Japan has become very interested in the use of generative AI tools and services like ChatGPT at all levels of society including the national and local governments, business, industry, education, and the like. This article will examine the Japanese position of ChatGPT on patent and copyright ownership, validity, infringement liability, trade secrets, privacy and data protection issues. The authors also outline the best practices that enterprises doing business in Japan should adopt when using generative AI tools and services like ChatGPT in its business operations in the world’s third largest national economy. It also highlights the fast-breaking regulatory contributions that Japan is making at a national level and its current leadership role in formulating generative AI’s regulatory framework on a global basis.

Kensaku Yamamoto, Masahiro Hashimoto, Akito Honda and John A. Tessensohn

In Christian Louboutin SAS & Anor. v. Eizo Collection Co. Ltd., Case no. Heisei 31 (wa) 11108 dated March 11, 2022, the Tokyo District Court dismissed an unfair competition action for damages and injunction initiated by the plaintiffs who had alleged that the red-soled shoes distributed by an unauthorized third party Japanese shoe manufacturer under the Unfair Competition Prevention Law. This article will explore this pro-market and pro-competition decision which endorsed the position that Japanese shoe manufacturers are free to manufacture and sell red soled high heel shoes since such red sole high heel shoes are not a source identifier of Louboutin.

John A. Tessensohn and Shusaku Yamamoto

This comment explores an interesting trade mark opposition decision which demonstrates that the outsized reputation and fame of the opponents’ senior marks per se will not guarantee success in Japanese trade mark opposition proceedings if the senior and famous mark is not considered to have the source-identifying function in relation to the designated goods of the challenged mark. This article will also revisit the procedural pitfalls and strategic shortcomings regarding Japan’s trade mark opposition system that will demonstrate why brand owners of famous marks would be better served by using Japan’s invalidation appeal system to police competitors’ trade marks in the world’s third-largest economy, Japan.

John A. Tessensohn and Shusaku Yamamoto

The COVID-19 pandemic has unleashed a plague of trademark speculators who’ve filed a large swathe of applications to register opportunistic COVID-19 and coronavirus-related marks at trademark offices all over the world. This article will explore this exploitative trademark filing trend in Japan focusing on trademark applications directed to a Japanese folkloric yōkai monster named Amabie which possesses the mythical power to prevent disease. The article will examine the prevailing Japanese trademark law position against registering commonplace buzzwords or trendy symbols and whether such opportunistic trademark applications ripped from the news headlines or social media can be successfully registered in Japan.

John A. Tessensohn and Shusaku Yamamoto

Japan amended its Unfair Competition Prevention Law (“UCPL”) which came into effect on July 1, 2019. The revised UCPL is said to be the first law in the world which seeks to protect “big data” itself. The new law will consider the wrongful acquisition, use or provision of data that is protected by management system (e.g. IDs and passwords managing method) and provided to limited users as an act of unfair competition, and the UCPL will provide civil remedies to victims, e.g., rights to file a demand for an injunction or enjoy special treatments for compensation.

John A. Tessensohn and Shusaku Yamamoto

In Japan, businesses can protect their store design, store front and/or trade dress by using the non-traditional trademark registration regime, eg three dimensional trademarks, position trademarks, motion trademarks and unfair competition law. This article will provide an outline of the various pro-owner legal tools available to achieve legal protection for such distinctive and valuable intellectual property.

John A. Tessensohn and Shusaku Yamamoto

Toho Co., Ltd., v. Taguchi Industrial Co., Ltd., Heisei 29 (gyo-ke) 10214 is an interesting pro-brand owner Intellectual Property High Court of Japan (IPHCJ) decision because the IPHCJ did not hesitate to protect the movie studio owner of the world famous Godzilla mark against the registration of a mark that is owned by a business that specializes in manufacturing cutting, crushing and demolition attachments for construction equipment. In Japan, the likelihood of confusion results not only from a misunderstanding that the goods are those related to the business of another, but also from misunderstanding that the businesses related to the goods are financially, organizationally, structurally or otherwise related to each other.

John A. Tessensohn and Shusaku Yamamoto

The article will explore an interesting trademark opposition decision which demonstrates that the outsized reputation and fame of the opponents’ senior marks per se neither enhances nor reduces the likelihood of confusion in Japan but rather the factual determination and judgement of similarity examination of the conflicting marks is the main driver of success in contentious trademark proceedings. The article will also explore the procedural pitfalls, strategic shortcomings and 17 years of statistical data regarding Japan’s trademark opposition system and several instructive Japanese appellate invalidation decisions that will demonstrate why brand owners will be better served by using its invalidation appeal system to police competitors’ trademarks in the world’s third largest economy, Japan.

John A. Tessensohn and Shusaku Yamamoto

The Intellectual Property High Court of Japan (IPHC) ruled in favor of Ryohin Keikaku Co., Ltd, the operator of the famous MUJI retail chain, against Cainz Co. Ltd., one of Japan’s largest DIY chain stores, of violating the Unfair Competition Prevention Law (UCPL) in Cainz Co., Ltd. v. Ryohin Keikaku Co., Ltd. This commentary will examine the decision, the use of survey evidence in unfair competition litigation and other unfair competition litigation developments in Japan.

John A. Tessensohn and Shusaku Yamamoto