The Japan Patent Office plans to submit a bill to revise the Trademarks Law to the ordinary Japanese Diet (parliament) session in 2010 at the earliest in order to protect a wider range of items as trademarked expand the scope of eligible trademarks, including sound, and moving images and holograms, that can be granted legal protection, under Japan's Trademark Law.

John A. Tessensohn and Shusaku Yamamoto

In a landmark three dimensional trademark decision, The Coca-Cola Company v Commissioner of Japan Patent Office, Case No. Heisei 19 (gyo-ke) 10215, Intellectual Property High Court of Japan, 29 May 2008, Japan's Intellectual Property High Court (IPHCJ) held that as long as a three-dimensional shape gives a strong impression to consumers, even if letters are affixed to it, that shape is capable of distinguishing the trade mark owner's goods from others.

John A. Tessensohn and Shusaku Yamamoto

The Asia-Pacific market is home to half of the world’s population, accounts for nearly 40% of the world’s GDP and comprises of the world’s most dynamic economies. Given these business imperatives, brand owners are enlarging their business footprint in the region. Trademark owners will be heartened by the important Asia Pacific jurisdictions' embrace of trademark dilution protection and its various incarnations.

John A. Tessensohn and Shusaku Yamamoto

The article discusses the noteworthy trademark and unfair competition caselaw developments of 2007 that reinforce the centrality of consumer confusion and the marketplace fairness in Japan's trademark and unfair competition judicial philosophy. The Japanese courts have consistently demonstrated willingness to establish a coherent balance between conflicting interests of owners, consumers and good faith competitors carefully checking the overzealous and meritless claims of owners.

John A. Tessensohn and Shusaku Yamamoto

In a closely watched unfair competition appellate case, the Osaka High Court declined to disturb the dismissal of a market leader's unfair competition action over its trade dress, Taiko Pharmaceutical Co., Ltd. v. Izumi Yakuhin Kogyo Co., Ltd., H18 (ne) 2387 dated October 11, 2007. The Osaka High Court decision reinforces the centrality of consumer confusion and marketplace fairness consistent with Japan's unfair competition caselaw and establishing a coherent balance between conflicting interests of owners, consumers and good faith competitors carefully checking against overzealous and meritless plaintiff's claims.

John A. Tessensohn and Shusaku Yamamoto

In Asahi Breweries Ltd v Commissioner of Japan Patent Office, Case No. H18 (gyo-ke) 10374, dated March 28, 2007, the Intellectual Property High Court of Japan's (IPHCJ) recent Honnama trade mark decision illustrates the difficulties of registering an inherently non-distinctive mark in spite of the undoubted commercial success of the said product and the perils of relying on secondary meaning evidence of use that is not identical with the mark in the trade mark application.

John A. Tessensohn and Shusaku Yamamoto

Far from the mid-summer action at Wrigley Field, the trademark logo the long suffering Chicago Cubs received a break of good fortune when the Intellectual Property High Court (IPHC) of Japan overruled the Japanese Patent Office (JPO) and confirmed that its logo trademark would not be confused with the earlier allegedly similar trademark registrations belonging to the major Swiss financial institution, UBS AG, Major League Baseball Properties Inc., v. Commissioner, Japanese Patent Office, Case No. H-19 (gyo-ke) 10061 dated August 8, 2007. Engaging in that rare intersection of sports lore and trademark law, Presiding Judge Iimura confirmed, based on the evidence submitted to the IPHC, that the Chicago Cubs logo was well known in Japan and with “the increased participation of more Japanese players in Major League Baseball, interest in the Major League has increased even in our country, and the team name and logo of the CUBS are well known in Japan and one would normally recognize (the logo trademark) as that of Cubs and the trademarks of the bank will not be confused by Japanese consumers.” It may be a little far fetched to interpret this Japanese judicial fortune as lifting the hex on one of modern baseball's most painful litany of sports curses on the Cubs, ranging from the Billy Goat to the Black Cat to Bartman. No matter how the 2007 season ends, stoic Cubs fans worldwide are at least spared another humiliating, ignominious result, as Japan's IPHC effectively called out the JPO's unjustified and unreasonable battery of senior citations and paved the way clear for the Chicago Cubs logo to slide home safely to be registered.

John A. Tessensohn and Shusaku Yamamoto

Trade mark oppositions are routinely filed by brand owners against an offending application or registration in either a pre-grant or a post-grant procedure before the respective national trade mark office. In Japan, there are several nuanced trade mark opposition practice differences that should not be taken for granted. When policing against offending trademarks, brand owners are generally counseled to use Japan's Invalidation Appeal procedure where possible in view of the limitations inherent in Japanese opposition procedure.

John A. Tessensohn and Shusaku Yamamoto