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Trademarks/Unfair Competition

Japan's New Trademark Law

Japan's new Trade Mark Law will become effective on April 1, 1997 (except for certain matters such as reclassification). The new trademark law signals a massive overhaul of Japan’s Trademark Law and offers useful opportunities for foreign trademark owners to enhance the scope of protection for their trademark rights in Japan. One of the most important measures include granting greater protection to foreign trademark owners who have not used their mark in Japan but have evidence of fame of the mark in their own country can now use such evidence to prevent the registration of a third party’s application for a mark that is similar to their mark.

John A. Tessensohn and Shusaku Yamamoto

A Bigen or not a Bigen, that is the Question, - The Novigen & Tokiotec Cases

In two recent Tokyo High Court decisions, The Novigen Case dated November 22, 1995 and The Tokiotec Case dated December 21, 1995, the Tokyo High Court commented on the judgment of similarities of composite word marks. The cases also unveil the rarefied eclectic nuances of Japanese pronunciation and its impact on the judgment of similarities for trademark registration and infringement under Japanese trademark law which can have grave and unpredictable results to foreign owners of Romanised marks.

John A. Tessensohn and Shusaku Yamamoto

Biochemistry Laboratory TK v Zenoa KK. Tokyo High Court

The Tokyo High Court rescued Biochemistry Laboratory Y.K.'s "kaki cha" trademark registrations from slipping into the abyss of unprotectable generic terms like Gold Card, Light Beer and The Pill. The Tokyo High Court's held that the mark was not generic was in view of the vast amount of evidence provided by Biochemistry Laboratory Y.K. Biochemistry Laboratory Y.K. had registered the "kaki cha" marks with the JPO because the marks had achieved secondary meaning through long and extended use. The Tokyo High Court did not disturb the Tokyo District Court's finding that Zenoa K.K.'s conduct constituted an act of unfair competition, so the Tokyo District Court's Unfair Competition Prevention Law ruling in The Kyoto Persimmon Tea Case is still good law.

John A. Tessensohn and Shusaku Yamamoto

Written in Tea Leaves: The Kyoto Persimmon Tea Case

In The Kyoto Persimmon Tea Case, 1991 (wa) 10542, dated November 30, 1994, the Tokyo District Court had an opportunity to discuss the perils of trademark owners who adopt a very descriptive mark for a product. Although the descriptive word element of the mark had achieved a secondary meaning and it was consequently registered, such registration of the mark was ineffective against stopping a third party's use of an identical descriptive word element on the third party's goods. In The Kyoto Persimmon Tea Case, the Tokyo District Court also had an opportunity to discuss about a rarely invoked provision of the Japanese Unfair Competition Prevention Law that deals with an act of making a misleading indication of the place of origin of the goods. The point to be appreciated here was that the Plaintiff succeeded in obtaining an injunction against the Defendant from using the mark on misleading indication as to origin.

John A. Tessensohn and Shusaku Yamamoto

Judgment of Similarities in Japanese Trademark Law - The Mikron & Gibelty Cases

Under Japan's trademark law, it is generally agreed that similarity in any one of the elements of sound, sight and meaning is basically sufficient to prove likelihood of confusion. The prevailing practice of the JPO was to apply these three similarities of sound, sight and meaning rigorously and rigidly. In two Tokyo High Court decisions, the MIKRON Case, March 15, 1995 and the GIBELTY Case, March 29, 1995, the High Court in The MIKRON Case held that the actual market conditions must be taken in account in determining similarity. The GIBELTY Case stated that even if marks are phonetically and visually similar, there will be no confusion if there is a sufficiently strong design element in the mark.

John A. Tessensohn and Shusaku Yamamoto

Proposed Trademark Law Amendments seek International Harmony

The proposed changes, including allowing three dimensional trademarks, multi-class application system, abolition of evidence of use requirement for renewals, relaxation of standing requirements of filing non-use cancellation actions, abolition of associated trademark system, expansion of "use" definition of trademark right and post-grant opposition system, will be positive on Japan's trademark laws. The trademark owner will benefit from many of the improvements in the procedural requirements that will result in costs and time savings in the filing and prosecution of trademark applications.

Shusaku Yamamoto

Japan: Highlight of Amendments to the Unfair Competition Prevention Law and an Outline of the New Law

In order to effectively cope with the variety of acts of unfair competition that have arisen over the years, as well as to give more effect to the Paris Convention, an overhaul of the present law was made and came into effect on May 1, 1994. The amendments seek to give greater protection to famous marks, prevent unauthorised use of any indicia of trade in respect of both goods and services, and prevent counterfeits by giving specific protection to the configuration of goods.

Shusaku Yamamoto

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