The Intellectual Property High Court of Japan underscored the paramount importance and relevance of the criterion of pronunciation of a mark in similarity determination and also likelihood of confusion under Japanese trademark practice.

John A. Tessensohn and Shusaku Yamamoto

Japanese consumers are particularly conscious about food and the result is a growing lucrative multi-billion dollar market for health foods in Japan that is being tapped by both local and foreign companies. Japan is a pioneer in regulating such health food labeling claims and it is critical that companies' health food products comply with food labeling and advertising regulations and this comment discusses a recent health claim advertising that was considered as misleading by the Japanese regulatory authority.

John A. Tessensohn and Shusaku Yamamoto

In a series of pro-brandowner decisions involving foreign and Japanese auto-makers, the IP High Court of Japan has granted protection against third party unauthorized trademark registrants. The IP High Court demonstrated its willingness to protect famous trademarks in Japan against unauthorized third party applications seeking to free-ride on the fame and notoriety of the famous brands by creating an association with famous marks.

John A. Tessensohn and Shusaku Yamamoto

In a game changing breakthrough, the Intellectual Property High Court of Japan (IPHCJ) decision Perfetti Van Melle S.p.A v Rakuten K.K., was a wake-up call to online marketplace operators who could be exposed to trade mark infringement damages or injunction liability if they do not act within a reasonable time period to remove infringing listings from their websites after receipt of the brand owners' notice or have reasonable grounds to believe that infringements have occurred. The IPHCJ has crafted a balanced judicial stick to encourage a culture of enlightened cooperation and mutual benefit, rather than facilitate conflict, between trade mark owners and online marketplace operators.

John A. Tessensohn and Shusaku Yamamoto

Brandowners should use Japan's trademark invalidation appeal system to challenge competitor marks in view of the procedural and time advantages over the trademark opposition procedure.

John A. Tessensohn and Shusaku Yamamoto

Even with strict Japanese anti-counterfeiting laws and well-established customs practice and procedures, the war against counterfeiting is a never-ending battle; especially since the vast bulk of counterfeit goods are sold on the Internet. This article discusses recent online Counterfeiting Trends and Anti-Counterfeiting Measures in Japan.

John A. Tessensohn and Shusaku Yamamoto

In a pro trademark owner decision, the Intellectual Property High Court of Japan (IPHCJ) invalidated a third party's trademark registration ("Tarzan" in katakana) on the ground that it was contrary to public order or morality, reversing the Board of Appeals of the JPO decision, Edgar Rice Burroughs Inc., v. Star Seiki K.K., Case No. Heisei 23 (gyo-ke) 10399 dated June 27, 2012.

John A. Tessensohn and Shusaku Yamamoto

The landmark Supreme Court of Japan decision elaborated on the scope of protection of publicity rights of celebrities in Japan when it dismissed the claim of one of the most famous pop idols in Japan's pantheon of entertainment culture, Pink Lady, - the mid1970s Japanese pop phenomenon. The Supreme Court rejected the claim of damages and injunction asserted by the plaintiffs against the publishers of a magazine article which used their image without permission when it discussed a weight-loss method using dance routines to the duo's songs, A & B v. Kobunsha K.K. Heisei 21(ju) 2056 dated February 12, 2012.

John A. Tessensohn and Shusaku Yamamoto