Litigating the Meaning of “Prima Facie Evidence” Under
the Lanham Act: The Fog and Art of War
Charles L. Cook and Theodore H. Davis Jr.
Separating Descriptive Sheep From Generic Goats
Anthony L. Fletcher
How Ethics Rules Can Be Used to Address
Trademark Bullying
Jason Vogel and Jeremy A. Schachter
Navigating the “Land of Harmony” and Finding
“Harmonization” for Foreign Trademark Applicants and
Owners: A Japanese Practitioner’s Perspective
Yasuhiro H. Suzuki
2013
Vol. 103 No. 2
Vol. 103 TMR
519
∗
NAVIGATING THE “LAND OF HARMONY” AND FINDING
“HARMONIZATION” FOR FOREIGN TRADEMARK
APPLICANTS AND OWNERS: A JAPANESE
PRACTITIONER’S PERSPECTIVE
By Yasuhiro H. Suzuki∗∗
I. INTRODUCTION
Since the mid-1990s, Japan has made significant progress
toward harmonizing its trademark law and has achieved most of
its stated objectives.1 However, given the peculiarities inherent in
the Japanese language, and the trademark practices that are little
known abroad, the Japanese system continues to present unique
challenges for foreign trademark applicants and owners in the
protection of their marks. This article provides an overview of
Japan’s trademark system for foreign trademark applicants and
owners, focusing on the most common issues that they may
encounter in working with the authorities and practitioners in
Japan.
A foreign trademark owner can overcome the perils associated
with registering and enforcing its marks by better understanding
the substance of the issues to be encountered at each stage of
trademark protection. This requires a deeper understanding of (1)
the written and oral aspects of the Japanese language used in
trademarks, (2) the formulation of the concept-based similar
∗ “The Land of Harmony” is a translation of wa no kuni, i.e., Japan. This term was an
artful homonym of wa no kuni, meaning “the Land of Vassals,” which had been used by the
Chinese to refer to what is now called Japan and the southern part of Korea in the Three
Kingdoms period of Chinese history.
∗∗ Associate, Saegusa & Partners; Member, Japan Patent Attorneys Association
(JPAA); Associate Member, International Trademark Association (INTA).
1. In the 1990s, many of these objectives were set by subcommittees of the Industrial
Property Council established at the Ministry of International Trade and Industry (MITI)
within the frameworks of the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPs Agreement) administered by the World Trade Organization (WTO), the
Trademark Law Treaty (TLT), and the Madrid Protocol. Since 2003, the Trademark System
Subcommittee of the Industrial Structure Council established at the Ministry of Economy,
Trade and Industry (METI) has been primarily responsible for setting such objectives.
Major amendments to the Trademark Act were introduced in 1994 in compliance with the
TRIPs Agreement, in 1996 with the TLT, and in 1999 with the Madrid Protocol. No major
changes have been made to the Trademark Act since 2005, when a regional collective
trademark system was introduced. Most of the discussion has since been focused on
amendments to broaden the scope of protection to nontraditional trademarks. See meeting
minutes of Trademark System Subcommittee, available at http://www.jpo.go.jp/shiryou/
toushin/shingikai/t_mark_seido_menu.htm (last accessed on Mar. 23, 2013). See also Tokkyo
Gyosei Nenji Houkokusho 2005 Nenban to 2012 Nenban (Japan Patent Office Annual
Reports 2005 to 2012).
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grouping of goods and services, (3) the Japan Patent Office’s (JPO)
paternalistic approach to the protection of trademark rights, and
(4) the complementary nature of the Trademark Act2 and the
related provisions of the Unfair Competition Prevention Act in
protecting well-known and famous trademarks.
By summarizing these important aspects of Japanese
trademark law and practice that are seldom explained in the
English literature,3 this article will help guide foreign applicants
and owners through the trademark process—from adoption,
search, filing, prosecution, and grant through to enforcement. It
also provides a number of practical suggestions along the way.
Discussed separately is the “similar grouping system” for goods
and services, which deserves independent discussion for its
peculiarity and extensive impact in clearance and determination of
likelihood of confusion.
Because Japan is a rigid first-to-file system where no
trademark rights arise merely from use, discussion on enforcement
will initially focus on the two aspects of the statutory trademark
rights conferred upon registration. These are the “right-to-use” the
owner’s own trademarks for the designated goods or services
(senyo-ken) and the “right-to-restrain” use of third parties’
identical or similar trademarks for identical or similar
goods/services (kinshi-ken). This article reviews these statutory
rights and then examines the treatment of well-known and famous
marks that have achieved such statutory rights through actual use
in the market.
II. REVISIONS TO THE TRADEMARK ACT
SINCE THE 1990s AND ANTICIPATED MOVEMENTS
IN THE COMING YEARS
In 1994, the Industrial Property Council of the JPO
established a subcommittee to review trademark issues against
the backdrop of multilateral discussions for progress toward the
conclusion of the Trademark Law Treaty. Under the banner of
“international harmonization,” Japan has enacted major changes
to its trademark law and practice, including major amendments to
the Trademark Act in 1994, 1996, and 1999 in implementing its
obligations, respectively under the Agreement on Trade-Related
Aspects of Intellectual Property Rights (the TRIPS Agreement),
2. The English translations of the titles and provisions of Japanese laws, guidelines,
etc., are all based on the translations provided by the Japanese Ministry of Justice or the
Japan Patent Office, except as otherwise noted.
3. Notable exceptions on protection of famous trademarks include Kenneth L. Port’s
Japanese Trademark Jurisprudence (Kluwer Law International, 1998), Trademark and
Unfair Competition Law and Policy in Japan (Carolina Academic Press, 2007), and
“Trademark Dilution in Japan” (4 Nw. J. Tech. & Intell. Prop. 228 (2006)).
Vol. 103 TMR
521
the Trademark Law Treaty (TLT), and the Common Regulations
under the Madrid Agreement Concerning the International
Registration of Marks and the Protocol Relating to that Agreement
(Madrid Protocol). The amendments in 1996 and 1999 contributed
greatly to the procedural harmonization of the Japanese
trademark system.
Some of the changes to Japan’s trademark law include the
following: an applicant can now submit a single application for
coverage of its mark in multiple classes; trademark agent
registration has been simplified; substantive examination on
renewal has been abolished; and the need for public notice of
assignment has been eliminated. Renewal is now possible within a
six-month grace period; any registration listing several goods or
services may be divided; registration fees can now be paid in
installments; and the associated trademark system4 has been
abolished. Additionally, collective trademarks may now be
protected as they are; applications filed in bad faith for marks
identical or similar to unregistered famous marks in Japan or
elsewhere may be refused; and a great majority of registrations in
local classes have been reclassified according to the international
classification. Three-dimensional trademarks may now be
protected; registration of regionally based collective trademarks
may be granted to extend protection of geographical indications;
and marks for retail or wholesale services can now be registered.
Monetary claims can also be made after registration of a mark for
the damages made before the registration under certain
circumstances.
Japan is still not a party to the Singapore Treaty on the Law
of Trademarks, adopted in 2006, which seeks to create an
international framework for the harmonization of administrative
trademark registration procedures. While its objective is
administrative or procedural in nature, the Singapore Treaty5
explicitly recognizes nontraditional marks such as sound, olfactory
or taste, and feel marks. In line with this move, the Trademark
System Subcommittee of the Industrial Structure Council
established at the Ministry of Economy, Trade and Industry
(METI) has recently completed the review of the scope of
protection for nontraditional marks, such as hologram, color, scent,
position, movement, and sound marks. METI is expected to submit
a bill for relevant amendments to the Trademark Act in fiscal year
4. It was necessary for all identical or similar registered trademarks designating
identical or similar goods to be associated with and owned by the same entity. Assignment
of similar registered trademarks had not been allowed under the associated trademark
system.
5. WIPO, Summary of the Singapore Treaty on the Law of Trademarks
(2006), http://www.wipo.int/treaties/en/ip/singapore/summary_singapore.html (last visited
Aug. 1, 2012).
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2013.6 Olfactory marks will not be included in the amendment bill
but will remain on the agenda for discussion as part of the TransPacific Partnership (TPP) and the Free Trade Agreement (FTA)
with China and South Korea in 2013.7
Other “remaining issues” for discussion in the harmonization
of the Japanese trademark system are focused, inter alia, on
enhanced protection of famous marks, addition of distinctiveness
to the definition of “trademark,” acceptability of letters of consent,
disclaimer requirements, registrability of well-known domestic or
foreign geographical names, and revocability of registered
trademarks that have become generic.8 These discussions are all
driven by Japan’s strict principle of registration (or toroku-shugi),
where trademark rights are conferred only by registration, as
contrasted with the first-to-use principle. This article discusses
these and related issues as they would normally occur in the
context of the ordinary course of trademark practice.
III. ADOPTION OF MARKS—
PROPER IDENTIFICATION OF A WORD MARK
IN LATIN OR JAPANESE CHARACTERS
In Article 2(1) of the Trademark Act, “trademark” is defined
as “any character(s), figure(s), sign(s) or three-dimensional
shape(s), or any combination thereof, or any combination thereof
with colors, used in connection with the goods of a person who
produces, certifies or assigns the goods as a business, or used in
connection with the services of a person who provides or certifies
the services as a business.” Therefore, trademarks can consist of
any characters or any combinations of different characters,
whether or not they are capable of being pronounced in
Japanese. Trademarks that are unpronounceable in ordinary
Japanese are treated as figurative marks. Pronounceable word
marks consist of Japanese characters—that is, hiragana,9
6. Kayoko Yamamoto, Tokkyocho Shohyoho Kaiseian de Oto Ugoki Horoguramu
ShikisaiIchi no Shohyoken wo Settei (JPO Will Establish Trademark Rights To Sound,
Movement, Hologram, Color and Position in New Trademark Act), Nikkan Kogyo Shimbun,
Nov. 27, 2012, http://www.nikkan.co.jp/news/nkx1520121127abbg.html (last visited Jan. 13,
2013).
7. Id.
8. See, e.g., Naho Ebata, Shohyoseido o Meguru Saikin no Kadai (Recent Movements
and Remaining Issues of the Trademark System in Japan), 51 Pat. Studs. (Mar. 2011);
Trademark System Subcommittee of the Industrial Structure Council, METI, Shohyoseido
no Minaoshi ni Kansuru Kongo no Kadai (Agenda on Overhaul of Trademark System)
(distributed June 2008); see also meeting minutes of the Trademark System Subcommittee,
IP Policy Group of the Industrial Structure Council from 2004 to 2011,
http://www.jpo.go.jp/shiryou/toushin/ shingikai/t_mark_seido_menu.htm (last visited Aug. 4,
2012).
9. The cursive script that is one of two sets of symbols of Japanese syllabic writing, as
defined in Merriam-Webster’s Online Dictionary (11th ed.), http://www.merriam-
Vol. 103 TMR
523
katakana,10 kanji,11—and/or Latin/Roman script (Romaji, a
method of writing Japanese in Roman characters).
While there is a one-to-one correspondence between sounds
and kana characters (i.e., hiragana, katakana and Romanized
kana), kanji and foreign words in Latin script can be read in two or
more different ways.12 This is why determining the “natural”
pronunciation of foreign words or Chinese characters used in
trademarks matters profoundly when deciding whether marks are
similar.
A. Marks in Latin/Roman Script
In securing protection of marks in Japan, one must consider
how the mark is likely to be pronounced in Japanese. In Japan,
most of the word marks that foreigners apply for are described in
Latin script based on those already in use or intended for use in
their home countries, whether in English or in other, less familiar
Western languages such as French, German, and Italian, or
transliterated from non-Western languages such as Arabic,
Chinese, and Korean. As can be imagined, not all such trademarks
will be pronounced “correctly” or as intended by their owners in
Japan.
Assume that a business or individual desires to adopt the
mark REGIUS and hears it pronounced リージアス [ree-jee-uhs],
as transliterated from the English term, rather than レギウス [regi-uh-su] or レジアス [re-ji-ah-su], as most Japanese would
pronounce the term. An effective way to achieve this would be to
describe the mark in Latin and katakana characters “one above
the other” as shown below:
REGIUS
リージャス
webster.com/dictionary/hiragana (last visited Jan. 31, 2013). Hiragana characters are
phonograms.
10. The form of Japanese syllabic writing used especially for scientific terms, official
documents, and words adopted from other languages. Merriam-Webster’s Online Dictionary,
http://www.merriam-webster.com/dictionary/katakana (last visited Jan. 31, 2013).
11. Merriam-Webster’s
Online
Dictionary,
http://www.merriam-webster.com/
dictionary/kanji (last visited Jan. 31, 2013). A Japanese system of writing that utilizes
characters borrowed or adapted from Chinese writing.
12. For example, the kanji 明 (meaning “light”) is pronounced mei, myou, min, aka, ake,
teru, etc.; MIGLIA is pronounced miglia and milia, FIN is pronounced fin and fan,
NATURE is pronounced nei-cha and na-chu-re, all of which would be found dissimilar in
pronunciation.
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This is called nidan-heiki, which literally means “double
parallel writing,” and is frequently used by Japanese practitioners
for trademark names that the owners want pronounced in a
particular way. For a mark to be regarded as nidan-heiki, the
Latin and katakana characters used must be plain, and not be
stylized or decorated to the extent the mark would be viewed in its
entirety. A nidan-heiki trademark should not be viewed in its
entirety because in most cases both Latin and katakana characters
do not appear in combination exactly as represented on the
application or registration certificate. Though not a practical
option for an international application, nidan-heiki can be an
effective tool to establish the definitive pronunciation of a mark in
Japan and have the mark’s aural image fixed in the Japanese
public’s minds as soon as possible.
The nidan-heiki description of a mark may also be relied on
when the accurate or orthodox transliteration of a mark in its
original language sounds unsuitable in Japan for some reason. A
well-known example is the Japanese trademark マクドナルド , or
makudo narudo, which has been used by McDonald’s Company in
Japan as the definitive name of McDONALD’S since the late
1960s. According to Den Fujita, the founder of McDonald’s
Company (Japan), Ltd., the trademark マクドナルド was adopted
for easier pronunciation as well as for rhyming and advertising
purposes, despite the recommendation made by McDonald’s
Company in the United States to use マクダーナルズ,13 which more
properly represents the original English pronunciation. The
applications filed in 1971 took the form of a nidan-heiki trademark
as shown below.
Nidan-heiki helps in establishing the definitive Japanese
pronunciation of words in Latin script and avoiding prior marks
that would potentially bar the registration of an applied-for mark.
There is legitimate reluctance on the part of non-Japanese
trademark owners to apply to register a nidan-heiki trademark in
Japan because the nidan-heiki trademark is not exactly the same
as the mark that will be used in the marketplace. However,
registering nidan-heiki trademarks is the established practice in
Japan. Further, an examination of non-use cancellation actions
shows that use of either Latin or katakana characters in a
registered nidan-heiki trademark is considered legitimate use,
13. See, e.g., Jean Nakazono, Fujita Den no Atamano Naka [In Den Fujita’s Mind] 2930 (Nihon Jitsugyo Publishing 2001). See also Wikipedia, Origin of Japanese trade name of
Nihon Makudonarudo Kabushiki Gaisha (McDonald’s Company (Japan), Ltd.),
http://ja.wikipedia.org/wiki/%E6%97%A5%E6%9C%AC%E3%83%9E%E3%82%AF%E3%83
%89%E3%83%8A%E3%83%AB%E3%83%89 (last visited Aug. 4, 2012).
Vol. 103 TMR
525
provided that both forms have the same concept.14 In this regard,
there is no doubt that マクドナルド and MCDONALD’S have one
and the same concept. Therefore, use of this mark in one or the
other form is “proper use.”
When launching a business in Japan, it is critical to decide the
Japanese pronunciation of the business trademark as soon as
possible, whether it is a simple transliteration of the original mark
in Latin script or a modified transliteration with a better ring to it
when pronounced in Japanese. Best practice would be to consult
Japanese business counterparts for seemingly suitable Japanese
pronunciations of the trademark in Latin characters that fit into
the Japanese syllabic phonological system.15 If the adopted or
“natural” Japanese pronunciation of a trademark in Latin script
deviates from its original pronunciation, it is advisable to file a
separate application for the Japanese version in katakana
characters16 or combine the Latin and katakana versions in the
form of nidan-heiki. Deciding and defining the Japanese
pronunciation of a Latin script trademark is like adopting a brand
new trademark in Japan.
14. According to the JPO’s Appeal Manual, use of either one of the two elements of
nidan-heiki trademarks would be deemed a legitimate use of the registered trademark,
provided both have the same concept.
15. Standard Japanese uses 100 distinct syllables and a moraic /n/. A pronunciation of
a trademark consists of any sequence of 5 single vowels, 62 consonants combined with a
vowel, 33 consonants combined with y plus a vowel, and the /n/ as cited from Columbia
University, East Asian Curriculum Project, Contemporary Japan: A Teaching Workbook,
http://afe.easia.columbia.edu/japan/japanworkbook/language/lsp.htm (last visited Jan. 31,
2013).
wa
ra
ya
ma
pa
ba
ha
na
da
ta
za
sa
ga
ka
a
--
ri
--
mi
pi
bi
hi
ni
--
chi
ji
shi
gi
ki
i
--
ru
yu
mu
pu
bu
hu
nu
--
tsu
zu
su
gu
ku
u
--
re
--
me
pe
be
he
ne
de
te
ze
se
ge
ke
e
--
ro
yo
mo
po
bo
ho
no
do
to
zo
so
go
ko
o
--
rya
---
mya
pya
bya
hya
nya
---
chya jya
shya gya
kya
--
--
ryu
---
myu pyu
byu
hyu
nyu
---
chyu jyu
shyu gyu
kyu
--
--
ryo
---
myo
byo
hyo
nyo
---
chyo jyo
shyo gyo
kyo
--
pyo
16. For example, the French apparel company LaCOSTE has separate trademark
registrations in Japan for LACOSTE in Latin script, ラコスト (LAKOSUTO in katakana)
and ラコステ (LAKOSUTE in katakana). The company adopted ラコステ (pronounced
Lakosuté) as its trade name in the early 1970s in Japan, presumably because it was the
natural, if not correct, pronunciation of LACOSTE. Likewise, the American food company
Del Monte Corporation adopted デルモンテ (pronounced Delu Monté) as its brand name in
Japan and owns registered trademarks DEL MONTE and デルモンテ but no registrations
for デルモント (DELU MONTO), which should be the more appropriate transliteration of
the English company name “Del Monte.”
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B. Marks in Chinese Characters
Even more complicated than registration of nidan-heiki
trademarks is the proper registration in Japan of marks that were
originally in Chinese characters. Correct pronunciation of Chinese
characters is much harder to achieve in Japan than it is anywhere
else, for Chinese characters were introduced in Japan more than
1,600 years ago and have since become incorporated into Japan’s
own syllabic pronunciation system. The correct pronunciations of
Chinese or kanji characters are different in the two linguistic
systems. For example, the Chinese and Japanese translations of
“the International Trademark Association” are pronounced very
differently—kokusai shohyou kyoukai in Japanese and guoji
shangbiao xiehui in Chinese—though the characters that make up
the written term in the two languages are substantially identical.17
While Chinese corporations have more frequently been filing
trademark applications in Japan only in Latin characters, these
corporations continue to file applications for trademarks consisting
of Chinese characters and their pinyin translations. Pinyin is the
official system adopted in China, Taiwan, Singapore, and Malaysia
of transcribing Chinese characters into Latin script. In many
cases, the pinyin translations are coupled with devices or
figurative elements, as exemplified below:
Mark A
(Latin)
国際商標協会
(Chinese character)
Guoji Shangbiao Xiehui
(pinyin)
Mark B
国際商標協会
Guoji Shangbiao Xiehui
(Chinese character)
(pinyin)
The foremost reason for filing such trademarks in Japan may be
cost-effectiveness; indeed, three elements of a mark (top, middle,
and bottom in Mark A or top, bottom, and figure in Mark B) can be
registered for the cost of only one trademark application. In
addition, registration in this format may be used, as in this case, to
deter third parties from using any one of the above three phonetic
forms as well as from using the visual elements of the mark, i.e.,
17. The only difference lies in the level of simplification of the writing, i.e.,
国際商標協会 in Japan and 国际商标协会 in China.
Vol. 103 TMR
527
those in English, Chinese, and Japanese, in connection with the
designated goods.
Unlike the nidan-heiki marks discussed above, however,
registrations of such “all in one” marks would be vulnerable to
non-use cancellation in the case where only one of the individual
elements is actually used as a trademark. Such use would very
unlikely be considered legitimate use of the registered marks.18
Therefore, trademarks based on Chinese word(s) should be either
in kanji (i.e., Chinese characters) or limited to kanji and its pinyin
translation, taking the form of nidan-heiki. In the latter choice,
either one of the two elements in a registered trademark, i.e.,
Chinese characters and their pinyin, should be considered its
proper or legitimate use.
IV. SEARCH CONSIDERATIONS
As in many other jurisdictions, trademark searches are
conducted in Japan to see if a potential mark is available for use
and registration with respect to certain goods or services.
Conducting a trademark availability search in Japan is almost
always equivalent to conducting a search for registered and
pending trademarks, which does not include unregistered
trademarks in use. This is because Japan is a strict civil law
system based on the principle of registration and, as is discussed
later in Section IX, unregistered marks would very rarely pose
obstacles to use and registration of later marks.
For a mark to be registrable, it must above all be distinctive
and not deceptive as to the qualities of the goods or services for
which it is used. Inherent registrability is not always obvious and
is determined by review of registered and refused marks in
trademark databases. If the same or similar suggestive marks
have been accepted or refused, the chances are that the searched
mark will be treated likewise by the Examiner.19 Section VIII of
this article reviews absolute grounds for refusal, while relative
grounds for refusal are reviewed below.20
Similarity in marks and similarity in goods or services are the
two major elements of concern from searching to prosecution to
enforcement. The benchmark for a trademark availability search is
fairly simple: conduct a search for specific goods or services of
interest because the scope of the search is defined by “similar
grouping of goods or services.” This similar grouping is a unique
18. For further discussion, see, e.g., Hiroki Matsui et al., Generally Accepted Identical
Trademarks in Non-Use Cancellation Actions, 62(3) Patent 38-70 (2009).
19. The terms “examiners” and “examination phase” are used in this article to
distinguish them from “appeal examiners” and “appeal phase,” both terms used during
trademark prosecution in Japan.
20. Examination is conducted for relative as well as absolute grounds at the JPO.
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feature of the Japanese system akin to but different from “related”
goods or services, as discussed later.
Trademark practitioners start a search by looking at the
spelling of a proposed mark and coming up with its natural and
possible pronunciations. Except in the case of an “exact match”
search, most of the search is based not on the spelling or figurative
elements but on the pronunciations of the proposed mark and prior
marks. This is a result of the aforementioned peculiarities of the
Japanese language, in which the same sounds can derive from
many different spellings in hiragana, katakana, Romanized kana,
and kanji. For a mark in Latin script that is coined or unfamiliar
to the Examiner of the JPO, the standard applied is how the mark
would be pronounced by an ordinary Japanese citizen (the
Examiner), not how the applicant wishes its mark to be
pronounced.
During the examination phase of the prosecution, two word
marks spelled differently, stylized differently, and/or written in
different characters but pronounced identically will almost always
be found similar to each other.21 Therefore, entering appropriate
and sufficient pronunciations of the searched mark in the
database, whether the pronunciations are those made publicly
available by the JPO or are ones prepared by a search company, is
a major premise for a valid search.
A typical word mark search is conducted on the basis of
natural and possible pronunciations of the searched mark as well
as the pronunciations of the prior marks that have already been
entered by the JPO or search companies in their databases.
Possible pronunciations of prior marks are conceived and
accumulated by (subcontractors of) the JPO in its database, on
which search companies’ databases are developed. The searcher
needs to think of natural and possible pronunciations of the
searched mark so that properly relevant prior marks will be
retrieved from the databases.
21. The basic structural unit for building Japanese words is the syllable with fourteen
basic consonants (k, s, t, n, h, m, y, r/l, w, g, z, d, b, and p) always combined with only five
vowels (a, i, u, e, and o). No phonetic distinctions are made between b and v, l and r, s and
th, g/j and z, etc. Combinations of such marks that would be pronounced exactly the same
and be found similar by examiners include PAD and PUDDO [aipad-do], LOVE and RABU
[ra-bu], WRANGLER and LANGLAR [ra-n-gu-ra:], SLEW and THROUGH [su-ru:],
SHIPPER and SIPPER [ship-pa:], JIGGY and ZIGGY [ji-gi:], and LOCUS and RHOCAS
[ro:-kasu].
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529
Figure 1: Scopes of Identical and Similar Trademarks
SIMILAR
Similar Pronunciation
Similar Appearance / Similar Concept
SIMILAR
Identical Pronunciation
IDENTICAL
Exact Match
When a search reveals a prior mark or marks that would be
found identical or similar to the searched mark, there are five
available options to consider: (1) adoption of a completely different
mark; (2) modification of the mark by adding a desired
pronunciation or transliteration in katakana to the word mark in
Latin script or Chinese characters; (3) legal argument against the
Examiner; (4) negotiation with the owner(s) of the prior mark(s);
and (5) filing of cancellation or invalidity action(s) against cited
marks.
With regard to Option 2,22 as described earlier, a word mark in
Latin script or Chinese characters usually has more than one
natural or possible pronunciation in Japanese. If the pronunciation
of a prior mark revealed in a search report is identical or similar to
the desired pronunciation or an undesired one for the mark sought,
the potential applicant should consider adding the katakana
transliteration of the desired pronunciation to the adopted mark in
the form of nidan-heiki so that the mark may be sufficiently
differentiated from the problematic prior mark.23 In the case of the
mark REGIUS mentioned above, the potential applicant could
effectively preclude the possibility of receiving, or substantially
increase the chances of overcoming, an objection based on a prior
mark pronounced as レギアス [re-gi-ahs(u)] or レジウス [le-jiuhs(u)] by simply adding its more proper katakana pronunciation
of リージャス to the mark in Latin script.
22. Options 3 to 5 are discussed in detail in later sections.
23. It would no longer be possible to add katakana characters or any other distinctive
elements to an already applied-for mark for which registration is pending.
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In an actual case, Costco Wholesale Corporation initially filed
an application for コスコ (pronounced Kosuko) in 1996 as its
Japanese trade name but later filed for registration of コストコ
(pronounced as Kosutoko) and adopted the same as its official
trade name in 1997. This was in spite of the fact that コスコ is a
much closer rendition of the original English pronunciation of
Costco. According to several sources of information,24 Costco’s
adoption of コストコ was driven by the existence of earlier
trademarks COSCO, which are pronounced exactly the same as
コスコ but not similar to コストコ. While the reason behind the
adoption of コストコ —which is much less similar to the original
Costco in sound—has not been disclosed, it should also be noted
that コストコ is the most natural pronunciation in the Japanese
syllabic pronunciation system and is more suggestive of the term
“cost” to Japanese consumers.
V. SIMILARITY OF TRADEMARKS
The JPO has developed fairly effective, publicly available
examination guidelines over the past forty-odd years.25 The
primary considerations in evaluation of marks are found in the
first two principles of the Examination Guidelines for
Trademarks26 (as cited below in its official English translation);
these principles are based on decisions made by the Supreme
Court of Japan:27
Principle 1: In judging the similarity of a trademark, decisive
elements of the trademark, including its appearance, sound, and
concept, need to be comprehensively taken into consideration
[emphasis added].
Principle 2: A judgment on the similarity of a trademark needs
to, with consideration given to a class of main users (for example,
professionals, senior people, children, women, etc.) of goods or
services on which the trademark is used, be made based on
attentiveness usually possessed by the user, with consideration
24. See, e.g., the descriptions at http://www.daytradenet.com/Tokyo/2006/costco/
costco.htm and http://www.daytradenet.com/Tokyo/2006/costco/costco.htm (last visited Jan.
27, 2013), the latter of which cites its information source as an earlier version of Wikipedia
Japan.
25. The first edition of the Examination Guidelines for Trademarks was made available
to the public in 1971. The JPO made an English translation of the 9th edition, available at
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/tt1302-002.htm. The 10th edition of the
Examination Guidelines for Trademarks, published in May 2012, is currently applicable to
applications filed after April 1, 2012.
26. Japan Patent Office, Examination Guidelines for Trademarks (10th ed. 2011). An
official English translation of its 8th edition is available at http://www.jpo.go.jp/
tetuzuki_e/t_tokkyo_e/tt1302-002.htm.
27. Hyozan case, Supreme Court, decision of Feb. 27, 1968, 22-2 Minshu 4000.
Vol. 103 TMR
531
given to the (actual) state of transaction of the goods or the
provision of the services [emphasis added].
While these abstract principles have an extremely wide scope
but are difficult to apply, the rules that follow specify
circumstances where trademarks in comparison “shall be deemed
(or judged) similar” in appearance, sound, concept, or as a whole.
The following is an example of such specific rules on phonetic
similarity, leading to overall similarity between trademarks,28 as
officially translated into English by the JPO:
If both of the trademarks fall under any of the following
criteria mentioned in (1) to (8) of (II), such trademarks shall be
deemed, in principle, to be similar in sounds.
(II) (1) When both trademarks consist of the same number of
sounds, and one of the different sounds has a common vowel.
“スチッパー” [SCHIPPER]
“SKiPER”
“VANCOCIN / バンコシン”
“BUNCOMIN / バンコミン”
“ミギオン” [MIGION]
“ミチオン” [MICHION]
(2) When both trademarks consist of the same number of
sounds, and one of the different sounds is on the same line of
the table of the Japanese syllabary.
“アスパ” [ASUPA]
“アトミン / Atomin”
“VULKENE”
“アスペ” [ASUPE]
“ATAMIN / アタミン”
“VALCAN”
(3) When both trademarks consist of the same number of
sounds, and one of the different sounds is only a difference of a
voiceless sound, voiced consonant or Japanese voiceless
bilabial plosive consonant.
“HETRON (ヘトロン)”
“PETRON / ペトロン”
“KUREKA / クレカ”
“GLECA / グレカ”
“サンシール” [SANSEAL]
“SANZEEL / サンジール”
(4) When the different sounds are both weak, and whether
there is a weak sound or not.
“DANNEL”
“DYNEL”
“山清” [YAMASEI]
“ヤマセ” [YAMASE]
“VINYLA”
“Binilus”
On the basis of these guidelines and relevant decisions made
by higher courts’ rulings, JPO examiners and practitioners alike
conduct searches and ascertain the registrability of trademarks.
28. The Examination Guidelines for Trademarks devotes a total of eleven pages to
similarities in trademarks in terms of appearance, sound, and concept, of which nine pages
are devoted to phonetic aspects of similarities between marks.
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More consideration is given to consistency in examination than to
likelihood of confusion in the course of trade. In this respect,
Principle 2, referred to above, has less significance during
examination than in the appeal phase of the JPO or in revocation
or infringement proceedings in court.29
VI. SIMILARITY OF GOODS OR SERVICES—
APPLICATION OF THE “SIMILAR
GROUPING SYSTEM” STANDARDS
Trademark searches and examinations in Japan are conducted
on the basis of ruiji-gun or “similar groups” of goods or services,
not classes. Because of its apparent uniqueness, the “similar
grouping system” can seem something of a conundrum to
trademark practitioners in Western countries. On the other hand,
it is gaining increasing popularity in neighboring Asian
countries,30 most likely because of its uniform and consistent
applicability. Because this grouping method for goods and services
plays a significant role at every stage of trademark prosecution
and enforcement in Japan, its history, principles, and examples of
actual application to the determination of similarity in goods or
services are discussed in detail below.
A. “Similar Grouping System” in Summary
The “similar group system,” that is, grouping by similarity of
goods and services, derives from the former Japanese local system
of classification of goods adopted in 1959 and was established in
1992 when Japan adopted the International Classification of
Goods and Services (Nice Classification). The Japanese
classification that had been in use before 1992 consisted of
hierarchically arranged conceptual groups of similar goods with
generic descriptions (hereinafter “similar group headings”) such as
“Chemicals,” “Pharmaceutical Preparations,” “Telecommunication
Machines and Apparatus” and “Electronic Machines, Apparatus
and their Parts” at the top of the numerous similar groups, as
shown below in a rather simplified manner:
29. As discussed in Section VIII, an overwhelming majority of objections on relative
grounds are raised under Article 4(1)(xi) of the Trademark Act, which is solely based on
similarity in trademarks and goods or services. Likelihood of confusion in the course of real
trade under Article 4(1)(xv) is relied on when there is no similarity in trademarks or
goods/services during the examination phase.
30. East Asian countries, including Korea, China, and Taiwan have adopted
comparable systems based on similarity in goods and services.
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533
Figure 2: Hierarchical Arrangement of
Japanese Classification
Japanese Class 1
CHEMICALS
Inorganic acid
PHARMACEUTICAL PREPARATIONS
Organic acid and
their salts
Pharmaceutical
agents affecting
sensory organs
Alkalies
Caridovascular Agents affecting
agents
respiratory organs
Anti-tussive expectorants
Anti-cough drops
Respiratory stimulants
Vasoconstrictors
Antihypertensives
Cardiotonics
Anti–motion sickness agents
Agents for optical and nasal
use
Agents for ophthalmic use
Slaked lime
Caustic potash
Ammonia water
Benzoic acid
Aminonaphthol toluidine
sulfonate
Adipic acid
Hydrochloric acid
Chlorosulfonic acid
Sulfurous acid
Japanese Class 11
ELECTRONIC MACHINES, APPARATUS AND
THEIR PARTS
TELECOMMUNICATION MACHINES
Telephone
apparatus
Wire
communication
machines
Transmission
machines and
apparatus
Electronic
machines and
apparatus
Electron tubes
Semi-conductor
elements
Transistors
Diodes
Thermistors
Vacuum tubes
Photosensitive tubes
X-ray tubes
Electronic desk calculators
Electrostatic copying
machines
Computers and their
peripherals
Power-line transmission
machines and apparatus
Cable transmission machines
and apparatus
Audio frequency
transmission machines
Facsimile machines
Automatic telegraph
apparatus
Teletypewriters
Automatic switching
apparatus
Portable telephones
Intercoms
This conceptually hierarchical grouping method is based on
similarity, whereas the class headings are “general indications
relating to the fields to which the goods or services belong” and the
alphabetical list merely includes examples of individual goods and
services that fall into any one of the classes, according to the
General Remarks of the Nice Classification. In essence, Japan’s
“similar grouping system” combines two different types of
classification whereby all similar groups that had been devised
under the former local Japan classification were transferred as a
whole and intact to one of the Nice international classes, with each
assigned a “similar group code,”31 as illustrated below.
31. Every similar group is assigned a code, such as 01B01, 11C01, and 32F04, that
consists of two numbers representing its former Japanese classification, a letter and two
taxonomic numbers. There are about 700 such similar group codes for goods and services.
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Figure 3: Cross-Classification Transfer of
Similar Groupings
Japanese Class 1
International Classification
Class 1
Chemicals
Chemicals (01A01)
Pharmaceutical
Class 4
Dental floss
Solid lubricants (01A01)
Solid lubricants
Class 5
Pharmaceutical preparations (01B01)
Class 21
Dental floss (01C01)
Japanese Class 11
Class 9
Electronic Machines and
Apparatus
Electronic Machines and Apparatus
(11C01)
Telecommunication
Machines and Apparatus
Telecommunication Machines and
Apparatus (11B01)
Electric toothbrushes
Class 11
Electric lamps and other
lighting apparatus
Electric lamps and other lighting
(11A02)
Class 21
Electric toothbrushes (11A07)
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535
In this grouping by similarity, similar goods are conceptually
grouped and hierarchically subsumed under such similar group
headings as “Chemicals,” “Pharmaceutical Preparations,”
“Telecommunication Machines and Apparatus,” “Clothing” (Class
25), “Toys & Dolls” (Class 28) and “Western liquors” (Class 33) in
conformity with the principle adopted under the Japanese
classification.
In addition to these groups of similar goods based on the local
classification, the JPO prepared hierarchical, or horizontal,
conceptual groups of similar services in 1992.
Figure 4: Horizontal Arrangement of Services
Class 35
ADVERTISING AND PUBLICITY – 35A01
Internet
advertising
Traffic advertising
Outdoor advertising
EMPLOYMENT AGENCIES – 35D01
Medical doctor
referral
Housekeeper
referral
Referral of cleaning
engineers
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Class 36
NO GENERIC DESCRIPTION – 36A01
Acceptance of deposits [including substitute bond issuance] and
acceptance of fixed interval installment deposits; Acquisition
and transfer of monetary claims; Agencies for bond
subscriptions; Brokerage of credit purchase; Domestic exchange
settlement; Foreign exchange transactions; Letter-of-Credit
related services; Liability guarantee and acceptance of bills;
Loans [financing] and discount of bills; Money exchange
[exchanging money]; Safekeeping of valuables including
securities and precious metals [safe deposit services]; Securities
lending; Trusteeship of financial futures contracts; Trusteeship
of money, securities, monetary claims, personal property, land,
rights on land fixtures, surface rights or lease on land.
NO GENERIC DESCRIPTION – 36B01
Agencies or brokerage for entrusting agents with oncommission trading in domestic markets of securities, securities
index futures and securities options; Agencies or brokerage for
entrusting agents with on-commission trading in overseas
markets of securities, and securities index futures; Agencies or
brokerage for forward agreement of securities, for forward
agreement of securities index futures, for forward agreement of
securities options, spot and forward transaction of securities
index futures; Agencies or brokerage for trading of securities,
securities index futures, securities options, and overseas
market securities futures; Brokerage for securities liquidation;
Buying and selling of securities; Providing stock market
information; Securities offering; Securities underwriting;
Trading of overseas market securities futures; Trading of
securities index futures; Trading of securities options;
Transaction of securities subscription or offering.
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Class 38
TELECOMMUNICATION – 38A01
Mobile
telephone
communication
Telex
services
Communications
by computer
terminals
BROADCASTING – 38B01
Radio
broadcasting
Television
broadcasting
All of these groups of goods and services are based on
presumed similarity within each group and presumed dissimilarity
between and among groups. More precisely, goods or services
falling under the same similar group are presumed similar to each
other, whereas goods or services belonging to different similar
groups are presumed not similar. The Examination Guidelines for
Similarity of Goods and Services32 contains well over 5,000 entries
of goods and services that are conceptually grouped by similarity
and are assigned similar group codes. While most goods or services
belonging to similar groups belong in one class, many of them
belong in multiple classes, and some goods in one class are similar
to those in other classes.33
According to the Examination Guidelines for Similarity of
Goods and Services, the conceptual grouping of goods by similarity
has been carried out by globally considering possible
correspondence between goods in terms of (a) production, (b) sales,
(c) raw materials and qualities, (d) uses, (e) the goods’ particular
consumers, and (f) the part-whole relationship between the goods,
taking into consideration actual use of trademarks in the course of
trade.34 As for similarity in services, global consideration is given
to possible correspondence in terms of (a) providers, (b) consumers,
(c) means, purposes, or locations of service provision, (d) associated
products, (e) fields of business, and (f) applicable laws and
32. The Examination Guidelines for Similarity of Goods and Services is by far the most
referenced source material among Japanese trademark practitioners. The JPO also provides
electronically available entries of accepted goods and services under the same rules and
principles of these guidelines.
33. For example, the similar group (SG) code for dairy products is scattered across
Classes 5, 29, 30, 32, and 35 (i.e., retail or wholesale services for dairy products) and the SG
code for bulbs can be found throughout Classes 6, 7, 11, 17, 19, and 20.
34. The term “confusion” or “confusingly similar” is not used in Article 4(1)(xi) of the
Trademark Act, which is applicable to later applications for marks identical or similar to
prior marks in connection with identical or similar goods or services. The term “confusion” is
mentioned only once in the Examination Guidelines for Similarity of Goods and Services.
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regulations, taking into consideration actual use of service marks
in the course of trade.35
Goods or services do not have to fulfill all of these criteria at
once in order for similarity to be presumed. As a former chief
examiner of the Trademark Appeal Division of the JPO stated in a
detailed commentary on the Examination Guidelines for
Trademarks:
Pharmaceuticals, nightwear, underwear or confectioneries
should be considered similar if they share production, sales
and uses. Alcoholic beverages, bread, confectionaries, furniture
or fittings should be considered similar if they share sales, raw
materials, qualities and consumers. On the other hand,
pharmaceuticals, medical supplies, soap, cosmetics, miso or
sauces should not be considered similar unless there is
correspondence in production, raw materials, qualities and
uses.36
Obviously, the similarity-of-goods criteria (a) through (e) and
the similarity-of-services criteria (a) through (f) are abstract,
despite or because of which the method of application of the
criteria to certain groups of goods (e.g., pharmaceuticals,
nightwear, underwear, confectioneries, alcoholic beverages, bread,
confectionaries, furniture), as suggested by the former examiner,
seems ad hoc at best. But this is only one side of the coin. Indeed,
there is the other face of the Examination Guidelines for Similarity
of Goods and Services, as expressly stated immediately after the
aforementioned criteria: “In principle, it (determination of
similarity of goods or services) shall be pursuant to the
Examination Guidelines for Similarity of Goods and Services.”37 In
other words, global consideration mentioned in the preceding
sentence shall not apply to individual examiners’ determination of
similarity in goods or services.
Of note in this regard is how the abstract consideration of
various elements of similarity before cementing the classification
rules (e.g., computers and electron microscopes are similar;
computer monitors are not similar to TV receivers) and the strict
application thereof after such rules are established have become
two sides of the same coin. The individual examiners simply apply
the rules materialized in the Examination Guidelines for
Similarity of Goods and Services.
As a result, many trademark practitioners at home and abroad
find such determination of similarity too rigid, inflexible, and often
35. Id.
36. Kanji Kudo, Jitsurei de Miru Shohyo Shinsakijun no Kaisetsu (Commentary on
Examination Guidelines for Trademarks) (Hatsumei Kyokai, 2012), 339. This is a summary
translation written by the author.
37. Id. at 12.
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539
unreasonable. By “rigid or inflexible,” they mean that JPO
examiners would very rarely change the initial determination of
similarity based on the Examination Guidelines for Similarity of
Goods and Services. By “unreasonable” they mean that their goods
seem very remote from goods in the prior marks cited in office
actions. For example, some may think it unreasonable to regard
cutting-edge computer accessories such as a three-dimensional
mouse or a solar-powered keyboard similar to antique vacuum
tubes—and yet the computer accessories may be placed in the
same category with such older articles. While there are a few
appeal cases each year where similarity of goods or services is
shown to be in conflict with the established rules,38 it is next to
impossible to have those rules overturned during the examination
phase.
There is no doubt that the Examination Guidelines for
Similarity of Goods and Services, as the de facto standard for
ascertaining similarity of goods and services, has served its
purpose in ensuring an “appropriate and uniform examination of
trademark applications.”39 Given the fact that Japan follows the
principle of registration whereby trademark rights are conferred
through registration and not use, broad descriptions of goods or
services must appear in applications and registrations. Under the
regulatory authority of the government, it also seems reasonable to
draw clear lines between and among similar groups of goods or
services as well as between the examination and appeal phases of
prosecution. There is always a trade-off between wide applicability
and concrete validity, between predictability and flexibility, and
between enduring and contingent application of rules or law.
Some of the complaints about the similar grouping system
arise from typical misunderstandings of how the system works.
One major misunderstanding is considering similar group
headings such as “chemicals” or “pharmaceutical preparations” to
be the names of goods as such. However, to compare specific goods
with such a similar group heading is like comparing apples with
fruit. If a prior mark designating “apples” (or “sulfurous acid,” etc.)
is cited against an applied-for mark designating “fruits” (or
“chemicals”), the applicant must first limit the “fruits” (or
“chemicals”) to particular fruits such as oranges (or “slaked limes”)
and then argue that such particular fruits (or chemicals) are not
similar to “apples” (or “sulfurous acid”). Whether or not the JPO
should accept such arguments at the examination phase remains
arguable, given the critical balance between predictability and
flexibility.
38. See, e.g., Shigeki Ishii, Similarity of Goods and Services, 60(4) Patent 61-75 (2007).
39. Cited from the Examination Guidelines for Similarity in Goods and Services, on the
significance and policy of the guidelines.
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B. Similarity of Goods and Services
as Family Resemblance
Besides the issues specific to Japan’s similar grouping system,
there are common concerns about predictability and flexibility
when applying concepts of similarity between and among a huge
diversity of goods. In an effort to support the basic concept of
similar grouping and put it into broader theoretical perspective, it
is important to understand the effectiveness and limits of “family
resemblances”40 shared by members subsumed under the similar
group headings.
Suppose one similar group of goods41 is a family tree, big or
small, consisting of brothers and sisters, mothers and fathers,
grandmothers and grandfathers, their brothers and sisters, sons
and daughters, etc., who resemble each other by sharing some
features. This can be described as simple formal models, wherein
A, B, C, D . . . are features of individual members:42
The Smiths:
The Browns:
1. Andy
ABC
1. Steve
ABC
2. Caroline
BCD
2. Nicole
BCD
3. Johnny
CDE
3. Tad
ACD
4. Beth
DEF
4. Kate
ABD
...
In the Smiths model, Andy and Beth have nothing in common,
whereas in the Browns model all four members share two of the
three features with each other. The Smiths model has no limits or
boundaries because the number of its members can increase
infinitely by adding one new feature G, H, I, J, K . . . To the extent
that the similar grouping system as adopted by the JPO is
supposed to have limits or boundaries on the scopes of similarity, it
should follow the Browns model.
It is important to note, however, that even the Browns
model—with only four members each having only three of the four
40. Family resemblance is a philosophical concept explored and made popular by
Ludwig Wittgenstein in his 1953 book, Philosophical Investigations. Wittgenstein says that
although the conventional view of categories or classes relies on necessary features common
to all items covered by those categories or classes, things that may be thought to be
connected by one essential common feature may in fact be connected by a series of
overlapping similarities, with no one feature common to all. These similarities are
characterized as family resemblances. The example of games illustrates the claim that
certain phenomena do not have “one thing in common which makes us use the same word
for all—but they are related to one another in many different ways.” See, e.g., Keiichi Noya,
Uitogenshutain no Chi (Wittgenstein’s Intellect), Shinshokan 148-49 (1999).
41. Goods and/or services are hereinafter referred to as “goods” for the sake of
simplicity.
42. These features may be either those intrinsic or extrinsic to goods, including their
manufacturers, sellers, purchasers, etc., or both.
Vol. 103 TMR
541
features—lacks an essential feature common to all members.
Likewise, goods subsumed under the conceptually similar group
heading of “pharmaceuticals” or “electronic machines and
apparatus” would lack essential features common to all. If there is
one such essential feature, that is family resemblance between
those under the umbrella of the group heading.
In reality, goods usually have more than four features (A, B, C,
and D) and thus are much harder to classify into conceptual
groups. For goods in the actual course of trade, it is sometimes
difficult to sustain the Browns model and prevent it from being
changed into a Smiths model. This is especially true in an everchanging market situation, with an increasing number of goods,
services, and contingencies. Goods that used to be considered
similar may no longer be so, or vice versa, because the features
that were once considered essential in certain goods may no longer
be so especially in the era of rapid technological innovation and
dynamic economic development.
Similarities are not at all static in time, context, and aspect,43
Thus, there is the need for a constant review of the Examination
Guidelines for Similarity of Goods and Services at the JPO.
Accordingly, the guidelines have been updated every five to ten
years since the first edition in 1961 and are in the 10th edition,
effective January 1, 2012, after taking into consideration opinions
from trademark owners and practitioners.
In addition, there are no sharp boundaries between and
among conceptual categories. Hence, the need for presuming
similarity or dissimilarity of goods and services subsumed under
the same or different similar groups. Presumed similarity may be
rebutted by arguments on a case-by-case basis according to the
points raised in the Examination Guidelines for Similarity of
Goods and Services, i.e., correspondence between the goods in
terms of (a) production, (b) sales, (c) raw materials and qualities,
(d) uses, (e) consumers, and (f) their part-whole relationship.
Likewise, arguments against presumed similarity may be
presented on a case-by-case basis according to the points raised in
the Examination Guidelines for Similarity of Goods and Services—
that is, correspondence between the services in respect of
(a) providers, (b) consumers, (c) means, purposes, or locations of
43. Things can be recognized very differently in different contexts or with different
intentions. This simple fact was also suggested by Wittgenstein’s concept of aspect-seeing.
The same thing looks different from different perspectives depending on where the light is
falling and the shadow is made. We do not just see things but see them as something. Id. at
166. We see the following Duck-Rabbit figure either as a duck or a rabbit but not both at the
same time:
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provision, (d) associated products, (e) fields of business, and
(f) applicable laws and regulations. All such arguments must take
into consideration actual use of marks in the course of trade.
VII. APPLICATIONS—NATIONAL OR INTERNATIONAL
The JPO started accepting international applications filed
under the Madrid Protocol in April 2000. Accordingly, there are
currently two ways—national and international—to secure
protection of trademarks in Japan. While the foremost
consideration should be given to the worldwide marketing strategy
in deciding whether to file national or international applications, it
is worth discussing the two options from a purely local perspective.
In principle, foreign applicants may file national trademark
applications with the JPO only through a representative domiciled
or residing in Japan. All procedures before the JPO thereafter
must also be carried out by such appointed representatives in the
Japanese language. In contrast, international applications may be
filed in English with the International Bureau of WIPO through
the intermediary of the office of origin, i.e., the office with which
the basic application was filed or by which the basic registration
was made.44 Japan restricts the applicant’s choice of language to
English only.
Foreign applicants must be either natural persons or legal
entities. If an international application designating Japan is filed
for a collective mark, certification mark, or guarantee mark, the
application can be accepted only as a collective mark application
pursuant to Article 7 or 7bis of the Trademark Act.45 This does not
mean that the certification or guarantee function of a mark is not
protected in Japan. Collective, certification, and guarantee marks
are different in name only.
The crucial line is drawn between regular and collective marks
because protection of marks through the Madrid System may
become unattainable simply by checking the collective mark box in
Form MM2 (the application for international registration).
Pursuant to Article 7 of the Trademark Act, only those foreign
associations that are equivalent to incorporated associations under
Japanese law46 shall be allowed to protect their marks as collective
marks. If foreign applicants or holders of international
44. Article 2(2) of the Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks.
45. This article does not discuss regional collective trademark because of its minor
relevance to foreign applicants.
46. Article 7(1) provides: “Any General Incorporated Association or any other
incorporated association established pursuant to a special Act including business
cooperative, or a foreign juridical person equivalent thereto shall be entitled to obtain a
collective trademark registration with respect to a trademark to be used by their members.”
Vol. 103 TMR
543
registrations cannot show by evidence that they are equivalent47 to
those incorporated associations under the law, the protection of the
mark in Japan is totally and finally refused. Therefore, unless the
applicant is absolutely convinced that it is one of such foreign
associations under Japanese trademark law and is sure to prove
such fact, it should not click the collective mark box in the
application designating Japan.48 This is in stark contrast with a
national application, in which it would be easy to amend the
collective mark application to a regular one.
A. Determining the Trademark to Register
One of the major advantages of filing a national application
over an international application is the flexibility one has in
choosing trademarks that can be adopted in light of the results of
the search, if conducted. If the searched trademark is found to lack
distinctiveness or be similar to prior marks and if the applicant
does not want to adopt a completely different mark in Japan, the
applicant should consider adding figurative elements to the
searched mark or adopting a nidan-heiki trademark to possibly
differentiate the mark from the prior marks.
Adding figurative elements or a house mark, etc., to a
descriptive or otherwise nondistinctive mark would preclude
possible nondistinctiveness objections easily. Though less frequent
and more arguable, adding the correct katakana transliteration of
a mark in Roman or Chinese characters would lower the risk of
refusal based on prior marks that could be similar in sound to the
incorrectly pronounced later mark. Because the scope of
examination is substantially defined by sounds of marks,49 it is
very important to have the correct or intended pronunciations of
applied-for marks entered in the JPO online database.
A less-known measure to help establish the correct Japanese
pronunciation of an applied-for mark is to inform the JPO of the
pronunciation as intended or as in use in other countries. This
measure can be taken if the applicant is unsure whether the
intended pronunciation would be assigned to the mark or if it is
47. A more generous term “comparable” might be a better translation of the Japanese
phrase soto suru in Article 7(1).
48. This advice should not be taken to apply to all international applications
designating other parties in addition to Japan, given the rule that does not allow an
applicant to selectively seek protection of its mark as a regular or collective mark on a
country-by-country basis.
49. As mentioned above, examiners’ search results are based on those assigned
pronunciations of the mark that have been entered in the JPO database. If there is any
ambiguity as to the correct or “natural” pronunciation of certain words used in a trademark,
the JPO (or its subcontractors) will assign it more than one possible pronunciation.
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found that such pronunciation has not been assigned.50 While this
is not a legally warranted procedure, the JPO will most likely add
the intended pronunciation(s) for internal search and examination
purposes. If the pronunciation provided by the applicant is not so
problematic and is roughly the same as the one that would
otherwise have come to the Examiner’s mind, voluntary
submission of information of this sort will work in the applicant’s
favor, as the Examiner will conduct his or her examination on the
basis of the preferred pronunciation as well.51
An important note on international applications designating
Japan is that an applicant is not allowed to amend its mark in any
way, whereas a foreign applicant filing a national application may
amend its mark to a certain extent. This could become a matter of
life and death for marks incorporating such adjunct nondistinctive
indications as “ISO,” “JIS,” and “Patent” or geographical
indications such as “(made in) Paris” or “(manufactured in) China,”
which may be deleted from the marks only in national
50. In principle, information on pending applications, including pronunciations of
marks assigned by the JPO, shall become available in the Industrial Property Digital
Library (IPDL), http://www.ipdl.inpit.go.jp/ Syouhyou/syouhyou.htm.
51. Though practically inconceivable, it is possible for the holder of an international
registration to do the same through his Japanese representative before the JPO issues a
notification of provisional refusal. Such information on appropriate or possible
pronunciation of marks can also be submitted after the granting of registration. Some worldfamous brand owners do seem to make quiet but effective efforts to preclude third parties
from entering or coming closer to the scope of similarity of their marks by requesting the
JPO to assign as many pronunciations as possible to them. For example, the mark LEVI’S
has been assigned a total of eleven pronunciations in the JPO database, namely, リービス,
レビス, レビ, リーバイス, リーバイ, リバイ, ルビ, レービーズ, レービー, レバイス, and
レビース. The mark CARTIER is assigned well over thirty (30) pronunciations, including
カルチエ, カルティエ, カルテイエ, カルテ, カルチエール, カルティア, カルティアー,
カルタイア, カルチャー, カルチャア, カールティアー, カーチャー, カーチア, カーチェ,
カーチエール, カーティア, カータイア, カーティアー, カアチャア, キャルティアー,
キャルチャー, キャルティア, キャルチエ, キャルチェ, キャーティア, and many more. While
リーバイス and カルティエ in boldface are the intended pronunciations, these registered
marks enjoy very broad scopes of protection by leaving their “correct” pronunciation
indefinite at the JPO. Indeed, the possible pronunciations of LEVI’S listed above would
serve to effectively remove such later marks as REVIS, REEVIS, REEVES, LEAVIS,
LAEVIS, REBIS, LEBIS, REBISU, LEBISU, LEVY, LEWYI, LEWY, REVI, LI BAI,
REBUY, RUBY, RABIES, REVISE, LIVISE and marks similar thereto in connection with
the designated goods and services. In the same manner the possible pronunciations of
CARTIER above would serve to effectively remove such later marks as KALCHIE, KALTIE,
KARTIER, KARCH-ALE, CARTE, CARTIE, KARTE, CULTIA, KERCHER, KATJA,
KAATJE, CACIA, CARTIRE, CARTIER, CALTIER, KYARTIA, CALTURE and marks
similar thereto. Generally, the number of possible pronunciations of such inherently hardto-pronounce marks as LEVI’S or CARTIER is much larger when it has not achieved fame
in Japan. As the mark becomes well-known or famous, its pronunciation by the consumers
should converge on one pronunciation as a matter of course. Some brand owners seem to
resist this general trend, thereby securing the broadest number of pronunciations possible.
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applications.52 If any such indications are included in a mark for
which an international application was filed and the list of goods is
not limited accordingly, the designation of Japan would be finally
rejected under Article 4(1)(xvi) on a deceptiveness ground.53 A
disclaimer, if made on such words in the Form MM2, would make
no difference. An obvious precaution is to avoid such restrictive
indications in basic applications in the first place. If that is
impractical, a national application should be filed for marks with
no such indications.
B. List of Goods and/or Services
1. Risks Inherent in the Madrid and
Nice Classification Systems
A significant risk inherent in the Madrid system centers on
the impossibility of transferring goods or services from one class to
another during the national phase. For once goods or services are
accepted by the office of origin and the International Bureau in a
certain class, they may not be transferred to another class. This is
problematic because some goods are classified differently from
country to country.
One example is that non- and low-alcoholic beverages (except
beer) are covered in Classes 32 and 33, respectively, in Japan,54
whereas they are both covered in Class 32 in some other countries
such as the United Kingdom. Another example is games that are
all covered in Class 28 in some countries and in Class 9 in other
countries if electronic or connected to an external display (or
console like Nintendo’s Wii), depending on which edition of the
Nice Classification has been adopted in the countries designated in
international applications.55 Yet another example is dietary
supplements that may be classified in Class 1, 5, 29, or 30
depending on the purpose or ingredients.56
52. Examination Guideline for Trademarks, on Article 16bis of the Trademark Act,
http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/syouhyou_kijun/37_16_17-2.pdf (last visited
Feb. 1, 2013) at 3.
53. No trademark shall be registered if the trademark is likely to mislead as to the
quality of the goods or services.
54. The JPO draws a clear line between beer and other alcoholic beverages by including
beer-like low-alcoholic liqueurs (happou-shu) in Class 32 and Japanese shochu- or vodkabased beverages [Chuhai] in Class 33. In most cases, however, they are manufactured by
the same companies, placed on the same shelf, and consumed by the same consumers.
55. By the initiative of the JPO in the negotiations for the 10th edition of the Nice
Classification, all games are now covered in Class 28, whether or not they are electronic,
arcade, or connected to an external display. See Aoi Watanabe, Summary of the Nice
Classification and its Status, 252 Tokugikon 149 (Jan. 2009).
56. All dietary supplements are now covered in Class 5 of the 10th edition of the Nice
Classification. The 10th edition has not, however, been adopted by many countries.
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While the issues in the last two examples have been effectively
addressed during multilateral negotiations for revising the Nice
Classification, the risks are residual to differing degrees from
country to country and from good to good. Some risks inherent in
the Madrid system (e.g., the impossibility of transferring
goods/services in one class to another) may be controlled by
multilateral efforts or individual efforts to become more aware of
such risks. Indeed, these inconsistencies in classification have
become fewer in number thanks to multilateral consultations over
the years.
Some risks are residual, however, because of the inherent
difficulty in classifying goods or services of multiple functions,
uses, ingredients, purposes, etc. As declared in the General
Remarks of the Nice Agreement, a “finished product which is a
multipurpose composite object may be classified in all classes that
correspond to any of its functions or intended purposes.”
Accordingly, exactly the same goods could be covered in Class 9
(radios incorporating clocks) and at the same time in Class 14
(clocks incorporating radios), depending on how the applicant
describes them and wants to protect the mark against real or
potential competitors.
2. Risks Inherent in Securing Protection in Japan
Goods or services must be definitely described, whether in
Japanese or English, and properly classified according to the Nice
Classification under Articles 6(1) and 6(2) of the Trademark Act.
In general, the required level of specification of goods or services in
Japan is somewhere between that required in Europe and the
United States. Unlike in Community Trade Mark applications, the
class headings of the Nice Classification are unacceptable as too
broad and ambiguous. Unlike in U.S. applications, there is no need
to describe, for example, pharmaceutical preparations to the extent
that “disease or condition to be prevented or treated or the health
goal to be achieved”57 is specified.
Goods and services must be described in Japanese in national
applications and in English in international applications. The JPO
has translated all English indications of goods or services in the
Nice Classification and accepts them as definitely described. One
(or more than one) similar group code is assigned to each and
every item of goods and services. All these English indications are
acceptable as they are in international applications, and their
official Japanese translations are acceptable in national
applications. Foreign applicants may get into trouble, however,
57. According to the U.S. Acceptable Identification of Goods and Services Manual (ID
Manual), it would be necessary to specify the disease or condition for which the
pharmaceutical preparations are intended.
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when there is no official translation or equivalent of their
goods/services in the Nice Classification or in the Examination
Guidelines for Similarity of Goods and Services.
Against this background and as part of their joint effort to
harmonize the acceptability of descriptions of goods and services in
international applications, the trilateral offices of Japan, Europe,
and the United States have been engaged in ongoing discussions
since May 2001 to make a common list of goods and services that is
acceptable in the three regions. Because of the mutual
compromises, trilaterally acceptable descriptions are less
rigorously defined according to the similar group system and are
not officially assigned similar group codes. This does not mean that
the principles of the similar group system are not applied to
international applications. Although not officially assigned or
made publicly available, similar group codes are provisionally
assigned for examination purposes to such trilaterally acceptable
English descriptions and may be asserted or challenged when the
applicant receives an office action citing prior marks that
designate goods or services allegedly similar to them.
Below are the two major tips for preparing a list of goods or
services in a national or international application designating
Japan.58 The first set of tips relates to the risks in overly specifying
the goods or services; the second relates to the risks in including
an overly wide range of goods or services in one class.
a. Do Not Overly Specify or Limit Goods or Services
Because amendment to “change the gist” of the designated
goods or services shall be dismissed by the Examiner under Article
16bis(1) of the Trademark Act, it is unwise to overly specify the
goods or services of interest given the possibility of amendment in
response to an office action. Any amendment to broaden or change
the scope of the goods or services, whether or not those goods or
services are clearly described, shall be considered a “change of
gist,”59 whereas amending an unclear description of the goods or
services to a clear description or restricting the scope of the goods
or services would not be considered such.60
58. International applicants can “limit” or adopt the list of goods and services in respect
of one or more designated Contracting Parties in Form MM2.
59. Change of gist of goods or services is a roughly equivalent concept of “material
alteration” in the United States.
60. An apparently simpler but more difficult case would be amending the broad but
acceptable description “chemicals” to “agricultural chemicals.” Although this author believes
such amendment should be acceptable, it is at least cited as an obvious instance of “gist
change” in the aforementioned Commentary on Examination Guidelines for Trademarks, at
378, most likely because “chemicals” and “agricultural chemicals” are both acceptably
definite but belong to different similar groups in Class 1.
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More specifically, amending “prepared entrees consisting of
shrimps and oysters” in Class 29 to read “prepared entrees
consisting of shrimps, calling crabs and/or oysters” would be
unacceptable because it would change or broaden the scope of the
designated goods. If the goods had been described simply as
“prepared entrees consisting of seafood” or “prepared entrees
consisting primarily of seafood” in the first place, such amendment
would be acceptable.61 By the same token, “dental implants” or
“surgical implants” in Class 10 would be preferable to “implants
consisting of synthetic materials” or “implants consisting of living
tissue,” given the possibility of amendment of the goods or a
change in the constitution of implants as a result of technological
innovation.
The other, more effective, way to avoid such difficulty in
amending the description to adequately cover the applied-for goods
is to additionally include in the list the similar group headings to
which the specific goods of interest would most likely belong. In
the immediate examples, the similar group headings are,
respectively, “processed fisheries products” in Class 29 and “dental
machines and apparatus” in Class 10.62 Such an addition is
effective under the similar group system because it will not
increase the risk of receiving an objection based on prior marks or
being challenged for non-use after registration.
b. Do Not Overly Include Goods or Services in One Class
An overly broad designation of goods or services will invite an
objection based on the suspicion that the applicant lacks intention
to use the mark. If one of the class headings of the Nice
Classification is indicated in the list of goods or services in the
application, the Examiner will automatically issue an office action
on the ground that the goods/services are indefinitely described
and that the applicant’s intention to use the mark for them is in
doubt. Accordingly, unless there is a compelling need to broaden
the scope of goods or services to the extent that goes beyond the
scope of actual and possible use, the scope of goods or services
should be within the range to be secured by a total of seven groups
of similar goods or services.63
61. As a related case in 2010, the Intellectual Property High Court ruled that
amending the goods “syrup made from the sap of maple tree” to read “maple syrup” and
transferring it from Class 32 to Class 30 were acceptable.
62. A comparable, but not equivalent, method of identifying goods or services in
countries like the United States is applied by using the term “namely” in such a way as in
the following: “processed seafood, namely, shrimps, calling crabs and oysters” and “dental
apparatus, namely, implants consisting of synthetic materials.”
63. This under-seven-similar group rule is discussed further in the next section.
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VIII. TRADEMARK PROSECUTION
National applications will be published before examination by
the JPO in only three to four weeks after the filing dates;
similarly, the Japanese designations of international applications
will be published in six to eight weeks after the International
Bureau of WIPO notifies the JPO of the designations. A first office
action is typically issued in five to ten months after the filing date
or the notification of the territorial extension to the JPO. Most
likely, such an office action is either an objection to the
application64 or a decision of registration. The risks would have
been avoided or decreased to a great extent if the issues discussed
so far had been properly addressed. Yet the risks remain. As
discussed below, there are four major grounds for refusal of
trademark applications in Japan.
A. Intent-to-Use Marks
If an application includes goods or services that are wideranging and are assigned eight or more similar group codes, it will
receive an objection based on lack of intention to use the mark
under the main paragraph of Article 3(1) of the Trademark Act.65
This objection was introduced in 2007 to deter inclusion of
excessively wide-ranging goods and/or services in any one class of
an application, which had been prevalent among Japanese
trademark practitioners.66 There are two ways to overcome this
ground for refusal.
One is to submit evidence to show the applicant’s current
business in all fields relevant to the goods/services included in the
list or a statement of relevant business plans in three to four years
after the filing date. Actual or intended use of the mark may be
demonstrated by showing the fields in which the applicant
64. An objection takes the form of a Notification of Reason(s) for Refusal for a national
application or a Notification of Provisional Refusal for an international application.
Pursuant to 68-9(1) of the Trademark Act, “(a)ny request for territorial extension to
designate Japan shall be deemed to be an application for trademark registration filed on the
date of international registration provided in Article 3(4) of the Protocol.”
65. The main paragraph of Article 3(1) stipulates: “Any trademark to be used in
connection with goods or services pertaining to the business of an applicant may be
registered, . . .” This paragraph is also applicable to applications covering goods or services
that may be provided only by those with certain legal qualifications in Japan.
66. The earlier prevalent practice was that when a Japanese agent received
instructions from a foreign owner to file a trademark application for certain goods, he or she
would translate an English description of the goods into Japanese, attach to the translation
the relevant similar group heading with the term “other” (e.g., “computer software for
controlling the operation of audio and video devices; other electronic machines, apparatus
and their parts”), and then—with no authorization from the applicant—add all the other
similar group headings in Class 9. While this may have been done out of kindness, such
expansion of the scope of goods with no corresponding bona fide intention to use the mark
would seem unwarranted, especially to trademark owners in common law systems.
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conducts or intends to conduct business.67 Because evidence of the
applicant’s business fields in Japan or elsewhere will be sufficient,
there is no need to draw a clear line between actual and intended
use in Japan in determining the applicability of this ground of
refusal. In this sense, high standards of evidence are not normally
required for proving use, actual or intended, of a trademark. The
hurdle is set much lower than that in defending a non-use
cancellation action.68
The other way is to simply limit the goods or services in the
application to those that may be subsumed under seven or fewer
similar groups. If an application covers an overly broad scope of
goods or services by including class headings or retail services for a
variety of goods that are unrelated, an applicant may overcome
this ground for refusal by specifying the goods and/or services of
real interest. Regarding general retail or wholesale services that
are provided by department or general merchandise stores,
however, the service description cannot be modified to specify a
particular type of good because such an amendment would be
deemed an alteration of substance of the application under Article
16bis of the Trademark Act.
B. Indefinite Descriptions of Goods or Services
This ground for refusal under Article 6(1) of the Trademark
Act is frequently raised before or in combination with the ground
for refusal under the main paragraph of Article 3(1) described
above.69 If the goods or services in a national application are not
classified properly according to the Nice Classification, the
Examiner will raise a ground for refusal based on Article 6(2) as
well. The JPO will not issue an objection under Article 6(2) for the
Japanese designations of international applications. As mentioned
earlier, goods or services that are not properly classified in an
international application may not be transferred to the
appropriate class but may only be deleted.
Although it is this author’s conviction that descriptions of
goods or services in English are more readily acceptable to the
Examiner than those in Japanese and that the scope of similarity
based on the similar grouping system is more loosely applied in
67. Examination Guideline for Trademarks, main paragraph of Article 3(1) at 2.
68. In addition, the registration of a trademark may not be revoked or declared invalid
on the ground of fraud as to the intention to use the mark as in the United States.
69. This objection is to be raised before the Article 3(1) main paragraph objection for
national applications because the latter objection assumes the clarity of the scope of the
designated goods or services. On the other hand, the JPO raises the two objections at the
same time for the Japanese designations of international registrations because of the time
limit of 18 months within which all grounds for refusal need to be notified under Article 5 of
the Protocol Relating to the Madrid Agreement.
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English,70 the determination of the scope of the goods or services
could become even more important when rights based on
international registrations must be enforced. The less rigorous
examination according to the similar group system is not always a
blessing because the courts will decide on the enforceability of
trademark rights on the basis of the goods or services as expressly
described.
Much ambiguity in English descriptions of goods/services
tends to be in the details or the collocation of terms; not all JPO
examiners excel at analyzing or exemplifying, thus often the
collocations do not make much sense.71 More straightforward
examples would be such broad terms as “chemicals,” “cosmetics,”
“pharmaceuticals,” “furniture,” “clothing,” “games,” “non-alcoholic
beverages,”
“business
management,”
“financial
advice,”
“entertainment,” “scientific laboratory services,” or “legal services,”
some of which are readily acceptable in English only and others of
which would be acceptable in both languages with different scopes.
Accordingly, there is uncertainty as to the scopes of enforceable
rights against conflicting marks. This risk remains potential
because such an incident has yet to occur since Japan’s
participation in the Madrid system. Nonetheless, it is undeniably
unprecedented because no such statutory rights had ever been
conferred in a foreign language.72
C. Absolute Grounds for Refusal
In general, marks using foreign words have less risk of
receiving objections on absolute grounds than marks in Japanese
because the former are less tightly linked to the meanings that are
attached in the original language. In other words, they tend to be
considered less descriptive, or more fanciful, in the minds of
relevant traders and consumers in Japan. This is different from
the situation in some other countries where online foreign
language dictionaries are sometimes excessively relied on in the
determination of distinctiveness of marks in their local markets.
Where a seemingly descriptive mark has already been registered
70. As proof of this, a literal English translation of any acceptable Japanese
identification of goods or services in the JPO database would almost certainly be acceptable
in English, although very few Japanese translations of trilaterally agreed English
identifications would be acceptable. In addition, the JPO has given up on assigning similar
group codes to trilaterally agreed descriptions of goods/services.
71. As a rule, JPO examiners provide suggested amendments to the list of goods or
services, which have been found to be too broad or ambiguous under Article 6(1) or the main
paragraph of Article 3(1) of the Trademark Act. If there is any uncertainty in the suggested
amendments or discrepancy between them and the originally intended goods/services, it is
strongly recommended that further revision be made to the suggested amendments.
72. Trademark rights conferred by the protection of international trademark
registrations are the first and only statutory rights that are defined in a foreign language in
Japan.
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or in use in other countries and serves as a source-identifier of
certain goods or services, such facts should be submitted to the
JPO, in response to an office action, as evidence of inherent
distinctiveness.
The fact that a mark has acquired distinctive character
through use (as described in Article 3(2) of the Trademark Act)
may also be submitted in response to a descriptiveness objection.
The JPO’s acceptance of three-dimensional shapes of products or
their packages creates a very high hurdle. The fact that Japan is
expected to start accepting nontraditional marks such as sound
and color marks in the near future does not indicate that it will
lower the threshold of distinctiveness any time soon. As with the
challenges in registering three-dimensional marks as distinctive
source-identifiers, many nontraditional marks are expected to face
difficulties before attaining registration.73
D. Relative Grounds for Refusal
Refusal under Article 4(1)(xi)74 of the Trademark Act poses a
grave risk in securing use and protection of a mark in Japan. Aside
from the linguistic and taxonomical peculiarities in determining
similarity in trademarks and in goods or services as discussed
above, there are obstacles deeply rooted in the principle of
registration (toroku-shugi) characterized by the uniform
standardized examination and the broader paternalistic legal
culture; some of these obstacles may have been illuminated by the
JPO’s firm stance of not tolerating deviation from the rules on
similarity in both trademarks and goods or services. While the
principle of registration as such has undoubtedly contributed to
the legal stability (houteki anteisei) of trademark rights conferred
by registration, the same principle has posed obstacles to
addressing an increasing number of registered trademarks not in
use and also to achieving otherwise harmonious coexistence of
similar marks owned by different entities. These obstacles center
on the JPO’s failure to accept letters of consent agreed to between
applicants and the owners of the prior registered marks cited
against them.
73. The Coca-Cola Company took six full years from filing to register the shape of its
COCA-COLA bottle following a ruling rendered by the Intellectual Property High Court
(IPHC) to reverse the decision of refusal issued by the JPO. Yakult needed thirteen years to
register the shape of its bottle following a ruling of the IPHC to reverse the JPO’s decision of
refusal.
74. Article 4(1)(xi) provides that no trademark shall be registered if the trademark is
identical with, or similar to, another person’s registered trademark that has been filed prior
to the filing date of an application for registration of the said trademark, if such a
trademark is used in connection with the designated goods or designated services relating to
the said registered trademark, or goods or services similar thereto.
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1. Four Options to Overcome
Relative Ground Objections
If and when the JPO issues an office action citing a reason for
refusal under Article 4(1)(xi), the applicant typically has four
options to consider: (1) argument against alleged similarities of
trademarks and goods or services; (2) deletion of goods or services
conflicting with those of the cited prior mark(s); (3) negotiation
with the owner(s) of the prior mark(s); and (4) non-use cancellation
action(s) against them.75
As discussed above, the examination guidelines or “rules” on
similarity in trademarks and goods or services are formally
adhered to and applied fairly consistently by the JPO examiners to
all applications. However, similarity is a concept inherently linked
to and inseparable from the concept of confusion, although the
provisions of Article 4(1)(xi) per se do not use the term “confusion”
or “confusingly similar.” It is therefore more effective to show that
no likelihood of confusion has been or would be caused in the
relevant market than to argue against formal similarities between
the applied-for mark and the prior mark(s). If the mark is already
in use in Japan or foreign markets, the simple fact that no
confusion has actually occurred during the course of trade would
help in arguing against the alleged similarity in marks.
As for similarity in goods or services, there is no use in
arguing against the established similar grouping system as
discussed earlier. However, there are a number of appeal decisions
in favor of dissimilarity between two items of goods formally
subsumed under the same similar group headings like “Chemicals”
and “Pharmaceutical Preparations.”76 A few practical lessons that
may be drawn from this situation are as follows: If the goods in the
cited registration pose an obstacle to registration of the later mark
covering the goods of interest, consider whether different similar
group codes could better be assigned to the allegedly conflicting
goods (i.e., the goods of interest and the goods of the prior mark),
and if so, inform the Examiner of the reason for the different
code(s).77 If it is difficult to find an alternative code or persuade the
75. There are other, much less frequently used, measures to overcome cited prior
marks by invalidating or revoking the registrations on relative or absolute grounds,
including violation of public order, illegitimate use of the registered mark, etc.
76. See, e.g., Shigeki Ishii, Shohin Ekimu no Ruihi (Similarity Between Goods and
Services), Patent 60(4) 61-75 (2007).
77. The discussion here is based on the premise that the applicant’s goods have been
accurately described in terms of purposes, functions, ingredients, etc. Otherwise, the
applicant should consider amending the identification or description of the goods. In most
cases, however, such amendment would either be dismissed by the Examiner as changing
the gist (or materially altering the substance) of the goods or be deemed unnecessary
because the goods as described differently, if at all acceptable, must have been covered by
the broader descriptions of other goods in the list.
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Examiner of the validity of the different code(s) (or the invalidity of
the same codes), the matter should be taken to the appeal phase
and decided by the Appeals Board. As noted earlier, appeal
examiners are much less constrained by the similar grouping
system and more concerned about the likelihood of confusion in the
course of trade.
Two alternative measures to address the citation of prior
marks are discussed below.
2. “Assign Back” as a Means to Materialize Consent
If it is not possible to argue against the Examiner’s
determination, or when arguments have failed to persuade the
Examiner, the only affirmative option available to the applicant,
except for filing non-use or other cancellation/invalidation actions,
is to negotiate with the owner(s) of the cited mark(s) for consent on
coexistence of their marks in the Register and the market. There is
nothing special or unique about this approach, but it is the specific
practice for formalizing consent in Japan that requires elaboration
to non-Japanese practitioners, especially in the United States or
European countries.78
As in some other non-Western countries, the JPO does not
accept letters of consent signed by the owners of prior marks as a
means for applicants of later identical or similar marks to obtain
registration of those later marks.79 The ostensible reason for it is
that the public or consumers’ interests would be undermined if
confusingly similar marks were used by more than one entity,
thereby causing confusion as to the source of goods or services. If
so, however, the same public interest would have long ago been
damaged by having allowed licensees to use the licensors’
registered trademarks since the introduction of the license system
in 1960.
The JPO, or more precisely, opponents of the consent system,
might say that Article 53 of the Trademark Act has been set in
place to deter licensors and licensees from having the registered
mark used improperly.80 However, this reasoning has also been
78. There are similar practices in Korea, China, and some other Asian countries.
79. According to the Trademark Examination Manual (42.111.02), the JPO accepts and
considers statements on actual trade and evidence submitted by the owners of prior marks.
If the Examiner reaches a conclusion that the trademarks and the goods or services in
comparison are not similar in the course of actual trade, she may decide to withdraw the
refusal based on Article 4(1)(xi). The Examiner will not consider a statement if either one of
the marks in comparison has not been put to use in the market.
80. Article 53(1) of the Trademark Act stipulates:
Where a holder of exclusive right to use or non-exclusive right to use uses a registered
trademark in connection with the designated goods or designated services or in
connection with goods or services similar thereto, or a trademark similar thereto, in a
manner that misleads as to the quality of the goods or services or causes confusion in
connection with the goods or services pertaining to the business of another person,
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contradicted by the later amendments of the Trademark Act in
1996, which allowed unrestricted assignment of trademark rights
(by abolishing the associated trademark system) and at the same
time introduced the means under Article 52bis to revoke
trademark registrations as a result of confusion caused by the use
of identical or similar marks co-owned by assignors or assignees in
bad faith.81 In short, the Trademark Act has already been
amended to allow different entities to own and use identical or
similar trademarks for identical or similar goods or services at
their own risk. If so, why not accept letters of consent?
The other reasons submitted by the proponents of the current
system since 1996 may sound more persuasive, but not persuasive
enough. The reasoning goes like this:82 If the JPO starts
unconditionally accepting letters of consent, confusion in the
marketplaces would ensue. If they are accepted conditionally,
stricter examination would be required as to the likelihood of
confusion under Article 4(1)(xv) on a case-by-case basis. This
would entail heavier burdens on examiners in examination of later
applications pursuant to Article 4(1)(xv)—the blanket clause of
unregistrable trademarks liable for confusion—and the resulting
delays in processing applications. Further delays would also be
expected as a result of prolonged negotiations between the parties.
Even under the current law, they argue, later applicants are
allowed to obtain registrations by assigning their applications and
having them “assigned back” after they are registered in the
names of the prior registrants.83
In this author’s view, however, it is not so much concerns for
heavier burdens on examiners as paternalistic bureaucracy that
has played a major role in blocking the introduction of consent
letters in the examination of later applications. Such paternalism
any person may file a request for a trial for rescission of the trademark registration;
provided, however, that this shall not apply to the case where the holder of trademark
right was not aware of the fact and using due care.
81. Article 52bis(1) of the Trademark Act stipulates:
Where a trademark right to a similar registered trademark to be used in connection
with identical goods or services, or a trademark right to an identical or similar
registered trademark to be used in connection with similar goods or services becomes
owned by a different holder of trademark right as a result of transfer of the
trademark right, if the holder of trademark right of one of the registered trademarks
uses, for the purpose of unfair competition, the registered trademark for its
designated goods or designated services in a manner that causes confusion in
connection with the goods or services pertaining to the business of the holder of
trademark right, exclusive right to use or non-exclusive right to use of the other
registered trademark, any person may file a request for a trial for rescission of the
trademark registration.
82. Shinichi Irie, Shohyo no Hogotaisho ni kakaru Kokusaichowa ni kakaru
Chosakenkyu (Research on Harmonization relating to Protectable Trademarks and Others)
5, IIP Bulletin (2002).
83. Id.
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has been justified, at least in part, by the Japanese notion of
trademark right as “a property right conferred by the
government”84 or, in common speech, “a license granted by the
Authority (okami).” Without this paternalism, examination based
on letters of consent would not necessarily lead to stricter
examination of later applications because it would be perfectly
possible to leave the matter of confusion to the market and to
punitive provisions like Article 52bis or 53, mentioned earlier. In
that case, accepting letters of consent would not result in delays in
processing applications, either.85
Even granting that such paternalism and the concomitant
notion of the trademark right are deeply rooted, there should be
better ways to strike a balance between private and public
interests. Most importantly, such assignment and re-assignment
arrangements have a sense of “cheating” in terms of intention to
own and use the assigned mark, no matter how short the period of
ownership on record would be. Strictly speaking, applications in
the temporary assignees’ names are in violation of the main
paragraph of Article 3(1). This violation may be “cured” only by
assigning the names back to the original applicants. Add to that
the so-called “kicking each other”86 situation if either of the parties
to the assignment arrangement files a new application for a
substantially identical mark at a later date in an effort to update
the design or font of the registered trademark.
To say the least, burdens currently borne by applicants in
negotiating with the prior rights owners for “assign and assign
back” arrangements—peculiar or idiosyncratic by international
standards—would in no way be justified by the avoidance of
burdens on the part of the JPO examiners. At any rate, the
unacceptability of consent letters effectively has made the rate of
success in obtaining consent or materializing such consent in the
form of coexistence in the Register much lower than otherwise.
Even if the negotiations for “assign back” arrangements succeed,
coexistence agreements would come at much higher costs,
84. For a discussion on the fundamentally different concepts of trademarks in Japan
and the United States, see Kenneth L. Port, Protection of Famous Trademarks in Japan and
the United States, Wis. 15 Int’l L.J. 259, 264 (1997). According to Port, “The United States
concept of trademarks is based on the tort of deceit where the consumer had standing to
sue, not the trademark owner. The plaintiffs’ rights in the mark commence upon and are
justified by use of the mark in commerce. In contrast, the Japanese concept resembles a
property right conferred by the government.”
85. Delays due to prolonged negotiations are not unique to obtaining letters of consent.
Suspension of examination would rather be much shorter for obtaining straight consent
letters from prior rights owners than obtaining consent on complicated assignment and reassignment arrangements.
86. “Kicking each other” is a translation of the Japanese term keri-ai, which is used to
refer to a mutually exclusive situation where each of the owners of legitimate registered
trademarks cannot use or register marks similar to his own registered mark because such
marks are also similar to the other party’s registered mark.
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including fees for recording the assignments and lengthy
negotiations that would otherwise be unnecessary.
The following are practical tips for negotiating with the owner
of a prior mark cited against an applied-for mark:
• Start a negotiation by asking for consent on use and
coexistence of the applied-for mark in the market and the
Register; never bring up the required assignments at the
outset of the negotiation (because it would only weaken the
chances of success).
• Advance the negotiation on the assumption that the marks
are not confusingly similar and that the goods/services are
sufficiently distinguishable, wherever possible and
appropriate.
• If the other party’s basic consent is secured conditionally
or unconditionally, bring up the “assign back”
arrangements as the only means to the objective and
proceed with the negotiation as if to simply materialize the
agreed coexistence.87
• Prepare and send all the necessary documents to the other
party for signing at once, including a power of attorney and
an assignment document to be submitted to the JPO after
acceptance of the application.
• Meanwhile, inform the JPO Examiner of the ongoing
negotiations and request a stay of the application until the
next steps can be taken.
3. Non-Use Cancellation Action
The final option to overcome an objection on relative grounds
is the non-use cancellation action under Article 50 of the
Trademark Act. Such an action may be filed with the JPO to
revoke the whole or part of the registration if the registered mark
has not been in use for the past three years.
Generally, this option is effective for registrations covering a
wide range of goods, particularly against registrations for which
applications were filed before 2007 when the JPO started to object
to wide-ranging goods under the main paragraph of Article 3(1). It
can be pursued separately or in tandem with negotiations with the
owners of the prior marks. A non-use cancellation action may be
filed before or during the negotiations to put pressure on the owner
87. One more practical tip would be to never tell the other party up-front that an
updated version of its prior mark might be objected to by your later mark because of the
keri-ai or “kicking each other” situation. Given the uncertainty that such an update
application will ever be filed or, if so, would receive an objection based on the later mark, it
is wiser not to tell the other party about the possibility in advance. Otherwise, the
negotiation would become complicated and difficult. If the keri-ai situation does arise, it
could still be handled by another assignment arrangement.
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of the cited mark. It may not be filed at all because just a
suggestion of taking such action could work in favor of settlement
if the mark is not in use.88
If a non-use cancellation action is to be filed, it should be
targeted at conflicting goods or services in the cited mark because
evidence of use for any one item of the goods or services claimed in
the cancellation action would be sufficient to defend the whole
registration. In addition, the registration may be defended by the
use of the owner of the mark or her licensee, whether registered or
unregistered.
In the following example, to have the ground for refusal based
on the prior cited mark withdrawn by the Examiner, the applicant
needs to file a cancellation action for “downloadable game
programs; semi-conductors” in addition to “computers; monitors
[computer hardware]” and succeed in cancelling the registration.89
Application: Computers; monitors [computer hardware];
optical mouse in Class 9
Cited Mark: Computers; monitors [computer hardware];
downloadable game programs; semi-conductors;
optical machines and apparatus; television
receivers [TV sets] in Class 9
More specifically, even if the applicant succeeds in cancelling
the registration for “computers; monitors [computer hardware]”
only, the remaining registration for “downloadable game
programs; semi-conductors” would bar registration of the appliedfor mark. Alternatively, if the applicant correctly files a non-use
cancellation action for “computers; monitors [computer hardware];
downloadable game programs; semi-conductors” but the owner of
the Cited Mark proves use of the mark for only “semi-conductors”
in the past three years, the cancellation action fails. Again, the
established similar goods grouping method elaborated above is
almost exclusively relied upon to determine similarity of goods as
an absolute prerequisite for success in non-use and other
cancellation actions.
On the other hand, there is no room for arguing for or against
similarity of trademarks in challenging or defending the
88. Pursuant to Article 50(3) of the Trademark Act, the last-minute use of the
registered trademark in three (3) months prior to the filing of the non-use cancellation
action is excluded from legitimate use, provided it is shown that the registered trademark
had been used, for no good reason, after the user knew the action would be filed. Since proof
is required, it is more prudent to file an action before approaching the owner of the cited
mark should any such last-minute use be expected.
89. All of the applicant’s goods belong to the similar group heading of “electronic
machines, apparatus and their parts,” and so do “computers, downloadable game programs;
monitors [computer hardware]” and “semi-conductors” in the cited mark. Because “optical
mouse” or “monitors [computer hardware]” in the application are not presumed similar to
“optical machines and apparatus,” “television receivers [TV sets],” or any goods under other
similar group headings, there is no need to include them in the cancellation action.
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registration based on non-use. However, the concept of “identity” of
the challenged mark with the registered mark “from common
sense perspective” plays a crucial role in deciding whether the
registration is cancellable.90 Above and beyond the lenient
provisions relating to use of the “registered trademark,” which
expressly allows the interchangeability of hiragana, katakana, and
Romaji under certain conditions, the Appeals Boards of the JPO
has further expanded the concept of the commonsensically—or
substantially—identical “registered trademark.”91
E. Registration and Opposition
If no grounds for refusal are raised or all raised grounds are
overcome by filing a suitable response, the application will proceed
to registration. Unlike many other countries, the JPO requires
that the registration fee for a national application or the second
part of the individual fee for an international application be paid
in a prescribed period after the decision of registration is issued92
Otherwise, the application will be dismissed, or deemed
abandoned, by the Commissioner of the Patent Office.93
After the fee is paid, the trademark will be registered and
published for opposition by third parties. According to the
statistics of the JPO,94 the success rate for oppositions filed against
published registrations for the six years from 2006 to 2011 is 18.9
percent. The number of oppositions was 3,204 whereas the total
number of registrations during the same period was 595,985. In
other words, there was only a 0.5 percent risk of having a
registration opposed and as low as a 0.1 percent risk of having an
opposed registration finally revoked in part or in whole (i.e., 602
successful oppositions out of 595,985 published marks).
90. Pursuant to Article 50 (Non-Use Cancellation Appeal) of the Trademark Act, a
“registered trademark” shall include “a trademark deemed identical from common sense
perspective with the registered trademark, including a trademark consisting of characters
identical with the registered trademark but in different fonts, a trademark that is written in
different characters, Hiragana characters, katakana characters, or Latin alphabetic
characters, from the registered trademark but identical with the registered trademark in
terms of pronunciation and concept, and a trademark consisting of figures that are
considered identical in terms of appearance as those of the registered trademark).
91. See Matsui et al., supra note 19.
92. As of July 2012, the registration fee for a national application is 37,600 yen per
class; the second part of the individual fee that must be paid to the International Bureau is
457 Swiss francs per class.
93. Because the registrability of an applied-for mark is judged at the time of rendering
a decision of registration, an “assigning back” by means of a change of applicant from the
owner of the cited mark to the original applicant is acceptable to the JPO before
registration.
94. Japan Patent Office, Tokkyo Gyosei Nenji Hokokusho 2012 Nenban (2012 Annual
Report on IP Administration), http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/toushin/nenji/
nenpou2012_index.htm (last visited Jan. 29, 2013).
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While notices of opposition are examined by the separate
opposition boards of the JPO, opposition proceedings in Japan may
better be understood as inter partes re-examination by the JPO.
The inter partes nature is insufficiently fulfilled, however, because
the owners of the opposed registered marks are not always given
an opportunity to defend their registrations. In most cases, the
opposition boards deem it unnecessary to even invite the owners to
submit their counter-arguments and simply maintain the
registrations by decision.95
IX. TRADEMARK ENFORCEMENT
A. Effects of Registered Trademarks
Trademark rights are conferred by the registration under
Article 18 of the Trademark Act. The holder of a registered
trademark shall have exclusive rights to use the registered mark
in connection with the designated goods or services pursuant to
Article 25 and restrain by injunction the use of a trademark which
is identical or similar to the mark in connection with identical or
similar goods or services under Articles 36 and 37(i). The exclusive
right to use the registered mark is called senyo-ken, whereas the
right to restrain by injunction the use of the registered mark
identical or similar to the registered mark is called kinshi-ken. The
holder of a registered trademark may also seek damages for
infringement pursuant to Article 709 of the Civil Code and special
provisions of the Trademark Act.
Figure 5: Rights Conferred by Trademark Registration
Scope of Trademark Rights
Rights Conferred
By Trademark
Registration
Trademark
Registered
Designated Goods/Services
Identical
Similar
Identical
Senyo-ken
Kinshi-ken
-
Similar
Kinshi-ken
Kinshi-ken
-
-
-
-
Dissimilar
Dissimilar
(A hyphen means that the rights do not reach beyond
the scope.)
Rights to use registered trademarks based on registration
appear to be securely guarded and protected by Article 25 of the
95. This is in contrast with completely inter partes invalidation appeals that may also
be filed with the JPO, wherein there is an approximately 44 percent success rate in
invalidating the registrations during the years 2006 to 2011.
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Trademark Act. According to the official interpretation of the JPO,
senyo-ken shall not even be restricted by an erroneous coexistence
of identical or similar marks in the Register unless and until the
registration of the later mark is invalidated or revoked by an
action of an interested party.96 However, this interpretation fails to
mention the important condition under which its veracity is
confirmed: the registered mark must be used in good faith.
Otherwise, trademark owners’ “use of registered trademark”
defense would not be established in unfair competition cases under
the principle of faith and trust or abuse of right.97
The Trademark Act also provides statutory limits of senyoken, where registered trademarks may not be used by their owners
pursuant to Article 29. Most notably, if a registered mark
incorporates another person’s prior copyrighted work or registered
design, the mark cannot be used in the absence of permission from
the owner of the copyright or the design right. It is also important
to note that the trademark owner cannot use its registered
trademarks after it has granted an exclusive license to a third
party under Article 30 of the Act. When such an exclusive license
takes effect upon recordal in the Trademark Register, the
exclusive right to use the mark is deemed transferred from the
trademark owner to the licensee.
B. Defensive Mark Registration
As mentioned above, the rights conferred by a trademark
registration, senyo-ken or kinshi-ken, shall not extend to the
unauthorized use of an identical or similar mark by a third party
in connection with those goods or services that are not covered by
or similar to the designated goods or services.98 In order to protect
a mark against possible dilution by “blurring” or “tarnishment”99
under the Trademark Act, it is therefore necessary to obtain a
defensive mark registration in respect of goods or services for
96. Japan Patent Office, Sangyozaisankenho Shikujo Kaisetsu (Article-by-Article
Commentary on IP Law) 1297 (Hatsumei Kyokai, 2010).
97. See, e.g., the POPEYE Supreme court case, in which the owner of the registered
mark POPEYE/ポパイ sued the copyright holder for infringement. Kinshi-ken arising from
the registration of a trademark incorporating another person’s copyrighted work could not
be exercised against the copyright holder under the 1990 principle of abuse of rights. This
has been especially true since 2004, when Article 39 of the Trademark Act (mutatis
mutandis application of Article 104ter of the Patent Act) took effect.
98. Kinshi-ken of trademark rights may not be exercised (1) if the mark consists of the
user’s own name, describes the quality of the goods, etc., under Article 26, (2) if there [is]
honest prior user of an identical or similar mark under Article 32 or (3) if the trademark
registration should be invalidated by an invalidation action, if filed, under Article 104ter of
the Patent Act as applied mutatis mutandis pursuant to Article 39 of the Trademark Act.
99. The term “dilution” is not used in the statutory provisions of the Trademark Act.
There is no statute in Japan that uses this term, including the Unfair Competition
Prevention Act.
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which the registrant does not want others to use the same
marks.100
Pursuant to provisions of Article 64 of the Trademark Act, the
requirements for a defensive mark registration are that the
applied-for mark be well known (or more precisely, famous) as a
source-identifier of certain goods or services in Japan and that a
likelihood of confusion would exist if the same mark were used by
others for goods or services dissimilar thereto.
Figure 6: Effects of Defensive Trademark Registration
Registered
Trademark
Scope of Rights Based on
Defensive Mark Registration
Rights Expanded by
Defensive Mark Registration
Identical
Senyo-ken
Kinshi-ken Kinshi-ken
Similar
Kinshi-ken
Kinshi-ken
-
-
-
-
Dissimilar
Kinshi-ken
(The “kinshi-ken” in boldface above is the scope of
the expanded rights.)
By obtaining a defensive mark registration, the scope of
kinshi-ken, or the right to restrain third parties’ use of identical or
substantially identical marks may be expanded to those that are
not similar to goods or services designated in the original
trademark registration as exemplified below:
Trademark Registration No. 1517133 (basis for defensive
mark)
Trademark:
Goods: Clothes for sports; sports shoes, etc., in Class 25
Defensive Mark Registration No. 1517133-1
Mark:
Goods: Carbonated drinks [refreshing beverages]; fruit juices;
vegetable juices [beverage]; whey beverages in Class 32
100. A later trademark shall not be registered if it is likely to cause confusion in
connection with the goods or services pertaining to a business of another person under
Article 4(1)(xv) or if it is identical with, or similar to, a trademark that is well known among
consumers in Japan or abroad as that indicating goods or services pertaining to a business
of another person, if such trademark is used for unfair purposes (referring to the purpose of
gaining unfair profits, the purpose of causing damage to the other person, or any other
unfair purposes) under Article 4(1)(xix) of the Trademark Act.
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563
In this example, the rights conferred by the defensive mark
registration shall extend to third parties’ unauthorized use of
identical or substantially identical NIKE & device marks for goods
that are not similar to “clothes for sports; sports shoes” in Class 25,
namely, “carbonated drinks [refreshing beverages]; fruit juices;
vegetable juices [beverage]; whey beverages” in Class 32. Put
differently, the scope of a defensive mark registration can go
beyond similarity in goods or services but is abbreviated to identity
or substantial identity of marks. By the above defensive mark
registration, no protection shall be extended to the word mark
NIKE or any other marks similar to
.101
Furthermore, expanded protection shall be extended only to
the goods specifically designated in a defense mark registration.102
A third party’s unauthorized use of the NIKE & device mark for
“milk products,” which is presumed similar to “whey beverages” in
the defensive mark registration, shall not be prohibited pursuant
to Article 67 of the Trademark Act. Therefore, if the owner of a
famous mark wants to preclude any unauthorized use of the mark
in advance, it would be necessary to have it registered as a
defensive mark for all goods and services in all classes. Should this
be the case, rights to be conferred under Article 67 cannot be
exercised against subtle trademark counterfeiting involving very
similar but possibly distinguishable marks.
All these constraints of “identity,” on top of the high hurdles of
the fame and “likelihood of confusion” requirements, have made
the Defensive Mark Registration system too cumbersome for
trademark owners to rely on solely. Protection of well-known
marks can best be achieved by the combination of defensive mark
registration as a precautionary measure and action pursuant to
the Unfair Competition Prevention Act as a supportive measure.
For one thing, a defensive mark registration even for a limited list
of goods would provide an effective tool for obtaining swift
determination of “fame” in unfair competition action.103 It would
also be effective in precluding the registration of later identical or
similar trademarks under Items 15 and 19 of Article 4(1) of the
Trademark Act in examination, whether ex parte or inter partes.104
101. Nike International Ltd. now owns a trademark registration for NIKE in standard
characters and its defensive mark registration in Class 32.
102. This is because use for those similar goods may not necessarily be liable to
confusion.
103. In addition to the list of defensive mark registrations, the JPO refers to lists
prepared by Bundesverband der Deutschen Industrie e.V. in Germany, Institut National de
la Propriété Industrielle (INPI) in France, Istituto di Centromarca per la lotta alla
contraffazione (INDICAM) in Italy, Association Internationale pour la Protection de la
Propriété Intellectuelle (AIPPI) Korea, and AIPPI Japan. Binran.
104. In addition to the list of defensive mark registrations, the JPO refers to lists
prepared by Bundesverband der Deutschen Industrie e.V. in Germany, INPI (Institut
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C. Unfair Competition Prevention Act
In enforcing rights in trademarks in use, actions under the
Unfair Competition Prevention Act (UCPA) should always be
taken into consideration as parallel and complementary to the
Trademark Act.105 As with infringement on trademark rights
delineated by similarity in mark and goods/services, a person
whose business interests have been or are likely to be infringed by
unfair competition may seek an injunction under Article 3 of the
UCPA and, if damages are caused by a willful or negligent act, the
person may also claim recovery from them under Article 4 of the
same Act.106
The basis for protection under the UCPA is the fact that the
mark is “well-known” or “famous” under Items (i) and (ii) of Article
2(1) of the UCPA, wherein acts of unfair competition are defined as
follows:
(i) acts of creating confusion with another person’s goods or
business by using an appellation107 of goods or business (a
name, trade name, trademark, mark, or container or
package of goods used in relation to a person’s business,
or any other appellation of a person’s goods or business;
the same shall apply hereinafter) that is identical or
similar to said person’s appellation of goods or business
that is well-known among consumers or other
purchasers . . . [emphasis added].
(ii) acts of using as one’s own an appellation of goods or
business that is identical or similar to another person’s
famous appellation of goods or business, . . . [emphasis
added].
The term “appellation of goods or business” is a broad concept
covering any visible and nonvisible signs that serve to distinguish
the goods and businesses (i.e., services) of one undertaking from
those of other undertakings. Such nontraditional trademarks as
three-dimensional, sound, hologram, color, position, and olfactory
marks are all covered by this term. As with other appellations of
goods or business, however, these nontraditional trademarks may
be protected from third parties’ unauthorized use of identical or
similar appellations only if the former are well-known or famous
National de la Propriété Industrielle) in France, INDICAM (Istituto di Centromarca per la
lotta alla contraffazione) in Italy, AIPPI Korea and AIPPI Japan. Binran.
105. The UCPA was enacted in 1934 to fulfill Japan’s international obligations under
Article 10ter of the Paris Convention.
106. Unlike trademark infringement, negligence is not presumed under the UCPA.
107. According to Kenneth L. Port, the translation of the Japanese word hyoji as
“appellation” is more appropriate than as “indication,” as it is translated by many, including
the Japanese Ministry of Justice. (See Port, Trademark Dilution in Japan, supra note 3, at
229.) In other respects, the translation is prepared by the Ministry of Justice.
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565
among consumers. Such recognition of marks in UCPA actions
need not be national but local or regional.
An additional requirement in Item (1) is likelihood of
confusion in the market. The term (likelihood of) “confusion” is
interpreted to include “likelihood of association” between the two
businesses, as with the registrability of trademark applications
under Article 4(1)(xv) of the Trademark Act and the registrability
of defensive mark application under Article 64 of the same. On the
other hand, identity or similarity of goods or services is not a
requirement in either Item (1) or (2) of Article 2(1) of the UCPA.
This gives the UCPA a significant edge over the Trademark Act
when it comes to protecting well-known or famous marks flexibly
and on a case-by-case basis against free riding or possible dilution.
X. CONCLUSION
The objective of this article was to cover the entire process of
trademark protection, including adoption, filing, prosecution,
registration, and enforcement after the major revisions to the
Trademark Act in the 1990s and 2000s made to conform to the
frameworks of the TRIPs Agreement, TLT, and the Madrid
Protocol, with particular focus on those risks inherent in Japan’s
apparently harmonized system for foreign trademark applicants
and owners. This effort has revealed at least three important
aspects of Japanese trademark law and practice that are closely
related and, together, indicate that the substantive harmonization
of trademark law remains elusive.
The most fundamental of all is Japan’s registration principle
(toroku-shugi), which is grounded in Japan’s civil law system and
its underlying legal culture. This principle is sustained by not only
the first-to-file rule but also JPO’s rigorous day-to-day
examination of applications, seeking to regulate and manage all
trademark rights conferred by registration. The means to this end
is to effectively sort out applications and registrations in the
Trademark Register according to the established rules of similarity
of trademarks and goods/services, respectively, by reducing a
variety of Japanese writing systems to phonetics and by
subsuming a broad range of goods/services under similar
groupings.
Secondly, the resulting high level of trust and confidence in
the trademark registration system on the part of Japanese
applicants and owners has reinforced their rights-conscious view of
trademarks. Most indicative of this attitude is Japanese
applicants’ desire to secure as broad a scope of
protection/registration for their marks as possible. This desire has
also led to the ever-increasing number of unused or not properly
used registered marks owned as objects of property. Such attitude
toward registered trademarks plainly increases the risks of
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receiving relative-ground objections to filed applications. The
property right status generally perceived by Japanese trademark
owners, in addition to the JPO’s refusal to accept letters of
consent, also makes negotiations for coexistence with the owners of
prior marks extremely difficult.
Closely related to these merits and drawbacks of the Japanese
trademark system is the paternalistic approach to trademark
protection as adopted by the JPO and the Japanese courts. This
third aspect of the Japanese practice often takes the form of, and is
often disguised as, balancing public and private interests, or,
worse, protecting the former against the latter, wherein the
Authority (okami) would represent the public interests. The prime
example provided in this paper was the unacceptability of letters
of consent, as justified by this approach.
A broad interpretation of an “identical” registered mark in the
non-use cancellation provisions may also be said to derive from a
similar paternalistic approach. This is similar in the sense that the
legal continuity or reliability of rights (hoteki anteisei) is often
favored in the name of public interests over the validity or
adequacy of rights (gutaiteki datousei). To say the least, such
practice would serve to reduce the role of non-use cancellation
action as a corrective measure to the principle of registration. The
same may be said to explain the low success rate of oppositions to
registered trademarks given the higher success rate of inter partes
invalidation appeals but with even more cumbersome procedures.
These tendencies inherent in the Japanese trademark system
do not, however, by themselves favor domestic over foreign
trademark owners or vice versa. Nor are these tendencies or
aspects driven by patriotic motives. Some of the inherent risks
may be residual, but the same applies to the domestic owners.