3 Study on a Proper Scope of Protection
under Intellectual Property Systems
Intellectual property laws establish multiple systems for protection of proprietary information depending on
the type and the form, and have enhanced the scope of protection in line with economic development and socialchanges. This study analyzes and examines how the systems under existing intellectual property laws deal withnew types of intellectual property that are being created due to such economic development and social changes
and the interrelations among these systems. More specifically, it considers the limitation facing companies on
the scope of protection under intellectual property laws, the coordination of conflicts between trademarks
registered under the Trademark Law and well-known and famous trademarks protected under the Unfair
Competition Prevention Law, amendments of the Design Law, and the relationships of systems for GUI(Graphical User Interface), three-dimensional trademarks and copyrights with other intellectual propertysystems.

Ⅰ Posed Problems
Intellectual property laws establish systems
for protection of specific information. In response to
economic development and social changes, thescope of protection has been enhanced byprotecting new types of information under existing
systems and establishing new systems. This study
intends to examine how existing laws can deal with
the intellectual property-related problems that are
being created due to economic development andsocial changes, and if they cannot, what measures
should be taken, and how we should consider theinterrelations among existing intellectual property
laws that provide ad hoc protection. In regard tothese issues, the following problems were posed bymembers.

Ⅱ Limit on the Scope of Protection
under Intellectual Property Laws
1

Product Concepts and the Use of Marks
in Cyberspace(1) Introduction
Companies are facing new problems caused bysuch change in the environment as the
improvement of the functions and performance ofcomputer hardware, the advancement in software
technology, and the spread of the Internet. Under
such circumstances, an attempt was made to pose
problems and consider resolutions with respect tothe proper protection of designs to meet with thepresent situation and the proper use of others’
signs in cyberspace.
(2) Proper Way of Protecting Designs(i) A specific example
Development history
Sony Corporation released the “AIBO”
entertainment robot in June 1996, and has brought

IIP Bulletin 2002

out various types of “AIBO” in a series to this day.
This robot has the following features:(a) a proposal for a new product area;(b) metallic and machine-like design in the motifof an animal;(c) an original operating system and advanced
autonomous functions.
To protect rights in original ideas involving its
product concept, the software and hardware
technology that supports the concept, and its
design, Sony filed trademark applications for thename “AIBO” or the like and design applications for
its shape, mainly designating classifications ofrobots and toys, in addition to patent applications.
Occurrence of problems
After “AIBO” was released, a number of
products that merely imitated the concept of ametallic animal came on to the market, such as
dog-shaped toys with metallic colors similar to thatof “AIBO”.
These products caused the following problems.
(a) Confusion with “AIBO”;(b) Change and damage to the product image that
“AIBO” established;(c) Inhibition of the potentiality of themerchandizing business to be promoted on thebasis of “AIBO”.
Problem (a) was settled for the most part
under the Design Law and the Unfair Competition
Prevention Law. With respect to problems (b) and(c), however, clear legal grounds for resolution
could not be found in the consideration at that time.
This is a problem of whether legal protection
is being sufficiently given to the company for its
efforts to invest a lot of time and resources in thedevelopment of “AIBO” and to create a newmarket.
(ii) Consideration－desirable legal protection forthe creation of a new market (besides theapproaches under the Patent Law)
Protection of signs● 22 ●

(a) Trademark Law
Though the time period for examination has
been shortened, it is impossible to take effective
measures against counterfeitsappearing immediately
after the release of a new product, by taking stepsof filing an application for a trademark registration,prosecution and enforcement for each goods orservice. Furthermore, it is not always realistic torequire a higher-level trademark examination than
before.
Focusing attention only on the reduction of thetime period until the grant of right, if the
post-opposition examination system is introduced,
it will be possible to examine whether and to what
extent a monopoly right should be granted, whennecessary, so that overall early grant of proper
rights will be expected.
(b) Unfair Competition Prevention Law
In the “AIBO” case, it seems possible to argue
and prove that “AIBO” falls under a goods or otherindication well-known to the public under theprovision of Article 2(1)(i) of the Unfair
Competition Prevention Law. However, as to therequirement of confusion, since the above
imitations do not share the same market with“AIBO”, it is difficult to argue that these imitations
would cause not only confusion with “AIBO” in the
narrow sense but also a false recognition that any
license agreement had been concluded for the
production of them. For these reasons, it would not
be easy to apply the broad theory of confusion to agreater extent.
It would not be easy either to argue that
“AIBO” is a famous indication under the provisionof Article 2(1)(ii), considering the past cases. It
would also be difficult to take measures againstchange or damage to the product image under the
existing law.
Consequently, it seems effective to provide
legal protection from a new perspective, to define
an act of imitating characteristics of another’s
product to which a goods or other indication is
attached and causing change or damage to theimage of the product, and an act of doing one’s own
business that takes advantage of another’s businessefforts, called “free riding”, as an act of unfair
competition.
Protection of creation(a) Design Law
It is also ineffective as a measure against
counterfeits to carry out a series of procedures
under the Design Law, from the filing of an
application, through to examination, registrationand enforcement. Even if “AIBO” is to be protectedunder the design registration, it would be protected
only against products that are identical or similar to“AIBO” in the category of “toys”, and there would
be a problem of whether sufficient protection could
be provided for products not falling under theextent of conventional goods within theconventional framework of goods.
For these reasons, it is necessary to consider
introducing the post-opposition examination system
and relaxing the requirement for object ofprotection to be an article.
(3) Use of Others’ Signs in Cyberspace(i) Definition of the problem
Companies’ logos often appear on websites ofprivate individuals on the Internet. Conventionally,
except under special circumstances, non-commercial
transmission of information especially by private
individuals has not been treated in connection with
the Trademark Law or the Unfair Competition
Prevention Law, and no countermeasures havebeen taken against such transmission. However,since the influence of the Internet has become
considerable, it seems necessary to establish somerules for using others’ sign on a website on theInternet.
(ii) Consideration － what coordination will be
required?
In this respect, it was considered what cases
will be acceptable as a reasonable and lawful use ofothers’ sign.
the use would not cause false recognition or
confusion between the another’s trademark and theowner of the website.
the use would not harm the distinctiveness of
the another’s trademark.
To use a registered trademark as a genericname on websites including non-profit websites andwebsites for criticism would have an unfavorable
influence on the original distinctiveness of the
trademark. However, it is not easy for the rightholder of the trademark to require correction ofsuch use because there are no applicable provisions
under the Trademark Law. For the purpose ofprotecting trademarks, it will be necessary to takesome legislative measures on this issue. Under theEuropean Community Trademark System, it isprovided (Article 10 of the COUNCILREGULATION (EC) No 40/94) that the proprietorof the trademark may request the publisher tocorrect the use of the trademark as a generic namein a dictionary, encyclopedia or similar reference
work by an indication that it is a registeredtrademark.
the use of others’ sign shall be the scope andcontents necessary for citation.
Citation of others’ trademark should beallowed under certain rules, but the scope andcontents of the use shall be limited for the purposeof the citation.
This consideration is not aimed at restricting
the contents of information that can be transmitted
but focuses on proper protection of others’
trademark to be used for such transmission of
information. It is necessary to be careful not to
restrict websites for criticism that are not always
favorable to companies.

● 23 ●IIP Bulletin 2002

2

Store Designs(1) Purpose
Companies often develop their own products
or stores after researching products, businessmethods and store designs of other popularcompetitors. Such acts would cause conflicts
depending on the extent to which they makereference to the competitors. Considering suchsituation and from the perspective of protecting
store designs, the possibility of expanding thescope of protection under the Unfair Competition
Prevention Law and the limit thereof will be
examined here.
(2) Protection of Store Designs and the Laws
Concerned
A store design is defined as an overall designof a commercial space that incorporates theexterior of a store including signboards and show
windows and the interior including floors, ceilings,
walls, lightings, furniture, fixtures and fittings aswell as the layout thereof. In creating a store design,
various factors are considered such as the products
and services to be provided at the store, thetargeted consumers, brand images, efficiency, andthe environment in which the store is to be located.
A store also serves as a place for the company toinform customers of the images and concept of its
brands.
Here, what would be the grounds under the
existing laws for protection of store designs against
imitation by third parties will be considered.
(i) Design Law
Since a store is not deemed to be an “article”
under the provision of Article 2 (1) of the Design
Law, it is impossible to obtain a design registration
for the design of the store. For this reason, theDesign Law cannot provide any countermeasureagainst imitations of overall store designs.
(ii) Utility Model Law
Under the Utility Model Law, an article has abroader meaning, and a store may be treated as anarticle if it has any structural feature. Therefore,
the layout within the store and technical devices
applied to fixtures and fittings may be protectedunder the Utility Model Law. However, as
substantive examination on utility model
applications shall no longer be required inaccordance with the amendment of the law thatcame into force in January 1994, and utility model
registrations have a high risk of being invalidated
later due to lack of novelty or inventive steps.
Consequently, it is difficult to enforce rights underutility model registrations.
(iii) Patent Law
To be protected under the Patent Law,
technical idea applied to fixtures and fittings orequipment must satisfy the requirements forpatentability such as novelty and inventive steps.
Accordingly, a store design may be deemed to be an

IIP Bulletin 2002

technical idea if its specific construction and theeffect achieved by such construction are properly
described and satisfy the requirements forpatentability.
(iv) Trademark Law
It seems theoretically possible to protect astore design under the Trademark Law because thetrademark system has been amended to enable
three-dimensional trademarks to be registered andthere is no requirement that a trademark must be
an article. In reality, however, it would be difficult toobtain an effective trademark registration for astore design due to various problems concerning
the designation of goods or services and thedistinctiveness of a trademark.
(v) Copyright Law
Design drawings as works under the provisionof Article 10(1)(vi) of the Copyright Law
A store design is expressed on a design
drawing that can be protected under the Copyright
Law. Such design drawings as those of a refrigerated
warehouse, a building, an apartment building, andso forth have been recognized as works under thelaw. However, the right of reproduction for suchdesign drawing shall extend to the drawing itself
and only control the act of physically reproducing
the drawing.
Architectural works under the provision of
Article 10(1)(v)There is no judicial precedent that recognizeda store design as a “work”, and no specific standard
for granting a copyright to a store design has been
established. “Architectural works” are construed asarchitectural structures with artistic value, and an
act of building an architectural structure according
to a design drawing is deemed to be reproduction.
Therefore, such architectural structures may not beprotected as architectural works and no
infringement of the right of reproduction shall occur
unless they have artistic values(decision of
Fukushima District Court in “Shinobu Design” caseon April 9, 1991). Consequently, there seems to be
only a few cases in which store designs may berecognized as works under the Copyright Law, as
they are created putting greater emphasis on utility
and functionality.
(vi) Unfair Competition Prevention Law
Where a store design is recognized to bewell-known as a goods or other indication of abusiness, if a third party uses a store design similar
to the well-known design and causes a false
recognition or confusion between these two, suchact of the third party shall fall under the scope of anact of unfair competition.
Expansion of the scope of protection under the
Unfair Competition Prevention Law
A goods or other indication under the Unfair
Competition Prevention Law should be broadly
construed as “a designator of the origin”. In thatcase, a store design is highly likely to be recognized● 24 ●

as serving as a designator of the origin, because
there is a possibility that a third party’s store isfalsely recognized as being associated or affiliatedwith stores with a consistent store design, if thethird party applies a store design that is similar to
the former design. In order for a store design to berecognized as a goods or other indication, there
would be various important issues to be consideredsuch as whether it has unique characteristics,
whether it has been continuously and exclusively
used for a long time, and whether any powerfulpromotion has been carried out for the design.
Even though there is no confusion concerning
the business operator or the origin of goods, “aconfusion in the broad sense” shall be recognized, if
the use of an indication that is identical or similar toa well-known indication causes any false
recognition that the right holder for the well-known
indication and the appropriator have a certain
business, economic or organizational relationship.
Therefore, an imitation of a store design may also
be recognized as causing a confusion of the origin.
Problems in protecting store designs
There are various problems to be solved inorder to provide protection under the Unfair
Competition Law, such as (a) how to identify theindication of business, (b) how to distinguish thecharacteristics and the functions as the indication ofbusiness from a store design, (c) the difference inthe specification among stores, (d) how to prove theoccurrence of false recognition or confusion, (e)how to identify the subject of the injunction, and soforth.
(vii) Provision on unlawful acts as a supplementation of
the Unfair Competition Prevention Law
Unfair competition and the responsibility for
an unlawful act
The Unfair Competition Prevention Law lists
types of acts to be prohibited as acts of “unfair
competition”, and the provisions of the Unfair
Competition Prevention Law shall not apply toother acts of unfair competition that do not fallunder the list. However, there is a room for theseacts to be recognized as unlawful acts under Article
90 of the Civil Code depending on cases.
Problems in remedies on the ground of
unlawful acts
Even if it is difficult to apply the Unfair
Competition Prevention Law to imitations of store
designs, it is necessary under special
circumstances to recognize unlawful acts under the
Civil Code and provide remedies for damage from
imitations of store designs. Analysis of judicial
precedents shows that unlawful acts are likely to berecognized when a third party unduly wins
customers by using a store design that is almost
identical to another’s store design. However, it

should be noted that remedies for damage fromunlawful acts shall in principle be provided in theform of monetary compensation and no injunction
against the use of a store design may be granted.
In particular, there is a case that no remedy
was provided due to the difficulty in proving thedamage, despite the use of a store design being
recognized as an unlawful act. It is extremely
important to make it possible to grant an injunction
against such type of unlawful act in some way.
The Paris Convention provides that “any act ofcompetition contrary to honest practices inindustrial or commercial matters constitutes an actof unfair competition” (Article 10bis (2)), and suchgeneral provision is found in unfair competition
prevention laws of other countries.(*1) In Japan,
there was a discussion about introduction of suchgeneral provision into the Unfair Competition
Prevention Law, which was deferred at the time ofamendment of the law in 1993.
3

Product Number - Case Related to the
Problem on the Scope of Protection
Which NGK Spark Plug Co., Ltd. Is
Experiencing(1) Overview(i) Overview of the NGK Spark Plug Co., Ltd. andthe plug market
NGK Spark Plug Co., Ltd. (hereinafterreferred to “the Company”), the former automobile
plugs department of NGK Insulators, Co., wasseparated and inaugurated in 1936, and has been
consistently carrying out the business of spark
plugs, one of the major product lines, fromdevelopment through to production and marketing,since its inauguration to date.
The Company has a share of about 26% of theworld plug market. As more types of plugs havebeen coming onto the market every year, theCompany deals with more than 1,000 types ofplugs.
(ii) Trademarks of NGK Spark Plug Co.
In the world plug market, the trademarks of
the Company (trademarks including “NGK” are atpresent registered in 136 countries, for plugs as
designated goods) are well-known and famous on a
global scale.
(2) Cases of Disputes Concerning the Limiton Protection of Intellectual Property andProblems to be Considered(i) Problems related to product names (productnumbers)
Outline of product numbers attached to plugs
The Company has established a productnumber system for attaching product numbers toplugs as the original product names, and has(*1) Kazuko Matsuo, “Fusei Kyousou Boushi Hou Ni Okeru Ippan Joukou (General Provisions in Unfair Competition PreventionLaws), Jurisuto, No. 1005, p. 16 (July 15, 1992).
(*1)● 25 ●IIP Bulletin 2002

indicated the product numbers on packages as
indications indispensable to identifying the
products, in combination with the company
trademarks and other marks.
Specific cases involving the product numbers(a) Dispute case 1
Some companies appropriate and indicate theproduct numbers of the Company, as it is, on theirown packages with their trademarks and different
impression. Such cases were frequently seen inmarkets of developing countries, mainly in South
East Asia.
Such appropriation of product numbers without
alteration seems to cause a lot of problems from theperspective of protecting intellectual property,
securing fair competition and protecting
consumers.
(b) Dispute case 2
Some companies indicate both of their own
product numbers and the product numbers of theCompany on their own product packages. Some ofthem further have an indication to the effect that
their product numbers are “equivalent to” theproduct numbers of the Company, or explain to
their trading partners that it is easy to see thecorrespondence between their own productnumbers and the product numbers of the Company,
and therefore, it is easy to find products.”
Since acts mentioned in the above cases would
cause damage to or dilute the significance and trustof indications attached to products that has beenacquired and cultivated over many years, it seems
necessary to consider taking measures from theperspective of protecting intellectual property.
However, it can be said that a certain consensus has
already been established in the industry that it isallowable to indicate and provide correspondencewith competitors’ product numbers in a specificform.
(ii) Present situation and problems concerning
legal systems for protecting intellectual
property and the operation thereof
Handling under the Trademark Law(a) Nature of product number
A product number is generally defined as asign that indicates the specification of a productwith respect to its shape, quality, size, weight,
function, structure, etc., and basically it is notdeemed to serve as a designator of the origin or
have distinctiveness.
(b) Handling under the Trademark Law
Even though a product number is not simple orcommon but original in the form of indication, it
shall fall under unregistrable trademarks in Article
3(1)(iii) of the Trademark Law and may not beregistered as a trademark, as long as it is at least
recognized as a product number among the same
industry. However, if the product number has cometo be recognized as serving a designator of theorigin or having distinctiveness through being used,

IIP Bulletin 2002

it is possible to obtain trademark registration for
the number.
Handling under the Unfair Competition
Prevention Law(a) Does a product number fall under a “goods orother indication” provided in Article 2(1)(i) and(ii) of the Unfair Competition Prevention Law?
A typical example that falls under a “goods orother indication” is the “configuration of goods”. If
a product number has characteristics different fromthose of competitors’ product numbers, is designedwith ingenuity, and has been exclusively used overmany years, it will be deemed to serve as adesignator of the origin or have distinctiveness inindicating that the product attached with thenumber belongs to a particular person, in addition
to performing the fundamental functions of productnumbers, and therefore will fall under the scope of agoods or other indication.
(b) Judicial precedents
The following are the cases of either decisions
or provisional injunction by lower courts andrulings were presented on whether a “productnumber” fell under a “goods or other indication”.
(A) Case concerning the request for injunction
against the use of the product number of a float as agoods indication(Osaka District Court, 1978 (Wa) No.1897 on March
27, 1981)(B) Case concerning the request for provisional
injunction of sales and distribution of ethical herbal
medicine through the use of a package registered as
design and of a product number(Nagoya District Court, 1981 (Yo) No. 1404; on
September 29, 1982)(C) Case concerning the request for prohibition of
the use of a trade name(Osaka District Court, Case No. (Wa) 1326 of 1993;
judgment on January 25, 1996)(D) Case concerning the request for damages(Osaka District Court, 1994 (Wa) No. 4263; on
February 29, 1996)
In cases (A), (C) and (D), the courts held thatthe “product number” alleged by the plaintiff fell
under a “goods or other indication” under the
Unfair Competition Prevention Law, because it had
distinctiveness and served as a designator of theorigin, and ordered the defendant to discontinue
the use of the similar goods or other indication andpay damages. In case (B), on the other hand, therequest was dismissed on the ground thatthe plaintiff’s product number failed to havedistinctiveness.
(c) Problems to be considered
It seems possible to protect product numbers
under the existing Trademark Law and Unfair
Competition Prevention Law to some degree. To
achieve
more
properprotection,
furtherconsideration will be required on the following
matters.

● 26 ●

Where a product number itself, having thefunction of providing information on thespecification, is designed with ingenuity and serves
as a designator of the origin or has distinctiveness,
it shall not be considered as deviating from the
purpose of Article 3 (1)(iii) of the Trademark Law
even if a trademark registration is granted for suchproduct number. Furthermore, as trademarks (petmarks) attached to products themselves are often
combinations of characters, signs and numerals, thedifference between product numbers and suchtrademarks is very subtle. Consequently, if a
trademark registration may not be granted for a
product number until it acquires distinctivenessthrough being used, it would diminish the purposeof the Trademark Law, i.e., the smooth acquisitionof trust with the use of trademarks.
In this respect, further consideration is
expected from the interpretative and legislative
perspectives concerning the term “a markindicating in a common way” provided in Article
3(1)(iii) of the Trademark Law.

Ⅲ

Problems under the Trademark
Law and the Design Law

1Registered Trademarks and Well-Knownor Famous Trademarks(1) Introduction
The Trademark Law has provisions for
coordination between registered trademarks andunregistered well-known or famous trademarks,
however, no provision for coordination with the
Unfair Competition Prevention Law. Therefore,
problems are raised when a conflict occurs betweena registered trademark and a well-known or famous
trademark.
This section will consider how the relationshipbetween registered trademarks and well-known or
famous trademarks can be coordinated and pointout the necessity for legal amendment if
coordination is insufficient.
(2) Coordination under the Trademark Law(i) Requirements for registration
Article 4(1)(x) of the Trademark Law
Trademark registration may not be obtained in
the case of trademarks that are similar towell-known trademarks. This secures a broad scopeof use for unregistered well-known trademarks tosuch extent that the mark, goods or service are
identical or similar to those of a trademark forwhich registration is sought. There is a decision inwhich a trademark was recognized as well-known
even through it was attached to a product that did
not have high sales, because whether a trademark
was famous or not was judged on the basis of
how popular it was. (Tokyo High Court in“COMPUTERWORLD” case on February 26, 1992)

Article 4(1)(xii) of the Trademark Law
Trademark registration may not be obtained in
the case of trademarks that are identical todefensive marks, which means that famous
trademarks are protected even if the designatedgoods or service is not similar to that of the
trademarks for which registration is sought.
Article 4(1)(xv) of the Trademark Law
Trademark registration may not be obtained in
the case of trademarks that are liable to cause
confusion with goods or service connected withanother’s business, which means that a broad scopeof use is secured for famous trademarks. They areprotected even in cases where the goods or service
is not similar to that of the trademarks for which
trademark registration is sought, provided that therequirement for “confusion” is satisfied.
Article 4(1)(xix) of the Trademark Law
Trademark registration may not be obtained in
the case of trademarks identical or similar to thetrademarks that are well known or famous abroad
though not well known or famous in Japan, if they
are used for unfair intention. (Tokyo High Court in“iOffice2000” case on November 20, 2001)
Article 4(1)(vii) of the Trademark Law
Trademark registration may not be obtained in
the case of trademarks that are liable to contravene
public order or morality. This provision shall apply
when an application for trademark registration is
filed in bad faith (unfair intention), even though therequirement under Article 4(1)(xix) of the law is
not satisfied.
Article 4(1)(viii) of the Trademark Law
Trademark registration may not be obtained in
the case of trademarks that contain a famousabbreviation of another’s name, irrespective ofwhether the designated goods or service is
identical/similar to that of trademarks for which
trademark registration is sought.
Article 4(1)(xi) of the Trademark Law(conflicts with registered trademarks)
A famous trademark for which a trademark
application is filed has a tendency to be registeredon the ground that it would not cause any confusion
with a cited registered trademark. Where both a
trademark for which a trademark application is filed
and a cited registered trademark are well known or
famous, two registrations are likely to coexist.
Where a registered trademark is well known or
famous, a wider range of trademarks is recognized
to be similar to the registered trademark.
(ii) Cancellation of the registration of a trademarkthat is improperly used
Article 51 of the Trademark Law (improper
use by the registrant)
Where the owner of a trademark right for a
trademark which gives a similar impression to thatof a well-known or famous trademark, makes somechanges to the registered trademark to make it
more similar to the well-known or famous one and● 27 ●IIP Bulletin 2002

causes confusion of the origin, any person may
demand a trial for the cancellation of the trademark
registration. (Case concerning the demand for thecancellation of the registration of the trademark“WAGENGOLF”, Trial No. 13433 of 1996; trial
decision on January 29, 1999)
Article 53 of the Trademark Law (improper
use by licensee)
Where a licensee uses a registered trademark
or trademark similar to it and causes a false
recognition as to the quality or confusion of theorigin, any person may demand a trial for thecancellation of the trademark registration. (“PoloClub” Case; Tokyo High Court on December 21,1999) However, this shall not apply where theowner of the trademark right was both unaware of
the fact and taking appropriate care.
(iii) Trial for the cancellation of a registeredtrademark not in use
Where a registered trademark has not been in use
for three consecutive years, any person may
demand a trial for the cancellation of the trademark
registration on the ground of non-use.
(iv) Provisions and legal theory for securing theuse of a well-known or famous trademark by
its owner
Right to use trademark by virtue of prior use(Article 32 of the Trademark Law)
In order for the owner of a well-known
trademark to obtain the right to use the trademark
by virtue of prior use, the trademark must be wellknown at the time when another person files anapplication for the trademark. However, it was
judged that such trademark was not required to be
as famous as the level provided in Article 4 (1)(x) of
the Trademark Law. (Tokyo High Court in“ZELDA” case on July 22, 1993)
Contracts (separate transfer after registration)
Where the owner of a well-known or famous
trademark files an application for the trademark,the owner may conclude a contract under which
he/she shall assign the application for the
trademark to the owner of a cited trademark andthen receive the right separately transferred by thelatter owner. However, if some alteration is made to
the trademark in the application, the trademark
might not be registered on the ground that it issimilar to both the original trademark and the citedtrademark.
Determination on similarity in infringements
Where a trademark in use is well known or
famous, it shall not be considered and judged to be
similar to registered trademarks based on such fact.
(Osaka District Court in “Camel” case on January
30, 1992; the Supreme Court in “Kozo-zushi” caseon Mach 11, 1997)
Abuse of rightIf there is a reason for invalidation of the
defendant’s trademark right registeredand in use,
enforcement of the trademark shall be deemed as

IIP Bulletin 2002

abuse of the trademark right. (Tokyo District Courtin “Gift Season” case on January 30, 1998)
Principle of the expiration of right
In general terms, a right shall expire if it is notenforced by the right holder for a long time.
However, there has been no specific case applying
this principle to infringements of trademark rights.
(3) Coordination
under
the
UnfairCompetition Prevention Law
There is no provision for coordination with theTrademark Law.
(4) Conflicts and Coordination Between
Registered Trademarks and Well-known
or Famous Trademarks
Courts and theories consider this issue asfollows.
(i) In the case where a person B files anapplication for a trademark (B) after anunregistered trademark (A) owned by anotherperson A has come to be recognized as wellknown
The owner A may use his/her unregisteredtrademark (A) by virtue of prior use under Article
32 of the Trademark Law. Furthermore, if theapplicant B obtains trademark registration (B) in
contravention of Article 4(1)(x) of the Trademark
Law, the owner A may request a trial forinvalidation of the registration of the trademark (B)and obtain a registration for his/her trademark (A)after the prior registration has been invalidated.
(ii) In the case where a person B files anapplication for a trademark (B) before an
unregistered trademark (A) owned by anotherperson (A) has come to be recognized as being
well known
The unregistered trademark (A) shall be
subject to injunction because the applicant B has
precedence over the owner A under the first-to-fileprinciple. However, if the applicant B does not use
the registered trademark (B) within the area inwhich the owner A uses his/her unregisteredtrademark (A), the applicant B may not be able towin compensation for damage, but at least obtaininjunction to the unregistered trademark A.
If the applicant B has committed a breach of
good faith in the process of obtaining the trademark
right, exercising his/her right shall be deemed to beabuse of right, and the owner A may be able toobtain remedy from B on the ground of violation of
Article 2(1)(i) of the Unfair Competition PreventionLaw.
(iii) In the case where a trademark (A) owned by aperson A becomes famous after anotherperson B filed an application for anothertrademark (B)There are three types of approaches.
If the applicant B exercises his/her trademark
against the owner A of the famous trademark (A),such exercise shall be deemed to be abuse of rightand rejected. The applicant A may not defend● 28 ●

himself/herself on the ground of using a registeredtrademark against a lawsuit brought by the owner A
under Article 2(1)(i) of the Unfair Competition
Prevention Law. (Yoshiyuki Tamura, Shouhyou HouGaisetsu (Outline of the Trademark Law), p. 79-96,
Koubundou, 2000)
Registered trademark (B) and the famous
trademark (A) may coexist. However, where theapplication for the trademark (B) was filed withrespect to a goods which is not similar to the one
concerning the famous trademark (A), if the owner
A uses his/her famous trademark (A) with respect
to the goods designated in the application (B), it
would constitute an infringement of the trademark
right (B). (Katsuya Tamai, Chomei Hyoushou To
Haitaken---Tokuni Shouhyou, Chosakuken Tono
Teishoku Ni Tsuite (Famous Trademark andExclusive Right---Focusing on Conflicts with
Trademark Right and Copyright), Patent, Vo. 53, No.
1, P. 32 (2000))
From the legislative perspective, where theapplicant B fails to use or enforce his/her registeredtrademark (B), approachshould apply. (Makoto
Amino, Ai Teishoku Suru Touroku Shouhyou To
Shuuchi Shouhyou To Ga Heizon Suru Baai No
Houteki Toriatsukai Ni Tsuite (Legal Handling of
the Case of Coexistence Between Conflicting
Registered Trademark and Well-Known Trademark),
Tokkyo Kanri, Vo. 25, No. 5 (1975))(5) Legislation
In most cases, conflicts between registeredtrademarks and well-known or famous trademarks
are avoided and there is a tendency that the use ofwell-known or famous trademarks can be secured
through the following measures:
reinforced
protection of well-known or famous trademarks byamending the Trademark Law (Article 4(1)(xix);
practices by the JPO and courts to rejectregistration of a wide range of trademarks thatconflict with well-known or famous trademarks;
practices by the JPO and courts to allow
registrations of well-known or famous trademarks
to coexist with prior registered trademarks, even if
the formers are phonetically similar to the latters,
taking the actual condition of business into account;interpreting the provision on damages
substantially (the above Kozou Zushi decision; andrecognizing abuse of right.
Nevertheless, where an applicant for
trademark registration has never committed abreach of good faith in the process of obtaining a
trademark right and uses the registered trademark
within a certain region, it may not be possible tosecure the use of a well-known or famous
trademark, even though the fact is that thewell-known or famous trademark is recognized in
the market there rather than the registered one.
To coordinate such case, further legal
amendments seem to be required.
The following are possible measures to betaken to achieve this. Taking measures (i) to (iii)means that the Japanese Trademark Law will take a
step closer to a law under the first-to-use principle.
(i) Expressly stipulate the principle of expirationof right, specifying the time period.
(ii) Establish a provision to limit exercise of rightfor a trademark not in use.
(iii) Amend Article 37 of the Trademark Law to add“likelihood of confusion”(*2) to the requirements foracts deemed to be infringement.
(iv) Introduce the consent system.
2

Review of the Design Law Amended in
1998

The amended Design Law has introduced thesystem of related design and partial-design , both ofwhich are the core of the measures for granting
broad and strong rights.(*3) These systems and theoperation thereof will be reviewed in this section.
(1) Related Design System(i) Purpose of introduction
For the purpose of granting broad and strong
rights, the system of related design has been
introduced. Under this system, the effect of rightfor a related design shall extend to designs similar
to a related design that is similar to a principal
design.
(ii) Operational problem
In operation of the existing examination
procedure, even if an applicant has filed applications
for design registrations with the intention ofobtaining rights comprehensively by specifying a
relationship of multiple designs in similarity, theexaminer may, contrary to the applicant’s intention,find a different relationship in similarity. In such acase, the applicant would not be able to obtain theright that he/she desires. If the applicant files
without specifying similar designs in order to avoid
such situation, the scope of registered designs
would be interpreted narrowly.
(iii) Request for improvement of the operation
The above operational problems and thelimitation that deign applications for related designs
must be filed on the same date as the filing date of
the application for the principal design areunfavorable to applicants, because variations similar
to the principal design are often developed after theapplication for the principal design was filed.
Therefore, the operation of the system is expected(*2) Ryo Shimanami, Touroku Shouhyouken No Bukken Teki Hogo Han-I (1), (2) (Scope of Protection of Right for Registered
Trademark as Real Right), Hougaku Kyoukai Zasshi, Vol. 114, No. 8, P. 959 and 965 (1997).
(*3) Amendment of Article 3, Section 2 of the Design Law to raise the level of creativity is one of the measures for granting a(*2)
broad and strong right. However, this issue is not be addressed in this research and study because it will take a little more(*3)
time to determine the effect of the amendment.
● 29 ●IIP Bulletin 2002

to be improved.
Even when the examiner finds no reason forrejection, the examiner should not make an
immediate decision of registration. In this case, if
there is difference between related designs that theapplicant specifies as being similar to the principal
design and related designs that the examiner finds
similar to the principal design, the examiner should
notify the applicant to that effect and advise
him/her to submit an amendment or correct thescope of related designs. In addition, theamendment of the Examination Manual is desiredin the future.
(2) Partial Design System(i) Purpose of introduction
In order to grant a broader and stronger rightfor an original design, the partial design system has
been introduced to grant a design registration forthe design of part of an article.
(ii) Review of the system and the operation thereof
Subjects to be registered as partial designs
Since designs have different levels of creativevalues, it is sufficient to provide protection
depending on such levels. A right should be granted
for a design with creative value beyond a certain
level, irrespective of whether it constitutes animportant part of an article by itself. However,granting a strong right for a partial design with only
a little creative value would go contrary to thedirection that was aimed at upon amending the
Design Law. Therefore, proper consideration
should be taken in a fair manner.
Definition of the scope of designs similar topartial design
It is recommended to grant a broad right for afrontier type and high value-added design, while
defining the scope of similar designs narrowly
otherwise.
Publication of publicly-known designs
If the Japan Patent Office publishes materials
on publicly-known designs which the JPO holds,
applicants will be able to estimate how narrowly
they should define the scope of right in order toobtain the right for a partial design, and use thepartial design system more easily. It will also usefulfor the scope of right for the whole design to be
more clear.
Claiming priority
When an applicant who has filed an application
for partial design registration in Japan intends to filea design application claiming the priority based on
the Japanese application in another country which
has no partial design system, a problem would
occur on whether both designs were recognized tobe the same and the applicant could claim a priority
effectively. In countries which have no partial

design system, it will become a problem that only apartial design would be imitated in order to design
around by not imitating the design of the wholearticle. It is therefore necessary to require suchcountries to introduce the partial design system.

Ⅳ Conflicts of Laws
1

Legal Protection of Graphical User
Interfaces (GUI) - from the Standpoint of
the Boundary between the Patent Law
and the Design Law(1) State of Basic Problems
Legal protection of GUI under intellectual
property laws has not been made clear. Here, thepossibility of conflict of the scope of protection
between the Patent Law and the Design Law andthe coordination of the scope of protection underthese laws will be considered.
(2) Characteristics of GUI as A Creation andInformation Property
GUI is a creation that is to be designed anddeveloped through creative activities in both oftechnology and design as well as an information
property that has a certain proprietary value.
(3) Protection under the Patent Law
Under the Patent Law, it is possible toformulate claims by recognizing the creation of GUI
as a software-related invention aimed at achieving a
specific GUI.(*4) In the interpretation of the scopeof right in the examination process or patent
infringement lawsuits, GUI shall be treated in thesame manner as existing software-related inventions,inventions of general devices, or inventions ofprocess. However, a patent right shall not be
granted for intangible GUI itself. There are also
problems concerning the expression form of claims.
For these reasons, it is difficult to protect creationof GUI itself as an “invention” under the Patent
Law.
(4) Protection under the Design Law
GUI itself, which is an intangible design to be
displayed on a screen, fails to satisfy therequirement of being an article, and therefore shallnot fall under the scope of protection under the
Design Law. However, a design shall be protectedunder the Design Law if it satisfies all threerequirements provided in the “Examination
Guidelines on Figures Indicated in an Indication
Area of an Article” (1986) and the “Guidelines on
Liquid Crystal Display, etc.” (1993, 2002 (partial
design applicable version)). Nevertheless, theprotection of GUI is extremely limited.
In this regard, if a wider range of image(*4) Japan Patent Office, Examination Guidelines for Patent and Utility Model (amended in December 2000).
(*5) Institute of Intellectual Property, Hyouji Gamen Jo Ni Hyouji Sareta Gazou Dezain Ni Kansuru Hogo Ni Tsuite No Chousa
Kenkyuu Houkokusho (Research and Study on Protection of Image Designs Displayed on the Screen), Chapter VI, “Isho(*4)Law)” by Researcher Makino (IIP, 2002).
Hou Ni Yoru Hogo No Arikata (Proper Protection under the Design

IIP Bulletin 2002

● 30 ●

designs is included in the scope of “designs” to beprotected under the existing Design Law byrelaxing the interpretation of the definition of anarticle,(*5) there will be sufficient room for GUI to beprotected under the existing law.
(5) Patent Law and Design Law - Possible
Conflict of the Scope of Protection
Since the scope of protection under the Patent
Law is basically in functional or technical aspects, it
is unreasonable to expect protection in design
aspect under the Patent Law. In this respect, thePatent Law has its limits.
Under the Design Law, on the other hand, GUI
can be protected only as “design” attached to anarticle, e.g. a screen of a limited types of dedicateddevices.
Consequently, it is hard to consider that there
is a conflict of the current scope of protection of
GUI between the Patent Law and the Design Law.
It is possible for a creation such as a layout or adesign of a tangible property to be separately
protected under the Patent Law as well as being
protected under the Design Law, provided that it
satisfies the requirements for patentability under
the Patent Law. Therefore, both laws have theirown provisions for coordination between each other.
For this reason, it is hardly possible under existinglaws to imagine that the same creation is evaluatedand given legal protection under multiple intellectual
property laws, though there may be conflicts of thescope of effect of right under such laws.
2

Three-Dimensional Trademark
and the Design Lawof three-dimensional trademarks, the form of goods
will be judged to lack distinctiveness unless “thegoods has an unique form that is unpredictable fromits use or function or an ornamental shape that gives
special impression”. Generally, it is difficult to obtaintrademark registration without the proof that thetrademark has acquired distinctiveness through being
used. Especially in the case of a trademark that iscomposed of nothing but a three-dimensional shape,
it is not easy to prove that it has distinctiveness.
Accordingly, the three-dimensional trademark
system has only slight influence on the Design
Law and it will not harm the raison d’etre(significance of existence) of the Design Law.
Furthermore, the Japanese Trademark Law
has no such requirement that “a trademark has ashape that gives substantial value to the goods”,
which is provided in Article 7(1)(e)(iii) of theEuropean Community Trademark Regulations.
However, this will not be a defect of theJapanese Trademark Law, because this requirement
can be considered to be included in the law, if the“function” of goods or their packaging provided
under Article 4(1)(xviii) is broadly defined.
Furthermore, this provision intends to eliminate
risk of restrictions on free competition caused byregistration of trademarks, and therefore, it will beallowable to broadly define the meaning of“function” in order to deal with this problem.
3

Conflicts Between Copyrights and OtherIntellectual Property Rights

System(1) Introduction of the Three-Dimensional
Trademark System and Its Relationshipwith the Design Law
The Trademark Law as amended in 1996
newly included “three-dimensional shapes” in thecomponents of a trademark (Article 2 of theTrademark Law), in order to also protect threedimensional trademarks. The following problems
have been pointed out in this respect.(*6)(a) The design system might lose substancebecause forms of goods in the public domain thatare not protected under the Design Law have cometo be protected under the Trademark Law and theincreasing number of trademark applications.
(b) Competition with the design system would
occur because there is no provision for coordination
between the Trademark Law and the Design Law.
(2) Present Situation in JapanAs the JPO strictly examines the distinctiveness(1) Introduction
Creations in the field focusing on functionality
and practicability need protection under the
Copyright Law when industrial property rightsystems cannot provide them with sufficient
protection with the technological progress. Though
copyrights can be obtained under extremely easy
conditions, their protection is not in any way weak.
The problems arising from such circumstances will
be considered below.
(2) Problems of protection under copyrights
Since there is no registration system under the
copyright system, it is often the case that whether
a copyright actually exists or who is the copyrightholder cannot easily be revealed. It is also hard to
objectively define the scope of right.
Furthermore, if it were possible to obtainprotection under copyrights, people would preferprotection under copyrights to protection underindustrial property rights, which might have a great
impact on industrial property right system.

(*6) Tatsunori Shibuya, Shouhin Keitai No Shouhyou Touroku (Trademark Registration of Form of Goods), publication incelebration of 60th birthday of Nobuo Monya Chiteki Zaisan Hou No Gendaiteki Kadai (Current Problems of Intellectual
Property Laws), P. 305 (Hatsumei Kyoukai Japan Institute of Invention and Innovation, 1998); Riichi Ushiki, Rittai
Shouhyou Touroku Seido He No Gimon (Questions on the Three-Dimensional Trademark System), Patent, Vol. 49, No. 5, P.
(*5)
77 (1996), Rittai Shouhyou Seido No Dounyuu Ni Tsuite---Ishou Hou He No Chousen To Genkai (Introduction of the(*6)
Three-Dimensional Trademark System---Challenge to the Design System and Limitation), Patent, Vol. 48, No. 12, P. 23 (1995).
● 31 ●IIP Bulletin 2002

(3) Review of Specific Cases of Conflicts
between Copyrights and Industrial
Property Rights(i) Copyrights and patent/utility model rights
Technical idea is substantially protected under
the Patent Law and the Utility Model Law. Althoughtechnical idea is just idea and not protected under
the Copyright Law, there would be an argumentthat the very shape that embodies the idea is awork that can be copyrighted.
“Journalizing panel for bookkeeping” case (KobeDistrict Court on February 29, 1960)“Eternal calendar” case (Osaka District Court on
January 26, 1984)“Polygonal cylinder-shaped toy for child education”
case (Tokyo District Court on March 27, 1989)
However, these decisions show a judicial
tendency not to grant copyrights to expressions
that are created by embodying technical ideas.
Though this does not exclude technical ideas fromideas that are to be protected under copyrights, itmeans that embodiment of such technical ideas are
not to be protected under copyrights. With respect
to architectural works, however, as architectural
structures that are made according to architectural
drawings are to be protected under copyrights(Article 2(1)(xv)(Ro) of the Copyright Law), theideas expressed on the drawings are protectedunder copyrights as well.
Especially in new fields, careful considerationis required because the dividing line between ideas
and expressions thereof is not clearly indicated.
(ii) Copyrights and registered design rights
Both the Design Law and the Copyright Law
recognize the possibility of conflicts between theirareas, and have relevant provisions: Article 26 of
the Design Law and Article 2(2) of the CopyrightLaw, respectively. The provision in the Copyright
Law is controversial.
In some cases, protection under the Copyright
Law is demanded when protection under registered
design rights cannot be obtained on the ground thatno design application has been filed or the term ofregistered design right has been expired. Such
demand is generally rejected based on a limited
interpretation of Article 2(2) of the Copyright Law,but there were a few cases in which protection
under copyright was granted.
“Hakata doll” case(Sasebo branch of Nagasaki
District Court on February 7, 1973)“Sculpture on Buddhist alter” case (Himeji
branch of Kobe District Court on July 9, 1979)“T-shirt” case (Tokyo District Court on April
20, 1981)
These judgments suggest that some massproduced products can be considered as works,
which is not a fixed judicial trend. However, such
judgment is likely to be made in the future because
it has actually appeared in multiple cases.
In drawing the line between registered design

IIP Bulletin 2002

rights and copyrights, according to the widely
accepted theory, mass-produced products are
excluded from the scope of works, and it is likely tobe judged that they should be subject to the rules
under industrial property laws for the purpose ofcontributing to industrial development.
Conflicts between protection under design rights
and protection under copyrights have a significant
impact on the registered design system. Clearly, thesetwo protection systems have been established fromdifferent perspectives, i.e., industry and culture, andthey cannot replace each other. The dividing areas ofthese systems should be very carefully considered.
(iii) Copyrights and trademark rights
The Trademark Law recognizes the possibilityof conflicts with the Copyright Law and has Article
29 as a relevant provision while the Copyright Law
has no such relevant provision. In other words, if amark that is used as a trademark satisfies therequirements for obtaining a copyright, there is nolegal ground for denying the grant of copyright.
If a trademark right is obtained, it is possible touse the trademark exclusively and to obtainprotection for a longer term than under a copyrightby continuously renewing the registration. Therefore,
few people would intend to obtain protection of a
trademark under a copyright. Currently, efforts arebeing made to extend the effect of a trademark rightto the use on the Internet. While the use of works on
the Internet is subject to the protection under theright of public transmission (Article 23 of the
Copyright Law), it is impossible to completely ruleout the possibility of conflicts between protection
under copyrights and protection under trademark
rights in the case of marks that are attached to theprovision of services.
(4) Conclusion
In the field of industrial property, if a binding
right were granted for the results of intellectual
creation activities, it would have a significant impact
on the entire field concerned. For this reason, theindustrial property system has been established inconsideration of a proper way of protection such as theregistration of right and the protection term of right.
The copyright system, on the other hand, is designedwith the aim of protecting creation in art andacademic fields in which diversity is highly evaluated.
If protection under copyright extends to the industrial
property field, serious problems would be caused.
Consequently, the problems of protection
under copyrights in the industrial property fieldshould be fully recognized and careful considerationis required for legislation in the copyright field. At
the same time, in order to reduce problems causedby conflicts between systems, it will be more
important to provide proper protection underindustrial property laws in new fields.

● 32 ●(Researcher: Takashi Ikegami)