. A trade name registration has effect only within the municipality where it is registered. Article 20 of the Commercial Code⁽⁴⁶⁾ permits the cancellation of another party's trade name registration if it is similar to an earlier one and the subsequent trade name will be used for "unfair competition". Use for unfair competition will be presumed if the subsequent or attempted subsequent registration is in the same locality and line of business.

[Author's Note: The translation of the statutory sections appearing in these endnotes is still in progress. Certain of these sections are currently approximations which may provide meaningful insight into the phrasing of the originals.]

^1. (Definitions, etc.) 2.(Definitions, etc.) 2.--(1) "Trademark" in this Law means characters, signs, three-dimensional shapes or any combination thereof, or any combination thereof with colors (hereinafter referred to as a "mark"):

(i) which are used in connection with goods by a person who produces, certifies, transfers or produces goods in the course of trade; (ii) which are used in connection with services by a person who offers or certifies services in the course of trade (excluding those listed in the preceding item). (Return to Body)

^2. Trademark Law art. 5. (Return to Body)

^3. Japanese Patent Office, "Reclassification Information for Trademark Owners Who Filed Application (sic) before March 31, 1992", [Online] Available http://www.jpo-miti.go.jp/infoe/trade.htm, January 16, 2000. (Return to Body)

^4. (Effects of trademark right) 25.-- A person with trademark rights exclusively possesses the right to use the registered trademark in connection with the designated goods or designated services. However, when exclusive use rights have been established in connection with that trademark, the person with the exclusive use rights, with regard to the scope of exclusive possession of the right to use that registered trademark, it is not in this way limited.

(Acts deemed to be infringement) 37.-- The following listed acts shall be deemed to be infringement of a trademark right or of exclusive use rights: (i) use of a trademark similar to a registered trademark in connection with the designated goods or designated services, or use of a registered trademark or of a trademark similar thereto in connection with goods or services similar to the designated goods or designated services. (Return to Body)

^5. (Earlier Application) 8.--(1) When two or more of the above trademark applications are filed on different dates in connection with identical or similar trademarks which will be used in connection with identical or similar goods or services, only the earliest applicant for trademark registration may receive trademark registration in connection with that trademark. (Return to Body)

^6. (Trademark Use Rights based on Earlier Use) 32.--(1) Where, from prior to another person's application for trademark registration, inside the nation of Japan without the purpose of unfair competition there has been use of that trademark or one similar to it in connection with the designated goods or designated services in that application for trademark registration or goods or services similar to them, at the time of that application for trademark registration (the original time of the application for trademark registration or the time the procedural amendment is filed at times when a procedural amendment is deemed to have been filed at the time of that application for trademark registration according to the provisions of Article 9quater or in applying Article 17ter[1] or 55bis[2] [including instances of its application under Article 60bis{1}] in accordance with the Design Law Article 17bis[1] as it applies to them), when that trademark is currently widely known among consumers as indicating goods or services related to [the user's] business, that person, there being continuous use of that trademark in connection with those goods or services, will have the rights to the use of that trademark in connection with those goods or services. Also, the same shall apply in connection with successors of said business.

(Trademarks Unable to Receive Trademark Registration) 4.--(1) In connection with the following listed trademarks, notwithstanding the provisions of the preceding article, trademark registration cannot be received: (x) They being trademarks widely known among consumers as indicating goods or services related to another person's business or trademarks similar to these, ... [those trademarks] used in connection with those goods or services or goods or services similar to them. (Return to Body)

^7. (Trademarks Unable to Receive Trademark Registration) 4.--(1) In connection with the following listed trademarks, notwithstanding the provisions of the preceding article, trademark registration cannot be received: (xv) Trademarks (excluding those listed from paragraph 5 to the preceding paragraph) that cause fear that confusion will arise with goods or services related to another person's business. (Return to Body)

^8. (Opposition to registration) 43bis.-- Anyone, within a two month limit from the date of publication in the Gazette, can file with the Patent Office Commissioner a registration opposition petition on the ground that a trademark registration falls under one of the following paragraphs. In such an instance, with regard to trademark registrations relating to two or more designated goods or designated services, it is possible to file a registration opposition petition for each of the designated goods or designated services: (i) That trademark registration is violative of the provisions of Article 3, Article 4(1), Article 8(1),(2) or (5), Article 51(2) (including situations where Article 52bis[2] applies) or Article 53(2) or under the application of the provisions of Patent Law Article 25 under Article 77(3); (ii) That trademark registration is violative of a treaty. (Return to Body)

^9. (Registrability of trademarks) 3.--(1) Any person may obtain a trademark registration for a trademark to be used in relation to goods or services in connection with his business, except for the following trademarks: (i) trademarks which consist solely of a mark indicating, in a common way, the common name of the goods or services; (ii) trademarks which are customarily used in relation to those goods or services; (iii) trademarks which consist solely of a mark indicating in a common way, the origin, place of sale, quality, raw materials, efficacy, use, quantity, shape (including packaging shape) or price of the goods, or the method or time of manufacturing or using them; or the location of provision of services, their quality, articles for use in such provision, their efficacy, use, quantity, modes or price or the method or time of the provision of services; (iv) trademarks which consist solely of a mark indicating, in a common way, a commonplace surname or name of a legal entity; (v) trademarks which consist solely of a very simple and commonplace mark; (vi) in addition to those mentioned in each of the preceding paragraphs, trademarks which do not enable consumers to recognize the goods or services as being connected with a certain person's business. (2) In the case of a trademark falling under subparagraphs (iii) to (v) of the preceding paragraph, where, as a result of the use of such trademarks, consumers are able to recognize goods or services as being connected with a certain person's business, trademark registration may be obtained notwithstanding the preceding paragraph. (Return to Body)

^10. (Trademarks Unable to Receive Trademark Registration) 4.--(1) In connection with the following listed trademarks, notwithstanding the provisions of the preceding article, trademark registration cannot be received: (i) trademarks which are identical or similar to the national flag, the imperial chrysanthemum crest, a decoration, a medal of merit, or a foreign national flag; (ii) trademarks which are identical or similar to a State coat of arms or other emblem ... ; (vii) trademarks liable to contravene public order or morality; (viii) trademarks containing the portrait of another person or the name, famous pseudonym, professional name or pen name of another person or the famous abbreviation thereof (except where the consent of the person concerned has been obtained); ... (x) N.6, supra; (xi) trademarks which are identical or similar to another person's registered trademark applied for prior to the filing date of the trademark application concerned and which are used in relation to the designated goods or designated services (meaning the goods or services designated in accordance with Article 6[1] [including its application under Article 68{1}] -- hereinafter referred to as "the designated goods or designated services") covered by the trademark registration referred to or in relation to similar goods or services; (xii) trademarks which are identical to another person's registered defensive mark (meaning a mark registered as a defensive mark -- hereinafter referred to as a "registered defensive mark"), and which are used in relation to the designated goods or designated services covered by the defensive mark registration; (xiii) trademarks which are identical to another person's trademark (other than a trademark which had not been used by that person during a period of at least one year prior to the date on which the trademark right became extinguished) where one year has not elapsed since the date of extinguishment of the trademark right (or the date on which a ruling that a trademark registration is to be revoked or a trial decision that a trademark registration is to be invalidated becomes final and conclusive -- hereinafter referred to as the "date of extinguishment of the trademark right"), or to a trademark similar to such a trademark, and which are used in relation to the designated goods or designated services covered by the trademark right or in relation to similar goods or services; (xiv) trademarks which are identical or similar to the name of a variety registered under Article 12quater(1) of the Agricultural Seed and Seedlings Law (Law No. 115 of 1947), and which are used in relation to the seeds or seedlings of the variety concerned or in relation to similar goods or services; (xv) N.7, supra; (xvi) trademarks liable to be misleading as to the quality of the goods or services; (xvii) trademarks comprising a mark indicating an origin of wines or spirits in Japan which has been designated by the Commissioner of the Patent Office or a mark indicating an origin of wines or spirits in a Member of the World Trade Organization prohibited to be used on wines or spirits not originating in the region within that member, which are used in relation to wines or spirits not originating within that region in Japan or that member; (xviii) trademarks consisting solely of a three-dimensional shape of goods or their packaging, with their shape being indispensable to secure the function of the goods or their packaging; (xix) trademarks (excluding those specified in each of the preceding paragraphs) which are identical or similar to a trademark which is widely known among consumers in Japan or abroad as indicating that goods or services are connected with the business of another person and which are used with an unjust purpose (This shall mean a purpose of obtaining unjust profits, a purpose of inflicting damages on another person or other unjust purposes. The same shall apply below.). (Return to Body)

^11. (First-to-file rule) 8.--(1) N.5, supra; (2) Where two or more trademark applications relating to identical or similar trademarks which are to be used in relation to identical or similar goods or services are filed on the same date, only one applicant, agreed upon after mutual consultation among all the applicants, may obtain a trademark registration for the trademark. ... (5) Where no agreement is reached in the consultations under paragraph (2) or where the report under the preceding paragraph is not made within the time limit designated in accordance with that paragraph, registration of the trademark concerned may be obtained only by an applicant chosen by the drawing of lots conducted in a fair and just manner by the Commissioner of the Patent Office. (Return to Body)

^12. (Trial for cancellation of trademark registration) 51.--(1) Where the owner of the trademark right intentionally uses a trademark similar to the registered trademark in relation to designated goods or designated services, or intentionally uses the registered trademark or similar trademark in relation to goods or services similar to the designated goods or designated services in a way which may be misleading as to the quality of the goods or services or which may cause confusion with goods or services connected with any other person's business, any person may demand a trial for the cancellation of the trademark registration. (2) Where a trademark registration has been cancelled under the preceding paragraph, the former owner of the trademark right may not obtain a trademark registration of the same or a similar trademark for the designated goods or services covered by the trademark registration or for goods or services similar thereto until five years have elapsed since the date when the trial decision ordering cancellation became final and conclusive. (Return to Body)

^13. (Application mutatis mutandis of Patent Law) 77.-- (3) Article 25 (enjoyment of rights by aliens) of the Patent Law shall apply mutatis mutandis to trademark rights and other rights relating to trademark registrations. (Return to Body)

^14. (Trial for invalidation of trademark registration) 46.--(1) In the following cases, a trial may be demanded for the invalidation of a trademark registration. In such event, if two or more items of designated goods or designated services are covered by the trademark registration, the trial may be demanded in relation to each such designated good or service: (i) where the registration has been effected contrary to Article 3, 4(1), 8(1), (2) or (5), 51(2) (including its application under Article 52bis[2]) or 53(2) or to Article 25 of the Patent Law as applied under Article 77(3) of this Law; (ii) where the registration has been effected contrary to the provisions of a treaty; (iii) where the registration has been effected in relation to a trademark application filed by a person who may not properly hold the rights to be derived from the trademark application; (iv) where, after the registration, the owner of the trademark right has become a person who can no longer enjoy that right under Article 25 of the Patent Law, as applied under Article 77(3) of this Law, or causes the registration to no longer comply with a treaty; (v) where, after the registration, the registered trademark has become a trademark falling under Article 4(1)(i) to (iii), (v) or (vii) to (xvi). (Return to Body)

^15. (Trial for invalidation of trademark registration) 47.-- Where a trademark registration has been effected contrary to Article 3, 4(1)(viii) or (xi) to (xiv) or 8(1), (2) or (5), contrary to Article 4(1)(x) or (xvii) (except where registration was obtained with the intention of violating the rules of fair competition) or contrary to Article 4(1)(xv) (except where the registration was obtained with unlawful intentions), or where a trademark registration falls under Article 46(1)(iii), a trial on the trademark registration may not be demanded under Article 46(1) after five years from the registration of the establishment of the trademark right. (Return to Body)

^16. (Trademarks Unable to Receive Trademark Registration) 4.--(1) In connection with the following listed trademarks, notwithstanding the provisions of the preceding article, trademark registration cannot be received: (xix) trademarks (excluding those specified in each of the preceding paragraphs) which are identical or similar to a trademark which is widely known among consumers in Japan or abroad as indicating that goods or services are connected with the business of another person and which are used with an unjust purpose (This shall mean a purpose of obtaining unjust profits, a purpose of inflicting damages on another person or other unjust purposes. The same shall apply below.). (Return to Body)

^17. (Trial for cancellation of trademark registration) 50.--(1) Where neither the owner of a trademark right nor the owner of a right of exclusive or non-exclusive use has been continuously using in Japan for three years or more the registered trademark (including a trademark consisting of identical characters with only their fonts modified, a trademark which contains characters which have been substituted with the corresponding characters in hiragana and katakana [Japanese phonetic characters] or the Latin alphabet and which imply an identical pronunciation or concept, a trademark consisting of figures common in appearance and other trademarks generally regarded as being identical to the registered trademark) (hereinafter referred to in this Article as "registered trademark") in relation to an item of the designated goods or services, any person may demand a trial for the cancellation of the registration of the trademark in relation to such designated goods or services. (2) Where a trial under the preceding paragraph has been demanded, unless the defendant can prove that either the owner of the trademark right or the owner of a right of exclusive or non-exclusive use has used in Japan within three years prior to the registration of the demand for the trial the registered trademark in relation to the designated goods or services to which the referred demand relates, the owner of the trademark shall not avert the cancellation of the registered trademark in relation to those designated goods or services. However, this provision shall not apply where the defendant justifies the existence of legitimate reasons for the failure to use the registered trademark in relation to the designated goods or services. (3) Where a registered trademark for which a cancellation trial has been demanded under paragraph (1) is first used by the owner of the trademark right or the right of exclusive or non-exclusive use in relation to the designated goods or services to which the referred demand relates in the three months preceding the registration of the demand, such use of the registered trademark shall not fall under the use of the registered trademark referred to in paragraph (1) provided that the demandant proves that the registered trademark was used with the knowledge that the cancellation trial for the registered trademark would be demanded. However, this provision shall not apply where the defendant justifies that there are legitimate reasons for such use of the registered trademark. (Return to Body)

^18. N.12, supra. (Return to Body)

^19. (Acts deemed to be infringement) 37. -- The following acts shall be deemed to be an infringement of a trademark right or of a right of exclusive use: (i) use of a trademark similar to the registered trademark in respect of the designated goods or designated services, or use of the registered trademark or of trademark similar thereto in respect of goods or services similar to the designated goods or designated services; (ii) acts of holding, for the purpose of assignment or delivery, designated goods, or goods which are similar to the designated goods or designated services and to which or on the packaging of which the registered trademark or a trademark similar thereto has been applied; (iii) acts of holding or importing articles which are for use by persons to whom the services are provided and to which the registered trademark or a trademark similar thereto has been applied, in the provision of the designated services, or of services similar to the designated services or designated goods, for the purpose of using such articles in the provision of such services; (iv) acts of assigning or delivering articles which are for use by persons to whom the services are provided and to which the registered trademark or a trademark similar thereto has been applied, in the provision of the designated services, or services similar to the designated services or designated goods, for the purpose of causing such articles to be used in the provision of such services, or acts of holding or importing such articles for the purpose of assigning or delivering them; (v) acts of holding articles bearing a reproduction of the registered trademark or a trademark similar thereto for the purpose of using such trademark in respect of the designated goods or designated services or of goods or services similar thereto; (vi) acts of assigning or delivering, or of holding, for the purpose of assignment or delivery, articles bearing a reproduction of the registered trademark or a trademark similar thereto, for the purpose of causing such trademark to be used in respect of the designated goods or designated services or of goods or services similar thereto; (vii) acts of manufacturing or importing articles bearing a reproduction of the registered trademark or a trademark similar thereto for the purpose of using such trademark, or causing it to be used, in respect of the designated goods or designated services or of goods or services similar thereto; (viii) acts of manufacturing, assigning, delivering or importing, in the course of trade, articles to be used exclusively for manufacturing goods bearing a reproduction of the registered trademark or a similar trademark. (Return to Body)

^20. (Injunctions) 36.--(1) The owner of a trademark right or of a right of exclusive use may require a person who is infringing or is likely to infringe the trademark right or right of exclusive use to discontinue or refrain from such infringement. (Return to Body)

^21. (Presumption, etc. of amount of damage) 38.--(1) Where the owner of a trademark right or of a right of exclusive use claims, from a person who has intentionally or negligently infringed the trademark right or right of exclusive use, compensation for damage caused to him by the infringement, the profits gained by the infringer through the infringement shall be presumed to be the amount of damage suffered by the owner. (Return to Body)

^22. (Presumption, etc. of amount of damage) 38.--(2) The owner of a trademark right or of a right of exclusive use may claim from a person who has intentionally or negligently infringed the trademark right or right of exclusive use as the amount of damage suffered by him, the amount of money which he would normally be entitled to receive from the use of the registered trademark. (Return to Body)

^23. (Presumption, etc. of amount of damage) 38.--(3) The preceding paragraph shall not preclude a claim for damages exceeding the amount referred to therein. In such a case, where there has been neither willfulness nor gross negligence on the part of the person who has infringed the trademark right or the right of exclusive use, the court may take this into consideration when awarding damages. (Return to Body)

^24. (Definitions) 2.--The term "unfair competition" as used in this Law means any one of the following: (1) The act of using an indication of goods, etc. (meaning an indication of goods or of a business, such as a name, trade name, mark, goods container or package related to a person's business; hereinafter meaning the same) which is widely known among consumers, or the act of transferring, delivering, exporting, or importing goods on which such an indication of goods etc. is used, and thereby causing one's business to be confused with another's. (Return to Body)

^25. (Definitions) 2.--The term "unfair competition" as used in this Law means any one of the following: ... (2) The act of using an indication of goods, etc. as one's own which is identical with, or similar to, another person's famous indication of goods, etc., or the act of transferring, distributing, displaying for the purpose of transferring or distributing, exporting or importing goods on which such an indication of goods, etc. is used. (Return to Body)

^26. See JACCS K.K. v. Nihonkai Pakuto Y.K. (Toyama Dist. Ct., No. 323 (wa) 1998, July 19, 2000) and J-Phone East Japan K.K. v. Taikou Tsuushou K.K. (Tokyo Dist. Ct., No. 3545 (wa) 2000, January 30, 2001). (Return to Body)

^27. Id. (Return to Body)

^28. (Definitions) 2.--The term "unfair competition" as used in this Law means any one of the following: ... (3) The act of transferring, distributing, displaying for the purpose of transferring or distributing, exporting or importing goods which imitate the shape (excluding a shape which is commonly used for goods of the same kind [or, if there are no goods of the same kind, goods whose function and use is identical or similar to those of such other person]) of another person's goods (excluding goods for which three years have elapsed from the date on which they were first sold). (Return to Body)

^29. (Definitions) 2.--The term "unfair competition" as used in this Law means any one of the following: ... (10) The act of making an indication on goods or for services, in their advertisement or in a document or correspondence used for a transaction, which is misleading with respect to the place of origin, quality, contents, manufacturing method, use, or quantity of goods or the quality, contents, use or quantity of services or the importing of goods or offering of services with such an indication. (Return to Body)

^30. Id. (Return to Body)

^31. (Definitions) 2.--The term "unfair competition" as used in this Law means any one of the following: ... (12) The act of an agent or representative, or a person who, within one year of the date of such act, was an agent or representative of an owner of a right relating to a trademark (such a right shall be limited herein to a right equivalent to a trademark right; hereinafter referred to simply as a "right" ) in a state party to the Paris Convention (used herein as defined in Article 4, paragraph 1, item 2 of the Trademark Law [Law No. 127 of 1959]) or a member country of the World Trade Organization, or a contracting state of a Trademark Law Treaty, without justifiable reason and without the consent of the owner of such right, using a trademark which is identical or similar to the trademark which is the basis for the right in relation to goods or services identical or similar to those affected by the right, of assigning, delivering, displaying for the purpose of assignment or delivery, exporting or importing goods using a trademark which is identical or similar to the trademark which is the basis for the right in relation to the goods affected by the right, or offering a service using such trademark in relation to services which are identical or similar to the services affected by the right. (Return to Body)

^32. (Right of demanding cessation) 3.--A person whose business interests are infringed or are likely to be infringed by unfair competition, is entitled to demand the suspension or prevention of such infringement from a person who infringes such business interests or is likely to do so. (Return to Body)

^33. (Right of demanding cessation) 3.--(2) A person whose business interests are infringed or are likely to be infringed by unfair competition, is entitled, at the time of the demand referred to in the preceding paragraph, to request the destruction of the objects which constituted the act of infringement (including objects created by the act of infringement) the removal of facilities and equipment used for the act of infringement, or any other acts necessary to prevent or suspend the infringement. (Return to Body)

^34. (Claim for damages) 4.--A person who intentionally or negligently infringes on the business interests of another person through unfair competition shall be liable to compensate for damages which result therefrom; provided, however, that this shall not apply to damages which arise from use of a trade secret after the rights described in Article 8 below lapse in accordance with that Article. (Return to Body)

^35. (Presumption of amount of damages, etc.) 5.--(2) A person whose business interests have been infringed by unfair competition of any of the types described in Article 2 (1) items 1 to 9 and item 12 is entitled to claim, against a person who has intentionally or negligently infringed such business interests, compensation for damages suffered by him in an amount equivalent to the amount which normally ought to be awarded as compensation, in accordance with the type of unfair competition described in each item below, for the act described in that item: (i) unfair competition as described in Article 2 (1) item 1 or 2: the use of an indication of goods, etc. relating to said infringement; (ii) unfair competition as described in Article 2 (1) item 3: the use of a shape of goods relating to said infringement; (iii) unfair competition as described in Article 2 (1) items 4 to 9: the use of a trade secret relating to the infringement; (iv) unfair competition as described in Article 2 (1) item 12: the use of a trademark relating to the said infringement. (Return to Body)

^36. (Presumption of amount of damages, etc.) 5. -- If a person whose business interests have been infringed by unfair competition demands compensation for damages suffered by him from the person who has intentionally or negligently infringed those business interests and that person is receiving profits from his infringing conduct, the amount of any such profits shall be presumed to be the amount of damages suffered by the person whose business interests were infringed. (Return to Body)

^37. (Penal provisions) 13.--Any person who falls under any of the following items shall be sentenced to imprisonment for a term not exceeding three years or fined an amount not exceeding 3,000,000 yen: (i) a person who commits, for a dishonest purpose, any act of unfair competition described in Article 2 (1) item 1 or 10; (ii) a person (excluding a person described in the preceding item) who has used a false indication on goods or for services in their advertisement or in a document or correspondence used for a transaction, which is misleading with respect to the place of origin, quality, contents, manufacturing method, use or quantity of such goods or the quality, contents, use or quantity of such services. (Return to Body)

^38. (Penal provisions) 14.--When a representative of a juridical person or an agent, employee, or other worker of a juridical or natural person has committed, in connection with the business of such juridical or natural person, any of the violations described in the preceding article, in addition to the violator being penalized, the juridical person shall be fined an amount not exceeding 100,000,000 yen and the natural person shall be fined as described in the preceding article. (Return to Body)

^39. (Exemption, etc.) 11.--The provisions of Articles 3 through 8, Article 13 (excluding part relating to item [3])and Article 14 shall not apply to the acts provided for in each of the following items in accordance with the classification of unfair competition mentioned in each such item: (1) unfair competition as described in Article 2 (1) items 1, 2, 10 and 12: the act of using or indicating in a commonly-used manner a common name of goods or a business (excluding a name of a place of origin for goods which are made from grapes or have grapes as an ingredient which has become a common name) or a customarily used indication of goods, etc. (hereinafter referred to generally as a "common name, etc.") in relation to those or similar goods or businesses, or the act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting, or importing goods for which a common name, etc. is used or indicated in a commonly-used manner (including, in cases of unfair competition described in items 10 or 12 of the same paragraph, an act of offering a service using or indicating a common name, etc. in a commonly used manner). (Return to Body)

^40. (Exemption, etc.) 11.--The provisions of Articles 3 through 8, Article 13 (excluding part relating to item [3])and Article 14 shall not apply to the acts provided for in each of the following items in accordance with the classification of unfair competition mentioned in each such item: (2) unfair competition as described in Article 2 (1)item 1, 2 and 12: the act of using one's own personal name not for a dishonest purpose (meaning a purpose of obtaining unfair profits, a purpose of causing injury to an other person or any other dishonest purpose; hereinafter same), or the act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting or importing goods on which his own name is used not for a dishonest purpose (including, in the case of unfair competition as described in any of the above items, the act of offering services using, for no dishonest purpose, one's own personal name). (Return to Body)

^41. (Exemption, etc.) 11.--The provisions of Articles 3 through 8, Article 13 (excluding part relating to item [3])and Article 14 shall not apply to the acts provided for in each of the following items in accordance with the classification of unfair competition mentioned in each such item: (3) unfair competition as described in Article 2 (1) item 1: the act of a person's using, for no dishonest purpose, an indication of goods, etc. identical or similar to a widely known indication of goods, etc. of another person, if the first such person used the indication before it became widely known or that person succeeded to a business related to the indication of goods, etc., or the act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting or importing goods which use, for no dishonest purpose, such an indication of goods, etc.; (4) unfair competition as described in Article 2 (1) item 2: the act of a person's using, for no dishonest purpose, an indication of goods, etc. identical or similar to a widely known indication of goods, etc. of another person, if the first such person used the indication of goods, etc. before it became widely known or that person succeeded to a business related to the indication of goods, etc. , or the act of transferring, delivering, displaying for the purpose of transfer or delivery, exporting or importing goods which use, for no dishonest purpose, the indication of goods, etc. (Return to Body)

^42. N.39 and 40, supra. (Return to Body)

^43. N.39, supra. (Return to Body)

^44. (Exemption, etc.) 11.--The provisions of Articles 3 through 8, Article 13 (excluding part relating to item [3])and Article 14 shall not apply to the acts provided for in each of the following items in accordance with the classification of unfair competition mentioned in each such item: (5) unfair competition as described in Article 2 (1) item 3: the act of transferring, lending, displaying for the purpose of assignment or lending, exporting or importing goods, performed by a person who, by transfer, has obtained goods that, as described in item 3, imitate the shape of another person's goods (provided that the first such person, at the time of obtaining the goods by transfer was unaware that the goods imitated the shape of another person's goods and was not grossly negligent in being unaware of same). (Return to Body)

^45. (Exemption, etc.) 11.--2. A person whose business interests have been infringed or are likely to be infringed by one of the acts described in item 2 or 3 of the previous paragraph is entitled to demand, in accordance with the type of unfair competition described in the following items, from any person who falls within an item, that an appropriate indication be used to prevent confusion with the goods or business of the first person: (1) an act described in item 2 of the previous paragraph - a person using his own personal name (including a person who transfers, delivers, displays for the purpose of transfer or delivery, exports or imports, by himself goods on which he uses his own personal name); (2) an act described in item 3 of the previous paragraph - a person using an indication of goods, etc. identical or similar to that of another person and a person who succeeds to a business related to such an indication of goods, etc. (including a person who transfers, delivers, displays for the purpose of transfer or delivery, exports or imports by himself goods using such an indication of goods, etc.). (Return to Body)

^46. (Effect of registration of trade name) 20. -- A person who has registered a trade name may demand, as against any person using the same or similar trade name for purposes of unfair competition, the discontinuance of its use; this shall not, however, preclude any claim for damages. (Return to Body)