2013 Vol. 103 No. 2

Litigating the Meaning of “Prima Facie Evidence” Underthe Lanham Act: The Fog and Art of WarCharles L. Cook and Theodore H. Davis Jr.

Separating Descriptive Sheep From Generic GoatsAnthony L. Fletcher

How Ethics Rules Can Be Used to AddressTrademark BullyingJason Vogel and Jeremy A. Schachter

Navigating the “Land of Harmony” and Finding“Harmonization” for Foreign Trademark Applicants andOwners: A Japanese Practitioner’s PerspectiveYasuhiro H. Suzuki

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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)).

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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 Trans-Pacific 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-

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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 [re-gi-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] 29-30 (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).

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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 pyo byo hyo nyo --- chyo jyo shyo gyo kyo --

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 (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.

国際商標協会 Guoji Shangbiao Xiehui

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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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Figure 1: Scopes of Identical and Similar Trademarks

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-ji-uhs(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.

Similar Pronunciation

SIMILAR

SIMILAR

Exact Match

Identical Pronunciation

Similar Appearance / Similar Concept

IDENTICAL

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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.

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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] “アスペ” [ASUPE] “アトミン / Atomin” “ATAMIN / アタミン” “VULKENE” “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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Figure 2: Hierarchical Arrangement of Japanese Classification

Japanese Class 1

Japanese Class 11

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.

CHEMICALS

Inorganic acid Organic acid and

their salts Alkalies

Su

lfurou

s acid

Ch

lorosulfon

ic acid

Hydroch

loric acid

Adipic acid

Am

inon

aphth

ol toluidine

sulfon

ate

Ben

zoic acid

Am

mon

ia water

Cau

stic potash

Slaked lim

e

PHARMACEUTICAL PREPARATIONS

Pharmaceutical agents affecting sensory organs

Caridovascular agents

Agents affecting respiratory organs

Agen

ts for ophth

almic u

se

Agen

ts for optical and n

asal u

se

An

ti–motion sickn

ess agents

Cardioton

ics

An

tihyperten

sives

Vasocon

strictors

Respiratory stim

ulants

An

ti-cough

drops

An

ti-tussive expectoran

ts

TELECOMMUNICATION MACHINES

Telephone apparatus

Wire communication

machines

Transmission machines and

apparatus

Intercom

s

Portable teleph

ones

Au

tomatic sw

itchin

g apparatu

s

Teletypew

riters

Au

tomatic telegraph

apparatu

s

Facsim

ile mach

ines

Au

dio frequen

cy tran

smission

mach

ines

Cable tran

smission

mach

ines

and apparatu

s

Pow

er-line tran

smission

m

achin

es and apparatu

s

ELECTRONIC MACHINES, APPARATUS AND THEIR PARTS

Electronic machines and

apparatus Electron tubes

Semi-conductor elements

Com

puters an

d their

peripherals

Electrostatic copyin

g m

achin

es

Electron

ic desk calculators

X-ray tu

bes

Ph

otosensitive tubes

Vacu

um

tubes

Th

ermistors

Diodes

Tran

sistors

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Figure 3: Cross-Classification Transfer of Similar Groupings

Japanese Class 1 International Classification

Class 1 Class 4 Class 5

Class 21 Japanese Class 11 Class 9 Class 11 Class 21

Chemicals

Solid lubricants

Pharmaceutical

Dental floss

Chemicals (01A01)

Solid lubricants (01A01)

Pharmaceutical preparations (01B01)

Dental floss (01C01)

Electronic Machines and Apparatus

Telecommunication Machines and Apparatus

Electric toothbrushes

Electronic Machines and Apparatus (11C01)

Telecommunication Machines and Apparatus (11B01)

Electric lamps and other lighting (11A02)

Electric toothbrushes (11A07)

Electric lamps and other lighting apparatus

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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 on-commission 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 BROADCASTING – 38B01

Mobile telephone

communication

Telex services

Communications by computer

terminals

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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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.

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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 ever-changing 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.”

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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 world-famous 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 hard-to-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 vodka-based 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 wide-ranging 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 re-assignment 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 applied-for 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

Identical Similar Dissimilar

Identical Senyo-ken Kinshi-ken -

Similar Kinshi-ken Kinshi-ken -

Dissimilar - - -Reg

iste

red

Tra

dem

ark

Designated Goods/Services

(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 senyo-ken, 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

Scope of Rights Based on Rights Expanded by Defensive Mark Registration Defensive Mark Registration

(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.

Identical Senyo-ken Kinshi-ken Kinshi-ken

Similar Kinshi-ken Kinshi-ken -

Dissimilar - - -

Reg

iste

red

Tra

dem

ark Kinshi-ken

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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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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.