Japanese Trademark Law: From 19th Century Ordinances to Modern Acts

Note: The information provided here is believed to be accurate, but it is not and should not be construed as legal advice. Please consult a qualified lawyer or appropriate legal professional before undertaking any personal or business endeavor.

Trademark law has its roots in ancient civilizations where marks were used to identify the origin or quality of goods. Roman pottery and bricks often bore symbols indicating their maker, and similarly, ancient Chinese potters marked their creations.

In medieval Europe, guilds used trademarks to distinguish the products made by their members, ensuring quality and protecting their reputations. Consumers associated these marks with specific craftspeople or workshops.

The first formal trademark legislation appeared in England with the Bakers' Marking Law of 1266, requiring bakers to mark their bread with a distinctive symbol. However, comprehensive trademark laws didn't begin to emerge until the 19th century.

In 1857, France enacted the "Manufacture and Goods Mark Act," one of the first modern trademark laws, providing legal protection for registered marks. The British Trademark Registration Act of 1875 followed, establishing a formal system for registering trademarks and offering legal recourse against infringement.

These early laws set the stage for the development of trademark protection, leading to more standardized and robust legal frameworks in the late 19th and early 20th centuries.

Japan's first trademark law was the Trademark Ordinance (Dajokan Proclamation No. 19), promulgated on June 7, 1884 (Meiji 17). This ordinance was replaced by Imperial Ordinance No. 86 on December 20, 1888. In 1899 (Meiji 32), Japan enacted its first formal trademark law, Law No. 38, which led to the abolition of the Trademark Ordinance. This early law underwent two significant revisions in 1909 (Law No. 25, April 5, 1912) and 1921 (Law No. 99, April 30, 1919). It was revised again in 1959 and eventually abolished in 1965 with the enforcement of the Trademark Law Enforcement Act.

Japanese trademark law is currently governed by the Trademark Act (商標法, Shōhyō-hō). Under this Act, only registered trademarks confer a "trademark" right (Article 18), and an examination process is required for registration (Article 14). Protection for unregistered trademarks is provided by the Unfair Competition Prevention Act (不正競争防止法, Fusei kyōsō bōshi-hō).

The Trademark Law defines "trademarks" and "trademark rights." A trademark includes any of the following elements recognized by human senses and used in business to produce, certify, or sell products, or to provide or certify services:

- Characters: Names of products or services, regardless of format, font type, or style.

- Figures: Pictorial representations of products or services.

- Symbols: Company marks, logos, or titles of works.

- Three-dimensional shapes: Shapes of containers or products.

- Colors: Combinations of two or more colors representing a company's image.

- Sounds: Sound logos used in corporate commercials and other business contexts.

Combinations of these elements are also considered trademarks. As of April 2015, no specific provisions were added by the Cabinet Order, allowing for future registrations without amending the law if protection needs to increase.

In 2014, the Trademark Law was amended by the Act to Amend Part of the Patent Act (Act No. 36 of May 14, 2014). This amendment introduced five new types of trademarks:

1. Motion Trademarks: Trademarks where characters or figures change over time (e.g., animations on a screen).

2. Holographic Trademarks: Trademarks using holography, where characters or figures appear to change depending on the viewing angle.

3. Color Trademarks: Trademarks consisting of a single color or a combination of colors without traditional figures (e.g., colors on product packaging).

4. Sound Trademarks: Trademarks consisting of music, voice, or natural sounds recognizable by hearing (e.g., sound logos in commercials).

5. Position Trademarks: Trademarks specifying the position of a mark such as letters or figures on a product.

These new types expanded trademark protection in Japan, with 7-Eleven's three corporate colors being the first color trademarks registered under this amendment.

Trademark rights are established through registration (Article 18, Paragraph 1). The effects of trademark rights are divided into exclusive rights and prohibitive rights, though these terms are not explicitly used in the Trademark Law.

- Exclusive Rights: The holder of trademark rights, including any holder of exclusive use rights, has the exclusive right to use the registered trademark for the designated goods or services (Article 25).

- Prohibitive Rights: Trademark rights include the right to prohibit others from:

1. Using a trademark similar to the registered trademark for the designated products.

2. Using the registered trademark or a similar trademark for products similar to the designated products (Article 37, Item 1).

If these prohibitive rights are violated, the trademark right holder or the exclusive right holder can take action to stop or prevent the infringement. This includes requesting the disposal of infringing items and the removal of equipment used for infringement (Article 36).

Article 26 outlines trademarks that are not covered by trademark rights, including those that are common names for products. This provision ensures that common names cannot be monopolized. For example, even if "Ascalator" is registered as a trademark, the rights do not extend to the common name "escalator" (Article 26, Paragraph 1, Item 2).

Additionally, if another person's trademark appears on a product or advertisement in a way that does not suggest a connection to the business of the trademark owner, trademark rights do not apply. This includes titles, catchphrases, explanatory text, dialogue in novels or manga, designs, etc., that are not used as trademarks (Article 26, Paragraph 1, Item 6).

If a trademark has been used by someone before another person registers it, the prior user has the right to continue using the trademark for their products (Article 32). However, for prior use rights to be recognized, the trademark must have been widely recognized among consumers at the time of the application.

The term of a trademark right is 10 years from the date of establishment and registration (Article 19, Paragraph 1). The trademark owner can renew the registration an unlimited number of times (Article 19, Paragraph 2), extending the rights indefinitely. This is different from other intellectual property rights, such as patents, designs, and copyrights, which have a limited duration.

The rationale for setting the initial term at 10 years and allowing indefinite renewals is to prevent misuse of the trademark system. If trademark rights were permanent without any restrictions, it could lead to issues if the rights holder goes out of business, the trademark becomes against the public interest, or the trademark is unused for extended periods. The renewal process ensures that the trademark system remains fair and aligned with its intended purpose.