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Trademarks/Unfair Competition

Unauthorized Ice Skating Maneuver Trademark Slips on Thin Ice - Famous Names and Trademarks in Japan

A famous celebrity’s name can be valuable in the promotion of products and services, and the famous person has an interest that should be protected against the unauthorized trademark exploitation of that famous name. Recently, a major Japanese brewery's, Asahi Breweries K.K., trademark application to register INA BAUER in katakana, the name of the creator of the eponymous skating maneuver, was denied on public morality and famous name grounds by the Japanese Patent Office. However, a Grammy-winning jazz musician failed, on two separate occasions before the Tokyo High Court, to invalidate an unauthorized Japanese trademark registration directed to his name. This article details the circumstances as to when famous names are entitled to protection and relief under Japan's Trademark Law against any unauthorized trademark registration.

John A. Tessensohn and Shusaku Yamamoto

Applauding Good Work - Important legislative changes to Japan's trademark and design laws

In order to improve Japan's protection for trademarks and designs and improve its overall competitiveness and innovation, Japan completed an almost annual legislative amendment exercise of its trademark and design laws. The following is an explanation of the major 2006 legislative changes that will take effect from April 1, 2007. Trademark and design owners all over the world will applaud such changes as it will enhance the protection of their trademarks and business in the world's second largest free market economy.

John A. Tessensohn and Shusaku Yamamoto

IP High Court Confirms Generics' Pharmaceutical Trade Dress Victories

The Intellectual Property High Court of Japan has confirmed that an originator company's pharmaceutical trade dress (external appearance of a PTP sheet and colors of capsule) was not entitled to unfair competition protection as it lacked distinctiveness and was not significantly unique enough to be granted unfair competition protection against the generics' versions that were sold in competition against the originator company.

John A. Tessensohn and Shusaku Yamamoto

A Bitter Pill

Japan is the world’s second largest pharmaceutical market, so legislation and caselaw developments affecting the pharmaceutical trade dress, packaging and marketing of goods has a major impact on originator drugs companies and their generic rivals. A series of unfair competition Tokyo District Court decisions in Japan in favor of 12 generic drug manufacturers, held that the colors used by a Japanese innovator pharmaceutical company for its capsules and press-through packaging (PTP) were not entitled to protection under Japan’s Unfair Competition Prevention Law (UCPL). This development will impact on the pharmaceutical branding and trade dress strategies of companies selling prescription medicines, lifestyle drugs, nonprescription pharmaceutical advertising and the country’s generic drug industry.

John A. Tessensohn and Shusaku Yamamoto

Japanese Developments - A round-up of important trademark cases recently heard in Japan

The article discusses six recent and significant Japanese Supreme Court and IP High Court trademark law decisions relating to the legality of unauthorized importation of parallel imports, publicity rights for animals or things, similarity of trademarks & trademark non-distinctiveness.

John A. Tessensohn and Shusaku Yamamoto

Enhanced Protection Under Japan's Unfair Competition Prevention Law

In Japan's constant efforts to fine tune its intellectual property laws and protect IP owners, certain incremental protection under Japan’s Unfair Competition Prevention Law (“UCPL”) were made in mid 2005. The amendments seek to clarify protection for product configurations and introduce criminal penalties against additional acts of unfair competition. The new Unfair Competition Law provisions entered into force on November 1, 2005 and enhanced Customs remedies for acts of unfair competition violations on March 1, 2006.

John A. Tessensohn and Shusaku Yamamoto

Japan's Regional Wealth Multiplier

The Japanese government has introduced a regional collective trade mark system to boost the value of the country's agricultural exports. From April 1 2006, regional collectives or associations whose members produce or purvey Yubari melons, Kawamata game fowl, Wajima lacquer, Matsuzaka beef, Wakura Hot Springs resort services, Nada sake (from Japan), Idaho potatoes, Whitstable oysters, Parma ham or Bowen mangos (from overseas) have been able to file and register these well-known indications as regional collective trade marks for goods and services that have become well known through use and are associated with that geographical region. Branding, through this new regional collective mark system, is an important part of a larger effort to rejuvenate the Japanese agricultural sector, as well as the folk arts and crafts industry, and to re-invent Japan as an export powerhouse for these products.

John A. Tessensohn and Shusaku Yamamoto

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