The Institutional Functions of Well-known/FamousTrademarks Protection in Japan and Beyond (*)
Invited Researcher: WU, Weiguang (**)
Japanese trademark laws adopt RSUR that is not always consistent with the purpose of
goodwill protection, which causes inconsistencies between RSUR and purpose of goodwill
trademark laws. The inconsistencies caused by RSUR in Japan can be categorized into two types,
the internal inconsistencies and the external inconsistencies. The methods in TMA for resolution ofinternal inconsistencies include: (1) cancelation of trademark right registration based on lack ofuse; (2) prevention of registration because of usurpation of third parties’ well known trademarks;(3) trademark application estoppel of agents; (4) use alone as ground of priority to restrain
trademark rights; (5) prior right protection; (6) cancellation of registered trademark for misuse; (7)trademark use doctrine; and (8) registered defensive trademark system. The methods outside TMA
for resolution of external inconsistencies include: (1) protection of well-known indications by UCPA;(2) protection famous indications by UCPA; and (3) prevention of registered trademark right abusesby Civil Code. Japanese trademark law is a remarkable legislative model of combination of merits
both in RSUR and RSUU by collaboration and coordination of TMA, UCPA and Civil Code.

The report is mainly an analysis of structures and relevant policies of Japan’ trademark laws in amacroscopic viewpoint, and a specific analysis of institutional functions of well-known/famous
trademark protection in the structures. By this analysis, readers could more easily to understand theinternal structures of Japanese trademark laws and their policy and philosophy, by which it is helpful
to predict possible trend of development of Japanese trademark laws as general and possible attitudes
of courts in specific cases.
The report is consisted of 6 sections. In Section I, the report mainly introduces the basic theory oftrademark right as a private right and its purpose. Trademark right as a private right is purposeful toprotect goodwill of trademark users, which is their labor fruits during trademark use in course ofbusiness. This purpose is manifested in Art 1. of TMA. Trademark right generated by use is called rightsubsisting upon use (RSUU) system, which is mainly adopted in common law countries. And
trademark right generated by registration is called right subsisting upon registration (RSUR), which ismainly adopted by civil law countries including Japan. In Japan’s judicial practices, goodwill protected
by RSUR is broken into 3 functions, function of indicating origin and ownership; quality guarantee
function and advertising function.
In Section II, the report analyzes why RSUR instead of RSUU is adopted in many countries. Because(*) This is a summary of the report published under the 2017 Industrial Property Research Promotion Project
entrusted by the Japan Patent Office.
(**) Associate Professor, Law School of Tsinghua University, Beijing, China, at our institute over a period ofapproximately 3 months from June 6, 2017 through August 30, 2017, as an Invited Researcher for the Fiscal Year
2017.

i

of ambiguous, varied and untouchable goodwill generated in trademark use, RSUU is itself difficult toright subsisting upon registration (RSUR) system is adopted, by which trademark right is generated
upon registration instead of use in business. RSUR is more transparent, stable and predictable than
RSUU system, which is preferential to efficiency of right protection and implementation. The merit ofRSUR is more efficient than RSUU, because content and boundary of right are statutory, which include
exclusive right to use and prohibitive right to use, and infringements of RSUR are categorized.
The ideal consistency of RSUR system is that the institutional function of registered trademark rightis for suitable for protection of registrant’s goodwill in course of business, which is in a good balance
between fairness and efficiency. But in some situations, the efficiency-preferential RSUR system isinconsistent with the purpose of TMA, that is, goodwill protection, the fairness-preferential privateright notion. These inconsistencies can be categorized into two groups, internal inconsistencies andexternal inconsistencies. Internal inconsistencies refer to inconsistencies caused by RSUR and to beresolved by TMA itself; and external inconsistencies refer to inconsistencies caused by RSUR but tobe resolved by laws other than TMA, such as UCPA and Civil Code. Well-known/famous trademarkprotections are institutional functions among others for resolving these inconsistencies.
The internal inconsistencies mainly include (1) trademark registration for banking purpose; (2)trademark registration is in conflict with prior user’s goodwill; and (3) goodwill of registrant is spilled
out of registered trademark. And the external inconsistencies mainly include (1) no protection in TMA
for goodwill on unregistered indications; (2) no protection in TMA for goodwill spilled out ofregistered trademarks; and (3) abuses of registered trademark rights.
Section III of the report discusses different meanings of well-known/famous trademarks in different
context and their backup policies. The institutional functions of well-known/famous trademark
protection in TMA are to protect goodwill of trademark users from usurpation by registered trademark
right holders. The goodwill worthy of protection in different context is different. Therefore, in Japan’
trademark laws, well-known trademarks are different accordingly, which include regional well-known,
national well-known and international well-known. There is no famous trademarks concept in TMA,but in UCPA, famous indications exist.
The report summaries typical measures to cure internal inconsistencies in Section IV. They are: (1)cancellation of trademark registration for banking purpose; (2) registration prevention for protectionof prior goodwill; (3) application estoppel of agents who betray of trust between principals and agents;(4) preventing usurpation of honest users’ goodwill; (5) expanding protection for well-known
registered trademarks by registered defensive trademarks; and (6) trademark use doctrine.
Measures to cure external inconsistencies are discussed in Section V. The first external inconsistency
is the loophole of goodwill protection in TMA. In three situations, goodwill is not protected in TMA,
the first one is goodwill enshrined on not-registered trademarks; the second one is goodwill enshrinedii

on non-registrable indications; and the third one is goodwill spilled out of scope of registeredtrademarks including registered defensive trademarks. The loophole of goodwill in these threesituations is made up by well-known and famous indications protection in UCPA. The second external
inconsistency is abuse of RSUR, i.e. registered trademark right holders abuse the right for purposes
other than goodwill protection, which are considered unfair. In judicial practices, Japanese courts
prohibit such abuses of registered trademark rights according to Art. 1 of Civil Code. The relevantcases could be summarized into 4 types, abuse of right with illicit purpose; abuse of right for market
exclusion; abuse of right for unfair purpose; and abuse of right in parallel imports. And Section VI isthe conclusion.

By grasping the big picture of Japan’ trademark laws and overlooking well-known/famous trademark protection in such macroscopic point of view, we can understand theinstitutional function of well-known/famous trademark protection more accurately, which will help us
to predict which trend Japanese trademark will develop and what policy could be adopted by courts ina specific case concerning well-known/famous trademark protection.

iii