Design registration system

The Design Act defines “design” as the shape, patterns, colors, or any combination thereof (hereinafter referred to as the “shape, etc.”), of an article (including a part of an article), the shape, etc. of a building (including a part of a building), or a graphic image (limited to those provided for use in the operation of the device or those displayed as a result of the device performing its function, and including a part of a graphic image), which create an aesthetic impression via the eye. In accordance with the amendment of the Design Act in 2019, design protection became available for the shape of a building or interior design, or a graphic image.

While designs may be protectable under the Copyright Act, the design protected under the Design Act is the shape of an article that can be industrially mass-produced. A design which is a fine work of art intended to be created as a single item is not eligible for protection under the Design Act. However, even a fine work of art may be protected under the Design Act provided that articles having an almost identical shape to that of the fine work of art can be mass-produced.

Thus, a design of a wide range of luxury products may be considered for protection under the Design Act. Japan adopts design protection systems, such as partial design systems, related design systems and secret design systems, to strengthen design protection.

Partial design system

Since a design is the appearance of an article, it is easy to imitate. In addition, a skillful imitation can easily be made, such as imitating only the distinctive parts of a design while modifying other parts to create a different design to avoid design infringement as a whole. Therefore, a “partial design system” has been established in which only the distinctive parts are included in the scope of design rights. In other words, the partial design system can be used to protect a distinctive part of a design. For example, by acquiring partial design rights covering the charm of a necklace, the luxury brand owner is likely to be able to claim an infringement of the design right even if the design of other parts (such as the design of the chain of the necklace) is modified, as long as the shape of the charm is common.

Related design system

The “related design system” allows a design to be registered even if it is similar to a design the applicant previously filed an application for (“Principal Design”), provided that the applicant files the application within a certain period of time (Article 10, Design Act). Under the Design Act, a design cannot generally be protected if there exists a similar design that was filed before the application. However, if a similar design is the applicant’s own earlier-filed or earlier-registered design, the applicant can obtain design protection by designating the earlier design as the Principal Design. By using the related design system, a luxury brand owner can protect a design that has lost its novelty due to a previously registered design of the brand owner. The related design must be filed within 10 years from the filing date of the Principal Design. Registration is allowed for a design that is only similar to the related design. By using the related design system, a luxury brand owner can protect product lines that are designed using a consistent concept over the medium to long term. Please note that the design right of a Principal Design and that of its related design may not be transferred independently of each other.

Secret design system

An applicant for a design may request that the design be kept secret for a period (up to three years after the registration date) that is designated in the request (Article 14, Design Act). The secret design system allows a luxury brand owner to keep its design secret for up to three years after its registration. If the brand owner does not want its competitors to know its design development trends or if it wants to align the timing of design publication with the timing of implementation, then the secret design system is helpful.

Registration

The creator of a design is originally entitled to obtain a design registration for the design (Article 3-1, Design Act). An employer (or a juridical person or a national or local government), where an employee (or an officer of the juridical person or a national or local government employee) has obtained a design right for a design which, by the nature of the said design, falls within the scope of the business of the said employer and was achieved by an act categorized as a present or past duty that the said employee performed for the employer, shall have a non-exclusive license on the said design right.

To obtain a design right, an applicant needs to file a design application with the Japan Patent Office (JPO) or through the Hague System designating Japan (Article 6, Design Act).

Designs will be examined by the JPO for registrability, such as novelty and creative difficulty (Article 3, Design Act).

Novelty

A design that was publicly known, described in a distributed publication, or publicly available through communication networks in the world prior to the filing of the application, or a design similar to the above, is not eligible for design registration (Article 3-1, Design Act).

Exception to lack of novelty (Article 4, Design Act): if a design is made public due to a pre-filing disclosure as a result of an act by the person having the right to obtain a design registration, the design would lose novelty and then it would not be protected. Thus, the applicant can make a request for an exception to lack of novelty at the time of filing the application; in this case, only the very first pre-filing disclosure is required to be stated in the document. For example, if a design is made public first at a fashion show by a luxury brand owner and is later disclosed on several social media platforms as well as through sales, the brand owner can simply state the very first disclosure (i.e., the fashion show) to be entitled to the exception to lack of novelty.

Creative difficulty

Even if the design is new, a design that can be easily created by a person skilled in the art is not eligible for design registration (Article 3-2, Design Act).

In addition to the above, a design that is identical or similar to a part of a registered design is not eligible for design registration (Article 3 bis, Design Act). A design liable to contravene public order or morality, designs liable to cause confusion with articles connected with any other person’s business, and designs composed of only shapes indispensable to secure the functions of an article shall not be protected (Article 5, Design Act).

The Design Act is based on the first-to-file principle (Article 9, Design Act). As an exception, when two applications for similar designs are filed by the same person on the same date, the applicant can obtain registrations for both designs by using the related design system, whereby one can be registered as the principal design and the other as a related design.

The term of a design registration is 25 years after filing.

Infringement

The design right owner is entitled to seek damages and injunctive relief against design infringement (Article 709, Civil Code and Article 37, Design Act). Design infringement is established where a third party manufactures, sells, etc. a design that is identical or similar to the registered design. Whether a registered design is identical to or similar to another design shall be determined based on the aesthetic impression that the designs would create through the eyes of their consumers.

In court precedents, the similarity of design was determined by recognizing the parts of the design that attract the viewers of designs, such as traders and consumers (the “predominant parts”), and then comparing the predominant parts of the two designs and judging whether the difference in the configuration of the two designs gives the viewers a different aesthetic impression or not.

Regarding the partial design registration system, when the design right owner owns a design right in relation to a partial design of a finished product, provided that the partial design of a third party product is identical or similar to the registered design, it constitutes design infringement even if the design of other parts is not similar.

Regarding the related design registration system, the design right extends even to the extent that the design is not similar to the Principal Design but only to a related design. Therefore, compared to the case where only a single design right is granted, a design right can be enforceable against a wider range of designs.

Registration

Requirements

In Japan, “trade marks”, “collective trade marks”, “regional collective trade marks” and “defensive marks” can be registered under the Trade Mark Act. Collective trade marks can be registered for trade marks that are used by members of business cooperatives and associations (Article 7, Trade Mark Act). Regional collective trade marks can be registered for trade marks composed solely of the geographic name and the generic name of the particular goods or services that are used by members of business cooperatives and associations (Article 7 bis, Trade Mark Act). Defensive marks can extend the protection of a famous mark to include the goods and services for which the applicant does not intend to use the mark. There is no system to register a mark as a certification mark; therefore, certification marks are protected in the same way as ordinary trade marks in relation to goods and services that would be certified by the applicant.

A trade mark registration must be obtained to have trade mark rights in Japan (Article 18-1, Trade Mark Act). Trade mark rights cannot be acquired merely by using the mark. Therefore, it is essential for brand owners to file a trade mark application to protect their brand in Japan.

Marks that are famous outside of Japan are not directly protected under Japanese law. However, the Trade Mark Act stipulates that a trade mark application shall be rejected or a registration of a trade mark shall be cancelled or invalidated if it is identical or similar to a trade mark that is well-known among consumers outside of Japan as indicating goods or services pertaining to the business of another person, or if such a trade mark is used for unfair purposes (i.e., gaining unfair profits, causing damage to other persons, or any other unfair purposes), even if such trade mark is not used or known in Japan (Article 4-1-19, Trade Mark Act).

Pursuant to the Trade Mark Act, if trade marks fall under the reasons for refusal shown below, they will not be protected.

(i) Absolute grounds for refusal: indistinctive marks such as descriptive marks that merely indicate the nature or content of their designated goods/services, a mark composed solely of a common surname, a very simple and common mark (e.g., numerals and one or two alphabetical letters), or a mark composed solely of colors (Article 3-1, Trade Mark Act).

An indistinctive mark, as listed above, can be registered if the trade mark applicant successfully proves that it has acquired a secondary meaning as a result of continuous and extensive use of the mark in Japan (Article 3-2, Trade Mark Act). To prove that a mark is well-known or famous and has acquired a secondary meaning, the applicant can provide evidence showing the following facts: whether the trade mark is actually in use and the goods or services for which it is used are identical to those shown in the application document, duration of use of the mark (including the date of first use), sales figures (volume of sales of products bearing the mark), sales area and/or number of stores, advertisements (type, such as newspapers, magazines or internet articles), circulation (for each advertisement), advertising expenditures and the duration of advertising. All of the aforesaid information should be related to Japan. The applicant can also provide website or magazine articles showing the trade mark, or surveys demonstrating the level of recognition of the mark in the market, as these are also useful to prove the well-known status or fame of the trade mark.

(ii) Relative grounds for refusal: trade marks that violate public or private interests, namely the existence of prior rights; such as registered trade marks with earlier filing dates, pending trade mark applications with earlier filing dates, unregistered but well-known trade marks in Japan, trade marks well-known in foreign countries if the application is filed for unfair purposes, registered defensive marks, another person’s name, corporate names, portraits or likeness, marks indicating a place of origin of wines or spirits of Japan that have been designated by the commissioner of the JPO, or a mark indicating a place of origin of wines or spirits of a member of the WTO that is prohibited by said member from being used on wines or spirits not originating from the region of said member.

Procedure

To obtain a trade mark right, an applicant needs to file a trade mark application with the JPO or through the Madrid System by designating Japan. A trade mark written in English (or any language other than Japanese) can be protected without a Japanese translation or transliteration.

The Trade Mark Act is based on the first-to-file principle (Article 8-1, Trade Mark Act); the use of the trade mark at the time of its filing is not required to obtain trade mark registration unless the scope of designated goods and services is very broad within each designated class.

Marks will be examined for registrability; the JPO examines all trade mark applications on both absolute grounds (distinctiveness) and relative grounds (earlier rights). If the JPO Examiner finds any ground for refusal, the applicant is given an opportunity to file a counter-argument against the Examiner’s view and an amendment of the goods and services, if necessary. However, an amendment of the trade mark itself is usually not permitted.

Regarding the relative grounds for refusal, a “consent letter” or “co-existence agreement” used to be insufficient as a measure to allow two similar trade marks to co-exist. Instead of a consent letter, one way to circumvent the refusal was to use an “assign-back arrangement”, whereby an applicant temporarily assigns ownership of the application to the cited prior trade mark owner. However, an amendment of the Trade Mark Act in 2024 adopted a “Consent” system, which allows the registration of an identical or similar trade mark with the consent of the owner of the prior trade mark under certain conditions. For example, after April 1, 2024, a luxury brand owner who files a trade mark application in Japan or through the Madrid System designating Japan (including subsequent designations), can enjoy the benefits of the Consent system.

If the JPO Examiner judges that there are no reasons for refusal (or the issued reasons for refusal were overcome), a Decision of Registration to grant the registration of the trade mark will be issued. Once an applicant receives a Decision of Registration, the applicant should pay the registration fee to register the mark in Japan. There is no requirement that a trade mark applicant use its mark in commerce when the registration is granted.

The term of a trade mark registration is 10 years. A renewal application must be filed during the six months prior to the expiration of the trade mark right. Within the six months following the expiration date (the grace period), the owner may file a renewal application by paying double the official fees as a bailout measure.

Oppositions 

Japan adopts a “post-grant registration” opposition system, and any person can file an opposition within two months after the publication of the trade mark (the trade mark is published after it is registered) (43 bis, Trade Mark Act). The opposition deadline is not extendable. Opposers can file detailed reasons for opposition after the opposition deadline (non-Japanese opposers have 90 days to do so) (Article 43 quater, Trade Mark Act). Legal grounds for an opposition are basically identical to the grounds for refusal for pending applications, with one exception: the violation of the first-to-file principle (based on the existence of a registered trade mark having a prior filing date) which is among the grounds for an opposition, not among the grounds for refusal for pending applications. Dilution is not explicitly recognized as grounds to oppose a trade mark registration.

The legislative intent of the opposition in Japan is the re-examination of the trade mark application, and the JPO will make a decision on its own as to whether the initial examination was correct. Thus, the examination for the opposition is an ex parte procedure, where only the JPO trial Examiners review the reasons for opposition; the trade mark owner will not become involved unless the JPO Examiners consider the reasons for opposition persuasive. As a result, the chances of trade mark registrations being cancelled due to oppositions tend to be extremely low (9.2% in 2022).

In trade mark opposition procedures, there are no discovery proceedings or any other process to oblige parties to collect and submit evidence surrounding the application or the opposition.

Any interested party can file either or both an opposition and an invalidation trial during the time period when one can file an opposition. To determine which procedure is preferable — an opposition or an invalidation trial — may depend on the luxury brand owner’s purpose for initiating the action. For example, if the owner of a famous luxury brand considers a junior trade mark to be confusingly similar to its famous trade mark, an invalidation trial is likely the more effective option. On the other hand, if the luxury brand owner mainly wishes to advise the junior trade mark owner of its concern (and the famous trade mark owner would not mind if the opposition was unsuccessful), then an opposition, which is a simpler and faster procedure, may be sufficient for the luxury brand owner’s purposes.

If the JPO trial Examiners render a decision to maintain the trade mark registration and dismiss the opposition, the decision cannot be appealed (Article 43 ter-5, Trade Mark Act). However, if the opposer is dissatisfied with the dismissal, the opposer can file an invalidation trial on the same grounds (Article 46, Trade Mark Act). If the JPO trial Examiners render a rescission decision and the trade mark owner is dissatisfied with the decision, the trade mark owner may appeal to the Intellectual Property High Court.

Revocation/Cancellation

Any person who has a legal interest in invalidating a trade mark may file a request for a trial for invalidation of the trade mark with the JPO (Article 46, Trade Mark Act). Legal grounds for invalidation are basically identical to the grounds for refusal for pending applications, with exceptions such as the violation of the first-to-file principle (based on the existence of a registered trade mark having a prior filing date). The application for the trade mark being filed by a person who has not succeeded to the right deriving from the trade mark application, or the trade mark having fallen into the grounds for invalidation after its registration, are among the grounds for invalidation, not among the grounds for refusal for pending applications.

Any person may file a request for a trial for cancellation of a trade mark with the JPO if the trade mark has not been used in Japan for the most recent three consecutive years (Article 50-1, Trade Mark Act). When such a request is filed, the burden of proof of use lies on the trade mark owner (Article 50-2, Trade Mark Act).

Any person may file a request for a trial for cancellation of a trade mark where the trade mark owner intentionally uses a trade mark similar to the registered trade mark in relation to goods and services (and/or those similar to those of the trade mark), and such use misleads consumers as to the nature of the goods/services or causes confusion with the goods/services of another person (Article 51, Trade Mark Act).

Any person may file a request for a trial for cancellation of a trade mark where the licensee of the trade mark uses a trade mark similar to the registered trade mark in relation to goods and services (and/or those similar to those of the trade mark), and such use misleads consumers as to the nature of the goods/services or causes confusion with the goods/services of another person (Article 53, Trade Mark Act).

A person who has the rights related to the trade mark in a foreign member country of the Paris Convention, WTO, or Trade Mark Law Treaty may file a request for a trial for cancellation of a trade mark where the application for trade mark registration was filed by their former agent or representative without their authorization (Article 53 bis, Trade Mark Act).

An invalidation trial must be filed within five years from the date of the registration of the trade mark, except for cases where trade marks were filed in bad faith or for the purposes of unfair competition. The time period of five years also applies for cancellation actions due to misuse of a registered trade mark and against trade marks registered by the trade mark owner’s former agent or representative without authorization.

Protection of Non-Traditional Trade Marks

The Trade Mark Act defines a “trade mark” as characters, figures, signs, three-dimensional shapes, colors or any combination thereof; sounds, or anything else that can be perceived by people, which are used in relation to goods and services provided in the course of trade (Article 2, Trade Mark Act). In accordance with the amendment of the Trade Mark Act in 2015, trade mark protection became available not only for traditional marks such as word marks, device (figurative) marks and three-dimensional marks, but also for non-traditional trade marks, such as color trade marks, sound trade marks, motion trade marks, hologram trade marks and position trade marks. A color trade mark (a single color or multiple colors) and a sound trade mark without linguistic elements are basically deemed as indistinctive, and thus it is necessary for a trade mark applicant to successfully prove that the mark has acquired a secondary meaning as a result of its continuous and extensive use in Japan. If a shape, color or sound is essential for the product in question to function, a trade mark solely composed of such a feature cannot be registered (Article 4-1-18, Trade Mark Act). Furthermore, with the amendment of the JPO’s Examination Standards in 2020, trade mark protection became available for distinctive interiors and/or exteriors of stores as three-dimensional trade marks.

Assignment and licensing

A trade mark owner can assign their trade mark right to any third party. An assignment can be made by contract but only becomes legally effective upon the registration of the assignment (Article 35, Trade Mark Act).

Furthermore, a trade mark owner can grant a license to any third party. There are no formal requirements for granting a license. Written license agreements are common in practice to grant a license, but a license can be granted without a written agreement, and an implied license is also permissible. The Trade Mark Act provides two types of licenses: exclusive licenses (“Senyo-Shiyo-Ken”, Article 30, Trade Mark Act) and non-exclusive licenses (“Tsujo-Shiyo-Ken”, Article 31, Trade Mark Act). An exclusive license (“Senyo-Shiyo-Ken”) grants the exclusive rights to use the trade mark. The exclusive license (“Senyo-Shiyo-Ken”) must be registered (Article 30-4, Trade Mark Act), and once it is registered, the licensee is entitled to the exclusive rights and even the trade mark owner cannot use the trade mark. The other type of license, “Tsujo-Shiyo-Ken,” is a non-exclusive license, which can be granted without registration.

It should be noted that it often happens that the trade mark owner grants an exclusive license by contract without registering the exclusive right. In this case, the exclusivity is merely a contractual right, and while the licensee can claim its exclusivity against the trade mark owner, the licensee cannot claim its exclusivity against a third party (such as another alleged licensee or assignee) since it is regarded as “Tsujo-Shiyo-Ken” in relation to a third party under the Trade Mark Act. This exclusive license without registration is common in Japan. Non-exclusive licenses (“Tsujo-Shiyo-Ken”) can also be registered, although this is not common. The registration of a non-exclusive license (“Tsujo-Shiyo-Ken”) allows the licensee to claim its non-exclusive rights against a third party (Article 31-4 of the Trade Mark Act). The registration of the license is made public.

Infringement

The trade mark owner is entitled to seek damages and injunctive relief against trade mark infringement (Article 709, Civil Code and Article 36, Trade Mark Act). Trade mark infringement is, in principle, established where a third party uses a mark that is identical or similar to the registered trade mark for goods or services that are similar to the designated goods or services of the trade mark registration. The similarity between the mark at issue and the registered trade mark is determined by considering the similarity in terms of appearance, connotation, and pronunciation between the marks, as well as the likelihood of confusion. Trade mark infringement is only established where the mark at issue is used as an indication of the origin of goods or services (i.e., “trade mark use”).

There are some defenses against a trade mark infringement claim provided under the Trade Mark Act or otherwise recognized as precedent. If the mark at issue is not used as an indicator of origin and the customers would not recognize it as a source indicator of the defendant’s goods or services, it will be considered “non-trade mark use” and it does not constitute trade mark infringement (Article 26-1-6, Trade Mark Act). This would be the case where the mark is used for descriptive purposes or is used and recognized as the design of the products. Further, if the defendant has used a mark and the mark has become well-known among consumers prior to the filing of the application of the trade mark at issue, then the defendant can claim “prior use” as a defense (Article 32, Trade Mark Act). The defendant may also claim abuse of trade mark rights if there is any ground for invalidation or cancellation of the trade mark registration.

Parallel import

The parallel import defense is also recognized, although it only applies under certain conditions. According to precedent, parallel import does not constitute trade mark infringement where: (i) the trade mark on the parallel imported goods is legitimately affixed by the trade mark owner or its licensee in the jurisdiction where the goods are exported; (ii) the trade mark owner in the jurisdiction where the parallel imported goods are exported is the same (or could be legally or financially considered the same) as the trade mark owner in Japan, so that the trade mark’s function as a source indicator is not impaired; and (iii) the quality of the parallel imported goods is substantially the same as the goods distributed by the trade mark owner in Japan.

Creative expressions of thoughts or sentiments that fall within the literary, academic, artistic, or musical domain are protected under the Copyright Act as “work” (Article 2-1-1, Copyright Act). Under Japanese law, copyright automatically arises upon the creation of a work and so registration is not required to create or enforce copyright (Article 17-2, Copyright Act). The author of the copyrighted work also owns moral rights (the right to make a work public, the right of attribution, and the right to integrity) in respect to their work (Article 17-1, Copyright Act). In the case of a work created by an employee in the course of their duties at the initiative of their employer, that the employer publishes as their own work, the employer is the author, unless otherwise stipulated in a contract (Article 15, Copyright Act). In principle, copyright lasts until 70 years after the author’s death (Article 51-2, Copyright Act).

With regard to industrial design, including fashion design, protection under the Copyright Act is limited as it is considered applied art; that is, the application of art to a practical product. Many court precedents have denied the protection of applied art due to a lack of sufficient aesthetic value. For instance, there is a decision that denied the ability to copyright the coordination of clothes in a fashion show (Intellectual Property High Court, August 28, 2014). However, there are some court decisions that acknowledged the ability to copyright the shape of a chair (Intellectual Property High Court, April 14, 2015) or the shape of a lampshade (Tokyo District Court, January 29, 2020).

Copyright can be transferred or licensed, and a written agreement is not mandatory. However, it should be noted that, in the case of the transfer of a copyright, it is presumed that copyrights relating to derivative works under Articles 27 and 28 of the Copyright Act remain unless those rights are explicitly referred to in the assignment contract as the subject of the transfer. Furthermore, it should also be noted that moral rights cannot be transferred. Thus, it is common practice for copyright assignment agreements to include a covenant clause that the author shall not exercise their moral rights against the assignee or its designated persons.

The copyright owner can sue an infringer for damages and an injunction (Article 709, Civil Code and Article 112, Copyright Act). The plaintiffs must show that they own the copyright of the plaintiff’s work, that the plaintiff’s work and the defendant’s work are similar, that the defendant’s work was made in reliance on the plaintiff’s work, and that the defendant has committed an act prohibited by the plaintiff’s copyright (e.g., reproduction and adaptation). Similarity is determined by whether those who have access to the defendant’s work may directly perceive the essential characteristics of the expression of the plaintiff’s work. Reliance will generally be inferred where there is a similarity between the plaintiff’s work and the defendant’s work and there is a likelihood that the defendant will have access to the plaintiff’s work.

It is not possible for a brand owner to obtain a registration for a trade dress in Japan. Instead, if the trade dress refers to a product configuration, interiors and/or exteriors of stores; some sort of protection may be granted under the Design Act, Trade Mark Act or the UCPA. If the product configuration, interiors and/or exteriors of stores meet the novelty requirements, they may be eligible for protection by the Design Act. The Trade Mark Act basically does not provide substantial protection for product configuration, interiors and/or exteriors of stores themselves if they do not contain any distinctive word or device elements. As an exception, if the product configuration, interiors and/or exteriors of stores themselves have acquired distinctiveness through their extensive use in Japan, they may be registered as 3D trademarks (Article 3-2, Trade Mark Act). Well-known product configurations, interiors and/or exteriors of stores, or configurations of new short-cycle products may also be protected by the UCPA (Article 2-1-1 or Article 2-1-3, UCPA).

The unauthorized use of the name, portraits, etc., of a person is considered to be infringement of the right to exclusively use the customer appeal of the name, portraits, etc. (so-called the right of publicity) and is found to be illegal under Article 709 (tort liability provision) of the Civil Code if the sole purpose of the use is to take advantage of the customer appeal, more specifically, in such cases where: (i) the name, likeness, or the like is used as an independent object of appreciation in products or services; (ii) the name, likeness, or the like is used to differentiate products or services; or (iii) the name, likeness, or the like is used as an advertisement for products or services (Supreme Court Decision, February 2, 2012, “Pink Lady Case”). The right of publicity does not require an application or registration.

Infringing on trade secrets is specified as an act of unfair competition regulated by the UCPA. A “trade secret” is defined under Article 2-6 of the UCPA as technical or business information useful for business activities, such as manufacturing or marketing methods, that is kept secret, and is not publicly known. There are three essential elements to a trade secret: (1) it is kept secret, (2) it is useful information, and (3) it is not publicly known. The unauthorized acquisition, use, or disclosure of trade secrets may constitute an act of unfair competition under Articles 2-1-4 through 2-1-10 of the UCPA. As mentioned below, the infringement of trade secrets, which is an act of unfair competition, is subject to claims for damages and injunctions (Article 709, Civil Code and Article 3, UCPA).

See above, Copyright.

UCPA

Overview

The UCPA provides that acts amounting to unfair competition can be subject to damages and injunction claims (Article 709, Civil Code and Article 3, UCPA). Among these, there are two types of unfair competition that relate to brand protection, specifically those provided under Articles 2-1-1 and 2-1-2. According to Articles 2-1-1 and 2-1-2, indications shall be protected if they are well-known or famous regardless of whether they are registered as a trade mark. Any indication that serves as a source indicator, such as trade dress or distinctive configuration or features, can be protected under the UCPA even if it is not listed as a trade mark that can be registered under the Trade Mark Act. Thus, in practice, the protection provided under the UCPA often supplements the protection provided under the Trade Mark Act.

Further, the UCPA also contains another unfair competition provision that protects the design of products regardless of registration. Although the scope of protection and the protection period are limited, this protection supplements the protection provided under the Design Act and Copyright Act.

Article 2-1-1 (protection for well-known indications)

Article 2-1-1 of the UCPA provides that the use of a mark that is identical or similar to another person’s well-known trade mark and causes a likelihood of confusion among customers constitutes an act of unfair competition. Trade mark registration is not required, but the mark must be well-known among consumers. Likelihood of confusion will be found not only where the use of the mark causes confusion that the goods or services come from the same business entity, but also where it causes confusion as if the companies had a close business relationship, such as being within the same group of companies or involved in the same merchandising activities. According to precedents, the court can easily determine the likelihood of confusion as long as the indication is well-known and there is similarity.

Article 2-1-2 (protection for famous indications)

Further, under Article 2-1-2 of the UCPA, the use of a mark that is identical or similar to another person’s famous trade mark constitutes an act of unfair competition. It should be noted that unlike Article 2-1-1 of the UCPA, the likelihood of confusion is not required, but the indication must be famous, which requires a higher level of recognition among customers, though the difference between “well-known” and “famous” is unclear.

Article 2-1-3 (imitation of shape/form of goods)

Article 2-1-3 of the UCPA provides that the sale of goods that rely on a third party’s goods and are the same or substantially similar to those goods constitutes an act of unfair competition. Registration of the design is not necessary, but the protection is only available for three years from the date of the commencement of sale of the goods in Japan. This protection is easily available, but the scope of unfair competition is limited to the sale of products with substantially similar or the same configuration, and the protection period is much shorter than design rights. Thus, this protection is suitable for new short-cycle products but not for long-standing products.