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Trademarks/Unfair Competition

Moral Rights

Japan strongly protects authors' moral rights, namely, the right to control modification, right to control indication of authorship and right to control divulgence. These are two successful instances of enforcement of an author's moral rights, living and deceased, which show Japanese courts' increased willingness to protect intellectual property.

Shusaku Yamamoto and John A. Tessensohn

New Madrid Protocol Rules Come into Effect

New sections were added under to Japan's Trademark Law explaining the treatment of International Applications filed under the Madrid Protocol. Procedures for filing an International Application to the International Bureau through the Japanese Patent Office were outlined JPO procedures for an International Application designating Japan are also explained. The Japanese Patent Office's rules and regulations implementing Japan's accession to the Madrid Protocol came into effect on March 14, 2000.

Shusaku Yamamoto and John A. Tessensohn

Chanel (Chanel SA v. Hanako Kono) turns the tide in Japan snack bar wars

In a victory for owners of well-known marks, the Supreme Court of Japan ordered a "snack bar" in Matsudo, Chiba prefecture, to cease use of the well-known mark "CHANEL", */Chanel SA/ v. /Hanako Kono/* (Supreme Court, September 10, 1998). Snack bars are ubiquitous small drinking establishments found all over Japan where a snack served with the first round of drinks. Chanel successfully persuaded the Supreme Court to grant an injunction against a 63-year-old owner of "/Snack Chanel/" restraining her from using the well-known mark and ordering her to pay compensation to Chanel SA. The Tokyo High Court had earlier ruled that the business and size of the two enterprises were too different to be confused. The Supreme Court overturned the Tokyo High Court's decision and decided that Kono's use of the mark was actionably similar with Chanel's well known "CHANEL" and it constituted an act of unfair competition under Japan's Unfair Competition Prevention law.

John A. Tessensohn and Shusaku Yamamoto

Japan Tackles the Technology Tsunami

Toward the end of the 1990s, digital technologies and international satellite telecommunications networks have ignited a revolution in the manner which information is reproduced and disseminated. As more and more copyrighted materials are made available in electronic form, they also become available for rapid, inexpensive copying and manipulation. Intellectual property is being washed and drowned by a tsunami of new technology. The Japanese government's recent amendments to its Unfair Competition Prevention and Copyright Laws to regulate both the manufacturing and distribution of copy protection removal equipment and software represent a significant step towards ensuring fair protection for intellectual property right owners in the wake of this technological tsunami.

Shusaku Yamamoto and John A. Tessensohn

Japan Reforms Trademark & Patent Laws in Pro-Owner Moves

The Japanese Diet enacted an unprecedented sweeping package of pro-owner trademark and patent law reforms on May 7, 1999 to provide greater incentives and protection to trademark and patent owners. Trademark reforms included accepting Madrid Protocol International Registrations, right to claim pecuniary damages based on a pending laid-open trademark publication and online trademark filing system.

Shusaku Yamamoto and John A. Tessensohn

Are You Shogun of Your Own Domain - Trademarks and Domain Names in Japan

Japan's electronic commerce revenue in 1997 was US$407 million but expected to phenomenally increase a bewildering 6301% by 2002 with an estimated revenue of US$26,031 million according to a July 10, 1998 report of The Industry Standard. The answer to the multi-million yen question of whether one is /shogun/ of his domain name in Japan, while cannot be determined with absolute certainty, one can make an informed conclusion that the existing Japanese trademark and unfair competition laws will play a important role in answering it.

Shusaku Yamamoto and John A. Tessensohn

Tamagotchi Hatches Expedited Trademark Examination in Japan

During the November 1998 Kuala Lumpur Asian Pacific Economic Cooperation (APEC) meeting, the Japanese delegation led by Japan's Prime Minister Keizo Obuchi unveiled, without very much fanfare, an Individual Action Plan (IAP) to achieve the long-term goal of "free and open trade and investment" no later than the year 2010.

The main source of IAP plan was the Three-Year Deregulation Programme, the flagship of the Japanese Government's deregulation efforts towards economic structural reform. The Three-Year Programme contains liberalisation and facilitation measures effecting a wide range of legal reforms to international trade, such as intellectual property rights, investment, customs procedures and competition policies.

Not unexpectedly, the world's media attention at the Kuala Lumpur APEC meeting was preoccupied with the political sideshow ignited by US Vice President Al Gore's sympathetic comments for the Anwar Ibrahim reform movement trying to overthrow Malaysian Prime Minister Mahathir Mohamad. Conceivably, the initial New York Times characterisation that Obuchi had "the pizzaz of a cold pizza" could explain why this Japanese announcement went under the world's media radar.

However, for the international trademark practitioner, the Japanese Government's IAP contained revolutionary news in its own right, as it laconically reported the overthrow of another deeply entrenched status quo in the IP world order: the slow registration process for patents and trademarks at the Japanese Patent Office (JPO). The IAP detailed the government's achievements, amongst others, in the "Ensuring of Expeditious Grant of Intellectual Property rights" - namely, patents, designs and trademarks in Japan - a feat thought to be unattainable some five years ago. Additionally, Japan indicated that preparation was under way towards its participation in the Madrid Protocol, and the strengthening of international protection of well-known trademarks.

Despite the Gore-inspired fireworks at the APEC meeting, the JPO had stoically carried out the expedited examination procedure for trademark applications as early as 1 September 1997. In the JPO publication titled "Patent Policies for 2005 - Global Contribution Toward the Pro-Patent Age", the JPO stated that in 1997, on a average, it took about 22 months before it received the first office action after filing a trademark application. Those intimate with Japanese trademark prosecution practice will immediately vouch that the trademark registration process in Japan is agonisingly aphasic and painfully protracted. These weary international trademark practitioners will warmly welcome the current expedited examination procedure and will undoubtedly be ecstatic if the JPO realises its stated long-term goal to achieve "Real-time Operation", ie, each patent, trademark and design application is prosecuted, without delay, be the year 2005.

One could attribute the expedited registration procedures to Japan's commitments in deregulating its economy and liberalising international trade; however, the smart money for the proximate cause of the expedited trademark registration procedure is on the profligate 1997 trademark infringement of the immensely popular electronic game Tamagotchi made by Japanese toy-maker Bandai Co Ltd.

Shusaku Yamamoto and John A. Tessensohn

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